Ex Parte Schimmele et al

Patent Trial and Appeal Board

Mar 14, 2017

13318523 (P.T.A.B. Mar. 14, 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.
13/318,523 11/09/2011 Richard Schimmele PCG-l 1-1362 8827
35811 7590 03/16/2017
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
EXAMINER
CONLEY, OI K
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
03/16/2017 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):
pto.phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD SCHIMMELE,
CHRISTOPH GLOCK WAGNER, and
HORST WAGNER
Appeal 2016-001435
Application 13/318,523
Technology Center 1700
Before: RAE LYNN P. GUEST, GEORGE C. BEST, and
DONNA M. PRAISS, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. Statement of the Case
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claim 32 under 35 U.S.C. § 103(a) as unpatentable over JP
45194/80 (published September 20, 1978) (hereinafter “JP ’80”)1 in view of
Brownbill.2 We have jurisdiction under 35 U.S.C. § 6(b).
1 Citations to JP ’80 herein are to the translation of JP ’80, submitted by
Applicants and entered into the record on January 2, 2014.
2 GB 2,110,464 A, published November 19, 1981, identifying Thomas
Duncan Brownbill as inventor (hereinafter “Brownbill”). We note that the
Examiner mistakenly refers to this reference as “Brownhill.”
Appeal 2016-001435
Application 13/318,523
We AFFIRM.
Appellants’ invention is a method of forming button cell batteries with
improved adhesion between an electrode and the housing half-part in contact
therewith by forming an interlocking mechanical connection between the
housing and the electrode. Specification (“Spec.”) Tflf 5—6. Claim 32 is the
sole claim on appeal and is reproduced below (with indentations added for
clarity):
32. A method for producing a button cell comprising
impressing at least one first recess into an inside of a cell
cover using a first impressing punch, and,
in further step using a second pressing punch, providing
the at least one first recess with at least one undercut by
impressing at least one second recess into the inside of the cell
cover in such a manner that a cross section of the at least one
first recess is constricted in the region of the top edge thereof,
and
introducing an electrode material into the cell cover in
such a manner as to create an interlocking connection between
the resultant electrode and the cell cover.
Appeal Brief (“App. Br.”) 8, Claim App’x.
II. Issue on Appeal
The dispositive issue on appeal arising from the contentions of
Appellants and the Examiner is: does the evidence support the Appellants’
view that the Examiner erred in interpreting the language of claim 32,
thereby erroneously concluding that claim 32 would have been obvious to a
person of ordinary skill in the art in light of the teachings of JP ’80 and
Brownbill? We answer this question in the negative.
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Application 13/318,523
III. Discussion
We adopt the Examiner’s findings in the Answer as our own and add
any additional findings of fact appearing below for emphasis.
The Examiner finds that JP ’80 teaches a button cell battery in which
the housing cover has a first recess in that the overall shape of the cover as
illustrated in Fig. 5, provided below, is a recessed structure. Examiner’s
Answer 4—5 and 9—10 (hereinafter “Ans.”).
Fsg. §
Figure 5 depicts a cross-sectional view of a formed
button cell cover (i.e., sealing plate 8). JP ’80, at 6, first full %
The Examiner further finds that JP ’80 teaches formation of an
“undercut” “second recess” formed by press punching, as illustrated in
Fig. 6, which is reproduced below. Ans. 6 and 8. We understand that the
Examiner interprets the term “undercut” to the extent that the recess of
Fig. 6 shows a pressed cut or groove formed on the underside of the first
recess. Id.
OJ OPS ®
...c
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Figure 6 depicts an enlarged cross sectional view of a portion of the
cover of the button cell cover (i.e., sealing plate 8) of Figure 5, showing
recesses (i.e., pits 10) having a “trapezoidal shape.” JP ’80, at 6, first full
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Application 13/318,523
Appellants’ arguments turn on a determination that the Examiner
erred in interpreting the claim in light of the Specification. See e.g., App.
Br. 5 (“The Appellants respectfully submit that, when the claim language is
construed in a manner consistent with the specification as set forth above, it
is clear that JP ’80 and Brownbill are inapplicable.”).
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
Appellants argue that the Examiner erred in interpreting the phrase
“one first recess into an inside of a cell cover” as being the overall shape of
the cell cover. App. Br. 4; Reply Br. 1—2. Booking at the claim language
itself, Appellants contend that a first recess can only be punched “into an
inside of a cell cover” if the cell cover is already formed and “cannot be the
recess that produces the central cavity or overall shape of the button cell
cover.” Reply Br. 1—2; see also App. Br. 4 (“the cell cover must exist before
[the first impressing] step.”). Appellants also argue that the “at least one
first recess” language becomes “nonsensical because the cell cover can have
no more than one central cavity.” Reply Br. 2.
We agree with the Examiner that the claim language is reasonably
interpreted more broadly than argued by Appellants. It is not unreasonable
to interpret the phrase “into an inside of a cell cover” to identify the side of
the cover into which a first recess is impressed, i.e., the inside, to form a
concaved inside recess. Without additional clarification in the claim
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Appeal 2016-001435
Application 13/318,523
language, the phrase “into the inside of a cell cover” does not necessarily
mean that the cell cover is formed into its final shape at the time of
impressing. Nor are we persuaded that the phrase “at least one first recess”
becomes nonsensical. Looking at the shape of the JP ’80 cell cover in
Figure 5, such a structure could have been formed by a first impressed recess
followed by a second “first” impressed recess to achieve the concentrically
concaved shape.
Appellants also contend that the Examiner’s interpretation is not
consistent with the Specification. For example, Appellants argue that the
Specification provides descriptions and examples of a “cell cover” and a
“recess” such that “one skilled in the art would understand that the term
‘first recess’ refers to an impression on an inside surface of the cell cover
material.” App. Br. 3 and 4. Further, Appellants refer to Figure 2 and 42
and 43 of the Specification as distinguishing the cell cover from a first recess
because impressing punches 7 and 8 could not be used to form the central
cavity of the cell cover. Reply Br. 1. Appellants further argue that the
Examiner’s interpretation conflates the terms “recess” and “undercut,”
which the Specification shows to be different features. App. Br. 5. We are
not persuaded by Appellants’ arguments.
The Specification distinguishes the prior art “by the fact that there is
an interlocking connection between the housing and at least one of the
electrodes.” Spec. 17. However, the term “interlocking connection” is not
given any particular structure, and Appellants do not distinguish, on this
record, the structure of the prior art from an “interlocking connection.” The
Specification’s description includes only preferred embodiments and
examples of preferred structures that form an interlocking connection.
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“[AJbsent claim language carrying a narrow meaning, the PTO should only
limit the claim based on the specification when those sources expressly
disclaim the broader definition.” In re Bigio, 381 F.3d 1320, 1324—25 (Fed.
Cir. 2004); Phillips v. AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
(“[Although the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to
those embodiments.”). We have not been directed to any express disclaimer
in the Specification which clearly limits the terms recited in the claims to
any particular structure.
For example, the descriptions that Appellants rely on for allegedly
defining a “cell cover” and a “recess” do not expressly limit the meaning of
these terms. Paragraph 14 of the Specification describes only a preferred
shape of a general cell cover, but the claims are not limited to a cell cover
having any particular shape. Accordingly, a “cell cover” reads on any shape.
Similarly, recesses 2 and 4 illustrated in Figures 1 A, IB, and 1C are
expressly described as a “preferred embodiment.” See Spec. 32—34.
Other references to the “first recess” are also described as preferred
structures. See id. Tflf 12—14. Accordingly, without further language in the
claims reflecting the particularly described embodiments of Appellants’
invention, the claims are not so limited.
Finally, Appellants contend that the phrase “cross section of the at
least one first recess is constricted in the region of the top edge thereof’ does
not read on the prior art and is inconsistent with the Specification, taking the
Examiner’s interpretation that the “first recess” reads on the overall shape of
the cell cover, because, while the second recesses of JP ’80 and the
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Application 13/318,523
Specification may be constricted under the Examiner’s interpretation, the
overall shape of the cell cover is not so constricted. See App. Br. 5—6.
Appellants’ arguments overlook that the claim does not recite that the
shape of the first recess is constricted, but, rather, the “cross section” of the
first recess is constricted. Thus, the claim reads on any portion of the cross
section of the first recess (i.e., the overall shape of the cell cover) that is
“constricted” (which is not defined in the Specification). The Examiner is
reading the undefined term “constricted” broadly to mean that the cross
section is made “narrower.” Ans. 14. Similarly, “top edge” is not defined
by the Specification and thus, could reasonably read on any edge of the cross
section, and the constriction need not be at the edge only “in a region of the
top edge.” Likewise, the modifier “thereof’ does not identify whether the
“top edge” is an edge of the first recess or an edge of the second recess.
Because the breadth that can be given to the express language of the claims
in light of the Specification’s description of embodiments therein to
anything other than preferred or exemplary in nature, the Examiner’s
interpretation, though broad, is not unreasonable.
Based on the Examiner’s reasonably broad interpretation, we further
agree with the Examiner that the claims are obvious under 35 U.S.C.
§ 103(a) based on the teachings of JP ’80 and Brownbill for the reasons
stated in the Examiner’s Final Office Action and Answer. Appellants do not
dispute the Examiner’s findings with respect to the prior art and do not
comment on the Examiner’s rationale for combining the reference. Rather,
Appellants limit their arguments to the interpretation of the claim language
addressed above.
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IV. Conclusion
On the record before us and for the reasons discussed above, we
sustain the rejection maintained by the Examiner.
V. Decision
We affirm the Examiner’s decision to reject the claim 32 under 35
U.S.C. § 103(a) as unpatentable over JP ’80 in view of Brownbill.
AFFIRMED
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