Ex Parte Wayne et al

Patent Trial and Appeal Board

Aug 21, 2018

13876302 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/876,302 03/27/2013
146032 7590
NeoGraf Solutions, LLC
Timothy R. Krogh
11709 Madison A venue
Lakewood, OH 44107
08/23/2018
FIRST NAMED INVENTOR
Ryan J. Wayne
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.
Pl 132-1 3765
EXAMINER
ROE, CLAIRE LOUISE
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
TKrogh@NeoGraf.com
PatrickFloyd.Esq@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte RYAN J. WAYNE, JONATHAN TAYLOR, MARTIN D.
SMALC, AND ELLIOTT FISHMAN
Appeal2017-009949
Application 13/876,302
Technology Center 1724
Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and MICHAEL G.
McMANUS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In explaining our Decision, we cite to the Specification of March 27, 2013
(Spec.), Amendments to the Specification of August 28, 2013 (Amended
Spec.), Final Office Action of March 3, 2016 (Final), Appeal Brief of
September 1, 2016 (Appeal Br.), and Examiner's Answer of May 19, 2017
(Ans.).
Appeal2017-009949
Application 13/876,302
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § I34(a), Appellants2 appeal from the
Examiner's decision to reject claims 9, 10, 21, and 22 under 35 U.S.C.
§ I03(a) as obvious over Haussman3 in view ofNorley. 4 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, but denominate our affirmance as involving a new
ground of rejection.
The claims are directed to a battery pack including a plurality of
cylindrical battery cells. See, e.g., claim 1. Each of the cylindrical battery
cells is positioned within a respective single heat spreader that is comprised
of a graphite sheet. Id. This is, for instance, shown in the embodiment of
Figures 1 and 2, which we reproduce below:
Fig. 1
14
Figure 1 is an isometric view of a battery pack with several battery cells
removed to show interior details
2 Appellants identify the real party in interest as Graffech International
Holdings Inc. (Br. 2).
3 Haussman, US 2008/0305388 Al, published Dec. 11, 2008.
4 Norley et al., US 7,494,712 B2, issued Feb. 24, 2009.
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Application 13/876,302
Figure 2 is a top view of the battery pack of Figure 1
As can be seen in Figures 1 and 2, the plurality of cylindrical battery
cells have a radial outer surface and the heat spreaders 14 contact at least a
portion of a respective one of the radial outer surfaces forming a
longitudinally extending channel 22 between each cell and its heat spreader
14. In the embodiment of Figures 1 and 2, the channel is formed between
the radial outer surface of cell 12, curved legs 18a, 18b, and connecting leg
20. Amended Spec. ,r,r 43-44.
The heat spreaders promote thermal homogeneity throughout the
battery assembly. Spec. ,r 40. Thermal performance is further improved by
increasing the surface area over which air can flow within and around the
battery pack and this improves the heat dissipating capabilities of the battery
pack with minimal impact on the volumetric energy density of the pack. Id.
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Application 13/876,302
Fluid or gas, such as air, may be directed through the channels 22 to remove
or regulate heat. Amended Spec. ,r 44.
Figures 3---6 and 11-18 show other embodiments of battery packs with
each cell positioned in a respective single heat spreader shaped to form a
longitudinally extending channel between the heat spreader and the cell's
radial outer surface for directing heat regulating fluid or gas. See Fig. 4,
channel 120;Fig. 6,channel220;Fig. 12,channel518;Fig. 14,channel626;
Fig. 16, channel 724; Fig. 18, channels 820.
Claim 9, with reference numerals from Figures 1 and 2, is further
illustrative:
9. A battery pack [10] comprising:
a plurality of cylindrical battery cells [12] having a
longitudinal length and a radial outer surface;
and
a plurality of heat spreaders [ 14] each comprised of a
graphite sheet, each cell [12] of said plurality of cylindrical
battery cells [12] being positioned in a respective single heat
spreader [14], said heat spreaders [14] extending at least
substantially the entire longitudinal length of said battery cells
[12] and contacting at least a portion of a respective one of said
radial outer surfaces forming a longitudinally extending channel
[22] between said each cell [12] and said respective heat
spreader [ 14].
Br. 11 (claims appendix).
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Application 13/876,302
OPINION
Appellants focus their arguments on the rejection of claims 9 and 22.
Thus, we select those claims as representative for deciding the issues on
appeal.
Both the Examiner and the Appellants interpret the claims too
narrowly. The problem here is that Appellants' claims are broad enough to
sweep in the prior art. Because our decision is based on a broader
interpretation of the claims, we denominate our affirmance as involving a
new ground of rejection to afford the Appellants an opportunity to respond
to the new interpretation. Specifically, we interpret claim 9 as open to
cylindrical battery cells other than the "plurality of battery cells" that must
be "positioned in a respective single heat spreader" because claim 9 uses the
open transitional phrase "comprising."
Claim 9
In rejecting claim 9, the Examiner finds Haussman teaches a battery
pack with a plurality of cylindrical battery cells 16 (Fig. 1) including heat
spreaders 42 forming longitudinally extending channels (Fig. 14). Final 2-3.
According to the Examiner, "[ c ]laim 9 differs from modified Haussman
('388) in reciting that each cell has its own heat spreader while Haussman
('388) teaches that the cells in the offset row are positioned within respective
single heat spreaders, but the cells of the row above them are only
surrounded by the 'tails' of those of those heat spreaders." Final 4. Thus,
only one row of the two rows of cells 16 shown in the Figure 14
embodiment are "positioned in a respective single heat spreader" as required
by claim 9. Id.
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Application 13/876,302
The Examiner concludes that "it would have been obvious to one of
ordinary skill in the art at the time of the invention to position each cell
within a respective single heat spreader in order to enhance the heat transfer
from the cells" because "the skilled artisan would readily appreciate that
providing a respective single heat spreader for each cell of the plurality of
cylindrical battery cells will enhance the heat transfer from the cells," and
"[i]t is well settled that the mere duplication of parts, such that all the cells
are positioned within a respective single heat spreader of the same shape, has
no patentable significance unless a new and unexpected result is produced
(see e.g., MPEP § 2144.04)." Final 4--5.
Appellants contend that duplicating the heat spreaders of Haussman's
Figure 14 embodiment would create a heat spreader overlap Haussman seeks
to avoid. Br. 8. But the problem is that claim 9 is broader than either the
Examiner or the Appellants appreciate. Claim 9 is directed to "[a] battery
pack comprising: a plurality of cylindrical battery cells ... each cell of said
plurality of cylindrical battery cells being positioned in a respective single
heat spreader .... " Claim 9 ( emphasis added).
The transitional phrase "comprising" allows for the presence of cells
other than the plurality of cells positioned in a respective single heat
spreader. Under this reasonable interpretation of claim 9, the lower row of
cells 16 (what the Examiner calls the offset row) is the "plurality of
cylindrical battery cells" required by claim 9. Each of these lower row cells
is "positioned in a respective single heat spreader" as further required by
claim 9. The upper low of cells 16 shown in Haussman's Figure 14 are not
positioned in a respective single heat spreader, but because claim 9 uses the
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Application 13/876,302
transitional phrase "comprising," claim 9 is open to their presence in the
battery pack.
Because duplication of the heat spreaders is not required to meet the
terms of claim 9, Appellants' contentions with regard to the duplication of
heat spreaders do not identify a reversible error in the Examiner's rejection.
Appellants further find fault with the Examiner's combination of the
teachings of Norley with those of Haussman. Br. 5. The Examiner
acknowledges that Haussman does not teach forming the heat spreader of
graphite and turns to Norley as evidence that using graphite was known in
the art and its use in Haussman's heat spreader would have been obvious to
the ordinary artisan. Final 3. Appellants contend the Examiner's articulated
reason for making the substitution is flawed. Br. 5.
The Examiner has provided adequate evidence supporting the use of
graphite in heat spreaders. Final 3--4; Ans. 5. Haussman states that the heat
spreaders "consist of aluminum, copper or corresponding materials
exhibiting high thermal conductivity . .. " Id. (emphasis added). Norley
teaches flexible graphite that can be used in heat spreaders that "offer
thermal conductivity comparable with or better than copper or aluminum,
but are a fraction of the weight of those materials, and provide significantly
greater design flexibility" and "take advantage of the highly directional
properties of graphite to move heat away from sensitive components."
Norley col. 1, 11. 18-24, 11. 41-58. The proposed modification flows directly
from the evidence in the references. Graphite was a known heat spreading
material for use in heat spreaders and amounts to a predictable use of a prior
art element according to its established function. When a claim is to a
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Application 13/876,302
combination that 'simply arranges old elements with each performing the
same function it had been known to perform' and yields no more than one
would expect from such an arrangement, the combination is obvious. " KSR,
550 U.S. 398, 417 (2007), quoting Sakraida v. AG Pro, Inc., 425 U.S. 273,
282 (1976).
Claim 22
Claim 22 requires that the "heat spreaders further comprise a pair of
curved legs extending from said semicircular portions away from said radial
outer surfaces, each curved leg having a radius sized to be substantially flush
with a semicircular portion of an adjacent heat spreader."
Appellants disagree with the Examiner's finding that Haussman's
Figure 14 embodiment has the curved legs of claim 22. Br. 9. But
Appellants' argument is based on the premise that one must duplicate the
fins in order to meet the requirements of claim 9. As we explain above, this
duplication is not required.
We are cognizant of the fact that claim 22 recites that "the radius [is]
sized to be substantially flush with a semicircular portion of an adjacent heat
spreader." However, the limitation on radius has little effect because neither
claim 22 nor any claim it depends from affirmatively requires a heat
spreader of a particular radius in the adjacent position. The radius, thus, can
be of any radius. There is no dispute that the tails of Haussman's Figure 14
heat spreaders have curved legs around the upper cells 16 and have a radius.
Moreover, the claims do not affirmatively require a heat spreader in
the adjacent position. Thus, the semicircular portion need not actually abut
an adjacent heat spreader. Although the claim may imply the presence of an
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Application 13/876,302
adjacent heat spreader, this adjacent heat spreader should be affirmatively
set forth as a structure of the claimed battery pack in order for it to have
proper limiting force. "During patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed." In re Zietz, 893 F.2d 319,321 (Fed.
Cir. 1989). That is, a patent applicant has the opportunity and responsibility
to remove any ambiguity in claim term meaning by amending the claims.
"Only in this way can uncertainties of claim scope be removed, as much as
possible, during the administrative process." In re Zietz, 893 F.2d at 322.
CONCLUSION
We sustain the Examiner's rejection based on our broader claim
interpretation.
DECISION
The Examiner's decision is affirmed, but denominated a new ground
of rejection.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 4I.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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Application 13/876,302
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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 ).
AFFIRMED; 37 C.F.R. § 4I.50(b)
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