Bayerische Motoren Werke Aktiengesellschaft

Patent Trials and Appeals Board

Jul 1, 2020

15444490 - (D) (P.T.A.B. Jul. 1, 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.
15/444,490 02/28/2017 Christophe SCHWARTZ 080437.69813US 3477
23911 7590 07/01/2020
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
COLON MORALES, DAVID
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
edocket@crowell.com
mloren@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHRISTOPHE SCHWARTZ
____________

Appeal 2020-000398
Application 15/444,490
Technology Center 3700
____________

Before JOHN C. KERINS, BRETT C. MARTIN, and LISA M. GUIJT,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1, 3–11, 14, 17, and 18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Bayerische Motoren Werke
Aktiengesellschaft as the real party in interest. Appeal Br. 1.
Appeal 2020-000398
Application 15/444,490
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THE INVENTION
Appellant’s invention relates to “a device for protecting a high-
pressure gas tank of a motor vehicle.” Spec. ¶ 2. Claim 1, reproduced
below as the sole independent claim on appeal, is illustrative of the subject
matter on appeal.
1. A device for protecting a high-pressure gas tank of a motor
vehicle, comprising:
at least one heat-conducting plate; and
a thermal triggering unit, wherein
the heat-conducting plate has a distal region and a
proximal region,
the proximal region is disposed directly adjacent to the
thermal triggering unit,
the heat-conducting plate is shaped so as to taper from
the distal region to the proximal region, and
the heat-conducting plate at least in a region extends
beyond a circumferential wall of the high-pressure tank.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Blumenthal US 5,711,547 Jan. 27, 1998
Winter US 2008/0066805 A1 Mar. 20, 2008
The following rejections are before us for review:
I. Claims 4, 6, and 11 stand rejected under 35 U.S.C.
§ 112(b) as indefinite.
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II. Claims 1, 3–8, 10, 11, 14, 17, and 18 stand rejected under
35 U.S.C. §§ 102(a)(1), 102(a)(2), and 103 as
anticipated, or alternatively, as unpatentable, over
Winter.
III. Claim 9 stands rejected under 35 U.S.C. § 103 as
unpatentable over Winter and Blumenthal.

OPINION
Rejection I
The Examiner finds that claims 4, 6, and 11 are indefinite for
ultimately depending from cancelled claim 2. Final Act. 3–4. Appellant
does not present any argument for this rejection, and thus, Appellant has
waived any argument of error. Appeal Br. 4–11; see Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance
without consideration of the substantive merits is appropriate where an
appellant fails to contest a ground of rejection).
Accordingly, we summarily affirm the Examiner’s rejection of claims
4, 6, and 11 under 35 U.S.C. § 112(b) as indefinite.2

Rejection II
Anticipation
Regarding independent claim 1, the Examiner finds that the assembly
of Winter’s heat conductive strips 42 discloses a heat-conducting plate, as

2 See also 35 U.S.C. § 112(d) (“a claim in dependent form shall contain a
reference to a claim previously set forth and then specify a further limitation
of the subject matter claimed”).
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Application 15/444,490
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claimed. Final Act. 4 (citing Winter, Fig. 3); see also Ans. 13 (finding that
“the strips 42 shown in Fig. 3 of Winter can be considered to be ‘a plate or a
plate assembly’”)). In support, the Examiner relies on a dictionary definition
of the claim term “plate” as “a thin, flat sheet or strip of metal or other
material . . . .” Ans. 13 (citing the Oxford dictionary). The Examiner also
identifies distal and proximal regions of Winter’s assembly of strips, wherein
the shape of the assembly tapers from the distal to the proximal region, as
claimed. Final Act. 4. The Examiner’s annotated Figure 3 of Winter is
reproduced below.

Ans. 17. The Examiner’s annotated Figure 3 of Winter depicts “a length-
wise view of a pressure tank system including heat conducting strips
positioned along the pressure tank,” wherein the Examiner has indicated,
with circles: a distal region of a plate, a taper (or tapered shape of the plate),
and a proximal region of a plate, as required by claim 1. Winter ¶ 13.
Appellant argues that Winter’s assembly of heat conductive strips 42
is not a plate, as claimed. Appeal Br. 4–5; Reply Br. 2 (“Appellant claims a
plate and Winter’s strips 42 are not a plate”). Appellant submits that the
Examiner’s interpretation of the claim term “plate” is “not reasonable” and
is “inconsistent” with both the use of the claim term “plate” in the
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Specification and as the claim term “plate” is understood by a person of
ordinary skill in the art. Appeal Br. 4–5; Reply Br. 1–3.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here,
the Specification expressly discloses that “[a] heat-conducting plate is a
plate, a panel or a layer which is capable of conducting away heat well or
particularly well.” Spec. ¶ 9.
We are persuaded by Appellant’s argument. Winter discloses, with
reference to Figure 3, that “heat conducting strips 42 are positioned in
contact with a pressure tank 44.” Winter ¶ 18. Interpreting an assembly of
Winter’s strips as a single plate is unreasonable, because the Examiner is
arbitrarily grouping separate and non-intersecting structures to result in a
plate, panel, or layer, as the claim term “plate” is defined in the
Specification.3 The express definition of the claim term “plate” in the
Specification does not include an assembly of plates, as the claim term plate
is interpreted by the Examiner supra.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 3–8, 10, 11, 14, 17, and 18 depending

3 Notably, we find that a single aluminum strip 42, as well as each of
Winter’s steel, copper, or aluminum layer 20 and aluminum foil layer 36,
separately disclose “a plate,” as claimed, because an ordinary definition of
the claim term “panel” includes an aluminum strip (i.e., a thin, flat strip of
metal), as provided by the Examiner supra, and a metal layer is expressly
included in the definition of the claim term “plate” as defined in the
Specification supra (i.e., defining plate as a plate, panel or layer). See Spec.
¶ 9; Winter ¶¶ 16, 17; cf. Appeal Br. 4 (concluding that Winter’s layers 20,
36 are not plates).

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therefrom, under 35 U.S.C. §§ 102(a)(1) or 102(a)(2) as anticipated by
Winter.

Obviousness
Alternatively, regarding the limitation of claim 1 requiring the plate to
be shaped so as to taper from the distal region to the proximal region, the
Examiner proposes modifying Winter’s pressure tank system to “optimize
the width and/or thickness of [Winter’s] heat conducting strip assembly to
have a greater width and/or thickness on the distal region that gradually
tapers to a minimal width and/or thickness at the proximal region,” to
improve “remote heat detection” while “reducing material cost,” to result in
the claimed subject matter. Final Act. 5–6 (emphasis to “assembly” added)
(citing Winter ¶ 18 (“[t]he number of strips 42, the thickness of the strips 42
and the width of the strips 42 can be designed for a particular tank system to
be the most effective as possible”)). Notably, the Examiner proposes
modifying Winter’s “strip assembly,” and therefore, the Examiner’s
alternative rejection under 35 U.S.C. § 103 does not cure the deficiency in
the Examiner’s finding with regard to the claim term “plate” as discussed
supra pursuant to the Examiner’s rejection of claim 1 under to 35 U.S.C. §§
102(a)(1) or 102(a)(2).
Accordingly, we also do not sustain the Examiner’s rejection of
independent claim 1, and claims 3–8, 10, 11, 14, 17, and 18 depending
therefrom, under 35 U.S.C. § 103, as unpatentable over Winter. Final Act.
5–6.

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Rejection III
The Examiner’s reliance on Blumenthal for disclosing concave side
edges in at least one area and in a longitudinal direction of the plate does not
cure the deficiency in the Examiner’s finding supra that the assembly of
Winter’s strips 42 discloses a plate, as claimed; therefore, we do not sustain
the Examiner’s rejection of claim 9, which depends from claim 1, under
35 U.S.C. § 103, as unpatentable over Winter and Blumenthal. Final Act.
12–13.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s) Affirmed Reversed
4, 6, 11 112(b) Indefiniteness 4, 6, 11
1, 3–8, 10,
11, 14, 17,
18
§§ 102(a)(1),
102(a)(2), 103
Winter 1, 3–8,
10, 11,
14, 17,
18
9 103 Winter, Blumenthal 9
Overall
Outcome
4, 6, 11 1, 3–11,
14, 17,
18
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED–IN–PART