Black & Decker Inc.

Patent Trials and Appeals Board

Jan 31, 2020

15003932 - (D) (P.T.A.B. Jan. 31, 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.
15/003,932 01/22/2016 Nathan J. Cruise P-US-TN-10649-A 7940
28268 7590 01/31/2020
Stanley Black & Decker, Inc.
6201 Greenleigh Avenue, MR045
Middle River, MD 21220
EXAMINER
MILLER, DANIEL R
ART UNIT PAPER NUMBER
2866
MAIL DATE DELIVERY MODE
01/31/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN J. CRUISE, ROUSE ROBY BAILEY JR.,
SNEHAL S. CHOKSI, REGINA C. CUNANAN,
GEOFFREY S. HOWARD, ALEXIS W. JOHNSON,
ANDREW E. SEMAN, DANH T. TRINH,
DANIEL J. WHITE, and MICHELLE L. MILLER

Appeal 2018-005245
Application 15/003,932
Technology Center 2800

Before JOSEPH L. DIXON, STEVEN M. AMUNDSON, and
MICHAEL T. CYGAN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 appeals from the
Examiner’s decision to reject claims 2–8 and 10–16. (Final Act. 1.) Claims
1 and 9 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). On
January 23, 2020, Appellant’s counsel presented arguments at an oral
hearing.

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Black &
Decker Inc. (Appeal Br. 3.)
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Application 15/003,932
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to battery pack chargers and methods capable
of charging battery packs with varying physical characteristics and
chemistries, including Li-ion batteries with higher charge/weight ratios.
(Spec. ¶ 10.) Claim 2, reproduced below, is illustrative of the claimed
subject matter:
2. A combination of a battery charger and a set of battery
packs, comprising:

a charger comprising a battery interface, a set of charger
terminals for providing a charging current, and a power supply
circuit for providing a charging current scheme;

a set of rechargeable battery packs, each rechargeable
battery pack of the set of rechargeable battery packs comprising
a charger interface having a physical configuration to mate with
the battery interface and a set of battery terminals;

wherein the charging scheme is defined by which of the
battery terminals electrically mate with which of the charger
terminals when the battery pack is physically mated with the
charger which is determined by a length of the battery terminals
in a mating direction between the rechargeable battery pack and
the charger.
REFERENCE2
The prior art relied upon by the Examiner is:
Wakefield US 5,729,115 Mar. 17, 1998

2 Additionally, we note that the Examiner identified the Izenbaard et al.
reference (US 5,187,422; issued Feb. 16, 1993) as a reference of interest
with respect to electrically conductive contact blades 54 and 55 and 55S
where the front short charger blade 55S is receivable by and can electrically
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Application 15/003,932
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REJECTION
Claims 2–8 and 10–16 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as being anticipated by Wakefield.
OPINION
35 U.S.C. § 102(b)
With respect to claims 2–8, Appellant argues the claims as a group.
Therefore, we select independent claim 2 as the representative claim for the
group and will address Appellant’s arguments thereto. 37 C.F.R.
§ 41.37(c)(1)(iv) (2017).
We have reviewed Appellant’s arguments in the Appeal Brief and
Reply Brief, the Examiner’s rejections, and the Examiner’s responses to
Appellant’s arguments. For at least the reasons discussed below, we agree
with and adopt the Examiner’s factual findings and legal conclusions, as set
forth in the Final Action and Examiner’s Answer. In our analysis below, we
highlight and address specific findings and arguments for emphasis.
At the outset, we note that independent claim 2 is directed to a
“combination of a battery charger and a set of battery packs” and the
“wherein” clause does not structurally limit the two claimed elements (a
battery charger and a set of battery packs) in the claimed combination.
Consequently, we find argument to the “wherein” clause to be unpersuasive
of error in the Examiner’s finding of anticipation. Additionally, we note that

contact only the long spring contact 15 of the high storage capacity battery
pack 13 and not the short spring contact 15A of the low storage capacity
battery pack 13A. (Izenbaard 5:57–62.) (See Final Act. 8.) We leave it to
the Examiner and Appellant to further consider this reference in any further
prosecution on the merits.
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Application 15/003,932
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the claimed “charger” merely sets forth “a power supply circuit for
providing a charging current scheme” which is a single charging scheme.
When the battery charger is mated to the rechargeable battery pack the
physical connections necessarily would provide for an appropriate selection
and determination of the single charging scheme. Furthermore, we find the
“set of rechargeable battery packs” may both be the same battery type
(chemistry type) and same terminal configuration for the single charging
scheme so as to not require a selection between a plurality of available
charging schemes.3
Regardless of the general contentions and imputed intended meanings
articulated by Appellant in the Briefs, and during the oral hearing, we are
bound by the controlling guidance of our reviewing court: “[i]t is the claims
that measure the invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am.,
775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citations omitted); In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citations omitted)
(“[T]he name of the game is the claim.”) (emphasis added). “Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “We have cautioned
against reading limitations into a claim from the preferred embodiment
described in the specification, even if it is the only embodiment described,

3 Alternatively, if the charger recited a “plurality of charging schemes” then
Appellant’s argument may have a better factual basis to distinguish the
anticipation rejection, but we need not reach this distinction based upon the
language of independent claim 2, and we make no findings regarding
obviousness.
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Application 15/003,932
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absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Appellant argues
a length of the battery terminals in a mating direction between
the rechargeable battery pack and the charger being
determinative of which of the battery terminals electrically mate
with which of the charger terminals when the battery pack is
physically mated with the charger, as set forth in claim 2, is
NOT inherent to the Wakefield reference. In the Wakefield
reference, all of the terminals 58A, 58B, 58C, 60A, 60B, 60C
and 62B of all of the battery packs 28A, 28B, 28C have the
same length in the mating direction. Or at least, that is what
seems to be illustrated in Figures 5A-5C and there is no
reference in the specification to indicate otherwise. As such,
the length in the mating direction is NOT at all determinative of
which battery terminals electrically mate with which charger
terminals. More specifically, whether or not the battery
terminals mate with the charger terminals in the Wakefield
reference is NOT determined by the length of the battery
terminals.
(Appeal Br. 10.) Appellant further argues:
While the charging scheme chosen in the Wakefield
reference is based upon a terminal configuration it is NOT
determined by a length of the battery terminals in a mating
direction between the rechargeable battery pack and the
charger, as recited in claim 2. The length of the terminals of the
battery of the Wakefield reference is not determinative at all of
the charging scheme. As such, an argument that this feature is
inherent in the Wakefield reference is unfounded.
(Appeal Br. 10–11.)
Appellant also uses a mathematical analogy with an equation to show
that although length of a battery terminal is always present, it plays no part
Appeal 2018-005245
Application 15/003,932
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in determining or solving which battery terminals electrically mate with
which charger terminals. (Reply Br. 4.) Appellant also argues:
The point of claim 2 is that the length of the terminals is
determinative of which battery terminals mate with which
charger terminals. In other words, because all of the terminals
in the Wakefield reference are all of the same length, the length
of the terminals is not determinative at all of which of the
battery terminals mate with which of the charger terminals.
(Reply Br. 4.)
We disagree with Appellant’s arguments and find that the language of
independent claim 2 is not commensurate in scope with the arguments
because the claimed battery may include only two battery terminals which
are the same length as in the Wakefield reference and the claimed battery
may not have varied lengths. Moreover, claim 2 does not recite the charger
has additional charging terminal(s) than those mated to the battery for
alternative charging schemes. Arguments must be commensurate in scope
with the actual claim language. In re Self, 671 F.2d 1344, 1348 (CCPA
1982); see Hiniker, 150 F.3d at 1369 (“[The] proffered facts . . . are not
commensurate with the claim scope and are therefore unpersuasive.”).
Appellant contends that the physical characteristic of the length of the
battery terminal is associated with a predefined charging scheme (of a
plurality of predefined charging schemes which correspond to the varied
battery chemistry types) where the combination of lengths of the battery
terminals to the corresponding varied length charger terminals dictates the
appropriate or corresponding charging scheme from the plurality of available
schemes.4 (Appeal Br. 9–11.) Although this may correspond to the

4 Also, the “Summary of the Claimed Subject Matter” identifies paragraph
47 disclosing the relationship of the longer battery terminal to the shorter
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Application 15/003,932
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disclosed invention, we cannot agree with Appellant that the language of
independent claim 2 recites corresponding limitations to effectuate the
desired scope of the claimed invention.
We find the claim language “wherein the charging scheme is defined
by which of the battery terminals electrically mate with which of the charger
terminals when the battery pack is physically mated with the charger which
is determined by a length of the battery terminals in a mating direction
between the rechargeable battery pack and the charger” does not necessarily
claim the plurality of different length charger terminals and the plurality of
possible varied length battery terminals.
Appellant argues because the lengths of the battery terminals in the
Wakefield reference are all the same, the length of the battery terminals can
be ignored and is not determinative of which of the battery terminals mate
with which of the charger terminals. (Reply Br. 4; see also Reply Br. 5.)
Appellant argues “[i]t is not that the terminals in the Wakefield reference
may have the same length, it is that they do have the same length (and it is
not in any way suggested that they have varying lengths)” and “because all
of the battery terminals in the Wakefield reference are of the same length,
the length of the battery terminals in the Wakefield reference does not
determine, at all, which battery terminals mate with which charger
terminals.” (Reply Br. 5.)

charging terminal. (Appeal Br. 7.) We find that the language of
independent claim 2 does not provide sufficient corresponding limitations to
the disclosed scope of Appellant’s disclosed invention to differentiate the
claimed invention from the disclosure of the Wakefield reference.

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Application 15/003,932
8
We note claim terms are to be given their broadest reasonable
interpretation, as understood by those of ordinary skill in the art and taking
into account whatever enlightenment may be had from the Specification. In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “In the patentability
context, claims are to be given their broadest reasonable interpretations . . .
limitations are not to be read into the claims from the specification.” In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
We disagree with Appellant and find Appellant’s arguments are not
commensurate in scope with the express language of independent claim 2
because there is no limitation of having terminals with varying lengths in the
claimed invention. This is because the claim does not set forth positive
limitations about the structure of the batteries or the charger, but in a
functional or process-type limitation regarding the structure of the
combination of claimed items. We find that the language of independent
claim 2 does not specifically recite the specific physical characteristics and
orientation of the battery terminals as defining or corresponding to an
appropriate charging scheme from a plurality of available charging schemes
which correspond to appropriate charger terminals where the length of the
battery terminals define the appropriate charging scheme (without further
determination by the charger).5

5 We further note that the structure and lengths of battery terminals are set
by the tool manufacturers where the single battery type and battery
configuration of terminals necessarily dictate prior art charging or non-
charging depending on the mating and characteristics or relationship of the
battery to the charger. Rather, the language of independent claim 2 does not
specifically differentiate from a single battery type with a single battery
scheme of charging under the broadest reasonable interpretation of the
language of independent claim 2. Moreover, we find independent claim 2
reads on a single battery type and a single corresponding battery charger
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Application 15/003,932
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We agree with the Examiner that the Wakefield reference discloses
that the Wakefield reference discloses a relationship between the charger
and battery terminals that dictates the charging scheme to be applied. As
explained by the Examiner, Wakefield disclose that for a nickel metal
hydride battery, which has a certain length that mates with charger terminals
of a corresponding spaced length, a suitable charging scheme is applied.
Ans. 12 (citing Wakefield 6: 5–24); see also Wakefield 5:4–12, 34–49). The
Examiner further explains that the charging scheme is defined only after
Wakefield’s charging terminals mate with a battery having battery terminals
of a corresponding length, and a voltage is read across those terminals. Id.
Accordingly, we agree with the Examiner’s finding that Wakefield discloses
the claimed the claimed “wherein the charging scheme is defined by which
of the battery terminals electrically mate with which of the charger terminals
when the battery pack is physically mated with the charger which is
determined by a length of the battery terminals in a mating direction
between the rechargeable battery pack and the charger.” (Final Act. 4–5, 7;
see also Final Act. 8 (“previously-cited US 5,187,422 to lzenbaard”.))
As a result, we find Appellant’s arguments do not show error in the
Examiner’s finding of anticipation based upon the Wakefield reference of
independent claim 2 and independent claim 10 not separately argued.
(Appeal Br. 11.)
Appellant does not set forth separate arguments for patentability of
dependent claims 3–8 and 11–16. (Appeal Br. 11.) As a result, dependent
claims 3–8 fall with representative independent claim 2. Arguments which

scheme where the mating of the battery to the terminal would define and
correspond to the physical relationship of the two parts to provide a charging
scheme to the battery.
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Application 15/003,932
10
Appellant could have made but did not make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
DECISION
The Examiner’s anticipation rejection is affirmed.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
2–8, 10–16 102 Wakefield 2–8, 10–16
FINALITY AND 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