Debbi Callicoat et al.

Patent Trials and Appeals Board

Oct 25, 2019

14664981 - (D) (P.T.A.B. Oct. 25, 2019)

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.
14/664,981 03/23/2015 Debbi Callicoat 83515830;
67186-171 PUS1
4345
46442 7590 10/25/2019
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
BERHANU, SAMUEL
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
10/25/2019 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DEBBI CALLICOAT, BRIAN UTLEY,
VEDAL HAYDIN, and FRANCISCO FERNANDEZ
____________________
Appeal 2018-008490
Application 14/664,981
Technology Center 1700
____________________

Before GRACE KARAFFA OBERMANN, DEBRA L. DENNETT, and
JANE E. INGLESE, Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–18, 20, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 In our Decision, we refer to Specification (“Spec.”) of Application
14/664,981 (“the ’981 App.”); the Final Office Action dated December 11,
2017 (“Final Act.”); the Appeal Brief filed April 18, 2018 (“Appeal Br.”);
and the Examiner’s Answer dated August 9, 2018 (“Ans.”); and the Reply
Brief filed August 28, 2018 (“Reply Br,”).
2 We use the word “Appellant” to refer to the applicant as defined by
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Ford
Global Technologies, LLC. Appeal Br. 1.
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The invention relates to a battery pack for an electrified vehicle, and a
busbar assembly of the battery pack that secures cells of the battery pack.
Spec. 1, ¶ 1. Claim 1, reproduced below from the Claims Appendix of the
Appeal Brief, illustrates the claimed subject matter:
1. An electrified vehicle busbar assembly, comprising:
a housing;
a clamping beam held by the housing; and
a plurality of busbars held by the housing, wherein the
housing, the clamping beam, and the plurality of busbars are
moveable together as a busbar assembly.
Appeal Br. 11 (Claims App.)
Figures 2 and 3 of the ’981 Application are reproduced below:

Figure 2 illustrates a perspective, schematic view of a battery pack of
a powertrain for an electrified vehicle. Spec. ¶ 25. Busbar assembly 76 is
positioned atop cells 60 and aligned with a median of array 18. Spec. ¶ 43.
Busbar assembly 76 includes clamping beam 80, housing 82, and a plurality
of busbars 84. Id. Clamping beam 80, housing 82, and busbars 84 move
together as part of the same busbar assembly 76. Id. ¶ 45.
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Figure 3 illustrates a perspective, close-up view of an end of an
example battery pack for use with a powertrain for an electrified vehicle.
Spec. ¶ 26. In array 118, clamping beam 180 of busbar assembly 176 is
secured to the end walls 172 via a welding operation. Id. ¶ 50. Tab 90 of
clamping beam 180 is pressed against tab 92 extending from end walls 172
and then welded to tab 92. Id. ¶ 51. Housing 182 of busbar assembly 176
includes channels 97 that receive walls 96 of clamping beam 180. Id. ¶ 55.
The laterally outboard portions of housing 182 include channels 99 that
received busbars 184. Id. ¶ 57.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Seo et al. (“Seo”) US 2011/0101920 A1 May 5, 2011
Jin US 2012/0315519 A1 Dec. 13, 2012
Kim et al. (“Kim”) US 2013/0302651 A1 Nov. 13, 2013
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JP 2013-15917
(“JP ’917”)3
JP 2013–15917A July 5, 2012
REJECTIONS
The Examiner maintains the following rejections: (1) claims 1, 2, 5–
7, 9, 12, and 14 under 35 U.S.C. § 102(a)(1)4 as anticipated by Kim; (2)
claims 4, 8, 10, and 17 under 35 U.S.C. § 103 as unpatentable over Kim in
view of JP ’917; (3) claims 11, 13, 15, 16, 18 20, and 21 under 35 U.S.C.
§ 103 as unpatentable over JP ’917 in view of Seo; and (4) claim 3 under
35 U.S.C. § 103 as unpatentable over Kim in view of Jin. Final Act. 2–8.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”).
Rejection of claims 1, 2, 5–7, 9, 12, and 14 as anticipated by Kim
The Examiner finds that Kim anticipates claims 1, 2, 5–7, 9, 12, and
14. Final Act. 2–4. The Examiner finds that most of the claim limitations
are shown in Kim’s Figure 1, reproduced below:

3 The Examiner cites to “Takase et al. (JP 02013-152917 A),” but
subsequently refers to the patent as “JP ’917.” Final Act. 5. As we do not
find “Takase” in the reference as translated, we adopt the Examiner’s
practice and refer to the patent as “JP ’917.”
4 Because this application was filed after the March 16, 2013, effective date
of the America Invents Act, we refer to the AIA version of the statute.
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Figure 1 of Kim shows a battery pack that includes a plurality of
battery cells 10 arranged or arrayed in a direction (e.g., in front and rear
directions), and circuit board assembly 180 disposed on the battery cells 10.
Kim ¶ 57. In one embodiment, circuit board assembly 180 includes a first
circuit board 181 that is electrically connected to an electrode terminal 10a
of battery cell 10, a second circuit board 182 that is electrically connected to
first circuit board 181, and connection wire 185 connected between the first
and second circuit boards 181 and 182. Id. The first circuit board 181 may
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be disposed on the electrode terminals 10a of adjacent battery cells 10 so as
to connect the battery cells 10 that are adjacent to each other in a direction
(e.g., the front and rear directions). Id. Circuit board assembly 180 may
include a plurality of first circuit boards 181 that connect different pairs of
battery cells 10. Id. ¶ 62.
Claim 1
With respect to independent claim 1, the Examiner finds that Kim
discloses an electrified vehicle busbar assembly wherein Kim’s element 182
(second circuit board) is equivalent to the claimed housing element because
circuit board 182 “houses different electrical circuit elements and sensing
devices such as a thermistor,” thus “the structures and design of the housing
of Kim is the same and/or similar to the housing disclosed by Appellant’s
[F]igure 2.” Ans. 2 (citing Kim ¶¶ 9, 28, and 72); see also Final Act. 3. The
Examiner finds that element 181 (first circuit board) is the claimed clamping
beam held by the housing because first circuit board 181 clamps terminals
10a and wires 185. Final Act. 3; Ans. 2. The Examiner finds that
connection wires 185 are the plurality of busbars held by the housing
because they provide electrical connections between elements. Final Act. 3;
Ans. 2. The Examiner finds that the housing, clamping beam, and plurality
of busbars are moveable together as a busbar assembly. Final Act. 3. The
Examiner finds that “held by” includes an arrangement formed by
structural/electrical connections shown in Kim’s Figure 1. Ans. 3.
Appellant argues that Kim’s second circuit board 182 is not a housing,
first circuit board 181 is not a clamping beam, and wires 185 are not
busbars. Appeal Br. 3.
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More specifically, Appellant contends that Kim does not teach that
second circuit board 182 houses any electrical circuit elements, and “[t]he
broadest reasonable interpretation of a housing would not include a circuit
board that does not house.” Id. at 3; Reply Br. 2 (emphasis added).
Appellant argues that the Examiner’s finding that Kim’s second circuit
board 182 is a housing “because it houses [several] different electrical circuit
elements and sensing devices such as a thermistor” is incorrect because Kim
does not teach that second circuit board 182 houses any electrical circuit
elements, but rather teaches that a thermistor may be mounted on the first
(asserted clamping means), not second (asserted housing), circuit board.
Reply Br. 2. Appellant argues that circuit board 181 does not clamp
terminals 10a and 10b, but rather is secured to the terminals by coupling
members 190, and is not a beam. Appeal Br. 3; Reply Br. 1–2. Appellant
argues that the broadest reasonable interpretation of a “clamping beam held
by the housing” would not include a second circuit board 182 spaced a
distance from (and not touching) a first circuit board 181 and connected by
wires 185. Appeal Br. 3; Reply Br. 2. Appellant argues that there are no
structural connections between the first and second circuit boards in Kim,
and the broadest reasonable interpretation would not include an alleged
electrical (rather than structural) connection. Reply Br. 3. Appellant argues
that the broadest reasonable interpretation of “busbar” would not include
Kim’s wires 185. Appeal Br. 3.
Anticipation and obviousness require the court to compare the
properly construed claims to the available prior art. Oakley, Inc. v. Sunglass
Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003); see also In re Paulsen, 30
F.3d 1475, 1479 (Fed. Cir. 1997) (“[T]o properly compare [the prior art]
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with the claims at issue, we must construe the term [in dispute] to ascertain
its scope and meaning.”).
During prosecution, we give the language of the proposed claims “the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997); see
also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(The words used in a claim must be read in light of the specification, as it
would have been interpreted by one of ordinary skill in the art at the time of
the invention.). “Under a broadest reasonable interpretation, words of the
claim must be given their plain meaning, unless such meaning is inconsistent
with the specification and prosecution history.” TriVascular, Inc. v.
Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). “Any explanation,
elaboration, or qualification presented by the inventor during patent
examination is relevant, for the role of claim construction is to ‘capture the
scope of the actual invention’ that is disclosed, described, and patented.”
Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d 1320, 1323 (Fed. Cir. 2015)
(quoting Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d
1296, 1305 (Fed. Cir. 2011)). However, any special definitions for claim
terms must be set forth with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
We normally do not interpret claim terms in a way that excludes
embodiments disclosed in the specification. Verizon Servs. Corp. v. Vonage
Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007) (rejecting proposed
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claim interpretation that would exclude disclosed examples in the
specification); Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1369
(Fed. Cir. 2003) (finding district court’s claim construction erroneously
excluded an embodiment described in an example in the specification, where
the prosecution history showed no such disavowal of claim scope); see also
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)
(finding that a claim interpretation that excludes a preferred embodiment is
“rarely, if ever, correct”).
For claim 1, we construe essentially every claim term in order to
resolve the issue before us: “housing,” “clamping beam,” “held by,” and
“busbar.” Appellant points to no definition of any of these terms in the
Specification or prosecution history, and we find none. See generally,
Appeal Br. Therefore, we use the broadest reasonable interpretation
consistent with the specification (“BRI”).
Applying the BRI to the terms, we construe “housing” as “anything
that covers or protects”5; “clamping beam” as “a rigid material that holds or

5 Housing: (1) “[A]nything that covers or protects.” Dictionary.com
(accessed Oct. 7, 2019), https://www.dictionary.com/browse/housing#; (2)
“[S]omething that covers or protects: such as . . . a casing or enclosure (as
for a mechanical part or an instrument.” Merriam-Webster.com (accessed
Oct. 7, 2019), https://www.merriam-webster.com/dictionary/housing; (3) “A
case, cover, or other structure that encloses, protects, or (in some cases)
supports a mechanism (esp. a bearing), apparatus, piece of equipment, etc.”
Oxford English Dictionary (accessed Oct. 9, 2019), https://www.oed.com/
view/Entry/88956?rskey=HYv4gn&result=3&isAdvanced=false#eid.
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fastens objects together”6,7; “held by” as “supporting or keeping in a
particular position by”8; and “busbar” as a “an electrical conductor used for
distributing or collecting electrical energy or signals.”9
Based on the BRIs above Appellant has not shown that the Examiner
reversibly errs in finding claim 1 anticipated by Kim. Kim’s second circuit
board (identified by the Examiner as a housing) covers or protects at least a
portion of a plurality of battery cells, and first circuit board (identified by the
Examiner as a clamping beam) is a rigid material at least because it is
described as comprising an insulative “base board” and keeps the second and
first circuit boards together in a particular position relative to one another via
connection wires (identified by the Examiner as busbars) that are electrical
conductors used for transmitting electrical signals. See Kim Fig. 1, ¶¶ 7, 15;
see Final Act. 2–3; Ans. 2–3.
We sustain the rejection of claim 1 as anticipated by Kim.

6 Clamp: “[A] device, usually of some rigid material, for strengthening or
supporting objects or fastening them together.” Dictionary.com (accessed
Oct. 7, 2019), https://www.dictionary.com/browse/clamp?s=t.
7 Beam: “[A]ny of various relatively long pieces of metal, wood, stone, etc.,
manufactured or shaped especially for use as rigid members or parts of
structure or machines.” Dictionary.com (accessed Oct. 7, 2019), https://
www.dictionary.com/browse/beam?s=t.
8 “Held” is the past participle of “hold.” Hold: (1) “[T]o remain fast, adhere,
cling.” Dictionary.com (accessed Oct. 7, 2019); https://www.dictionary.com
/browse/hold?s=t. (2) “[T]o keep under restraint; to support in a particular
position or keep from falling or moving.” Merriam-Webster.com (accessed
Oct. 7, 2019), https://www.merriam-webster.com/dictionary/hold.
9 Bus bar: “[A]n electrical conductor used for distributing or collecting
electrical energy or signals.” Dictionary of Engineering Terms,
Butterworth-Heinemann (accessed Oct. 15, 2019),
https://search.credoreference.com/content/entry/bhidet/bus/0.
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Claim 2
Claim 2 depends from claim 1 and requires that the assembly
comprises an end wall of a battery pack, wherein the clamping beam is
secured directly to the end wall to secure the housing and the plurality of
busbars relative to the end wall. Appeal Br. 11 (Claims App.).
The Examiner finds that Kim’s Figs. 1 and 2 teach the limitations of
claim 2, and that coupling member (190) is used to connect the terminals of
the battery cells with the electrical board. Final Act. 4, 9. The Examiner
finds that first circuit boards are mounted on the terminals of cell batteries
and part of the cell batteries are located at the end walls or part of the end
walls. Ans. 3.
Appellant argues that none of the first circuit boards are secured to an
end wall in Kim, but rather are secured to terminals of the battery cells.
Appellant contends that Kim discloses end walls (end plates 150), but first
circuit boards are not secured directly to end plates. Appeal Br. 4.
Kim illustrates in Fig. 9 infra, that first circuit boards are secured
directly to battery terminals, and that end plates are secured directly to side
plates but not to first circuit boards. On this basis Appellant shows
reversible error by the Examiner in finding claim 2 anticipated by Kim.
Even if we interpret the outermost portions of the front and back
battery cells of a battery pack (see Kim Fig. 1 supra) as the “end walls” of
claim 2, the first circuit boards are not secured directly to the end walls. For
this additional reason, Appellant shows reversible error in this rejection.
We do not sustain the rejection of claim 2 as anticipated by Kim.

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Claims 5, 6, and 7
Claim 5 depends directly from claim 2 and further requires that the
clamping beam is securable to the end wall via a mechanical fastener.
Appeal Br. 11 (Claims App.). Claim 6 depends from claim 5, and claim 7
depends from claim 6. Id.
Because Appellant show reversible error in the anticipation rejection
of claim 2, such error applies equally to claims 5, 6, and 7. See Appeal Br.
4–5. We do not sustain the rejection of claims 5, 6, or 7 as anticipated by
Kim.
Claim 9
Claim 9 depends from claim 1 and further requires that the housing
electrically isolates the clamping beam from the plurality of bus bars and
from a plurality of battery cells. Appeal Br. 11 (Claims App.).
The Examiner finds that Kim’s Fig. 3 discloses these limitations.
Final Act. 4. The Examiner finds that Kim’s first circuit board has an
insulating property, and this isolates any electrical conductions between it
and the second circuit board. Ans. 4.
Appellant contends that the first circuit board is directly electrically
connected to the second circuit board by the connecting wires. Appeal Br. 6.
Kim discloses that in one embodiment the first circuit board includes
an insulative base board. Kim ¶12. However, nothing in Kim suggests that
the first circuit board is insulated from the second circuit board. We agree
with Appellant that Kim teaches direct electrical connection between the
first and second circuit boards. See Appeal Br. 6; see Kim Fig. 3.
Therefore, Appellant shows reversible error by the Examiner in rejecting
claim 9 as anticipated by Kim.
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We do not sustain the rejection of claim 9 as anticipated by Kim.
Claim 12
Independent claim 12 reads as follows:
12. A method of biasing battery cells of a battery pack,
comprising:
securing a clamping beam to at least one end wall of a
battery pack to bias a plurality of battery cells against a heat
exchanger plate;
holding the clamping beam within a housing; and
holding a plurality of bus bars within the housing.
Appeal Br. 12 (Claims App.). An annotated version of Kim’s Fig. 9 is
reproduced below:
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Kim’s Fig. 9 is an exploded perspective view of a battery pack
according to one embodiment of the invention. Kim ¶ 52. The battery pack
may include a plurality of battery cells (10) that are arranged along a
direction (e.g., front and rear directions), circuit board assembly (180) that is
electrically connected to battery cells (10), and top, side, and end plates
(120, 140, and 150) that may structurally couple an array of the battery cells.
Kim ¶¶ 90–91. End plates (150) may be disposed at both ends of battery
cells (10) in the array direction (e.g., the front and rear directions) of battery
cells (10). Kim ¶ 91.
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Side plate (140) may have a plate shape and may include projection
part (140a) that is bent to support a portion of bottom surfaces of battery
cells (10). Kim ¶ 97. First and second side plates (141 and 142) disposed at
opposite sides of battery cells (10) may support bottoms of battery cells (10)
via a pair of projection parts (140a) that are bent toward each other. Kim
¶ 97.
The Examiner finds that Kim discloses each of the limitations of
claim 12. See Final Act. 3 (citing Kim Fig. 9). The Examiner identifies
Kim’s side plate 140 with heat dissipation hole 140′ as the heat exchanger
plate of the claim. Id. In the Final Office Action, the Examiner finds that
the extended part of side plate 140 (projection part 140a) biases the
clamping part against the battery pack. Id. In the Answer, the Examiner
finds that “Kim is silent about the clamping beam biasing the heat exchanger
plate.” Ans. 5.
Relating, apparently, to “securing a clamping beam to at least one end
wall of a battery pack,” the Examiner finds that circuit boards 181 are
mounted on terminals of cell batteries, and part of the cell batteries are
located at the end walls or part of the end walls and that coupling member
190 is used to connect terminals 10a of the battery cells, and side walls 140
and support frame 125 are screw-coupled. Ans. 3 (citing Kim ¶¶ 64, 67, and
104). Relating to “holding the clamping beam within a housing,” the
Examiner finds that one side of first circuit board 181 (clamping beam) is
connected or held by second circuit board 182 (housing) via connection
wires 185 (busbars) wherein connection wires 185 are directly connected or
mounted inside of the housing. Ans. 4 (citing Kim Fig. 2).
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Appellant argues that “holding a clamping beam within a housing”
renders claim 12 patentable for the same reasons given with respect to claim
1 (Kim fails to disclose a housing, a clamping beam, or the housing holding
a clamping beam). Appeal Br. 6. Appellant also argues that Kim’s
disclosure of coupling member 190 coupling first circuit board 181 to
terminals 10a and 10b does not disclose, “securing a clamping beam to at
least one end wall of a battery pack to bias a plurality of battery cells against
a heat exchanger plate.” Id.
Appellant contends that one of ordinary skill in the art would not
interpret Kim’s side plate 140 as a heat exchanger plate because Kim does
not teach that the side plate exchanges heat; holes 140′ in side plate 140
permit heat to dissipate but do not make side plate 140 exchange heat. Id.
In addition, Appellant argues that coupling of first circuit board 181 to
terminals 10a and 10b of battery cells 10 does not bias the battery cells
against side plate 140, which, instead, is secured to support frame 125 with
fasteners. Id. Appellant points out that the Examiner finds that Kim fails to
teach the “biasing” feature of claim 12 but Jin does, noting that the rejection
is for anticipation, not obviousness. Reply Br. 4.
We adopt the claim constructions provided above and, in addition,
construe “heat exchanger plate,” “bias[ing] a plurality of battery cells
against,” and “within a housing.” Applying the BRI, we construe “heat
exchanger plate” as “ a device that transfers heat from one medium or
system to another”10; “biasing a plurality of battery cells against” as

10 Heat exchanger: “A device that transfers heat from one medium or system
to another; for example, heat from hot fluid contained in a radiator dissipates
when the metal walls of the device come in contact with cold air.”
Academic Press Dictionary of Science and Technology (accessed Oct. 9,
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“applying force to hold a plurality of battery cells in contact with”11; and
“within a housing” as “in the inner part or interior of a cover”.12
Kim’s side plates 140 with heat dissipation holes transfer heat from
the battery to outside the battery, thus qualifying as heat exchanger plates.
Kim does not teach that first circuit boards apply a force to hold battery cells
in contact with the side plates; the support frame carries out this function.
See Kim Fig. 9. In addition, for the reasons discussed above regarding claim
2, the Examiner errs in finding that Kim teaches a clamping beam secured to
at least one end wall. The Examiner does not explain how the connection
wires (busbars) or first circuit boards (clamping beams) are held in the inner
part or interior of the second circuit board (housing). For this additional
reason, the Examiner reversibly errs in rejecting claim 12 as anticipated by
Kim. We do not sustain the rejection of claim 12 as anticipated by Kim.
Claim 14
Claim 14 depends from claim 12. Because Kim does not anticipate
claim 12, the anticipation rejection of claim 14 over Kim is reversible error
and we do not sustain it.

2019), https://search.credoreference.com/content/entry/apdst/heat_
exchanger/0.
11 Consistent with the Specification, we construe “bias” broadly as applying
a force, rather than in the context of electrical engineering. Bias: “[T]he
force applied to a relay to hold it in a given position.” McGraw-Hill
Encyclopedia of Science and Technology (accessed Oct. 9, 2019),
https://www.accessscience.com/search?q=bias&rows=10&mode=
AND&newSearch=Y.
12 Within: “In the inner part or interior, or on the inner side (of a receptacle
or other material thing); inside, internally.” Oxford English Dictionary
(accessed Oct. 9, 2019), https://www.oed.com/view/Entry/229671?rskey=
F45yyX&result=2#eid.
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Rejection of claims 4, 8, 10, and 17 as obvious over Kim in view of
JP ’917
The Examiner finds that the combination of Kim and JP ’917 renders
claims 4, 8, 10, and 17 obvious. Final Act. 5–6. Claims 4, 8, and 10 depend
directly or indirectly from claim 1. Appeal Br. 11–12 (Claims App.). Claim
17 depends from claim 12. Id. at 12.
Claim 4
Claim 4 depends from claim 2 and further requires that the clamping
beam is weldably securable to the end wall. Appeal Br. 11 (Claims App.).
The Examiner relies on Kim for teaching the limitations of claim 2
and on JP ’917 for teaching that the clamping beam is weldably securable to
the end wall. Final Act. 5 (citing JP ’917; Fig. 4, ¶¶ 29, 31). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
at the time of the invention to use welding techniques taught by JP ’917 in
Kim’s apparatus in order to secure the battery module and clamps. Id.
Appellant argues that JP ’917 fails to cure the deficiencies in the
anticipation rejection of claim 2. Appeal Br. 7. Appellant also argues that
the soldering in JP ’917 is used to produce a conductive path. Id. Appellant
contends that the skilled artisan would not have modified Kim to create a
conductive path between the first circuit board and an end wall. Id.
We agree with Appellant that JP ’917 does not cure the deficiencies of
Kim in relation to claim 2, from which claim 4 depends, i.e., the Examiner
does not show that the combined references do not teach a clamping beam
secured directly to an end wall to secure the housing and the plurality of bus
bars relative to the end wall. Therefore, we do not sustain the rejection of
claim 4 as obvious over Kim in view of JP ’917.
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Claim 8
Claim 8 depends from claim 1 and further requires that the clamping
beam is positioned at a median of a battery pack. Appeal Br. 11 (Claims
App.).
The Examiner finds that Kim in combination with JP ’917 teaches the
limitations. Ans. 5. The Examiner finds that “median position” is a relative
term and Kim’s arrangement can be considered “median positioning.” Id.
The Examiner further finds that the claimed elements were known in the art
and one of ordinary skill in the art could have combined the elements as
claimed by known methods with no change in their respective function to
yield a predictable result. Id. The Examiner states that proper motivation or
rationale to combine the references was given in the Final Office Action. Id.
Appellant argues that the Examiner fails to present a prima facie case
of obviousness. Appeal Br. 8. Appellant contends that Kim does not teach
the first circuit board is positioned at a median of the battery pack, a
configuration which would be considered by the skilled artisan to be
“situated in the middle.” Id. at 7–8. Appellant argues that the rejection
articulates no reason that would lead the skill artisan to modify Kim such
that first circuit boards are moved away from the terminals to which they
attach. Id. at 8.
Contrary to the Examiner’s statement, we find no motivation to
combine Kim and JP ’917 stated in the Final Office Action. See generally
Final Act. In addition, “median” has a common meaning of “located in the
middle,” as in “median strip.”13 However, Kim teaches first circuit boards at

13 Median: “Relating to, located in, or extending toward the middle.”
American Heritage Dictionary of the English Language (accessed Oct. 17,
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opposite edges of the battery pack. See Kim Figs. 1, 9. On the evidence
before us the Examiner reversibly errs in finding claim 8 obvious over Kim
combined with JP ’917.
We do not sustain the rejection of claim 8 as obvious over Kim in
view of JP ’917.
Claims 10 and 17
Claim 10 depends from claim 1, and claim 17 depends from claim 12.
Both claims 10 and 17 require “wherein the clamping beam extends
longitudinally from a first end to a second end opposite the first end, the first
end securable to a first end wall of a battery pack, and the second end
securable to a second end wall of the battery pack.” Appeal Br. 12 (Claims
App.).
In the Final Office Action, the Examiner finds that Kim and JP ’917 in
combination teach the limitations in claims 10 and 17, but provides no
further explanation. See Final Act. 6.
Appellant argues that the Examiner fails to present a prima facie case
of obviousness. Appeal Br. 8. Appellant contends that the Examiner
provides no reason for the skilled artisan to modify Kim’s first circuit boards
to extend longitudinally in the manner claimed. Id.
In relation to claim 2, above we explain that Kim does not teach a first
circuit board (clamping beam) that is securable to an end wall of a battery
pack. In addition, the rejection of claims 10 and 17 directs us to nothing in
JP ’917 that cures the deficiency in Kim. We agree with Appellant that the
Examiner fails to meet the burden of showing a prima facie case of

2019), https://search.credoreference.com/content/entry/hmdictenglang
/median/0.
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obviousness. When the references cited by the examiner fail to establish a
prima facie case of obviousness, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). We do not
sustain the rejection of claims 10 and 17 as obvious over the combination of
Kim and JP ’917.
Rejection of claims 11, 13, 15, 16, 18, 20, and 21 as obvious over
JP ’917 in view of Seo
Claims 11 depends from claim 1 and further requires the inclusion of
thermistors, sense leads, or both secured to the housing. Appeal Br. 12
(Claims App.).
The Examiner finds that Seo discloses thermistors secured to the
housing. Final Act. 6. The Examiner determines that it would have been
obvious to one of ordinary skill in the art at the time of the invention to add
temperature means taught by Seo to JP ’917’s apparatus to avoid battery
damage due to overheating and effectively control heat exchange. Id.
Appellant argues that the rejection does not show a teaching or
suggestion in JP ’917 of each feature in claim 1. Appeal Br. 8. Appellant
argues that the Examiner does not make a prima facie case of obviousness
because the combined references fails to teach each element of claim 11. Id.
at 9.
The Examiner makes no findings in either the Final Office Action or
the Answer that map the elements of claim 1 to JP ’917. See generally Final
Office Action, Answer. Therefore, the rejection fails to establish prima facie
obviousness of claim 11 over JP ’917 in combination with Seo. We do not
sustain the rejection.
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Claims 13, 15, 16, and 18
Claims 13, 15, 16, and 18 depend directly or indirectly from claim 12.
Appeal Br. 12 (Claims App.). The Examiner finds that Seo discloses the
limitations in these dependent claims that are in addition to those in claim
12. Final Act. 6–7.
Appellant argues that claim 12 was rejected over Kim, not JP ’917 or
Seo. Appeal Br. 9. Appellant contends that the rejection fails to
demonstrate how JP ’917, as modified by Seo, teaches the features of claim
12, and thus fails to support a prima facie case of obviousness. Id.
The Examiner makes no findings regarding the teachings of JP ’917 in
rejecting claims 13, 15, 16, or 18 over the combination of JP ’917 and Seo.
See generally Final Act. In relation to the rejection of claims 4, 8, 10, and
17 with Kim as the primary reference, the Examiner makes no findings that
JP ’917 teaches any limitations of claim 12, from which claims 13, 15, 16,
and 18 depend. See id. at 5–6. On these facts, we agree with Appellant that
no prima facie case is made for rejection of claims 13, 15, 16, or 18 as
obvious over JP ’917 in combination with Seo. We do not sustain the
rejections.
Claims 20 and 21
Claim 20 depends from claim 1 and further requires “wherein the
housing directly contacts the clamping beam.” Appeal Br. 12 (Claims
App.). Claim 21 depends from claim 12 and further requires “wherein the
plurality of battery cells distributed along an axis, the biasing in a direction
transverse to the axis.” Id.
The Examiner rejects both claims over Kim Figs. 1–9. Final Act. 7.
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Appellant points out that the Examiner refers to Kim while asserting
only obviousness over JP ’917 in view of Seo. Appeal Br. 9.
The Examiner fails to make a prima facie case of obviousness over
JP ’917 in view of Seo, as the rejection refers to neither JP ’917 nor Seo.
See Final Act. 7. The Examiner made the same error in the Non-Final
Rejection mailed July 12, 2017, and Appellant identified the error in the
response to that action. See Response to Non-Final Office Action dated
Sept. 1, 2017.
We do not sustain the rejection of claims 20 or 21 over JP ’917 in
view of Seo. We also do not sustain a proper rejection of claim 20 over Kim
because we determined supra that Kim does not teach that the housing
directly contacts the clamping beam. Nor do we sustain a proper rejection of
claim 21 over Kim at least because we determined that the limitations of
claim 12 are not disclosed by Kim.
Rejection of claim 3 as obvious over Kim in view of Jin
Claim 3 depends from claim 1 and further requires “wherein the
clamping beam biases a plurality of battery cells toward a heat exchanger
plate when the clamping beam is secured to the end wall, the plurality of
battery cells distributed along an axis, the biasing in a direction transverse to
the axis.” Appeal Br. 11 (Claims App.).
The Examiner finds claim 3 obvious over Kim in view of Jin. Final
Act. 7–8. The Examiner apparently relies on Kim for the limitations of
claim 1. See id. at 7. The Examiner finds that Jin discloses the additional
limitation in claim 3. Id. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time of the invention to add a
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heat exchange medium to Kim’s apparatus in order to extend the lifespan of
the battery. Id. at 8 (citing Jin Figs. 2A and 2B, ¶¶ 38, 48, and 49).
Figures 1 and 2A of Jin are reproduced below:

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Figure 1 shows a perspective view of a battery module including a
plurality of battery cells according to an exemplary embodiment of Jin’s
invention. Jin ¶ 16. Figure 2A illustrates a perspective view of a barrier
interposed between battery cells according to an exemplary embodiment of
Jin’s invention. Jin ¶ 17. A battery module (100) may include a plurality of
battery cells (10) arranged adjacent to each other along a first direction and a
plurality of barriers (150) interposed between two adjacent battery cells. Jin
¶ 27. A plurality of projections (154) may be disposed on base part (153) of
barriers (150). Jin ¶ 38. Projections 154) may define flow passageways of a
heat exchange medium. Jin ¶ 38.
The Examiner finds that Fig. 1 of Jin discloses inter alia “wherein the
clamping beam biases a plurality of battery cells toward a heat exchange
plate when the clamping beam is secured to the end wall.” Final Act. 7.
Appellant argues that, even if heat exchange medium were added to
Kim’s apparatus, the apparatus so modified would fail to teach the features
of claim 3. Appeal Br. 9–10. More specifically, Appellant argues that the
addition of heat exchange medium has no connection to biasing of battery
cells toward a heat exchanger plate, in particular to biasing in a direction
transverse to the axis where the battery cells are distributed along that axis.
Id. at 10.
The Examiner does not identify which element in Jin is taken to be the
clamping beam. See Final Act. 7–8. We assume that the Examiner views
element 15 of Jin to be the clamping beam, analogous to element 181 of
Kim. We then consider whether Jin element 15 “biases a plurality of battery
cells toward a heat exchange plate” (154), as required by claim 3, and find
that it does. A skilled artisan would have interpreted Jin as disclosing
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application of a force to hold battery cells in contact with each other. Claim
3 further requires that the biasing be “in a direction transverse to the axis”
along which the plurality of battery cells are distributed. Appeal Br. 11
(Claims App.). Here the Examiner’s reasoning falters, as the biasing that
occurs in Jin would be in a direction parallel to the axis along which the
plurality of battery cells are arranged. Appellant thus supports reversible
error by the Examiner in finding claim 3 obvious over Kim in view of Jin.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C § Basis Affirmed Reversed
1, 2, 5–7, 9,
12, 14
102(a) Kim 1 2, 5–7, 9,
12, 14
4, 8, 10, 17 103(a) Kim, JP ’917 4, 8, 10, 17
11, 13, 15,
16, 18, 20,
21
103(a) JP ’917, Seo 11, 13, 15,
16, 18, 20,
21
3 103(a) Kim, Jin 3
Overall
Outcome
1 2–18, 20,
21
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

Notice of References Cited
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X
Dictionary.com (accessed Oct. 7, 2019), https://www.dictionary.com/browse/housing#.
*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
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Merriam-Webster.com (accessed Oct. 7, 2019), https://www.merriam-webster.com/dictionary/housing.

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X
Oxford English Dictionary (accessed Oct. 9, 2019), https://www.oed.com.
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https://www.dictionary.com/browse/clamp?s=t

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