Atieva, Inc.

Patent Trials and Appeals Board

Aug 26, 2020

13835760 - (D) (P.T.A.B. Aug. 26, 2020)

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.
13/835,760 03/15/2013 Richard J. Biskup A68348 1270US.1 1043
26158 7590 08/26/2020
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
ISHIZUKA, YOSHIHISA
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD J. BISKUP and SAM CHANG

Appeal 2019-006444
Application 13/835,760
Technology Center 2800
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.

RANGE, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Atieva, Inc.
Appeal Br. 1.
Appeal 2019-006444
Application 13/835,760

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a battery pack
monitoring apparatus. Spec. ¶¶ 1–3. Claim 1 is illustrative, and we
reproduce it below with emphasis added to certain key recitations:
1. A battery pack monitoring apparatus, comprising:
a voltage measurement system coupled to opposed ends of each
of a plurality of blocks of a battery pack and to measure voltages
thereof, the plurality of blocks being coupled in series by a plurality of
interconnects each having a non-zero interconnect resistance and each
being a bus bar, a connecting plate, a cable, a wire or other
interconnect structure wherein none of the plurality of interconnects
comprises a battery cell; and
the voltage measurement system being further configured
to:
derive an internal resistance of each of the plurality of
blocks based upon the voltages of the opposed ends of each
of the plurality of blocks and based upon a measurement of
current of the battery pack; and
derive the interconnect resistance of each of the
plurality of interconnects based upon the voltages of the
opposed ends of each of the plurality of blocks and based
upon the measurement of current.
Appeal Br. 16 (Claims App.) (emphasis added).

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:

2 In this Decision, we refer to the Non-Final Office Action dated July 2,
2018 (“Non-Final Act.”), the Appeal Brief filed Feb. 4, 2019 (“Appeal Br.”),
the Examiner’s Answer dated May 31, 2019 (“Ans.”).
Appeal 2019-006444
Application 13/835,760

3

Name Reference Date
Kodama et al.
(“Kodama”)
US 2004/0238261 A1 Dec. 2, 2004

Ishikawa et al.
(“Ishikawa”)
US 2010/0301868 A1

Dec. 2, 2010

Sahu et al.
(“Sahu”)
US 2014/0103877 A1 Apr. 17, 2014
http://hyperphysics.phy-astr.gsu.edu/hbase/electric/resis.html, April 9,
2000 (as archived by the Internet Archive Wayback Machine)
(“Hyperphysics”).
Energizer Battery Application Manual, Eveready Carbon Zinc (Zn/MnO2)
Application Manual, Nov. 6, 2001 (“Energizer”).

REJECTIONS
The Examiner maintains (Ans. 4–5) the following rejections on
appeal:
A. Claims 1–20 under 35 U.S.C. § 112 as failing to comply with
the written description requirement. Non-Final Act. 13–14.
B. Claims 1–7, 9–13, 17, 18, and 20 under 35 U.S.C. § 103 as
obvious over Sahu and Hyperphysics. Id. at 14–15.
C. Claim 19 under 35 U.S.C. § 103 as obvious over Sahu,
Hyperphysics, and Energizer. Id. at 24.
D. Claims 8, 15, and 16 under 35 U.S.C. § 103 as obvious over
Sahu, Hyperphysics, and Ishikawa. Id. at 25.
E. Claim 14 under 35 U.S.C. § 103 as obvious over Sahu,
Hyperphysics, and Kodama. Id. at 28.
Appeal 2019-006444
Application 13/835,760

4

OPINION
Rejection A, written description. The Examiner rejects claims 1–20
under 35 U.S.C. § 112 as failing to comply with the written description
requirement. Non-Final Act. 13–14. Independent claim 1 recites “a plurality
of interconnects . . . each being a busbar, a connecting plate, a cable, a wire
or other interconnect structure.” Appeal Br. 16 (Claims App.). Independent
claims 7 and 13 recite similar language. Id. at 18, 20. The Examiner
determines that “other interconnect structure” can refer to structures
Appellant has not disclosed such as washer assemblies, vacuum tubes,
transistors, or thermistors. Non-Final Act. 14; Ans. 6–13.
Pursuant to the written description requirement of 35 U.S.C. § 112, a
patent application’s disclosure must “reasonably convey[] to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). The written description inquiry is a question of
fact. Id.
The question at hand is whether or not Appellant’s written description
adequately conveys possession of claim 1’s recited genus “other
interconnect structure.” Our reviewing court has set forth two ways
disclosure to support a claim’s recited genus can meet the written description
requirement:
A genus can be described by disclosing: (1) a representative
number of species in that genus; or (2) its “relevant identifying
characteristics,” such as “complete or partial structure, other
physical and/or chemical properties, functional characteristics
when coupled with a known or disclosed correlation between
Appeal 2019-006444
Application 13/835,760

5
function and structure, or some combination of such
characteristics.”

In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008) (quoting Enzo Biochem,
Inc. v. Gen-Probe Inc., 323 F.3d 956, 970 (Fed. Cir. 2002)).
Here, Appellant’s Specification discloses sufficient structure and
relevant identifying characteristics to demonstrate Appellant’s possession of
the genus “other interconnect structure.” In particular, the Specification
recites various examples of interconnect structure including bus bars,
connecting plates, cables, or other wire. Appeal Br. 9–10; Spec. ¶ 19. The
Specification also discloses that the interconnect structure functions to
electrically connect battery pack blocks. Appeal Br. 9–10; Spec. Figs. 1, 2,
4, 5, ¶¶ 3 (“blocks being coupled in series by interconnects each having an
interconnect resistance”), 4 (describing interconnects between battery pack
terminals). The correlation between the function and structure of electrical
interconnects is disclosed and known. We, therefore, do not sustain the
Examiner’s rejection.
Rejections B–E, obviousness. The Examiner rejects independent
claims 1, 7, and 13 as obvious over Sahu and Hyperphysics. Non-Final Act.
14–15. The Examiner applies various other references to certain dependent
claims. Id. at 24–28. To resolve the issues before us on appeal, we focus on
the Examiner’s findings and determinations that relate to the error Appellant
identifies.
Claim 1 recites a voltage measure system configured to “derive an
internal resistance of each of the plurality of blocks” and “derive the
interconnect resistance of each of the plurality of interconnects.” Appeal Br.
16 (Claims App.). Independent claims 7 and 13 include similar recitations.
Appeal 2019-006444
Application 13/835,760

6
Id. at 17–18, 20. The Examiner finds that Sahu does not teach these
derivations. Non-Final Act. 15; see also Ans. 13 (“the purpose of the Sahu
reference was to show that such a configuration of blocks of batteries having
interconnects between them is a well know[n] configuration”). The
Examiner finds that Hyperphysics teaches these derivations. Non-Final Act.
15. The Examiner determines that it would have been obvious to modify
Sahu based on Hyperphysics “because knowing the internal and interconnect
resistance would lead to information regarding the service life of the battery
and using Ohms law would be no more than predictable use of prior art
elements according to their established functions.” Id. at 16.
Appellant argues that neither reference teaches the claims’ “derive”
recitations. Appeal Br. 11–13. We agree. The Hyperphysics reference
merely provides, for example, information on how resistance may be
calculated. See, e.g., Hyperphysics, Resistor Combinations, Resistivity
Calculation. The Examiner has not established that Hyperphysics teaches or
suggests deriving the internal resistance of battery pack blocks and also
deriving interconnect resistances.
While we agree with the Examiner that the evidence supports a
determination that a person of ordinary skill in the art could have made such
derivations (Ans. 13–16), the Examiner has not identified adequate evidence
to support a determination that a person of ordinary skill in the art would
have had reason to make such derivations. See, e.g., KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”).
The Examiner states a reason to apply Hyperphysics to Sahu to make the
Appeal 2019-006444
Application 13/835,760

7
recited derivations, but the Examiner does not provide evidentiary support
for the stated rationale. Non-Final Act. 16. The Examiner does not, for
example, identify evidence within the prior art indicating some benefit or
other reason why a person of skill in the art would reach the claims’ “derive”
recitations. As such, we agree with Appellant that the Examiner’s
determination appears to be improperly based on hindsight (Appeal Br. 13),
and we do not sustain the Examiner’s rejection of claims 1, 7, and 13.
Because the Examiner’s treatment of dependent claims does not cure
the error addressed above, we also do not sustain the Examiner’s rejection of
those claims.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112 Written Description 1–20
1–7, 9–13,
17, 18, 20
103 Sahu, Hyperphysics 1–7, 9–13,
17, 18, 20
19 103 Sahu, Hyperphysics,
Energizer
19
8, 15, 16 103 Sahu, Hyperphysics,
Ishikawa
8, 15, 16
14 103 Sahu, Hyperphysics,
Kodama
14
Overall
Outcome
1–20

REVERSED