Ex Parte Wyatt et al

Patent Trial and Appeal Board

Oct 19, 2017

13954919 (P.T.A.B. Oct. 19, 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.
13/954,919 07/30/2013 Perry M. Wyatt 13PS069-US (JOCP:0134) 6544
75576 7590 10/20/2017
Johnson Controls, Inc.
c/o Fletcher Yoder PC
P.O. Box 692289
Houston, TX 77269
EXAMINER
OHARA, BRIAN R
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
10/20/2017 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 PERRY M. WYATT and THANH T. NGUYEN
____________________

Appeal 2017-001978
Application 13/954,9191
Technology Center 1700
____________________

Before JEFFREY T. SMITH, MICHELLE N. ANKENBRAND, and
DEBRA L. DENNETT, Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–18, 20–27, and 29–33, which constitute all the claims
pending in this application. Claims 19 and 28 have been cancelled. See
Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 Appellant is applicant Johnson Controls Technology Company, the real
party in interest. Appeal Brief filed March 28, 2016 (“Appeal Br.”) 2.
2 In our Opinion, we refer to the Specification filed July 30, 2013 (“Spec.”);
the Final Action mailed November 27, 2015 (“Final Act.”); the Appeal Brief
or Appeal Br.; the Examiner’s Answer mailed September 21, 2016 (“Ans.”);
and the Reply Brief filed November 21, 2016 (“Reply Br.”).
Appeal 2017-001978
Application 13/954,919

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The claims are directed to lithium ion battery modules with lead acid
form factors. Claim 1, reproduced below with disputed language italicized,
is illustrative of the claimed subject matter:
1. A lithium ion battery module, comprising:
a housing, wherein dimensions of the housing conform to
overall dimensions for a standard lead acid battery;
a plurality of lithium ion battery cells arranged in a stack
within the housing; and
a heat sink outer wall feature of the housing, wherein the
heat sink outer wall feature substantially extends in at least one
direction to an outermost dimension of the standard lead acid
battery.
Appeal Br. 19 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Middleton US 2,705,254 Mar. 29, 1955
Ozawa US 6,323,608 B1 Nov. 27, 2001
Marukawa et al.
(“Marukawa”)
US 2003/0017384 A1 Jan. 23, 2003
Buck et al.
(“Buck”)
US 2008/0090137 A1 Apr. 17, 2008
Kawai US 2010/0003581 A1 Jan. 7, 2010
Hashima et al.
(“Hashima”)
US 2013/0268165 A1 Oct. 10, 2013
Pecnik et al.
(“Pecnik”)
US 2013/0293005 A1 Nov. 7, 2013
Matz et al.
(“Matz”)
DE 10 2010 013 150 A1 Sept. 29, 2011

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Application 13/954,919

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REJECTIONS
The Examiner maintains and Appellant seeks review of the following
rejections:
Rejection 1: claims 1–18, 20–27, 29, 30, 32, and 33 under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112, second paragraph, as indefinite3;
Rejection 2: claims 1–10, 12–14, 16–18, 20, 24, 25, and 29–33 under
35 U.S.C. § 103(a) as unpatentable over Buck in view of Kawai;
Rejection 3: claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Buck as modified by Kawai and further in view of Marukawa;
Rejection 4: claims 15 and 26–27 under 35 U.S.C. § 103(a) as
unpatentable over Buck as modified by Kawai and further in view of
Middleton, Hashima, Pecnik, and Ozawa; and
Rejection 5: claims 21–23 under 35 U.S.C. § 103(a) as unpatentable
over Buck as modified by Kawai and further in view of Matz4. Final Act. 2–
17.
OPINION
Rejection under 35 U.S.C. § 112 as indefinite
The Examiner finds that claims 1–18, 20–27, and 29, 30, 32, and 33
are indefinite under 35 U.S.C § 112(b) or 35 U.S.C § 112, second paragraph,
for inclusion of the term “standard lead acid battery.” Final Act. 2. The

3 In the Answer, the Examiner withdrew the rejection of claim 31 as
indefinite.
4 Although paragraph 39 of the Final Action indicates that the rejection is
over Buck as modified by Marukawa in view of Martz, review of additional
paragraphs clarifies that the rejection is over Buck in view of Kawai and
further in view of Matz. See Final Act. 17–19.
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Application 13/954,919

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Examiner finds the term is a relative term that the claims do not define, the
Specification does not provide a standard for ascertaining the required
degree, and one of ordinary skill in the art at the time of the invention would
not have been reasonably apprised of the scope of the invention. Id. at 2–3.
The Examiner finds that lead acid batteries are used in an array of different
devices, including cars, computers, lamps, and cell phones, and that the
dimensions of such batteries are not interchangeable. Ans. 19.
Appellant argues that a standard lead acid battery is “quite clearly
described in the specification as a lead acid battery having dimensions that
comply with a standard.” Appeal Br. 9. Appellant contends in the Appeal
Brief that “standard lead acid battery” should not be interpreted as being a
vehicle battery, but reverses this stance in the Reply Brief, there arguing
that, in light of the Specification, one of ordinary skill in the art would
understand the term to refer to vehicle batteries. Appeal Br. 12; Reply Br. 2.
Nowhere in the claims or Specification does Appellant establish the
standard(s) to which the claims are directed. The Specification states that
“the present disclosure relates to battery cells that may be used in vehicular
contexts, as well as other energy storage/expending applications.” Spec. ¶ 1
(emphasis added). The Specification spells out that the invention is not
limited to batteries for use in vehicles: “Particular embodiments are directed
to lithium ion battery cells that may be used in vehicular contexts . . . as well
as other energy storage/expending applications (e.g., energy storage for an
electrical grid).” Spec. ¶ 7. The Specification discloses some trade
association standards for vehicle batteries, but explains that the battery
module “may generally be representative of a non-lead acid battery that
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Application 13/954,919

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conforms to other standardized form factors for lead acid batteries.” Spec.
¶¶ 142–43.
On this record, we cannot say that Appellant claims the invention with
words or phrases whose meaning is clear. See In re Packard, 751 F.3d
1307, 1311 (Fed. Cir. 2014) (during prosecution a claim is indefinite when it
contains words or phrases whose meaning is unclear). Appellant fails to
show that the Examiner reversibly errs in finding claims 1–18, 20–27, and
29, 30, 32, and 33 to be indefinite.
Prior art rejections
In order to be able to consider the prior art, the Examiner interprets
“standard lead acid battery” as though it refers to a vehicle battery. Final
Act. 3. To avoid piecemeal appeals, and in the interest of administrative
efficiency, we conditionally interpret the term “standard lead acid battery” as
referring to a vehicle battery.5
Rejection of claims 1–10, 12–14, 16–18, 20, 24–25, and 29–33
over Buck in view of Kawai
Appellant argues the patentability of claims 1–10, 12–14, 16–18, 20,
24–25, and 29–33 over Buck in view of Kawai as a group. Appeal Br. 12–
15. We select independent claim 1 as representative of the group. The
remaining claims in the group will stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).

5 We note that vehicle batteries are not limited to those in automobiles. For
example, radio controlled vehicles and motorcycles are also vehicles with
batteries. Automobiles, radio controlled vehicles, and motorcycles do not all
use batteries with the same dimensions. In this Opinion, we consider the
recited “standard lead acid battery” to have the form factor of an automobile
battery.
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With respect to claim 1, the Examiner finds that Buck discloses a
lithium ion battery module comprising a housing, wherein dimensions of the
housing conform to overall dimensions for a standard lead acid battery in a
vehicle, and a plurality of lithium ion battery cells arranged in a stack within
the housing. Final Act. 4–5. The Examiner finds that Buck does not
disclose a heat sink outer wall feature of the housing, wherein the heat sink
outer wall feature substantially extends in at least one direction to an
outermost dimension of the standard lead acid battery. Id. at 5. However,
the Examiner finds that Kawai discloses a battery housing case wherein
heat-radiating fins are provided on the outer surfaces of the side walls. Id.
The Examiner determines that one of ordinary skill in the art at the time of
the invention would have found it obvious to use the heat-radiating fins from
Kawai in the battery assembly of Buck to increase the area in contact with
outside air to allow for efficient heat radiation from the battery. Id.
Appellant argues that neither Buck nor Kawai disclose dimensions for
the housing for a standard lead acid battery. Appeal Br. 14; Reply Br. 4.
Nonetheless, both references are directed to batteries for use in an
automotive vehicle. Buck Abstract; Kawai ¶ 2 (electric cars). Both
references, therefore, disclose batteries having the dimensions of a standard
lead acid battery in an automobile. Appellant has not adequately explained
why the batteries of Buck and Kawai do not have the dimensions of a
standard lead acid battery.
Appellant also argues that there is no motivation to combine Buck
with Kawai’s heat-radiating fins because Buck already includes fin portions.
Reply Br. 5. However, one of ordinary skill can use his or her ordinary skill,
creativity, and common sense to make the necessary adjustments and further
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modifications to result in a properly functioning device. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”). Furthermore, “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” See id. at 417. A
person of ordinary skill would have recognized that fins located external of a
battery module would have increased the area in contact with outside air to
allow efficient heat radiation for the assembled battery (as disclosed by
Kawai). Kawai ¶ 64; see Final Act. 5.
Appellant does not show that the Examiner reversibly erred in
determining that claim 1 is obvious over Buck in view of Kawai. Because
Appellant’s argument applies equally to claims 2–10, 12–14, 16–18, 20, 24–
25, and 29–33, Appellant, likewise, does not show reversible error in the
Examiner’s rejection of those claims.
Rejections of claims 11, 15, 21–23, 26, and 27 over Buck,
Kawai, and additional references
Appellant does not make substantive arguments for patentability of
claims 11, 15, 21–23, 26, or 27 over additional references that differ from
those arguments made for patentability of claims over only Buck in view of
Kawai. See Appeal Br. 15–17. The combination of Buck and Kawai
renders claim 1 obvious for the reasons given above. Consequently,
Appellant does not overcome the Examiner’s rejections of claims 11, 15,
21–23, 26, and 27 as obvious over the cited prior art.
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DECISION
For the above reasons, the Examiner’s rejections of claims 1–18, 20–
27, and 29–33 are 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)(1)(iv).

AFFIRMED