Ex Parte Lee et al

Board of Patent Appeals and Interferences

Oct 15, 2009

10728850 (B.P.A.I. Oct. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte HYUNG-BOK LEE and BYOUNG-HYUN KANG
_____________

Appeal 2009-005219
Application 10/728,850
Technology Center 2800
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Decided: October 15, 2009
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Before JOHN C. MARTIN, JOSEPH F. RUGGIERO, and ROBERT E.
NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005219
Application 10/728,850

This is a decision on appeal under 35 U.S.C. § 6(b) of the rejection of
claims 1 through 11, 13 through 17, 19, and 20.
We affirm-in-part.
INVENTION
The invention is directed to a battery unit with two or more cells
interconnected together and a single safety circuit board for all of the cells.
See page 1 of Appellants’ Specification. Claim 1 is reproduced below:
1. A pouch-type secondary battery unit, comprising:
a first secondary battery cell comprising a first secondary
battery body and a first case, the first secondary battery body being
disposed inside the first case, the first secondary battery cell further
comprising a first positive electrode terminal and a first negative
electrode terminal perforating out from said first case;
a second secondary battery cell comprising a second secondary
battery body and a second case, the second secondary battery body
being disposed within the second case, the second secondary battery
cell further comprising a second positive electrode terminal and a
second negative electrode terminal perforating out from said second
case; and
a safety circuit board disposed in an external void within said
battery unit, said external void being defined as being in between the
first and second secondary battery cells, the safety circuit being
electrically connected to the first and second positive electrode
terminals and to the first and second negative electrode terminals.

REFERENCE
Nortoft US 6,773,848 B1 Aug. 10, 2004

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REJECTION AT ISSUE
The Examiner has rejected claims 1 through 11, 13 through 17, 19,
and 20 under 35 U.S.C. § 102(e) as being anticipated by Nortoft. The
Examiner’s rejection is on pages 3 through 7 of the Answer.1
ISSUES
Claims 1 and 4
Appellants argue on pages 17 and 18 of the Brief2 and pages 13
through 15 of the Reply Brief that the Examiner’s rejection of claim 1 is in
error. Appellants’ contentions directed to the rejection of claim 1 present us
with the issue: have Appellants shown that the Examiner erred in finding
that Nortoft teaches an external void between a first and second battery cell
and that a circuit board is disposed within the external void?

Claim 2
Appellants argue on pages 19 and 20 of the Brief and pages 15
through 17 of the Reply Brief that the Examiner’s rejection of claim 2 is in
error. Appellants’ contentions directed to the rejection of claim 2 present us
with the issue: have Appellants shown that the Examiner erred in finding
that Nortoft teaches a battery case body and case cover?

Claim 3
Appellants argue on pages 20 and 21 of the Brief and pages 17
through 18 of the Reply Brief that the Examiner’s rejection of claim 3 is in

1 Throughout the opinion we refer to the Answer mailed January 28, 2008.
2 Throughout the opinion we refer to the Brief dated October 4, 2007, and
Reply Brief dated March 26, 2008.
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error. Appellants’ contentions directed to the rejection of claim 3 present us
with the issue: have Appellants shown that the Examiner erred in finding
that Nortoft teaches a battery case body with a flanged portion?

Claim 5
Appellants argue on pages 21 and 22 of the Brief and pages 18
through 19 of the Reply Brief that the Examiner’s rejection of claim 5 is in
error. Appellants’ contentions directed to the rejection of claim 5 present us
with the issue: have Appellants shown that the Examiner erred in finding
that Nortoft teaches batteries with helically wound positive and negative
electrode plates?

Claims 6 through 11, and 13 through 16
Appellants argue on pages 22 through 24 of the Brief, and pages 19
through 22 of the Reply Brief that the Examiner’s rejection of independent
claim 6 is in error. Appellants, on pages 24 and 25 of the Brief, present
similar arguments directed to the rejection of independent claim 10.
Appellants’ contentions directed to the rejection of independent claims 6 and
10 present us with the issue: have Appellants shown that the Examiner erred
in finding that Nortoft teaches that the battery case body has a plurality of
spaces with a battery cell disposed in each of the spaces?

Claims 17, 19, and 20
Appellants argue on pages 25 through 26 of the Brief and page 24 of
the Reply Brief that the Examiner’s rejection of claim 17 is in error.
Appellants’ contentions directed to the rejection of claim 17 present us with
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the same issue as discussed with respect to claim 10 and the additional issue:
have Appellants shown that the Examiner erred in finding that Nortoft
teaches that the circuit board is disposed in such a way as to not add to the
size of the battery unit?

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Appl.
Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).

FINDINGS OF FACT
Nortoft
1. Nortoft teaches a battery unit made up of several cells and a printed
circuit board. Abstract.
2. Nortoft teaches that lithium-ion batteries can be formed of “flattened
‘jelly-rolls’ of interleaved electrodes and electrolyte, the thus formed
electrical cell being packaged in a flexible pack.” Col. 1, ll. 12-15.
3. When a number of cells are connected in series, the electric
components are packaged with the cell to provide voltage
equalization during charging. Col. 1, ll. 49-60.
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4. Nortoft teaches an arrangement where the cells and circuit board are
connected and the assembly is folded to provide protection of the
circuit board. Col. 3, ll. 8-15, see, e.g., Figure 2b, circuit board item
5 and cell items 1 and 1’.
5. As is seen in Figures 1b and 2b the packaging of the battery is
tapered on one side, the side where the terminals exit the packaging.
The electrical components are shown as item 4. The taper is
described as “creating a recess between adjacent folded cells into
which the electrical components can be positioned.” Further, the
advantage of this arrangement is that “the space taken up by the cell
pair is not increased to any significant degree.” Col. 4, ll. 22-25, 40-
51.
6. In the embodiment of Figure 2b there is a circuit board between the
two batteries to which electrical components are connected. As is
seen in Figure 2b the electrical components in this embodiment are
mounted on the circuit board such that they are in the space created
by the tapered ends of the battery cells. Col. 5, ll. 32-40.
7. The flexible packaging around the wound cells is described as being
made by folding material around the cells and sealing the edges.
Col. 8, ll. 23-31.
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8. In one embodiment, the cells are welded or soldered to the circuit
board. In another embodiment, the packaging around the cells
includes a flap, item 14, which extends beyond the seal of the
battery package. This flap is shown in figure 6a. The purpose of the
flap is to provide a mechanical connection of the battery to the
printed circuit board using a sealing material. Col. 5, ll. 14-16, col.
8, ll. 41-50.

ANALYSIS
Claims 1 and 4.
Appellants have not persuaded us that the Examiner erred in finding
that Nortoft teaches an external void between a first and second battery cell
and that a circuit board is disposed within the external void. Claim 1 recites
a safety circuit disposed in an external void, where “said external void being
defined as being in between the first and second secondary battery cells.”
Thus, claim 1 defines the external void as being between the battery cells,
claim 1 does not however specify that the void is created when the cells are
touching. Thus, the scope of the claim includes that the cells may be spaced
apart and the space between the cells is a void between the cells which is
external to the cells. Further, the claim does not identify that the entire
circuit board is disposed in the external void, thus the scope of the claim is
not limited to the entire circuit board being within the external void.
Appellants’ arguments directed to the term “disposed” rely upon a dictionary
definition of the term “dispose.” Brief 18. We note that the definition, to
put in a particular place, does not mean that the article put in the place
occupies only that space.
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Appellants’ arguments in the Brief assert that Nortoft’s arrangement
of the circuit board being sandwiched between the two batteries is different
than being disposed between the two batteries. Brief 17 and 18. We are not
persuaded by Appellants’ arguments as the claim does not bear out such a
distinction. As discussed above, the claim does not preclude the space
between spaced apart batteries from being the claimed external void, thus,
the circuit board sandwiched between the batteries is in the external void.
Further, even if the limitation external void were construed to be a space that
would be formed between the battery even if the cells were directly
touching, as shown in Appellants Figure 3, we find that Nortoft teaches the
arrangement. As discussed above the claim does not require the entire
circuit board to be in the void. We find that Nortoft teaches an external void
created by the tapered ends of the batteries and that a portion of the circuit
board is in this void. Facts 5 and 6. Accordingly, we sustain the Examiner’s
rejection of claims 1 and 4 as being unpatentable over Nortoft.

Claim 2
Appellants have not persuaded us that the Examiner erred in finding
that Nortoft teaches a battery case body and case cover. Claim 2 recites a
case body for accommodating a battery and a case cover coupled to the body
to seal the battery body. Appellants assert that the flexible packages can be
deemed equivalent to the claimed case body but not the case cover. Brief
19. We are not persuaded by Appellants’ arguments. The Examiner has
found, on page 9 of the Answer, that the flexible package is the equivalent to
the case and cover. We concur with the Examiner’s findings. The claim
identifies that the case has a space to hold the battery and a cover to seal the
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battery. We concur with the Examiner’s finding. We consider the portion of
the flexible package which covers one side (top) of the battery to be the
claimed case body, and the portion which covers the other side (bottom) to
be the claimed case cover. Nortoft teaches that the flexible package is large
enough to cover the batteries (thus, there is space to accommodate the
battery) and the two sides of the flexible package are sealed around the
battery to seal the battery in the package. Fact 7. Accordingly, we sustain
the Examiner’s rejection claim 2 as being anticipated by Nortoft.

Claim 3
Appellants have not persuaded us that the Examiner erred in finding
that Nortoft teaches a battery case body with a flanged portion. Claim 3
recites that the terminals of the battery perforate the case at the flanged
portion of the body. Appellants assert that a flange is “[a] protruding rim,
edge, rib, or collar used to strengthen an object, hold it in place, or attach it
to another object.” Brief 20-21. Appellants argue that Nortoft teaches that
there is a rim on the battery body of Nortoft, but since Nortoft’s body is
flexible it is not used to strengthen the case or is used to hold in place or
attach the battery to another object. Brief 21. We disagree with Appellants’
characterization of Nortoft. Specifically, Nortoft teaches that the side of the
battery case which has the terminals protruding also has a flap item 14 which
is used to attach the battery to the circuit board. Fact 8. Thus, we find that
the battery case has a flange item 14, which is used to hold it in place and
attach it to another object. Accordingly, we sustain the Examiner’s rejection
of claim 3 as being anticipated by Nortoft.

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Claim 5
Appellants have not persuaded us that the Examiner erred in finding
that Nortoft teaches batteries with helically wound positive and negative
electrode plates. Claim 5 recites that the batteries are helically wound
positive and negative electrode plates. Appellants’ Specification on page 8
describes a battery cell made by “helically winding strip-shaped positive and
negative electrode plates, as illustrated in FIG 2.” Spec. 8: 3-4. We note that
Appellants’ Figure 2 depicts electrodes that have been wrapped around each
other in an arrangement that looks like a flattened or squashed roll.
Appellants argue that Nortoft’s Figures 4e and 5d do not depict a helically
wound positive and negative batteries. Brief 22. While we concur that
Figures 4e and 5d do not depict that the electrodes are helically wound, we
nonetheless find that Nortoft teaches that the battery cells are helically
wound. Nortoft teaches that the Lithium-ion battery cells in the flexible
cases, such as are depicted in Figures 4e and 5d, can be formed by flattened
rolls of interleaved electrodes. Fact 2. Given Appellants’ description of
what constitutes a helically wound electrode, we consider the flattened rolls
of interleaved electrodes of Nortoft to meet the claimed helically wound
electrodes of claim 6. Accordingly, Appellants’ arguments have not
persuaded us that the Examiner erred in finding that Nortoft teaches the
limitation of helically wound electrodes. Accordingly we sustain the
Examiner’s rejection of claim 6 as being anticipated by Nortoft.

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Claims 6 through 11 and 13 through 16
Appellants have persuaded us that the Examiner erred in finding that
Nortoft teaches that the battery case body has a plurality of spaces with a
battery cell disposed in each of the spaces. Independent claim 6 recites that
the battery case comprises a plurality of spaces and that there are a plurality
of batteries disposed in corresponding on of the spaces. Independent claim
10 recites a similar limitation. Thus, the scope of these claims includes that
there is one case with a plurality of batteries.
In rejecting these claims the Examiner finds that Figure 3a and the
accompanying description in column 3 of Nortoft teach a case with plural
spaces. Answer 5. We disagree with the Examiner’s findings. As discussed
supra with respect to claim 2 we concur with the Examiner’s finding that the
flexible package is the equivalent to the claimed case and cover. However,
we do not find that the embodiment of Figure 3a or any disclosure of Nortoft
teaches that the flexible package contains more than one battery. Nortoft
teaches one battery is in each package and that the packages are soldered,
welded or mechanically attached with a flap and sealing material to the
circuit board. Fact 8. It is through attaching the batteries to the circuit board
that the arrangement of Figure 3a is made. Thus, the plurality of batteries in
Figure 3a are not in the same case but rather in three separate cases that are
attached to a circuit board between them. As such, we do not find that the
Examiner has shown that all of the limitations of independent claims 6 and
10 are taught by Nortoft. Claims 7 through 9, 11, and 13 through 16 are
dependent upon one of claims 6 and 10. Accordingly, we will not sustain
the Examiner’s rejection of claims 6 through 16 as anticipated by Nortoft.

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Claims 17, 19, and 20
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of independent claim 17. Appellants argue that the
rejection of claim 17 is erroneous for the reasons discussed with respect to
claim 10. Brief 26. We note however, that claim 17 does not recite a
limitation directed to the case having plural spaces for plural batteries as
discussed above with respect to claim 10. Thus, claims 10 and 17 are of
different scope and the error we noted above in the rejection of claim 10 is
not present in the rejection of claim 17.
Appellants further assert that claim 17 recites that “said safety device
being disposed in such a way as to not add to the size of the battery unit.”
Thus, Appellants conclude that the claim is not met by Nortoft’s
arrangement where the circuit board is sandwiched between the battery cells
as Nortoft’s arrangement the thickness is increased. Brief 26. We are not
persuaded by this argument. Claim 17 recites that the safety circuit is
disposed in a way that does not add to the size of the battery unit, however
the claim does not provide a comparison as to what the increased size is in
comparison to. Appellants’ arguments imply that the limitation precludes
increase in thickness of battery unit to be thicker than that of the
combination of the battery cells. However, we do not find that the claim is
so limited; in the absence of a basis of comparison, any arrangement that
will not increase the size meets the claim. As discussed above with respect
to claim 1, we find ample evidence to support the Examiner’s finding that
Nortoft teaches a circuit board disposed in an external void. Further, Nortoft
teaches that the components of the circuit board are disposed between the
cells and the taper of the cells so that the space of the cell pair is not
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increased. Fact 5. When viewing Figures 1a, 2b and 3b it is apparent that
this is referring to the circuit board and elements not extending beyond the
flanges of the battery cells. Thus, we find that the arrangement of Nortoft is
such that it will not add to the size of the battery unit as claimed, and the fact
that the battery unit is thicker than if the circuit board were not mounted
between the cells is not pertinent as the claim is not so limited. Thus,
Appellants’ arguments have not persuaded us or error in the Examiner’s
rejection of claim 17. Claims 19 and 20 are dependent upon claim 17.
Accordingly, we sustain the Examiner’s rejection of claims 17, 19 and 20 as
anticipated by Nortoft.

CONCLUSION
Appellants have not persuaded us of error in the Examiner’s rejections
of claims 1 through 5, 17, 19, and 20. However, Appellants’ arguments
have persuaded us of error in the Examiner’s rejections of claims 6 through
11 and 13 through 16.

ORDER
The decision of the Examiner to reject claims 1 through 11, 13
through 17, 19, and 20 is affirmed-in-part.

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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

ELD

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