Ex Parte Kubo et al

Patent Trial and Appeal Board

Jun 24, 2016

12495038 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/495,038 0613012009
23911 7590 06/28/2016
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
FIRST NAMED INVENTOR
Kenji Kubo
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.
104165.61753US 2118
EXAMINER
MURALIDAR, RICHARD V
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
edocket@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENJI KUBO, AKIHIKO KUDO, MUTSUMI KIKUCHI, and
GOSUKE SHIBAHARA1
Appeal2015-001121
Application 12/495,038
Technology Center 2800
Before KAREN M. HASTINGS, JEFFREY W. ABRAHAM, and
JULIA HEANEY, Administrative Patent Judges.
ABRAHAM, 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 1-6 and 17. We have jurisdiction
pursuant to 35 U.S.C. § 6(b ). We affirm-in-part.
BACKGROUND
Appellants' claimed invention relates to a battery system for a vehicle
having an electric drive or a general industrial power supply. Spec. i-f 4.
Claim 1 is illustrative, and reproduced below from the Claims
Appendix:
1 According to the Appeal Brief, the real parties in interest are Hitachi, Ltd.
and Hitachi Vehicle Energy, Ltd. App. Br. 1.
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Application 12/495,038
1. A battery system, comprising:
a first battery module that is constituted with a
plurality of serially connected first battery cell groups
each constituted with a plurality of serially connected
battery cells;
a second battery module that is constituted with a
plurality of serially connected second battery cell groups
each constituted with a plurality of serially connected
battery cells;
one power supply line that is connected to one end of
the first battery module;
another power supply line that is connected to the
other end of the second battery module;
a connector that is provided between the first and
second battery modules so as to removably connect the
other end of the first battery module and the one end of
the second battery module in series;
a plurality of first integrated circuits that are provided
corresponding to each of the first battery cell groups so
as to perform processing on each of the first battery cell
groups constituting the first battery module; and
a plurality of second integrated circuits that are
provided corresponding to each of the second battery cell
groups so as to perform processing on each of the second
battery cell groups constituting the second battery
module, wherein:
the first and second integrated circuits each include
transmission terminals for outputting information and
reception terminals for receiving information;
transmission terminals of the first integrated circuits
are respectively connected to reception terminals of
adjacent first integrated circuits so as to form a serially
connected first transmission path; and
transmission terminals of the second integrated
circuits are respectively connected to reception terminals
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Application 12/495,038
of adjacent second integrated circuits so as to form a
serially connected second transmission path,
the battery system further comprising:
a first insulating circuit for performing information
transmission between the reception terminal or the
transmission terminal of the first integrated circuit
provided corresponding to the first battery cell group at
the other end of the first battery module and a control
circuit; and
a second insulating circuit for performing information
transmission between the reception terminal or the
transmission terminal of the second integrated circuit
provided corresponding to the second battery cell group
at one end of the second battery module and the control
circuit.
The Examiner maintains, and Appellants appeal,2 the rejection of
claims 1, 2, 5, and 6 as unpatentable under 35 U.S.C. § 103(a) over Emori3 in
view of Lim;4 and the rejection of claims 3 and 4 as unpatentable under 35
U.S.C. §103(a) over Emori in view of Lim, and further in view of
Miyazaki. 5
OPINION
The Examiner finds that Emori discloses all of the limitations recited
in claims 1, 2, 5, and 6 with the exception of "a connector that removably
connects the first lithium ion battery module with the second lithium ion
2 After filing the Appeal Brief, Appellants cancelled claim 1 7. See Advisory
Action dated Sept. 24, 2013.
3 Emori et al., US 7,511,457 B2, issued Mar. 31, 2009.
4 Lim et al., US 8,111,071 B2, issued Feb. 7, 2012.
5 Miyazaki et al., JP 2003-070179, published Mar. 7, 2003.
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Application 12/495,038
battery module in series." Final Act. 2-7; Ans. 3-13. The Examiner,
however, finds that Lim discloses a connecter between first and second
battery modules that removably connects one end of the first battery module
to one end of the second battery module. Final Act. 7. The Examiner
further finds that Emori and Lim disclose analogous battery management
systems for electric vehicles, and that it would have been obvious to a
person of ordinary skill in the art to incorporate Lim' s connector into
Emori's system in view of Lim's teaching that the connector helps
"guarantee safety for a worker when performing operations for the battery or
replacing the battery." Lim, 3:22-24; Final Act. 7.
The Examiner finds that Emori and Lim likewise disclose all of the
limitations recited in claims 3 and 4, with the exception of the use of lithium
ion cells. Final Act. 7-9. The Examiner finds, however, that Miyazaki
discloses the use of lithium ion cells in a battery management system
analogous to those disclosed in Emori and Lim, and that it would have been
obvious to a person of ordinary skill in the art to incorporate the use of
lithium ion batteries into the combined Emori and Lim system "for the
benefit of having a more advanced battery chemistry and energy density."
Id. at 8.
Appellants argue that Emory and Lim fail to teach or suggest all of the
limitations in claims 1---6. App. Br. 15-18. Specifically, Appellants argue
that Emori teaches that "only the signal lines from the main controller to the
highest-order IC and from the lowest-order IC to the main controller are
insulated. The other signal lines (i.e., signal lines between the ICs) are not
insulated." Id. at 18 (emphasis omitted). Appellants further argue that Lim
does not disclose the idea of signal line insulation. Id.
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Application 12/495,038
Appellants also argue that it would not have been obvious to combine
the teachings of Emori and Lim, because Emori' s system would not function
properly if it included Lim' s safety switch between battery cell groups.
Reply 4. According to Appellants, when the switch is disconnected, "signal
transmission between the ICs is stopped and communication cannot be
achieved." Id.
In response to Appellants' arguments, the Examiner states that "there
are no claim limitations that require the signal lines between the ICs to be
insulated." Ans. 3 (emphasis omitted).
The Examiner bears the initial burden of presenting evidence of a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). To support an obviousness rejection, all claim limitations must
be taught or suggested by the prior art applied. See In re Royka, 490 F .2d
981, 984--85 (CCPA 1974).
Claims 1, 2, and 5 each require insulating circuits for performing
information transmission between a reception or transmission terminal of an
integrated circuit and the control circuit. For these claims, we agree with the
Examiner's statement that there are no claim limitations that require signal
lines between the integrated circuits to be insulated. As a result, we are not
persuaded by Appellants' arguments that the Examiner failed to demonstrate
that Emori and Lim disclose all of the transmission paths and insulating
circuits required in the claims.
Nor are we persuaded by Appellants' arguments that Emori' s system
would not operate as intended if it contained Lim' s removable connector.
Reply 3--4. Appellants' arguments are directed to whether or not Emori is
operable when the switch is disconnected, for example, when a worker is
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performing operations on batteries or replacing a battery. Id.; Lim, 3: 14--28,
Final Act. 7. Appellants, however, do not direct us to evidence adequate to
demonstrate that Emori' s system would not operate as intended when the
switch is connected.
We, therefore, sustain the rejections of claims 1, 2, and 5 based on the
Examiner's findings of fact, conclusions of law, and rebuttals to Appellants'
arguments, as expressed in the Final Action and Answer.
Claims 3, 4, and 6, however, each explicitly require an insulating
circuit for performing information transmission between a reception or
transmission terminal of the first integrated circuit and a reception or
transmission terminal of the second integrated circuit. Thus, unlike claims
1, 2, and 5, and contrary to the Examiner's statement, these claims do
include limitations that require signal lines between the integrated circuits to
be insulated. The Examiner, however, fails to direct us to evidence adequate
to demonstrate that Emori and Lim disclose insulated signal lines between
integrated circuits. 6 Nor does the Examiner demonstrate that Miyazaki cures
this deficiency.
In view of the foregoing, we find that the Examiner has failed to
demonstrate that Emori, Lim, and Miyazaki teach or suggest every limitation
of claims 3, 4, and 6, and, therefore, reverse the Examiner's rejection of
claims 3, 4, and 6 under 35 U.S.C. § 103.
6 Even if the Examiner were correct that the language in these claims
reciting insulating circuits provided for "performing information
transmission" does not "require control ICs to be insulated from each other"
(Ans. 14), the Examiner has still failed to demonstrate adequately that Emori
and Lim teach or suggest an insulating circuit for "performing information
transmission" between two ICs as required by claims 3, 4, and 6.
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CONCLUSION
For the reasons set forth above, we affirm the rejection of claims
1, 2, and 5, and reverse the rejection of claims 3, 4, and 6.
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-IN-PART
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