Ex Parte LI et al

Patent Trial and Appeal Board

Sep 28, 2017

13631220 (P.T.A.B. Sep. 28, 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.
13/631,220 09/28/2012 Feng Li JOCP:0028 2399
75576 7590 09/28/2017
Johnson Controls, Inc.
c/o Fletcher Yoder PC
P.O. Box 692289
Houston, TX 77269
EXAMINER
HASKE, WOJCIECH
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
09/28/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD

____________

Ex parte Feng Li and Xugang Zhang1
____________

Appeal 2016–007092
Application 13/631,220
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
AVELYN M. ROSS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real party in interest as JOHNSON CONTROLS
TECHNOLOGY COMPANY.
Appeal 2016-007092
Application 13/631,220

2
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1–3, 5–7, 11, 15, 25–28, 30–32, and
36–39. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. An electrochemical cell, comprising:
a can;
an electrode assembly comprising an electrode disposed
within the can;
an output terminal that extends from within to outside of
the can; and
a positive temperature coefficient (PTC) material
disposed near the center of the can, wherein the PTC material is
positioned directly in between and in electrical communication
with both the electrode assembly and the output terminal and is
configured to interrupt or reduce electric current passing from
the electrode assembly to the output terminal when a
temperature inside the can exceeds a predetermined
temperature.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Georgopoulos US 4,992,339 Feb. 12, 1991
Yamashita US 5,989,743 Nov. 23, 1999
Ishida et al. US 2003/0134190 July 17, 2003
(hereinafter “Ishida”)
Kozuki et al. US 2009/0239139 A1 Sept. 24, 2009
(hereinafter “Kozuki”)
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Park et al. US 2010/0021801 A1 Jan. 28, 2010
(hereinafter “Park”)
Deng et al. US 2010/0291422 A1 Nov. 18 2010
(hereinafter “Deng”)
Yoshimatsu JP 05266877 Oct. 15, 1993

THE REJECTIONS
1. Claims 1–3, 5, 6, and 38 are rejected under pre-AIA
35 USC § 103(a) as being unpatentable over Yoshimatsu in view of
Yamashita.
2. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Yoshimatsu in view of Yamashita as applied to claim 1
above, and further in view of Ishida.
3. Claim 11 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Yoshimatsu in view Yamashita as applied to claim 1
above, and further in view of Georgopoulos.
4. Claim 15 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Yoshimatsu in view of Yamashita as applied to claim 1
above, and further in view of Kozuki.
5. Claims 25–28, 30, and 31 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Yoshimatsu in view of Yamashita as
applied to claim 1 above, and further in view of Deng.
6. Claims 32 and 36 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Yoshimatsu in view of Yamashita, in view of Deng
as applied to claim 25 above, and further in view of Ishida.
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7. Claim 37 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Yoshimatsu in view of Yamashita, in view of Deng as
applied to claim 25 above, and further in view of Park.
8. Claim 39 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Yoshimatsu in view of Yamashita as applied to claim 1
above, and further in view of Park.

ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 41.37(c)(1)(vii). These
claims are identified, infra.
Upon consideration of the evidence on this record and each of the
respective positions set forth in the record, we find that the preponderance of
evidence on this record supports the Examiner’s findings and conclusion that
the subject matter of Appellants’ claims is unpatentable over the applied art.
Accordingly, we sustain each of the Examiner’s rejections on appeal
essentially for the reasons set forth in the Final Office Action and in the
Answer. We add the following for emphasis.

Rejection 1
Claim 1
Claim 1 recites:
“[a]n electrochemical cell, comprising: a can; an electrode assembly
comprising an electrode disposed within the can; an output terminal
that extends from within to outside of the can; and a positive
temperature coefficient (PTC) material disposed near the center of the
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Application 13/631,220

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can, wherein the PTC material is positioned directly in between and in
electrical communication with both the electrode assembly and the
output terminal and is configured to interrupt or reduce electric
current passing from the electrode assembly to the output terminal
when a temperature inside the can exceeds a predetermined
temperature” [emphasis added].

Appellants argue that Yoshimatsu (the reference relied upon by the
Examiner for teaching the aforementioned claim element) does not suggest
this claim feature. Appeal Br. 9–10. Appellants argue that Yoshimatsu
teaches a current fuse 4, shown in Figure 1, near the center of the can (C),
and Yoshimatsu does not disclose a PTC (positive temperature coefficient
material). Id. at 10.
Appellants argue that the secondary reference of Yamashita mentions
PTC only once as a conventional protective means alongside a temperature
fuse and a current fuse, to prevent temperature elevation during a short
circuit event. Id. Appellants argue that Yamashita does not include any
substantial disclosure regarding the use of particular PTC materials, or how
specifically they may be positioned, or function within, an electrochemical
cell. Id.
Appellants conclude that Yamashita adds nothing substantial to
Yoshimatsu in terms of the position of the PTC element, and thus does not
render obvious the position of the PTC material as being directly in between
and in electrical communication with both the electrode assembly and
the output terminal in Fig. 1 of Yoshimatsu. Id. at 11. We are unpersuaded
by these arguments for the following reasons.
As stated by the Examiner on pages 3–4 of the Answer, the rejection
does not rely on Yamashita to meet the limitation of the position of the PTC
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material in the battery of Yoshimatsu. The Examiner states that the rejection
is that Yamashita was applied for teaching that it would have been obvious
to replace one protective means for another, which would be positioned in
the same way as shown by Yoshimatsu, to interrupt temperature elevation.
The Examiner states that therefore Appellants argue against the references
individually, and that one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck &
Co., 800 F.2d 1091 (Fed. Cir. 1986). We agree.
The Examiner reiterates in the record that the limitation of the
position of the PTC material being directly in-between electrode assembly
and output terminal is taught by Yoshimatsu. Ans. 3–4. The Examiner
explains that Figure 1 of Yoshimatsu (reproduced below) shows that the fuse
(4) is directly connected to the terminal and directly connected to the bottom
of the assembly, without any additional elements in-between. Ans. 4. The
Examiner states that the fuse is also functionally the same as the claimed
PTC, and the positon of the fuse is such that it is electrically connected
directly between the assembly and the terminal. The Examiner states
protective means of Yoshimatsu and Yamashita are also functionally the
same as that of the instant claim and thus would have been obvious variants.
Ans. 4.

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Yoshimatsu’s Figure 1 is depicted above.

Appellants then argue that Yoshimatsu meets the criteria for teaching
away from temperature-based protection mechanisms because Yoshimatsu
teaches advantages of its current fuse versus thermal fuse, such as less delay
in response time to a short circuit event. Appeal Br. 12–13. Reply Br. 3–6.
However, we agree with the Examiner’s stated response made on
pages 4–5 of the Answer that the teachings Yoshimatsu do not rise to the
level of a teaching away because Yoshimatsu does not explicitly teach not to
use temperature-based protection mechanisms. We note that to constitute a
teaching away a reference must indicate that a particular feature should not
or cannot be used for a particular purpose. Para-Ordnance Mfg. Inc. v. SGS
Importers Int’l Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). We add that it is
noted that certain excerpts of Yoshimatsu discussed by Appellants on pages
4–5 of the Reply Brief are limited to specific configurations (e.g., when the
fine hole of the whole separator is not taken up uniformly) and not all
configurations.

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Claim 3
Appellants argue that Yoshimatsu and Yamashita do not disclose a
prismatic can as recited in claim 3. Appeal Br. 14.
The Examiner states that even though Yoshimatsu does not explicitly
teach a prismatic can, a prismatic can would have been obvious because
prismatic cans house elongated wound electrode assemblies that have free
space in the middle similar to cylindrical cells. Therefore, even though a
cylindrical can is preferred by Yoshimatsu, because the wound electrode
assembly has a space in the middle for a fuse (Yoshimatsu, ¶13), a prismatic
can housing an elongated wound electrode assembly would have been
obvious since cylindrical and prismatic shapes are shapes in the art of
batteries that are well known in the art and both shapes solve the same
problem, i.e. space in the middle for a fuse. Ans. 5–6.
The Examiner also states that one would appreciate that housing
shapes are selected depending on application and that choosing the
appropriate housing shape would depend on the specific application.
In reply, Appellants argue that the Examiner does not refer to specific
teachings in the record to support the stated positon. Reply Br. 9. However,
we are unpersuaded by such argument as it is noted by Appellants’ own
Specification that there is no criticality regarding a selected shape. Spec.
¶ 37. Moreover, what a reference teaches a person of ordinary skill is not
limited to what a reference specifically “talks about” or what is specifically
“mentioned” or “written” in the reference. Syntex (U.S.A.) LLC v. Apotex,
Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005). “[A] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR v. Teleflex, 550
U.S. 398, 421 (2007).
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Claim 5
Appellants argue that Yoshimatsu and Yamashita do not teach the
PTC material to be configured to allow electric current to pass from the
electrode assembly to the output terminal when the temperature inside the
can drops to or below the predetermined temperature. Appeal Br. 15.
We agree with the Examiner’s stated reply made on pages 14–15 of
the Answer. Therein, the Examiner states the PTC member of Yamashita is
capable of allowing electric current to pass from the electrode assembly to
the output terminal when the temperature inside the can drops to or below
the predetermined temperature, because PTC materials are a type of resistor
(also well known in the art as thermistors) whose resistance is dependent on
temperature, such that resistance increases above a predetermined
temperature. The Examiner states that, in other words, the claimed property
of allowing electric current to pass from the electrode assembly to the output
terminal when the temperature inside the can drops to or below the
predetermined temperature is what defines a PTC material. The Examiner
concludes that therefore the PTC is inherently capable of conducting current
below a predetermined temperature because that is intended function of PTC
material thermistor.

Claim 6
Appellants argue that the Examiner should point to a portion of the
applied art that teaches that a PTC material does not interrupt or reduce
current in response to a change in pressure instead of relying on inherency
and requests that Examiner should be required to provide evidence of the
above property. Appeal Br. 15–16.
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In response, the Examiner disagrees, and states that because a basic
principal of operation of PTC material is in response to temperature, not
pressure, it will inherently change conductivity in response to temperature,
not pressure, because of its innate property to respond to temperature, not
pressure. Ans. 7. The Examiner states that this is the most fundamental
function of PTC material and is very well known in the art. Notably, no
reply is set forth by Appellants in the Reply Brief. We thus are not
convinced or error in the Examiner’s stated position.

Claim 38
Appellants argue that the positive electrode and the anode do not
appear to be a plurality of stacked electrode substrates, as recited in claim
38. Appeal Br. 16.
In response, the Examiner states that claim 38 does not define
substrates, therefore the electrodes of Yoshimatsu, anode and cathode, meet
the claim limitation as having a plurality (two) of stacked
electrode substrates (anode and cathode) which, in combination, are the
electrode assembly.
On page 10 of the Reply Brief, Appellants argue that the Examiner
misconstrues claim 38 for the reasons set forth on pages 10–12 of the Reply
Brief. Appellants submit that claim 38 requires that “the electrode” (i.e., the
positive electrode or the negative electrode), include a plurality of stacked
electrode substrates (i.e., a plurality of positive electrode substrates or a
plurality of negative electrode substrates). Appellants contend that the
Examiner misconstrued claim 38 in order to reject the claim based on the
single, continuous-sheet electrodes taught by Yoshimatsu and Yamashita.
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Reply Br. 10. Appellants refer to a specific embodiment disclosed in the
Specification is support of their stated positon. Reply Br. 11.
However, we agree with the Examiner’s stated position in the record.
See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004) (“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the
embodiment.”).

Rejection 2
Claim 7
Appellants’ arguments are made with reference to the dependency of
claim 7 on claim 1 (Appeal Br. 17), which has been addressed above.

Rejection 3
Claim 11
Appellant argues that Georgopoulos merely generally discloses the
lithium battery cells may be damaged if the internal temperature exceeds 180
◦C, and the actual current collector assembly is designed to disconnect at a
temperature of between 85 ◦C and 95 ◦C, and therefore Georgopoulos does
not teach or suggest a predetermined temperature of from 120 ◦C to 160 ◦C
as claimed. Appeal Br. 18.
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We agree with the Examiner’s reply made on pages 8–9 of the
Answer. Therein, the Examiner states that Georgopoulos teaches that the
current collector assembly disconnects the electrical circuit at a temperature
below the temperature at which the components of the cell melt, or below
the temperature at which the internal pressure of the cell becomes large
enough to rupture the cell container, where this temperature depends on
cell system. Georgopoulos, col. 4, ll. 29–43. Ans. 8.
The Examiner further states that Georgopoulos also teaches that the
cells which employ lithium as an anode material, if internal cell
temperatures reach above 180 ◦C the lithium can melt and result in a fire
Georgopoulos, col. 1, ll. 11–29. Ans. 8–9.
Therefore, the Examiner states that even though Georgopoulos
teaches, in a particular embodiment, the most preferable range of 85 ◦C to 95
◦C, Georgopoulos teaches that the temperature must be below the melting
temperature of lithium (col. 4, ll. 38–41), which is below 180 ◦C, and thus
overlaps the claimed range of 120 ◦C to 160 ◦C, and that it would have been
obvious to try increasing the disconnect temperature with the expected result
of having the battery in an operational mode for a longer period. Ans. 8–9.
We agree.

Rejection 4
Claim 15
Appellants’ arguments are made with reference to the dependency of
claim 15 on claim 1, which has been addressed above.

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Rejection 5
Claim 25
Appellants’ arguments are made with reference to the same
limitations recited in claim 1, which have been addressed above.

Rejection 6
Claims 32 and 36
Appellants’ arguments are made with reference to the dependency of
claims 32 and 36 on claim 25, which has been addressed above.

Rejection 7
Claim 37
Appellants’ arguments are made with reference to the dependency of
claim 37 on claim 25, which has been addressed above.

Rejection 8
Claim 39
Appellants’ arguments are made with reference to the dependency of
claim 39 on claim 1, which has been addressed above.

DECISION
Each rejection is affirmed.

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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

ORDER
AFFIRMED