Ex Parte Pfeiffer et al

Patent Trial and Appeal Board

Feb 27, 2019

13876675 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/876,675 08/09/2013
10800 7590 02/27/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Stefan Pfeiffer
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.
2178-0712 5183
EXAMINER
CHAN,HENGM
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
02/27/2019 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 STEP AN PFEIFFER, MICHAEL GLESS, AXEL BORMANN,
and CONRAD BUBECK, 1
Appeal 2018-004436
Application 13/876,675
Technology Center 1700
Before BEYERL YA. FRANKLIN, LINDA M. GAUDETTE, and
JEFFREY R. SNAY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Robert Bosch GmbH and
Samsung SDI Co., Ltd.
Appeal 2018-004436
Application 13/876,675
Appellants request our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 2, and 4. 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 (with text in bold for emphasis):
1. A method for clamping a lithium ion accumulator
comprising a lithium ion accumulator cell stack having a top
surface, a base surface opposite the top surface, and a
circumferential surface having four side surfaces, and at least
two prismatic lithium ion accumulator cells, the method
compnsmg:
positioning at least one tension strap apparatus around
the circumferential surface of the lithium ion accumulator cell
stack, wherein the at least one tension strap apparatus includes
a first end and a second end;
tensioning only a portion of the at least one tension
strap in a region of the circumferential surface less than the
entire circumferential surface, while keeping the first
end and the second end of the at least one tension strap
apparatus in a tension-free state; and
then connecting the first end and the second end of
the at least one tension strap apparatus to each other
indirectly, during the tension-free state, using one or two
plates which are positioned on one side surface or two mutually
opposite side surfaces of the circumferential surface, wherein at
least the first end or the second end of the at least one tension
strap apparatus is connected to at least one plate,
wherein the indirect connection of the first end and the
second end of the at least one tension strap apparatus is
produced by at least one of a welded joint, a screw connection,
and a clamping connection.
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Appeal 2018-004436
Application 13/876,675
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Okada US 2008/0280194 Al Nov. 13, 2008
THE REJECTIONS
1. Claims 1, 2, and 4 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
2. Claims 1, 2, and 4 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Okada.
ANALYSIS
Rejection 1
It is the Examiner's position that the Specification does not describe
the "tensioning" step recited in claim 1 in sufficient detail. Ans. 3--4. The
Examiner also rejects claims 2 and 4 due to their dependencies from claim 1.
Id. at 8.
Appellants disagree and states that the Specification describes the
tensioning sequence at p. 2, 1. 28-p. 3, 1. 17, and provides further detail at
p. 8, 11. 7-11, which state: "In order to be able to tension the tension straps
20 and weld the ends 22 thereof in the tension-free state, said tension
straps have a passage opening 23 in which a tensioning device can engage."
Appeal Br. 5---6. Appellants also refer top. 3, 11. 7-12. Reply Br. 2.
Appellants explain that Figures 3 and 4 show that the passage openings (23)
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Appeal 2018-004436
Application 13/876,675
are offset from the end portion of the ends (22) of the tension straps at the
weld (21 ). Appellants state that thus the tensioning device will engage
the straps at the openings (23), which will necessarily leave the end portions
of the strap at the weld (21) unaffected. Appeal Br. 5.
In view of the parts of the Specification discussed by Appellants, we
are persuaded that there is sufficient written descriptive support for the
claimed tensioning step. We thus reverse Rejection 1.
Rejection 2
The Examiner rejects claims 1, 2, and 4 under 35 U.S.C. § I03(a) as
being unpatentable over Okada. The Examiner recognizes that Okada does
not disclose tensioning only a portion of the tension strap while keeping the
first and second ends of the strap tension-free. Ans. 5. The Examiner refers
to Fritz2 as disclosing pulling a tensioning tape (118) and then connecting
the ends of the tape to an end plate (112) by engaging projections (128).
Ans. 5---6. The Examiner concludes that it would have been obvious to
tension only a portion of the metal straps (56, 66, 76, 86, 96, 106) of
Okada "motivated by the fact that Fritz demonstrates that the at least one
tensioning device extends around at least one end face of the stack, exerting
forces uniformly over a large surface area (i-f [0015]), and is flexible so that
2 Fritz, US 2008/0044714 Al (pub. Feb. 21, 2008). The Examiner relies
upon Fritz but does not mention Fritz in the statement of the rejection.
Appellants do not object to the Examiner's reliance on Fritz. We note,
however, that the predecessor to our reviewing court has indicated that
reversal of an Examiner's rejection may be appropriate where a reference is
not mentioned in the statement of the rejection, but is relied upon, even in a
minor capacity. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).
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Appeal 2018-004436
Application 13/876,675
it can adapt itself to a stack end element of any arbitrary shape (i-f [0024])."
Ans. 6.
Appellants argue, inter alia, that there is no rational basis to make the
modification of Okada as proposed by the Examiner. Appellants state that
Okada discloses "a metal strap 6, 26, 36, 46, 56, 66, 76, 86, 96, 106 for
fixing, in a compressed state, the layered rectangular cells to the end plates
5, 25, 35, 45, 55, 65, 75, 85, 95, 105 by connecting at an end of the metal
strap." Appeal Br. 7 (quoting Okada ,r 11). Appellants state that Okada
specifically contemplates that the metal straps cannot be elongated, stating:
"the metal strap 6, 26, 36, 46, 56, 66, 76, 86, 96, 106 is made by processing
a metal sheet of a strength that would not be elongated by the expansion
pressure of the rectangular cells, i.e., a metal sheet like a stainless steel
sheet and a steel sheet, including SUS304, to a width and thickness having a
sufficient strength." Id. ( quoting Okada ,r 70). Appellants state that in order
to add the metal straps to restrain the cells, Okada describes the process
of compressing the battery block in which "the end plates 5, 25 on opposite
sides are pressed by using a jig and are compressed until the interval of the
end plates 5, reaches a given size and is held in such state." Id. ( quoting
Okada ,r 7 5). Appellants state that then, "[ w ]ith the battery block 3 being
held in its compressed state, the opposite ends of the metal strap 6, 26 are
fixed to the end plate 5, 25." Id. at 7-8 (quoting Okada ,r 76). Under these
conditions, Appellants submit that there is no reason why Okada would want
to maintain the ends of the metal straps tension-free. Id. at 8. Appellants
further state that Okada's straps themselves are configured not to elongate so
there is no ability to place the straps in tension. Id. But since the battery
block is held in a compression jig, there is no need to place the metal straps
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Appeal 2018-004436
Application 13/876,675
in tension in order to engage them to the end plates (5, 25) of the Okada
device. Id. Appellants state that the Examiner has not provided any reason
to eliminate the compression jig or to replace the inelastic metal straps with
a flexible element, such as the tape (118) of Fritz. Id.
We are persuaded by the aforementioned arguments. Establishing a
prima facie case of obviousness requires an apparent reason to modify the
prior art. See KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). The
record indicates that the rejection is based upon impermissible hindsight in
view of the Appellants' disclosure. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) ("A rejection based on section 103 clearly must rest on a
factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art").
In view of the above, we reverse Rejection 2.
DECISION
Each rejection is reversed.
REVERSED
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