Ex Parte Niedzwiecki et al

Patent Trials and Appeals Board

Apr 4, 2019

13653768 - (D) (P.T.A.B. Apr. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/653,768 10/17/2012
10800 7590 04/04/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Mark A. Niedzwiecki
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.
1576-1419 1049
EXAMINER
OHARA,BRIANR
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
04/04/2019 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 MARK A. NIEDZWIECKI and JASON A. DURFEE
Appeal2018-005575
Application 13/653,768
Technology Center 1700
Before LINDA M. GAUDETTE, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 2-5, 8, 13-15, and 21-23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The invention relates to battery cells for vehicles, in particular electric
and hybrid electric vehicles. Spec. ,r,r 2, 4. Of the appealed claims, claims 8
1 This Decision includes citations to the following documents: Specification
filed October 17, 2012 ("Spec."); Final Office Action dated September 21,
2017 ("Final Act."); Appeal Brief filed February 8, 2018 ("Appeal Br.");
Examiner's Answer dated March 19, 2018 ("Ans."); and Reply Brief filed
May 8, 2018 ("Reply Br.").
2 The Appellants are the Applicants, Robert Bosch GmbH and Samsung SDI
Co., Ltd., also identified as the real parties in interest. Appeal Br. 2.
Appeal2018-005575
Application 13/653,768
and 13 are independent. See generally Appeal Br. 23-27. Independent
claim 8 is representative of the claims on appeal, and is reproduced below.
Claim 8. A battery pack comprising:
a structural member;
a plurality of battery cells, each of which comprises:
a cell housing including a top surface, a bottom
surface, a first end surface, and a second end surface at
an opposite longitudinal end of the cell housing from the
first end surface;
a first mounting member formed separate from the
cell housing and attached to the first end surface of the
cell housing between the top and bottom surfaces; and
a second mounting member formed separate from
the cell housing and attached to the second end surface of
the cell housing between the top and bottom surfaces;
a first clamping member configured to be secured to the
structural member using fasteners, the first clamping member
engaging the first mounting member to secure the battery
cells to the structural member; and
a second clamping member configured to be secured to
the structural member using the fasteners, the second clamping
member engaging the second mounting member to secure the
battery cells to the structural member,
wherein the battery pack does not include plates that
band the battery cells together.
Id. at 24 ( emphasis added).
The Examiner relies on the following references as evidence of
unpatentability:
Koch
Van Hout
Bourke
Watanabe
Nakamura
us 3,988,170
US 6,230,834 B 1
US 2007 /0087266 Al
US 2008/0318119 Al
US 2008/0318120 Al
2
Oct. 26, 1976
May 15, 2001
Apr. 19, 2007
Dec. 25, 2008
Dec. 25, 2008
Appeal2018-005575
Application 13/653,768
The claims stand finally rejected under 35 U.S.C. § 103(a) as follows:
1. claims 2, 5, and 8 over Watanabe in view of Koch, as evidenced
by Nakamura;
2. claims 3 and 4 over Watanabe in view of Koch and Bourke; and
3. claims 13-15 and 21-23 over Van Hout in view of Watanabe.
Rejections of claims 2-5 and 8
The Examiner finds Watanabe discloses the invention as recited in
claim 8 with the exception that "Watanabe does not disclose the first
mounting member and the second mounting member are formed separate
from the cell housing." Final Act. 3-5 ( emphasis omitted). The Examiner
finds one of ordinary skill in the art would have modified Watanabe to
include this feature for the advantage of adjustability of the mounting
member position, as taught by Koch. Id. at 5. As to the negative limitation
in the final wherein clause, the Examiner finds Watanabe's "battery pack
does not include plates that band the battery cells together" ( claim 8),
because it does not include "a strip serving to join or holding things together
such as belt/cord or a ring without raised portions." Final Act. 5.
The Appellants contend the Examiner's conclusion of obviousness is
based on an erroneous interpretation of the final wherein clause in claim 8.
See generally Appeal Br. 7-12. The Appellants contend Watanabe's battery
pack fails to meet the negative limitation in the final wherein clause because
it utilizes both rods and end plates to gather the battery cells together, or
form the battery cells into a group. Appeal Br. 10-11.
The Examiner and the Appellants agree that the term "band" is not
defined explicitly in the Specification and cite to dictionary definitions from
online versions of the MERRIAM-WEBSTER DICTIONARY in support of their
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Application 13/653,768
respective claim constructions. Final Act. 5; Appeal Br. 9-10. Each
proposed construction is consistent with one of several dictionary definitions
of "band." See Merriam-Webster.com (accessed Apr. 1, 2019),
https://www.merriam-webster.com/dictionary/band (verb). The Appellants
and the Examiner also cite to the Specification in support of their proposed
interpretations. See Ans. 13-18; Appeal Br. 10; Reply Br. 2-3. In addition,
the Examiner relies on Ovshinsky (US 6,372,377 Bl, iss. Apr. 16, 2002) in
support of the proposed interpretation. Ans. 15-16.
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The broadest
reasonable interpretation of the claims must also be consistent with the
interpretation that those skilled in the art would reach. In re Cortright,
165 F.3d 1353, 1358 (Fed. Cir. 1999). "Th[e] [Federal Circuit] permits the
PTO to use dictionary definitions in tandem with the specification and
prosecution history to enlighten the broadest reasonable interpretation of a
claim term." In re Scroggie 442 F. App'x 547, 550 (Fed. Cir. 2011); see also
In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007). In
addition, prior art references may be "indicative of what all those skilled in
the art generally believe a certain term means" and "can often help to
demonstrate how a disputed term is used by those skilled in the art."
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996)
The appropriate starting point for claim construction "is always with
the language of the asserted claim itself." Comark Commc 'ns, Inc. v. Harris
Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). "[C]laims are interpreted with
an eye toward giving effect to all terms in the claim." Cat Tech LLC v.
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Appeal2018-005575
Application 13/653,768
TubeMaster, Inc., 528 F.3d 871, 885 (Fed. Cir. 2008) (quoting Bicon, Inc. v.
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)).
We tum first to the language of claim 8. Claim 8 requires a structural
member, first and second mounting members, and first and second clamping
members, but precludes "plates that band the battery cells together."
Therefore, to give effect to all of the claim limitations, the ''plates that band
the battery cells together" ( claim 8 ( emphasis added)) cannot be construed as
encompassing the structural member, first and second mounting members,
and first and second clamping members.
We tum next to the written description, which discloses that "[b ]attery
packs have been developed that include hardware such as endplates,
sideplates, and insulators for grouping battery cells into one or more battery
modules. The endplates and sideplates are placed around a plurality of cells
to band the cells together." Spec. ,r 5 ( emphasis added). According to the
written description, endplates, sideplates, and insulators increase the size, the
mass, and the material cost of battery packs. Id. The present invention is said
to overcome these drawbacks through the use of mounting members that
"allow the battery cells to be installed directly into the battery pack without
banding the battery cells together into one or more battery modules using
module hardware such as endplates, sideplates, or insulators." Id. ,r 16. In
the inventive battery pack, each of the battery modules includes a number of
sub-modules, each of which includes a number of battery cells electrically
connected to one another using bus bars, "but not banded together using
module hardware such as endplates and sideplates." Id. ,r 28.
Because the written description does not provide details on the prior
art module hardware that is excluded by the wherein clause, we consider the
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Appeal2018-005575
Application 13/653,768
related prior art in an effort to ascertain the ordinary artisan's understanding
of the meaning of "plates that band the battery cells together." The Examiner
relies on Ovshinsky as evidence of how the term "band" is used in the
related prior art. See Ans. 15. Ovshinsky discloses a "module
bundling/compression means" designed to allow for application of the
required battery compression and to be as lightweight as possible.
Ovshinsky 5 :23-26. Ovshinsky discloses positioning metal bars along the
sides and ends of the battery module and welding the bars together at the
four comers of the module where the bars meet to form a band around the
periphery of the battery module. Id. at 15:63---67. Ovshinsky discloses
another preferred design that uses metal end plates at the ends of the module.
Id. at 16:26-27. In this embodiment, metal bars on the sides of the battery
module are welded to rectangular metal tubing on the ends of the module. Id.
at 16:27-31. Bourke, relied on in the rejection of claims 3 and 4, discloses
binding a battery module between endplates and side plates using band
members. Bourke ,r,r 65-66, 70. Bourke also describes a prior art patent
wherein a module battery comprises a plurality of cells secured between two
end plates with band-like binding members for coupling the endplates. Id.
,r 4. Watanabe, relied on in rejecting all claims on appeal, discloses stacked
battery modules restrained in the stacking direction by end plates coupled
together with pipes. Watanabe ,r 6. In sum, each reference distinguishes
plates from pipes, bars, tubes, and/or bands, and describes the combination
of end plates with pipes, bars, tubes, and/or bands as necessary to restrict
movement of the cells and provide strength or compressive forces. See
Ovshinsky 15:57---60; Bourke ,r 4; Watanabe ,r 6.
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Application 13/653,768
Having considered the claim language in light of the Specification and
related art, we determine the broadest reasonable interpretation of the
claim 8 phrase "the battery pack does not include plates that band the battery
cells together" is that the battery pack does not include plates positioned at
the sides and/ or ends of the battery cells or modules that are secured to one
another by pipes, bars, tubes, and/or bands, so as to bundle together the
plurality of battery cells and restrict their movement. Based on this
construction, we are persuaded by the Appellants' arguments that
Watanabe's battery pack does not meet the negative limitation recited in the
final wherein clause of claim 8, because Watanabe's battery assembly 1 OA
includes plates 15 positioned at the ends thereof, plates 15 being coupled by
pipes 16 to maintain the stacked state of battery assembly 1 OA by fixing
battery modules 1 lA and providing a prescribed strength to battery assembly
lOA. See Watanabe Fig. 2; ,r 6.
Appellants have identified reversible error in the Examiner's
conclusion of obviousness as to independent claim 8. Accordingly, we do
not sustain the rejection of this claim, or the rejections of dependent
claims 2-5, which are based on the same erroneous finding that Watanabe's
battery pack does not include plates that band the battery cells together.
Rejection of claims 13-15 and 21-23
The Examiner finds Van Hout discloses the invention as recited in
independent claim 13 with the exception that Van Hout does not explicitly
disclose a plurality of battery cells. Final Act. 8-10. The Examiner finds one
of ordinary skill in the art would have modified Van Hout' s battery pack to
include a plurality of battery cells in order to provide sufficient or desired
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Application 13/653,768
power for a vehicle based on Watanabe's disclosure that use of a plurality of
battery cells in a vehicle was conventional. Id. at 10.
The Appellants argue Van Hout discloses "a system to
interchangeably mount a single European or American lead-acid vehicle
battery in a conventional non-electric vehicle." Appeal Br. 18. The
Appellants argue that one of ordinary skill in the art would not have been
motivated to modify Van Rout's battery pack to include additional batteries
based on Watanabe's disclosure which relates to a different type of battery
back, i.e., a plurality of nickel-cadmium, nickel-hydrogen, or lithium ion
battery cells for use in powering an electric or hybrid vehicle. Id. at 19. The
Appellants contend that adding multiple lead acid batteries would drastically
increase the space occupied by the battery pack, which Van Hout teaches
against. Id. at 19-20. The Appellants also argue "[t]here is no teaching in
Van Hout to have a single snap-fit mechanism that engages a plurality of
batteries" and, therefore, even if Van Hout were modified to include
additional batteries, the claimed invention would not result. Id. at 21.
The Examiner, in response, notes that there is no support for the
Appellants' assertion that one of ordinary skill in the art would understand
Van Rout's disclosure as limited to a mounting system for a single, lead acid
battery. Ans. 22-23. The Examiner contends, "one of ordinary skill would
[have] appreciate[ d] that rather than one larger battery the use of a plurality
of smaller battery cells occupying the same size may be connected in
series/parallel to achieve an application's desired current/voltage
requirements." Id. at 23. As to the snap-fit mechanism, the Examiner argues
the ordinary artisan would have been aware that the plurality of batteries
must be secured to prevent them from falling out of the vehicle. Id. at 26.
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Appeal2018-005575
Application 13/653,768
The Examiner finds one of ordinary skill in the art would have possessed the
requisite skills to either use multiple snap fit mechanisms or modify Van
Rout's snap fit mechanism to accommodate multiple batteries. Id.
In their Reply Brief, the Appellants argue Van Hout "was filed in
1999, largely before the electric vehicle boom" and, therefore, it is unlikely
Van Hout contemplated electric vehicle batteries. Reply Br. 7. The
Appellants also argue that modifying Van Hout' s snap-fit mechanism to
engage a plurality of batteries would render removal and installation of the
batteries difficult. Id. at 9-10.
The Appellants' arguments fail to persuade us of reversible error in
the Examiner's conclusion of obviousness as to independent claim 13 for the
reasons explained by the Examiner in the Answer, and because these
arguments are not supported by persuasive evidence. See Ans. 21-26; In re
Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (explaining that argument by
counsel cannot take the place of evidence). The Appellants do not present
separate arguments in support of patentability of any dependent claims.
Accordingly, we sustain the rejection as to claims 13-15 and 21-23.
ORDER
We REVERSE the rejections of claims 2-5 and 8.
We AFFIRM the rejection of 13-15 and 21-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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