FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Sep 8, 2020

2019006616 (P.T.A.B. Sep. 8, 2020)

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.
14/536,966 11/10/2014 Dhanunjay VEJALLA 83476444;
67186-134 PUS1
2111
46442 7590 09/08/2020
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
AYAD, TAMIR
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
09/08/2020 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DHANUNJAY VEJALLA, ADAM DENLINGER,
THOMAS ADLER, and PATRICK DANIEL MAGUIRE

Appeal 2019-006616
Application 14/536,966
Technology Center 1700
Before TERRY J. OWENS, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21 and 23–27. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Ford Global
Technologies, LLC. Appeal Br. 2.
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Application 14/536,966

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a battery assembly
having a battery array and an integrated heat exchanger. Spec. ¶ 1. Claims 1,
11, and 16 are the independent claims on appeal. Claims 1 and 11 are
illustrative:
1. A battery assembly, comprising:
an array frame including a frame body and a slot formed
through said frame body;
a thermal fin within said frame body; and
a heat exchanger plate positioned within said slot,
wherein said heat exchanger plate is a separate component from
said thermal fin and is
contiguous with a portion of said thermal fin.

11. A battery assembly, comprising:
an array frame including at least one retention arm; and
a heat exchanger plate connected to said array frame by said at least
one retention arm,
wherein said heat exchanger plate is in direct contact with said at least
one retention arm.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:

2 In this Decision, we refer to the Final Office Action dated October 22,
2018 (“Final Act.”), the Appeal Brief filed March 21, 2019 (“Appeal Br.”),
the Examiner’s Answer dated July 8, 2019 (“Ans.”), and the Reply Brief
filed September 6, 2019 (“Reply Br.”).
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Application 14/536,966

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Name Reference Date
Maguire et al.
(“Maguire”)
US 7,604,896 B2 Oct. 20, 2009
Stoughton et al.
(“Stoughton”)
US 2012/0040221 A1 Feb. 16, 2012

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1–10, 16–21, and 23–27 under 35 U.S.C. § 112 as failing to
comply with the written description requirement. Ans. 4–7.
B. Claims 1–10, 16–21, and 23–27 under 35 U.S.C. § 112 as indefinite.
Id. at 4–6.
C. Claims 1–9, 11–21, and 23–27 under 35 U.S.C. § 102 as anticipated
by Stoughton. Id. at 7.
D. Claim 10 under 35 U.S.C. § 103 as obvious over Stoughton in view of
Maguire. Id. at 15.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error except where we
otherwise indicate below. Thus, where we affirm the Examiner’s rejections,
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we do so for the reasons expressed in the Final Office Action and the
Answer. We add the following primarily for emphasis.
Rejection B, indefiniteness. We first address indefiniteness because
our written description, anticipation, and obviousness determinations require
determining claim scope. During prosecution, “‘[a] claim is indefinite when
it contains words or phrases whose meaning is unclear.’” Ex parte
McAward, Appeal 2015-006416, slip op. at 11 (quoting In re Packard, 751
F.3d 1307, 1314 (Fed. Cir. 2014) (per curium)).
The Examiner provides three distinct indefiniteness rationales. The
Examiner first rejects claims 1–10, 21, 23, and 26–27 as indefinite based
upon claim 1’s recitation “wherein said heat exchanger plate is a separate
component from said thermal fin and is contiguous with a portion of said
thermal fin” being unclear. Ans. 4; 20–21. The Examiner, in particular,
determines that claim 1’s use of the term “contiguous” is unclear. Id. at 17–
18; 20–21.
Appellant argues that claim 1’s recitation of “contiguous” is not
unclear. Appeal Br. 4, 11–12; Reply Br. 1–3. Appellant argues that, in the
Specification, the heat exchanger 25 is always described as being a separate
component from the thermal fin but is also always “in contact (i.e.,
contiguous) with the leg 72 of the thermal fin 66.” Appeal Br. 12. Appellant
argues that if contiguous does not require contact, the recitation of
“contiguous” would be meaningless. Id. Appellant cites Webster’s
Dictionary where the first definition of contiguous is “being in actual
contact: touching along a boundary or at a point.” Id. at 7, 22 (Ex. A).
The Examiner determines that the recitation “contiguous” presents a
semantic ambiguity because it can have more than one meaning and is not
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precise. Ans. 17. We agree. In particular, parts can be contiguous if they are
in actual contact—as Appellant urges. Appeal Br. 22 (Ex. A). Parts can also,
however, be contiguous when “touching or connected throughout in an
unbroken sequence” as reflected by the fourth Webster’s Dictionary
definition. Id. (providing, as an example, a “contiguous row of houses”); see
also Ans. 17; Examiner’s cited excerpt from Vocabulary.com (“Use the
adjective contiguous when you want to describe one thing touching another
thing, or next to it but not actually touching”).3
Of course, we do not construe claims in a vacuum or by only
considering dictionaries and ordinary meaning. Rather, during prosecution,
we construe patent claims based upon “the broadest reasonable meaning of
the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054–55 (Fed. Cir. 1997); see also Cuozzo Speed Tech., LLC v. Lee, __ U.S.
__, 136 S.Ct. 2131, 2145 (2016) (noting that the Patent Office has used the
broadest reasonable construction standard for more than 100 years). Our
reviewing Court has emphasized that “the specification is always highly
relevant to the claim construction analysis. Usually, it is dispositive; it is the
single best guide to the meaning of a disputed term.” Cf. Phillips v. AWH
Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (internal quotes and
citation omitted).

3 People use the word “contiguous” in this sense when referring to the
contiguous United States as meaning the forty-eight states in North America
that are not separated by a body of water or another nation.
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Here, the Specification sheds little light on claim 1’s “contiguous”
recitation because the Specification never uses the word contiguous. While
we agree with Appellant that the Specification describes embodiments
where, for example, contact is maintained between the heat exchanger and
the thermal fin (Ans. 6 (citing Spec. ¶¶ 63, 67, 67)), Appellant does not
direct us to any portion of the Specification that forbids an intermediary
between the heat exchanger. Thus, the Specification does not weigh against
construing contiguous as “touching or connected throughout in an unbroken
sequence” (Appeal Br. 22) because the Specification does not forbid an
unbroken sequence of, for example, heat exchanger, intermediary part,
thermal fin. The Specification embodiments Appellant emphasizes fall
within both the narrow and broader meanings of “contiguous.” The
embodiments do not, therefore, weigh in favor of only the more narrow
meaning.
Appellant’s argument that “contiguous” must mean touching based on
the Specification’s disclosed embodiments (Appeal Br. 6) invites this panel
to read limitations from the Specification into the claims. Our reviewing
court has often cautioned against such claim construction. See, e.g., E-Pass
Techs., Inc. v. 3Corn Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (“The
problem is to interpret claims ‘in view of the specification’ without
unnecessarily importing limitations from the specification into the claims.”).
Because contiguous is, in the context of claim 1, amenable to more
than one plausible claim construction, it is unclear. Cf. Ex parte Miyazaki,
89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“if a claim is amenable
to two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
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claimed invention by holding the claim unpatentable under 35 U.S.C. § 112,
second paragraph, as indefinite”). The Examiner’s rejection provides
Appellant an opportunity to bring the necessary clarity to the claim
language. See Packard, 751 F.3d at 1314 (affirming an indefiniteness
rejection because Packard had been given the opportunity to bring clarity to
his claim language stating that “[i]n some cases it is difficult enough for
courts to construe claims when the draftsperson has made every effort to be
clear and concise, let alone when the claims have readily observable
ambiguities or incoherencies within them.”). 35 U.S.C. § 112 “puts the
burden of precise claim drafting squarely on the applicant.” In re Morris,
127 F.3d 1048, 1056 (Fed. Cir. 1997); see also Halliburton Energy Servs. v.
M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that “the patent
drafter is in the best position to resolve the ambiguity in the patent claims,
and it is highly desirable that patent examiners demand that applicants do so
in appropriate circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in litigation.”).
We, therefore, sustain the Examiner’s rejection of claim 1 and claims
depending from claim 1 as indefinite.
As a second indefiniteness position, the Examiner raises a
substantially similar rejection with respect to claim 16. Ans. 6. Claim 16
recites “said lower cover is contiguous with at least two array frames,” and
the Examiner determines that “it is not clear from the limitation whether
direct contact is required.” Ans. 6, 19–20. Appellant again argues that
“contiguous” requires direct contact. Appeal Br. 13–14. For the reasons
explained above, we also sustain the Examiner’s rejection of claim 16 and
claims depending from claim 16.
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As a third position, the Examiner raises a second rationale for
rejecting claim 1 as indefinite. The Examiner determines that claim 1 is
unclear because it recites a “thermal fin within said frame body” but claim 5
recites “wherein said thermal fin includes a body and a leg that extends to a
position outside of said frame body.” Ans. 5. Appellant argues that these
recitations do not conflict because a thermal fin can be within said frame
body while the leg of the frame also extends outside the frame body as
illustrated by the Specification’s Figure 2B. Appeal Br. 13.
Appellant’s argument persuades us of error with regard to this third
indefiniteness position. Claim 1 does not require that the thermal fin be
entirely within said frame body. Figure 2B illustrates a scenario where both
claim 1 and claim 5 can be satisfied: a portion of the fin is within the frame
body and a portion of the fin (the leg) extends outside the frame body. We,
therefore, do not sustain this separate basis for the Examiner’s indefiniteness
rejection.
Although we sustained the Examiner’s indefiniteness rejection with
respect to the term “contiguous” as recited in claims 1 and 16, we
nonetheless address the Examiner’s other rejections of claims 1–10, 16–21,
and 23–27 in the interest of efficiency. When addressing the Examiner’s
other rejections below, we provisionally construe claims 1 and 16 based on
the broader possible meaning of the word “contiguous.” In re Morris, 127
F.3d at 1054–55. In particular, we construe “contiguous” as meaning
touching or connected throughout in an unbroken sequence where the
connection can be via intermediate structure.
Rejection A, written description. The Examiner rejects claims 1–10,
16–21, and 23–27 as failing to satisfy the written description requirement of
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35 U.S.C. § 112. Ans. 4–7. To determine whether the written description
requirement is met, we consider whether disclosure of the earlier application
relied upon “conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, [the inventor] was in possession of the
invention.” In re Alton, 76 F.3d 1168, 1172 (Fed. Cir. 1996).
The Examiner presents four distinct written description positions. The
Examiner first determines that claim 1 and its dependent claims fail to
comply with the written description requirement because the Specification
describes the heat exchanger being in contact with the thermal fin but does
not describe the heat exchanger being “contiguous” with the thermal fin.
Ans. 4. As explained above, we provisionally construe “contiguous” as
allowing also allowing indirect contact. Appellant’s argument against this
rejection depends upon “contiguous” requiring direct contact. Appeal Br. 5–
7. Appellant does not persuasively argue that a person of skill in the art
would have understood, based on the Specification, that the inventor
possessed a contiguous heat exchanger and thermal fin where the two parts
are not in direct contact. As such, Appellant does not identify error in the
Examiner’s position that the Specification does not adequately provide
written description support for the full scope of claim 1. We, therefore,
sustain the Examiner’s rejection.
Second, the Examiner also determines that claim 16 (and claims
depending from claim 16) fails to comply with the written description
requirement because the Specification demonstrates a lower cover connected
to frames but does not describe the lower cover being contiguous with array
frames. Ans. 5. Appellant’s argument against this rejection again depends
upon “contiguous” requiring direct contact. Appeal Br. 9–10. Appellant does
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not persuasively argue that a person of skill in the art would have
understood, based on the Specification, that the inventor possessed a
contiguous lower cover and at least two array frames where the contiguous
parts are not in direct contact. As such, Appellant does not identify error in
the Examiner’s position that the Specification does not adequately provide
written description support for the full scope of claim 16. We, therefore,
sustain the Examiner’s rejection.
Third, the Examiner similarly determines that claim 26 fails to comply
with the written description requirement because the Specification does not
teach a heat exchanger plate contiguous with said leg. Ans. 6–7. Appellant’s
argument again relies depends upon “contiguous” requiring direct contact.
Ans. 10–11. We sustain this rejection because Appellant does not identify
error in the Examiner’s position that the Specification does not adequately
provide written description support for the full scope of claim 26.
Fourth, claim 27 recites, in part, a “groove or passage extends along a
first axis and said slot extends along a second axis that is transverse to said
first axis.” Appeal Br. 20 (Claims App.). The Examiner determines that the
Specification does not describe this recitation. Ans. 7. Appellant explains
that Figures 2B and 5A–5C demonstrate the inventor’s possession of this
recitation. Appeal Br. 11. Based upon our review of these figures, we agree
with Appellant’s possession in this regard. We do not sustain the Examiner’s
rejection of claim 27 on this basis.
Rejection C, anticipation by Stoughton. The Examiner rejects claims
1–9, 11–21, and 23–27 under 35 U.S.C. § 102 as anticipated by Stoughton.
Ans. 7. A reference anticipates a claim if it “disclose[s] each and every
element of the claimed invention, whether it does so explicitly or
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inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citation
omitted). The elements “must be arranged or combined in the same way as
in the claim.” Id. (internal quotes and citation omitted).
The Appellant presents separate arguments for independent claims 1,
11, and 16. We limit our discussion to those claims. All other claims stand or
fall with the claim from which they depend. 37 C.F.R. § 41.37(c)(1)(iv)
(2013).
With regard to claim 1, the Examiner finds that Stoughton teaches a
battery assembly where, for example, the heat exchanger plate is a separate
component from a thermal fine and is contiguous with a portion of the
thermal fin. Ans. 7–8 (citing Stoughton).
Appellant argues that the alleged heat exchanger plate of Stoughton is
only connected to the alleged thermal fin through an intermediate part and
that “contiguous,” properly construed, requires direct contact. Appeal Br. 15.
Because Appellant’s argument depends upon the narrow claim construction
of “contiguous” that we reject above, Appellant’s argument does not identify
error. We thus sustain the Examiner’s rejection of claim 1.
Claim 11 recites, in part, “[a] heat exchanger plate is in direct contact
with said at least one retention arm.” Appeal Br. 19 (Claims App.). The
Examiner finds, for example, that Stoughton teaches a heat exchanger plate
in direct contact with at least one retention arm. Ans. 10 (citing Stoughton).
In particular, the Examiner finds that Figure 1 of Stoughton illustrates heat
exchanger plate 65 in direct contact with frame 25, and the Examiner
equates 25 to the recited retention arm. Id.
Appellant argues that “no portion of the frame 25 can even arguably
be [interpreted] as being a ‘retention arm.’” Appeal Br. 15; Reply Br. 5. We
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disagree. As the Examiner explains, claim 16 does not require any particular
shape for the recited “retention arm.” Ans. 23. As Stoughton Figure 1
illustrates, Stoughton’s frame 25 portions of the Stoughton apparatus retain
other parts in place and, as such, may reasonably be viewed as retention
arms of Stoughton’s frame. Id. Appellant does not present a persuasive
argument to the contrary. We thus sustain the Examiner’s rejection of
claim 11.
Our analysis of claim 16 is similar to that of claim 1. The Examiner
finds that Stoughton teaches, for example, a lower cover contiguous with at
least two array frames. Ans. 11 (citing Stoughton). Appellant argues that
“contiguous” means direct contact and argues that Stoughton does not teach
a lower cover contiguous with at least two frames of a battery pack. Again,
because Appellant’s argument depends upon the narrow claim construction
of “contiguous” that we reject above, Appellant’s argument does not identify
error. We thus sustain the Examiner’s rejection of claim 16.
Rejection D, obviousness. The Examiner rejects claim 10 under 35
U.S.C. § 103 as obvious over Stoughton in view of Maguire. Ans. 15.
Appellant argues claim 10 is patentable because claim 10 depends from
claim 1 and because Stoughton fails to disclose the features of claim 1.
Appeal Br. 16. As explained above, however, Appellant has not identified
error in the Examiner’s rejection of claim 1 as anticipated by Stoughton. We,
therefore, also sustain this rejection.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 16–
21, 23–27
112 Written description 1–10, 16–
21, 23–27

1–10, 16–
21, 23–27
112 Indefiniteness 1–10, 16–
21, 23–27

1–9, 11–21,
23–27
102 Stoughton 1–9, 11–
21, 23–27

10 103 Stoughton, Maguire 10
Overall
Outcome
1–21, 23–
27

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED