Ex Parte Chan et al

Patent Trial and Appeal Board

Jun 30, 2017

12455025 (P.T.A.B. Jun. 30, 2017)

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.
12/455,025 05/26/2009 Alistair K. Chan 103069-0128 4936
103600 7590 07/05/2017
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
SNELTING, ERIN LYNN
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
07/05/2017 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):
ipdocketing @ foley. com
ISFDocketInbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALISTAIR K. CHAN, RODERICK A. HYDE,
JORDIN T. KARE, and LOWELL L. WOOD JR.
Appeal 2016-006647
Application 12/455,025
Technology Center 1700
Before PETER F. KRATZ, ROMULO H. DELMENDO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 55, 59, 99, and 100. We have
jurisdiction pursuant to 35 U.S.C. § 6.
We affirm.
Appeal 2016-006647
Application 12/455,025
Appellants’ claimed invention is directed to a method of thermal
control of an electrical energy generation device or an electrical energy
storage device (App. Br. 12).
Claim 55, the sole independent claim on appeal, is illustrative and
reproduced below:
55. A method of thermal control of an electrochemical
energy generation device or an electrical energy storage device,
comprising:
providing a housing for an electrochemical energy
generation device or an electrical energy storage device, the
housing having an external surface and an internal surface;
providing a component within the housing, the
component being configured to generate electrical energy and
configured to be charged by electrical current;
forming a plurality of microchannels in a portion of the
component, the plurality of microchannels at least partially
formed of a high thermal conductivity material;
providing a thermal sink coupled to the plurality of
microchannels, the thermal sink being configured to transfer
heat energy to or from the plurality of microchannels; and
flowing a fluid through the plurality of microchannels.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Yahnker et al. US 2005/0202310 A1 Sept. 15,2005
(“Yahnker”)
Hendricks et al. US 7,448,441 B2 Nov. 11, 2008
(“Hendricks”)
The Examiner maintains the following grounds of rejection:
Claims 55, 59, 99, and 100 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yahnker in view of Hendricks.
2
Appeal 2016-006647
Application 12/455,025
Claims 55 and 59 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1,3,
and 5 of U.S. Patent No. 8,080,326 in view of Yahnker and Hendricks.
Appellants do not traverse this rejection. Consequently, we summarily
affirm the Examiner’s nonstatutory obviousness-type double patenting
rejection.
Appellants’ arguments expose no reversible error in the Examiner’s
§ 103(a) rejection over Yahnker in view of Hendricks. Accordingly, we
affirm the rejection. Our reasoning follows.
Appellants argue the rejected claims together as a group. We select
claim 55 as the representative claim on which we decide this appeal as to
Examiner’s obviousness rejection under 35 U.S.C. § 103(a).
Appellants do not dispute (1) the Examiner’s reliance on Hendricks
for certain claimed features and (2) the Examiner’s proposed modification of
Yahnker to provide for microchannels at least partially formed of a high
thermal conductivity material as an obvious modification to one of ordinary
skill in the art of the channels/passages (40, Fig. 2) employed by Yahnker,
based on the combined teachings of the applied references (App. Br. 11; see
Final Act. 2—5).
Rather, Appellants contend that the Examiner errs by unreasonably
interpreting: (1) the “component” having microchannels of Appellants’
claim 55 as corresponding “to the assembly of battery cells 9 and plates 38
of Yahnker” having channels 40 (as modified by Hendricks); and (2) the
“thermal sink” coupled to the channels of claim 55 as corresponding to the
heat exchanger 50 and plate(s) 38 of Yahnker (Final Act. 8; Ans. 7; App. Br.
8-10).
3
Appeal 2016-006647
Application 12/455,025
Appellants argue that “there is no reasonable interpretation of a
‘component’ that is ‘configured to generate electrical energy and configured
to be charged by electrical current’ that includes the metal plates 38 [of
Yahnker], which do not perform either of these functions” (App. Br. 10).
Thus, Appellants maintain that the metal plates of Yahnker can be
interpreted, at most, to read onto a thermal sink.
Consequently, Appellants maintain that after the plates 38 and heat
exchanger 50 of Yahnker are appropriately interpreted as corresponding to
the thermal sink, the metal plates of Yahnker cannot be relied upon as a
portion of the claimed component because the Examiner cannot rely on the
same item (metal plates) of Yahnker for teaching/suggesting both of these
separate elements, as required by claim 55 (App. Br. 10; Reply Br. 3—7).
The difficulty with Appellants’ claim construction argument is that
representative claim 55 is not limited to a “component” that is only a single
discrete component that can be capable of only the function as specified
and/or that otherwise excludes the component from including other materials
or elements, as well as other functions from being embraced thereby. In this
regard, representative claim 55 includes open “comprising” language and the
Specification states that claim recitations employing “indefinite articles such
as ‘a’ or ‘an’ (e.g., ‘a’ and/or ‘an’ should typically be interpreted to mean ‘at
least one’ or ‘one or more’); the same holds true for the use of definite
articles used to introduce claim recitations” (Spec. 190).1
Consequently, Appellants’ argument does not persuade us that the
Examiner erred in construing the argued “component” limitation of claim 55
1 Also, see Spec. Tfl[ 18, 87—89
4
Appeal 2016-006647
Application 12/455,025
as embracing the assembly of battery cells 9 and plates 38 of Yahnker, as
modified by Hendricks, as proposed by the Examiner (Final Act. 3, 8; Ans.
2-3, 7; Yahnker H 58, 59, Fig. 2).
Appellants’ argument that the Examiner is improperly relying on the
plates 38 of Yahnker for two separate elements (the “component” and the
“thermal sink”) of claim 55 fails to pass muster in establishing harmful error
in the stated rejection because the Examiner additionally relies on heat
exchanger 50 in Figure 2 of Yahnker for the “thermal sink” feature (Final
Act. 3; Ans. 3, 6—7). Appellants have not articulated why they believe the
heat exchanger 50 (Fig. 2) of Yahnker, as also relied upon by the Examiner,
does not satisfy the argued separate claim requirement for a “thermal sink”
that is coupled, as required by claim 55, to microchannels based on the
combined teachings of Yahnker and Hendricks.
It follows that we shall sustain the Examiner’s obviousness rejection
over Yahnker and Hendricks.
DECISION
The Examiner’s decision to reject the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
5