Ex Parte Hermann

Patent Trial and Appeal Board

Sep 20, 2017

12942501 (P.T.A.B. Sep. 20, 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.
12/942,501 11/09/2010 Weston A. Hermann 2010US0011 /P0500-1NU S 1810
113241 7590 09/22/2017
Garlick & Markison (TSLA)
106 E. 6th Street, Suite 900
Austin, TX 78701
EXAMINER
LAIOS, MARIA J
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
09/22/2017 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):
mmurdock@texaspatents.com
bpierotti @ texaspatents .com
patentdocket @ tesla.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WESTON A. HERMANN
Appeal 2016-006698
Application 12/942,501
Technology Center 1700
Before JEFFREY T. SMITH, JULIA HEANEY, and BRIAN RANGE,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals pursuant to 35 U.S.C. § 134(a) from the
Examiner’s Non-Final Rejection of claims 1—10. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
1 This Decision refers to the Specification filed Nov. 9, 2010 (“Spec.”),
Non-Final Action dated Apr. 28, 2015 (“Non-Final Act.”), Appeal Brief
dated Sept. 28, 2015 (“App. Br.”), Examiner’s Answer dated Apr. 21, 2016
(“Ans.”), and Reply Brief dated June 21, 2016 (“Reply Br.”).
2 Appellant identifies the real party in interest as Tesla Motors, Inc. App.
Br. 2.
Appeal 2016-006698
Application 12/942,501
BACKGROUND
The subject matter on appeal is a perforation-enabled battery
enclosure system for a vehicle battery pack. App. Br. 2. The system
provides a way to add coolant agent to a high energy density battery
enclosure during an internal thermal event, particularly in situations in which
a special fill port is unavailable. Spec. 11—12.
Claim 1, reproduced below with italics indicating limitations further
discussed in this Decision, is illustrative of the claims on appeal:
1. A perforation-enabled battery enclosure system for a
vehicle battery pack, the system comprising:
a thermal-control-agent-retaining enclosure of a battery
pack including a plurality of interconnected batteries; and
first means for allowing controlled breaching that defines
destructive puncturing of the enclosure from outside, the
puncturing of the enclosure defining a second means for
permitting an ingress of a sufficient amount of a thermal-control
agent into said enclosure through said second means to terminate
a runaway thermal event in the battery pack, the first means
further permitting extension of a perforation tool, through the
second means into an interior of the enclosure, such that the
perforation tool is separated from the battery pack and conductors.
App. Br. 9 (Claims Appx.)
THE REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1—10 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite;
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Application 12/942,501
2. Claims 1—5 are rejected under 35 U.S.C. § 102(b) as anticipated by
Wells;3
3. Claims 1—3 are rejected under 35 U.S.C. § 102(b) as anticipated by
Takagi ’647;4
4. Claims 1—5 are rejected under 35 U.S.C. § 102(b) as anticipated by
Takagi ’ 121 ;5
5. Claims 6—10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Wells;
6. Claims 1—6 and 9-10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Zhou6 and Wells; and
7. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Zhou, Wells, and Kurosawa.7
DISCUSSION
Indefiniteness Rejection
The Examiner finds claims 1—10 indefinite because it is unclear
whether the claim elements “first means for” and “second means for” invoke
35 U.S.C. § 112, sixth paragraph, “because the terms ‘first’ and ‘second’
identify a structure.” Non-Final Act. 4—5. The Examiner does not explain
how the terms “first” and “second” relate to a structure, nor respond to
Appellant’s argument that the terms distinguish between different means
3 Wells US 2,516,084, issued July 18, 1950 (“Wells”).
4 Takagi US 2009/0035647 Al, published Feb. 5, 2009 (“Takagi ’647”).
5 Takagi US 2008/0318121 Al, published Dec. 25, 2008 (“Takagi ’121”).
6 Zhou US 2010/0291419 Al, published Nov. 18, 2010.
7 Kurosawa JP 2009238654A, published Oct. 15, 2009.
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Application 12/942,501
recited in the claims, consistent with common patent-law convention to
distinguish between repeated instances of an element or limitation. App. Br.
4, citing 3MInnovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365,
1372. Because of the lack of explanation of how “first” and “second” would
be unclear to a person of ordinary skill in the art, and the Examiner’s failure
to respond to arguments in the Appeal Brief, we cannot sustain the
indefiniteness rejection.
Anticipation Rejections
The Examiner interprets the “first means” and “second means” terms
pursuant to 35 U.S.C. § 112, sixth paragraph, as means-plus-fimction
limitations. “The first step in construing a means-plus-fimction claim
limitation is to define the particular function of the claim limitation.”
Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004).
“The next step in construing a means-plus-fimction claim limitation is to
look to the specification and identify the corresponding structure for that
function.” Id. at 1334. The broadest reasonable interpretation that an
examiner may give means-plus-function language is that statutorily
mandated in paragraph six. In re Donaldson Co., 16 F.3d 1189, 1194 (Fed.
Cir. 1994).
The Examiner defines the claimed function of the “first means” as
“allowing for controlled breaching that defines destructive puncturing of the
enclosure from the outside” (Ans. 13) and identifies the corresponding
structure for that function as a “perforation-capable region with a
mechanically weakened wall” (Non-Final Act. 3) and “a mechanically
weakened wall capable of being punctured.” Ans. 10. The Examiner
determines that the “perforation-enabled battery enclosure system” recited in
independent claims 1 and 6 refers to an intended use of the enclosure
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Application 12/942,501
system, having a “perforation-enabled” state (State A) comprising the “first
means” and a “perforated state” (State B) that the system enters after the
“first means” is punctured. Non-Final Act. 5—6.
Appellant argues that “the rejection dismissed significant claim
language as mere ‘intended use’” and “the Examiner errs in reading the
‘second means’ out of all pending claims.” App. Br. 5. Appellant further
argues that each of the references does not disclose the “first means.” Id. at
6—7. For the reasons explained below, Appellant’s arguments with regard to
the “first means” are persuasive of reversible error, and therefore, we cannot
sustain the anticipation rejections over Wells, Takagi ’647, and Takagi ’121.
With regard to Wells, Appellant argues that Wells does not teach the
identical function as the claimed “first means” and also is lacking the
corresponding structure. App. Br. 6. Wells discloses a storage battery
enclosure comprising a filling well opening 18 having a mbber sealing disk
19, in place of a filler plug, to permit easy addition of water or electrolyte to
the battery without having to screw and unscrew a plug. Wells 1:5—23.
Insertion of a needle or equivalent instrument of very small diameter
punctures the disk so that the stem of a filling instrument can be inserted by
stretching the opening in the disk, then “closing immediately after the
instrument is withdrawn.” Wells 1:20—23, 2:30-34, 3:30-32. Wells further
describes the opening in the rubber disk as “self-closing” to allow for
repeated insertion and withdrawal of the filling instrument, i.e. “the rubber
disk can be used indefinitely without any danger of the opening or slit not
closing after the filling instrument is withdrawn.” Wells 3:19—22. Appellant
thus argues that because Wells’ rubber disk can be used indefinitely without
risk of not closing after the filling instrument is withdrawn, it does not teach
the identical function as the claimed “first means.” App. Br. 6. In other
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Application 12/942,501
words, breaching the rubber disk with a filling instrument does not “define
destructive puncturing of the enclosure from the outside” as recited in the
claimed function. The Examiner responds by noting that Wells’ rubber disk
19 corresponds to the mechanically weakened wall described in Appellant’s
Specification, and Wells’ filling well opening 18 corresponds to the
perforation region. Ans. 11. The Examiner further explains that “[t]here
exists a structure in Wells that can be [selectively] punctured” and rejects
Appellant’s argument that Wells’ rubber disk is not destructively punctured
because “the structure is capable of being destructively punctured.” Ans. 13.
We do not find the Examiner’s explanation persuasive because Wells
expressly states that its rubber disk is self-closing and designed for reuse
indefinitely, and therefore is not destructively punctured. Accordingly, we
reverse the anticipation rejection over Wells.
With regard to Takagi ’647, Appellant argues that the reference does
not teach the identical function as the claimed “first means” because it
describes “that the gas discharge port should be ruptured from within by the
increasing gas pressure.” App. Br. 6. Thus, Appellant argues, Takagi ’647
does not perform the claimed function of “destructive puncturing of the
enclosure from outside.” Id. (emphasis added). Appellant’s argument is
supported by Takagi ’647, which describes a battery housing case having a
gas discharge port 14a formed in the cover to release gas produced in the
battery to the outside, and a pressure release container covering the
discharge port to prevent outflow of a coolant when gas is discharged.
Takagi ’647 ^fl[ 16—17. A solidifying agent solidifies coolant flowing into
the pressure release container when the gas is discharged through the
discharge port. Id. The pressure release container may be an elastic
container which expands when gas or coolant is discharged (Fig. 3), or a
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Application 12/942,501
“robust container” (Fig. 4). Appellant further notes that Takagi ’647’s
discharge port is not capable of breaching from outside the enclosure
because the pressure release container blocks access to the discharge port
from the outside. App. Br. 6. The Examiner responds by noting that Takagi
’647’s rupture-type pressure release valve 41 within its housing having
discharge port 14a corresponds to the perforation region described in
Appellant’s Specification. Ans. 13. The Examiner further explains that this
structure of Takagi ’647 is capable of “allowing controlled breaching of the
enclosure from the outside” but the Examiner does not respond to
Appellant’s argument that Takagi ’647’s enclosure blocks access to the
discharge port from the outside. Id. Because the Examiner does not address
this aspect of Takagi ’647’s structure, and does not explain how such a
structure allows “puncturing of the enclosure from outside” as recited in
claim 1, we reverse the anticipation rejection over Takagi ’647.
Takagi ’121, similarly to Takagi ’647, discloses a pressure-release
valve through which gas in a battery casing is released to the outside.
Takagi ’121114. Appellant argues that Takagi ’121 does not perform the
claimed function of the “first means” because cap 16 covers coolant inlet
13b, and the embodiment of Fig. 4B shows an elastic container 18 connected
to the coolant inlet to contain gas and coolant discharged in the event of a
battery abnormality, which prevents breaching from outside the enclosure,
similarly to Takagi ’647. App. Br. 7, citing Takagi ’121 | 55. Similarly to
the rejection over Takagi ’647, the Examiner does not explain how Takagi
’121 ’s structure allows “puncturing of the enclosure from outside” as recited
in claim 1. Ans. 11—12. Accordingly, Appellant’s argument that Takagi
’121 does not anticipate is persuasive of reversible error.
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Having concluded that none of the references discloses the claimed
“first means,” we need not consider Appellant’s further arguments for
reversal of the anticipation rejections.
Obviousness Rejections
The Examiner’s obviousness determinations are based on the
interpretation of “first means” and findings with regard to Wells, described
above, that do not address how Wells’ rubber disk 19 “defines destructive
puncturing of the enclosure from the outside” even though Wells teaches
that the disk can be used repeatedly for insertion and withdrawal of a filling
instrument. Further, the Examiner does not provide any reasoning to explain
why a person of ordinary skill in the art would have modified Wells in order
to perform the claimed function. “[Rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). Accordingly, we cannot sustain the obviousness rejections.
CONCFUSION
For the reasons set forth above, we reverse the rejections of claims 1—
10.
REVERSED
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