2020004411 (P.T.A.B. Jul. 14, 2021)

ROBERT BOSCH GMBH

Patent Trials and Appeals BoardJul 14, 2021

2020004411 (P.T.A.B. Jul. 14, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/653,990 06/19/2015 Friederike Stock BOSC.P9471US/1000193838 6314 24972 7590 07/14/2021 NORTON ROSE FULBRIGHT US LLP 1301 Avenue of the Americas New York, NY 10019-6022 EXAMINER ROBBINS, JERRY D ART UNIT PAPER NUMBER 2859 NOTIFICATION DATE DELIVERY MODE 07/14/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): nyipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRIEDERIKE STOCK, GUENTHER LOHR, DRAGAN KRUPEZEVIC, VOLKER AMANN, JUERGEN MACK, JAN BREITENBACH, and MARCIN REJMAN Appeal 2020-004411 Application 14/653,990 Technology Center 2800 Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and JANE E. INGLESE, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 18, 21, 22, and 24–39. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Robert Bosch GmbH. Appeal Br. 1. Appeal 2020-004411 Application 14/653,990 2 CLAIMED SUBJECT MATTER The claims are directed to a hand-held power tool rechargeable battery (see, e.g., claims 1 and 39), systems including the hand-held power tool rechargeable battery (see, e.g., claims 27 and 31), and an inductive charging unit of a hand-held power tool rechargeable battery (see, e.g., claim 34). All of the claims require the combination of a first rechargeable battery cell and an inductive charging unit. See, e.g., claims 18, 27, 31, 34, and 39. The inductive charging unit includes an inductive charging coil for charging the rechargeable battery cell and this coil is in a plane perpendicular to the first rechargeable battery cell. This is depicted in Figure 1, which shows first rechargeable battery cells 12a, 14a, and 16a perpendicular to coil 22a of inductive charging unit 20a. Spec. 13:26–14:7; Fig. 1 (vertical cells 12a, 14a, 16a). Claims 18, 27, 31, and 34 require an additional rechargeable battery cell parallel to the coil plane (shown as horizontal cells 13a, 15a, 17a in Figure 1). Claim 39 does not require the horizontal cells, but requires three perpendicular rechargeable battery cells, i.e., vertical cells 12a, 14a, 16a shown in Figure 1. Claim 18, reproduced below with the claim limitations most at issue highlighted, is illustrative of the claimed subject matter: 18. A hand-held power tool rechargeable battery, comprising: at least one first rechargeable battery cell; at least one inductive charging unit that includes at least one inductive charging coil for charging the at least one first rechargeable battery cell, wherein the at least one first rechargeable battery cell has a main direction of extension that Appeal 2020-004411 Application 14/653,990 3 is oriented at least essentially perpendicularly with respect to a coil plane of the inductive charging unit, and at least one additional rechargeable battery cell having a main direction of extension that is oriented at least essentially in parallel to the coil plane of the inductive charging unit, wherein the at least one additional rechargeable battery cell is situated between the at least one first rechargeable battery cell and the inductive charging coil such that all planes in parallel to the coil plane which extend through the at least one additional rechargeable battery cell do not intersect with any plane in parallel to the coil plane which extend through the at least one first rechargeable battery cell, wherein the inductive charging unit includes a coil core unit having a plate area that at least partially shields the at least one first rechargeable battery cell from the inductive charging coil. Appeal Br., Claims Appendix 1. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Johnson US 7,589,500 B2 Sept. 15, 2009 Ueda US 8,765,280 B2 July 1, 2014 Yi US 8,889,279 B2 Nov. 18, 2014 Rejman US 9,216,505 B2 Dec. 22, 2015 Inoue US 2009/0121677 A1 May 14, 2009 Sutarwala US 2013/0088191 A1 Apr. 11, 2013 REJECTIONS Claims 18, 21, 24, 26–32, and 34–38 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rejman in view of Ueda and Inoue. Final Act. 2. Appeal 2020-004411 Application 14/653,990 4 Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Rejman, Ueda, and Inoue, and further in view of Yi. Final Act. 17. Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Rejman, Ueda, and Inoue further in view of Sutarwala. Final Act. 18. Claim 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Rejman, Ueda, and Inoue further in view of Johnson. Final Act. 18. Claim 39 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Rejman in view Yi. Final Act. 19. OPINION Appellant’s first argument raises the issue: Has Appellant identified a reversible error in the Examiner’s finding that Rejman’s power input 28a is an inductive charging coil? Appellant has not identified such an error. We select claim 18 as representative for considering this issue. Claim 18, in relevant part, recites “at least one inductive charging unit that includes at least one inductive charging coil for charging the at least one first rechargeable battery cell.” The other independent claims include the same or similar limitations. First, we consider what structure is required to be included in the “inductive charging unit.” Claim 18 requires the inductive charging unit include at least one inductive charging coil and further requires a coil core unit. The coil core unit is not at issue in this appeal. Only the inductive charging coil is. The question ultimately is whether Rejman’s power input 28a has the inductive charging coil structure required by claim 18. Compare Final Act. 2–3, and Ans. 4–7, with Appeal Br. 5–6, and Reply Br. 1–2. Appeal 2020-004411 Application 14/653,990 5 On this appeal record, there is no dispute that Rejman’s power input 28a is a coil. Compare Ans. 6 (annotated Figure 1 of Rejman, showing the coil), with Reply Br. 1–2; see also Rejman col. 3, ll. 29–32 (“coil of the power input”). Instead, Appellant contends that Rejman’s coil functions differently than Appellant’s coil. We agree, but Appellant has not persuaded us that this difference in function structurally distinguishes Rejman’s coil from that of Appellant’s claims. Rejman’s power input coil 28a “accepts power from a charging device” that “converts electrical power into an inductive field with the aid of a coil,” Rejman, col. 6, ll. 18–23. Power input coil 28a converts inductively transmitted energy back into electrical power, but it is also an electrical coil. By converting the inductive field into electrical power, it facilitates the charging process and, thus, is “for charging” the rechargeable batteries. It also has the inherent structure required of an electrical coil. Appellant has not argued that any other structure besides the coil is required to perform the function and, thus, Appellant has not distinguished the structure of the claim from that of Rejman. It has long been held that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). An inventor of a structure (machine or article of manufacture) is entitled to benefit from all of its uses, even those not described, Roberts v. Ryer, 91 U.S. 150, 157 (1875), and, conversely, patentability of the structure cannot turn on the use or function of the structure. In re Michlin, 256 F.2d 317, 320 (CCPA 1958) (“It is well settled that patentability of apparatus claims must depend upon structural limitations and not upon statements of function.”). Because Appellant has not persuaded us of a structural difference, we are not persuaded that the Appeal 2020-004411 Application 14/653,990 6 Examiner reversibly erred in finding power input 28a structurally meets the requirements of the recited inductive charging coil. Appellant further raises the following issue: Has the Examiner reversibly erred in finding a reason to modify the battery cell arrangement of Rejman based on the teachings of Ueda? Appeal Br. 6; Reply Br. 2. This argument does not apply to the rejection of claim 39 as Ueda was not used to reject claim 39. Nor do we find this argument persuasive as to representative claim 18. The Examiner’s reason for the modification, i.e., “to provide different sized handles for the power tool with alternate grips and to provide a better balance to the hand-held power tool by redistributing the weight of the battery cells,” Final Act. 4, is supported by a preponderance of the evidence. Ueda discloses that power tools must be “light in weight, compact in size[,] and have an easy-to-grip portion.” Ueda col. 1, ll. 15–18. Ueda provides evidence that many battery cell orientations were known in the art including horizontal, vertical, and combination horizontal and vertical battery cell orientations. Ueda col. 1, l. 19–col. 2, l. 17. Thus, a preponderance of the evidence indicates that a wide range of configurations were known in the art and within the skill of the art. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In an obviousness assessment, skill is presumed on the part of the artisan, rather than the lack thereof. In re Sovish, 769 F.2d 738 (Fed. Cir. 1985). Turning to Appellant’s last argument, we again select claim 18 as representative. Appellant contends that: Moreover, nowhere do the cited references disclose or suggest the at least one additional rechargeable battery cell is Appeal 2020-004411 Application 14/653,990 7 situated between the at least one first rechargeable battery cell and the inductive charging coil such that all planes in parallel to the coil plane which extend through the at least one additional rechargeable battery cell do not intersect with any plane in parallel to the coil plane which extend through the at least one first rechargeable battery cell. For example, in Rejman et al. at least one plane in parallel to the coil plane of the 1ower battery set intersects with a plane of any of the upper battery set. Appeal Br. 6. The recited limitation is not found in claim 39 and, thus, Appellant has not identified a reversible error in the Examiner’s rejection of that claim. As to claim 18, the argument does not address the Examiner’s rejection, which relies on the combination of Rejman and Ueda as suggesting the recited cell arrangement. Thus, Appellant has not identified a reversible error in the Examiner’s rejection of representative claim 18. CONCLUSION The Examiner’s decision to reject claims 18, 21, 22, and 24–39 is AFFIRMED. Appeal 2020-004411 Application 14/653,990 8 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18, 21, 24, 26–32, 34– 38 103(a) Rejman, Ueda, Inoue 18, 21, 24, 26–32, 34– 38 22 103(a) Rejman, Ueda, Inoue, Yi 22 25 103(a) Rejman, Ueda, Inoue, Sutarwala 25 33 103(a) Rejman, Ueda, Inoue, Johnson 33 39 103(a) Rejman, Yi 39 Overall Outcome 18, 21, 22, 24–39 RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED