Ex Parte Woehrle et al

Patent Trials and Appeals Board

Apr 30, 2019

13825300 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/825,300 02/05/2014
10800 7590 04/30/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Thomas Woehrle
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.
2178-0706 1087
EXAMINER
RAYMOND, BRITTANY L
ART UNIT PAPER NUMBER
1722
MAIL DATE DELIVERY MODE
04/30/2019 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 THOMAS WOEHRLE, PA TRICK AURACHER,
ALEKSANDER PETREVSKI, and CONRAD BUBECK
Appeal2018-006147
Application 13/825,300
Technology Center 1700
Before KAREN M. HASTINGS, RAEL YNN P. GUEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection under 35 U.S.C. § 103(a) of claims 1, 5, 8, 9, 12, 13, and 15
as unpatentable over at least the combined prior art of Doomemik
(US 2003/0049522 Al; Mar. 13, 2003), Kim (US 2006/0093922 Al; May 4,
1 The real parties in interest are stated to be Robert Bosch GmbH and
Samsung SDI Co., Ltd. (Appeal Br. 2).
Appeal2018-006147
Application 13/825,300
2006), and Toya (US 2008/0061735 Al; Mar. 13, 2008). 2 We have
jurisdiction over the Appeal under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
Claim 1 is representative:
1. A method for the production of a housing for an
electrochemical element, comprising:
molding a metallic housing structure having four planar
exterior sides and a planar exterior base; and
applying a first insulation foil by adhesive bonding
planar side portions of the first insulation foil to each of the
four planar exterior sides of the metallic housing structure and
adhesive bonding a planar base portion of the first insulation
foil to the planar exterior base of the metallic housing structure;
and
applying a second insulation foil by adhesive bonding to
the first insulation foil,
wherein at least one of the first insulation foil and the
second insulation foil includes a layer system having at least
one base layer and at least one adhesive layer,
wherein the at least one base layer comprises a polymer
selected from the group consisting of polyesters, silicones,
polyolefins, polyhaloolefins, polystyrenes, polyimides, and
combinations thereof,
wherein a shape of the first insulation foil is configured
to completely cover each of the planar exterior sides and the
planar exterior base of the metallic housing structure, and
2 The Examiner additionally applies Kato (US 2009/0317711 Al; Dec. 24,
2009) to the rejection of claims 9, 12, 13, and 15 (Final Action 4; Ans. 5),
but a discussion of Kato is not needed for disposition of this Appeal.
2
Appeal2018-006147
Application 13/825,300
wherein at least one of the at least one base layer and the
at least one adhesive layer includes an additive that improves
the thermal conductivity thereof.
Independent claim 9 is directed to a housing for a lithium ion cell
reciting the same key limitation in dispute, that is, "wherein a shape of the
first insulation foil is configured to completely cover ... the planar exterior
sides and the planar exterior base of the metallic housing structure" as in
claim 1 (Claims Appendix).
OPINION
Upon consideration of the evidence of record and each of Appellants'
contentions as set forth in the Appeal Brief filed December 4, 2017, as well
as the Reply Brief filed May 23, 2018, we determine that Appellants have
not demonstrated reversible error in the Examiner's rejection (e.g., Ans. 3-
17 (mailed March 26, 2018)). In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir.
2011) (explaining the Board's long-held practice of requiring Appellants to
identify the alleged error in the Examiner's rejection.). We sustain the
rejections for the reasons expressed by the Examiner in the Final Office
Action and the Answer. We add the following for emphasis.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007); see also In re Fritch, 972 F.2d 1260, 1264--
65 (Fed. Cir. 1992) (A reference stands for all of the specific teachings
3
Appeal2018-006147
Application 13/825,300
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom.).
Although Appellants separately address claims 1 and 9 (Appeal Br.
generally), all of the arguments for claim 9 (Appeal Br. 15-21) were made
for claim 1 (Appeal Br. 5-14). Thus, we address the arguments common to
claims 1 and 9 together in this analysis.
Appellants do not dispute the Examiner's findings with respect to the
teachings of the Doomemik and Kim (and Kato for independent claim 9);
rather, they allege that Toya does not teach or suggest "molding" the
metallic housing structure for its battery (e.g., Appeal Br. 7-8; Reply Br. 2-
4) and that Toya does not teach or suggest that its plastic film 12
"completely" covers each of the planar sides and base of the housing as
required in each of claims 1 and 9 (e.g., Appeal Br. 9-13; Reply Br. 4--8).
Appellants also contend that the Examiner failed to provide proper reasoning
to modify Doomemik with teachings from Toya (e.g., Appeal Br. 12-14).
These arguments are not persuasive.
First, Appellants have not shown error in the Examiner's position that
"molding" the battery housing as recited in claim 1 into the appropriate
shape to enclose the battery is obvious in accord with the broadest
reasonable interpretation of "molding" (e.g., Ans. 8 ( de facto explaining that
molding merely means to shape material to a specific configuration/design.);
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (it
is well established that "the PTO must give claims their broadest reasonable
construction consistent with the specification" and if the Specification does
not provide a definition for claim terms, the PTO applies a broad
interpretation). Furthermore, Appellants admit that molding a battery
4
Appeal2018-006147
Application 13/825,300
housing was known in the prior art (e.g., Spec. 1 :20-23). An applicant
cannot defeat an obviousness rejection by asserting that the cited references
fail to teach or suggest elements which the applicant has acknowledged are
taught by the prior art. Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560,
1570 (Fed. Cir. 1988); In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975)
(A statement by an applicant that certain matter is prior art is an admission
that the matter is prior art for all purposes.). 3
Second, Appellants' argument regarding how Toya's film/foil 12 does
not completely cover the planar surfaces of the housing/case because it has
openings for portions of the circuit board (e.g., Appeal Br. 10) are not
persuasive of error, since one of ordinary skill would have readily inferred
that the film would indeed cover all of the "planar surfaces" as discussed by
the Examiner (e.g., Ans. 10, 11). Notably, Appellants' Specification allows
for the foils to have cutouts for pole(s) 5 of the battery (e.g., Spec. 33:32-
35). Contrary to Appellants' position, one of ordinary skill would have
readily inferred that Toya's film 12 does indeed overlap after being wrapped
in the front from Figures 1 and 2 of Toya (see also Toya ,r 80). In any event,
it would have been obvious to completely cover a rectangular battery
housing versus a cylindrical battery housing of Doomemik as batteries
3 Appellants' remarks in the Reply Brief that the Examiner has made an
improper new ground of rejection in the Answer by explicitly addressing the
molding limitation for the first time in the Answer are noted (Reply Br. 2-
3); however, such a complaint is not properly an issue on appeal. Any
allegations of improper new grounds of rejection should have been made in
a petition to the Director. Appellants have waived such arguments by not
following procedure (i.e., by filing a petition seeking review of an
Examiner's failure to designate a rejection as a new ground in the
Examiner's Answer). 37 C.F.R. § 4I.40(a).
5
Appeal2018-006147
Application 13/825,300
having a rectangular shape are well known and further require a label
wrapped around the exterior for protection, e.g., as exemplified in Toya
(Ans. 11).
Finally, Appellants have not shown error in the Examiner's position
that Toya merely exemplifies that a battery having a rectangular shape with
a complementary housing and protective label/foil is known (Ans. 11, 12),
and thus, to apply the two foil insulation structure of Doomemik/Kim to this
known shape of battery would have been obvious to one of ordinary skill in
the art, requiring no more than ordinary creativity (Ans. 11, 12). KSR, 550
U.S. at 421 ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton."); Ball Aerosol & Specialty Container, Inc. v.
Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (Under the flexible
inquiry set forth by the Supreme Court, the PTO must take account of the
"inferences and creative steps," as well as routine steps, that an ordinary
artisan would employ.).
DECISION
The decision of the Examiner is affirmed.
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
6