Ex Parte DubeDownload PDFPatent Trial and Appeal BoardSep 15, 201612688566 (P.T.A.B. Sep. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/688,566 01115/2010 25235 7590 09/19/2016 HOGAN LOVELLS US LLP - Colorado Springs TWO NORTH CASCADE A VENUE SUITE 1300 COLORADO SPRINGS, CO 80903 FIRST NAMED INVENTOR William P. Dube 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 ATTORNEY DOCKET NO. CONFIRMATION NO. BEV002 3877 EXAMINER MARKS, JACOB B ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 09/19/2016 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): patentcoloradospring@hoganlovells.com HLUSDocketing@hoganlovells.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM P. DUBE Appeal2014-008319 Application 12/688,566 Technology Center 1700 Before JAMES C. HOUSEL, GEORGE C. BEST, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL 1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner's decision finally rejecting claims 1, 3, 4, and 13-15 under 35 U.S.C. § 103(a) as unpatentable over Jeon3 in view ofMilgate,4 and claims 5 1 Our decision refers to the Specification (Spec.) filed January 15, 2010, Appellant's Appeal Brief (Br.) filed December 19, 2013, and the Examiner's Answer (Ans.) delivered July 10, 2014. 2 According to Appellant, the real party in interest is Boulder Electric Vehicle. Br. 1. 3 Jeon et al., US 2007/0026304 Al, published February 1, 2007. 4 Milgate, Jr. et al., US 6,669,826 Bl, issued December 30, 2003. Appeal2014-008319 Application 12/688,566 and 16 further adding Chiang. 5 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE The invention relates to a system and method for housing one or more pouch battery cells. Spec. i-f 9; claims 1 and 13. Appellant discloses that pouch battery cells expand and contract during cell charge/ discharge cycles. Spec. i-f 6. However, in order to optimize battery cell performance and obtain maximum power density and cycle life, Appellant discloses that the electrodes within the pouches must be constrained under constant pressure during cycling. Id. Appellant discloses a system that maintains a constant amount of compression on the battery cell during expansion and contraction. Id. at i-f 9. The system includes a battery cell container interposed between a pair of end plates, wherein the end plates are coupled together by a plurality of connecting devices each including an elastic deformation device. Id. at i-fi-1 9 and 10. The elastic deformation devices hold pouch battery cells housed within the container at a constant amount of pressure during cell expansion and contraction, which according to Appellant, optimizes the battery cell performance. Id. Because the elastic deformation devices include a predefined limit, Appellant discloses that the connecting device "plastically deforms" in response to further battery cell expansion, thereby ensuring that the amount of pressure on the battery cells remains constant during subsequent expansion and contraction cycles. Id. at i-f 11. 5 US 2009/0311597 Al, published December 17, 2009. 2 Appeal2014-008319 Application 12/688,566 Claim 1, reproduced from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. The limitation at issue is italicized. 1. A system for housing a plurality of pouch cell batteries, the system comprising: a battery cell container including at least one cell compartment interposed between a first end plate and a second end plate; a pouch battery cell housed within the at least one cell compartment wherein the pouch battery cell has one or more cell plates aligned with the first end plate and second end plate and wherein the first end plate is connected to the second end plate by a plurality of tension rod assemblies, each having at least one surrounding elastic deformation device medial of a distal end thereof operable to elastically deform to a prescribed limit so as to place the one or more cell plates of the pouch battery cell in a constant amount of compression, and wherein each of the plurality of tension rod assemblies includes a tension rod dimension so as to plastically deform upon the elastic deformation device elasticanv deforming to the prescribed limit. Claim 13, the remaining independent claim on appeal, similarly recites the limitation at issue. Appellant contends that the applied prior art fails to disclose or suggest tension rods with a dimension so as to plastically deform upon the elastic deformation device elastically deforming to the prescribed limit. Br. 7-9. Appellant argues that Milgate' s rods have an essentially uniform cross section and that Milgate teaches nothing about their deformation. Id. at 8. Appellant also argues that the Examiner has confused the elastic deformation devices with the tension rod assemblies, and in particular, the 3 Appeal2014-008319 Application 12/688,566 tension rod dimension designed for plastic deformation upon the elastic deformation devices reaching their prescribed limit. Id. In response, the Examiner "take[s] the position that the 'tension rod dimension' is only referring to a direction and not to a tension rod itself." Ans. 8. The Examiner finds that the plastic deformation limitation would be met by any part of the tension rod assembly undergoing plastic deformation after the elastic deformation of the elastic deformation device. Id. The Examiner further finds that "[a]fter enough expansion, some part of the tension rod assembly would have to enter a plastic deformation regime after elastic deformation occurs because plastic deformation occurs in any material that is beyond the point of plastic deformation as understood by one of ordinary skill in the art." Id. The Examiner's position is tantamount to an inherency finding. The problem with the Examiner's position is that the Examiner's interpretation of the limitation at issue is both inconsistent with Appellant's description of this feature in the Specification and lacks support in the record. "'Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. [Citations omitted.] If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient."' In re Oelrich, 666 F.2d 578, 581(CCPA1981) (quotingHansgirgv. Kemmer, 102 F.2d 212, 214 (CCPA 1939)) (emphasis and bracketed material in original). As Appellant discloses, the connecting devices or rods are configured to plastically deform in order to maintain a constant pressure on the 4 Appeal2014-008319 Application 12/688,566 electrodes throughout the life of the pouch battery cells. Spec. i1 44. Because a center portion of the rods have a smaller cross section, stress applied to the rods is larger in these center portions. Id. As the stress rises (due to the elastic deformation devices reaching their elastic limit), the rods will plastically deform while maintaining a constant amount of force on the battery cells. Id. at i1 45. However, the Examiner fails to direct our attention to any disclosure in the applied prior art in support of the finding that the Jeon and Milgate combination meets the limitation at issue, nor do we find any. Further, the Examiner fails to explain how the rods of either Jeon or Milgate include a dimension that will function to plastically deform upon the elastic deformation device elastically deforming to the prescribed limit. While it may be true that any rod may experience inelastic or plastic deformation under excessive tension, we find no support in this record that the rods of the prior art would plastically deform upon the elastic deformation device elastically deforming to the prescribed limit. As such, the Examiner has not established that the rods of either Jeon or Milgate have a dimension which would inherently or necessarily plastically deform in the manner here disclosed and claimed. Oelrich, 666 F .2d at 581. We, therefore, will not sustain the Examiner's § 103 rejection over Jeon and Milgate. As the Examiner does not rely on Chiang to remedy the above-discussed deficiency in the Jeon and Milgate combination, we likewise will not sustain the Examiner's§ 103 rejection over the Jeon, Milgate and Chiang combination. 5 Appeal2014-008319 Application 12/688,566 DECISION Upon consideration of the record, and for the reasons given above and in the Appeal Brief, the decision of the Examiner rejecting claims 1, 3-5, and 13-16 under 35 U.S.C. § 103(a) as unpatentable over Jeon and Milgate, alone or further in view of Chiang, is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation