FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Sep 3, 2021

2020004781 (P.T.A.B. Sep. 3, 2021)

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.
15/825,726 11/29/2017 Hyung Min BAEK 83924956; 67186-136PUS2 2580
46442 7590 09/03/2021
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
TAKEUCHI, YOSHITOSHI
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
09/03/2021 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 HYUNG MIN BAEK,
PATRICK DANIEL MAGUIRE, and AMAR MARPU1
____________

Appeal 2020-004781
Application 15/825,726
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–15 and 17–23. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM IN PART.
BACKGROUND
The subject matter on appeal relates to methods of assembling
batteries for use, for example, in electric vehicles. E.g., Spec. ¶ 2; Claim 1.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Ford
Global Technologies, LLC. Appeal Br. 2.
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Claim 1 is reproduced below from page 12 (Claims Appendix) of the Appeal
Brief:
1. A method, comprising:
housing a battery array within a foam shell; and
securing a barrier to the foam shell,
wherein the foam shell is made of a structural, microcellular
foam material.
REJECTIONS ON APPEAL2
The claims stand rejected as follows:
1. Claims 2–4, 13, and 20 under 35 U.S.C. § 112(b) as indefinite.3
2. Claims 1, 3, 4, 8, 9, and 17 under 35 U.S.C. § 103 as unpatentable
over Tsukamoto (US 2009/0280400 A1, published Nov. 12, 2009).
3. Claim 2 under 35 U.S.C. § 103 as unpatentable over Tsukamoto
and Meintschel (DE 102007/063174, published June 25, 2009).
4. Claims 5–7, 14, 15, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Tsukamoto and Iwamoto (JP 0752660, dated Feb. 28,
1995).

2 The Examiner objects to claim 17 under 37 C.F.R. § 1.75 “as being a
substantial duplicate of claim 3.” Final Act. 5. The Examiner states that,
“[i]n the event the applicant alleges the limitations of claim 17 are severably
distinct from those of claim 3,” then claim 17 would be rejected under 35
U.S.C. § 112(a) for lack of written description. Id. We discern no issue
related to the Examiner’s discussion of claim 17 that needs to be decided as
part of this appeal because the objection is not related to a rejection, and the
rejection under 35 U.S.C. § 112(a) appears to be speculative at this point and
has not actually been entered by the Examiner.
3 In an Advisory Action dated January 7, 2020, the Examiner withdrew a 35
U.S.C. § 112(b) rejection of claims 5, 7, and 15.
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5. Claims 19 and 21 under 35 U.S.C. § 103 as unpatentable over
Tsukamoto and Deponte (US 2015/0214570 A1, published July 30, 2015).
6. Claim 20 under 35 U.S.C. § 103 as unpatentable over Tsukamoto,
Meintschel, and Deponte.
7. Claims 10–12 and 22 under 35 U.S.C. § 103 as unpatentable over
Tsukamoto and Schröter (DE 10 2008 059 971 A1, published June 10,
2010).
8. Claim 13 under 35 U.S.C. § 103 as unpatentable over Tsukamoto,
Schröter, and Meintschel.
9. Claim 23 under 35 U.S.C. § 103 as unpatentable over Tsukamoto,
Deponte, Iwamoto, and Meintschel.
ANALYSIS
Rejection 1
A claim is indefinite under 35 U.S.C. § 112(b) when it contains words
or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309
(Fed. Cir. 2014). The Examiner identifies terms in claims 2–4, 13, and 20
that, according to the Examiner, render those claims indefinite. We address
each below.
Claims 2, 13, and 20. Claim 2 depends from claim 1 and recites,
“further comprising injecting a foam material between the foam shell and the
battery array.” Appeal Br. 12 (Claims Appendix). The Examiner
determines that claim 2 is unclear because it does not specify whether the
“foam material” of claim 2 is the same composition as the “foam shell” of
claim 1. Final Act. 3.
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We reverse the rejection of claim 2. Consistent with the Appellant’s
argument, Appeal Br. 5, the plain language of the claims clearly
encompasses methods in which the foam shell of claim 1 and the foam
material of claim 2 are the same or different foam compositions so long as
both constitute “foam.” The Examiner does not persuasively identify any
ambiguity in the claim language. “[B]readth is not to be equated with
indefiniteness.” In re Miller, 441 F.2d 689, 693 (CCPA 1971).
Although the Examiner does not separately address claims 13 and 20,
those claims appear to be included in Rejection 1 because they include
limitations similar to that of claim 2. Accordingly, we likewise reverse the
rejection of claims 13 and 20.
Claims 3 and 4. Claim 3 depends from claim 1 and recites that
“housing the battery array comprises positioning the battery array on a tray
of the foam shell and nestling a cover of the foam shell against the tray.”
Appeal Br. 12 (Claims Appendix). Claim 4 depends from claim 3.
The Examiner determines that it is not clear “whether said ‘tray of the
foam shell’ and ‘cover the foam shell’” are “(1) a tray and/or cover with the
purpose of being a tray and/or cover for foam, wherein the composition of
the tray and/or cover need not be a ‘foam,’” “(2) a tray and/or cover,
wherein the composition of the tray and/or cover is ‘foam,’” or “(3) a
combination of both (1) and (2).” Final Act. 3.
The Appellant argues that, “[a]s written, the ‘tray’ and the ‘cover’ are
part of the ‘foam shell,” and that the claims are “broad enough to cover any
composition of the ‘cover’ and the ‘tray’ so long as their material
composition includes foam.” Appeal Br. 5.
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We agree with the Appellant that the Examiner has not carried the
Examiner’s burden of showing that the disputed claims are indefinite.
Claim 3 states that the tray and the cover are both “of the foam shell.”
Figure 7 depicts such an embodiment and shows the two pieces of the foam
shell, i.e., the tray 266 and cover 264. Given that the tray and the cover are
components of the “foam shell,” the Examiner has not provided a persuasive
reason to reject the Appellant’s position that the tray and cover must
themselves include foam in order to form a “foam shell.”
We reverse the Examiner’s rejection of claims 3 and 4.
Rejections 2–8
The Appellant raises separate arguments as to claims 1, 2, 5, and 19.
We address those claims below. The remaining claims subject to
Rejections 2–8 will stand or fall with claim 1, from which they depend.
Claim 1. The Examiner finds that Tsukamoto teaches or suggests
each element of claim 1. Final Act. 6–7. Figure 2 of Tsukamoto is
reproduced below.
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Figure 2, above, depicts porous medium 20 housing batteries 18, and itself
housed by receptacle 14 and cover 12. Tsukamoto ¶ 21. The Examiner
finds that Tsukamoto’s porous medium made of a plastic such as
polyphenylene sulfide constitutes “a foam shell” as recited by claim 1. Final
Act. 6–7. The Examiner finds that receptacle 14 corresponds to the recited
“barrier.” Id. As to the recitation that “the foam shell is made of a
structural, microcellular foam material,” the Examiner finds that Tsukamoto
teaches that “the size of the pores is result-effective on the porosity of said
porous medium,” and that “it would have been obvious to optimize the size
of said pores in order to optimize the porosity of said porous medium.” Id.
The Examiner “[a]lternatively” finds that the size of the pores, i.e.,
“microcellular,” is a mere change of size that “does not patentably
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distinguish the instant invention in the absence of persuasive evidence that
the size is significant.” Id. at 7.
The Appellant first argues that Tsukamoto’s barrier is not
“secur[ed] . . . to the foam shell” as required by claim 1 because porous
medium 20 “is simply received within the receptacle 14 when assembling
the battery pack case 10.” Appeal Br. 6.
That argument is not persuasive for reasons consistent with those
stated by the Examiner. See Ans. 9. Figure 2, above, depicts porous
medium 20 being inserted into a receptacle 14 that matches contours with
porous medium 20 and appears to be approximately the same size and shape
as the porous medium 20, indicating some degree of frictional engagement
between the porous medium and the receptacle. Cf. Spec. ¶ 54 (indicating
that “matching contours” results in “secure[] position[ing]” of one
component within another). Moreover, cover 12 is “immobilized and/or
attached to a receptacle 14,” Tsukamoto ¶ 18, which would likewise serve to
secure porous medium 20 to receptacle 14. Particularly under the claim
construction standard applicable to this proceeding (broadest reasonable
construction consistent with the specification, see In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007), we are not persuaded
that Tsukamoto fails to teach or suggest that porous medium 20 is secured to
receptacle 14.
The Appellant also argues that “Tsukamoto does not disclose any
foam material, let alone a structural, microcellular foam material.” Appeal
Br. 6. The Appellant argues that “[t]here is no evidence” that porous plastics
or the polyphenylene sulfide of Tsukamoto “would be understood by a
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person of ordinary skill in the art to be ‘structural, microcellular foam’
materials.” Id.
In the Answer, the Examiner responds that “the term ‘foam’ is defined
in the instant specification as . . . ‘any material containing numerous cells,
intentionally introduced, interconnecting or not, distributed throughout a
mass.’” Ans. 11 (citing Spec. ¶ 50). The Examiner indicates that the porous
plastics disclosed by Tsukamoto fall within the scope of that definition of
“foam.” Id.
In the Reply Brief, the Appellant does not address the definition of
“foam” provided by the Specification and instead raises arguments for the
first time concerning the Examiner’s discussion of result-effective variables
and optimization of pore size. Reply Br. 4–5.
On this record, we are not persuaded of reversible error in the
Examiner’s findings concerning whether Tsukamoto teaches or suggests a
“foam shell” within the scope of claim 1. Particularly in view of the
Appellant’s failure to address the definition in paragraph 50 of the
Specification, expressly relied on by the Examiner in the Answer, we discern
no reason to reject the Examiner’s determination that the porous plastic of
Tsukamoto constitutes a foam. The Appellant’s new arguments in the Reply
Brief concerning optimization of pore size are untimely, and we decline to
consider them. See 37 C.F.R. § 41.41(b)(2).
The Appellant raises no other arguments as to claim 1. We affirm the
Examiner’s rejection of claim 1.
Claim 2. Claim 2 depends from claim 1 and recites that the method
“further compris[es] injecting a foam material between the foam shell and
the battery array.” Appeal Br. 12 (Claims Appendix).
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The Examiner finds that Tsukamoto does not expressly teach the
limitation of claim 2, but that Meintschel, related to similar battery
applications, “teaches partially or completely filling the spaces within said
housing with a heat-conductive potting compound . . . such as polyurethane
foam, including filling spaces between said housing and each of said
individual battery cells in order to ensure electrical insulation therebetween.”
Final Act. 9. The Examiner determines that it would have been obvious to
partially or completely fill spaces within the battery pack of Tsukamoto “in
order to ensure electrical insulation therebetween.” Id.
The Appellant argues that a critical aspect of Tsukamoto is that its
pores are filled with a flame retardant, and that combining Meintschel with
Tsukamoto as proposed by the Examiner would “render Tsukamoto
unsatisfactory for its intended purpose” because it would “eliminate the
ability to absorb the flame retardant within the porous medium 20.” Appeal
Br. 7.
In the Answer, the Examiner responds that “nothing within
Meintschel . . . prevents [flame retardant] from being provided within the
pores of Tsukamoto prior to the injection of the Meintschel foam.” Ans. 12.
In the Reply Brief, the Appellant argues that “[i]t is unclear how the
material of Meintschel could be injected into the pores of Tsukamoto after
providing the flame retardant therein.” Reply Br. 5–6.
That argument is unpersuasive because it misunderstands the
Examiner’s proposal. The Examiner has not proposed injecting the foam of
Meintschel into the pores of Tsukamoto. The Examiner’s proposal uses
flame retardant in the pores as taught by Tsukamoto, and subsequently uses
the foam of Meintschel to fill remaining space in the battery pack for
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purposes of electrical insulation. See Ans. 12; see also Tsukamoto ¶ 22
(describing an embodiment in which “a material can be positioned between
each battery and the porous medium 20”). The Appellant fails to
persuasively explain how that proposal renders Tsukamoto unsatisfactory for
its intended purpose. We are not persuaded of reversible error in the
Examiner’s rejection of claim 2.
Claim 5. Claim 5 depends from claim 1 and further recites, “wherein
securing the barrier comprises positioning a plurality of straps of the barrier
around the foam shell.” Appeal Br. 12 (Claims Appendix).
The Examiner finds that Tsukamoto does not teach that limitation, but
that Iwamoto teaches the use of a belt to secure batteries to a frame. Final
Act. 10. The Examiner finds that it would have been obvious in view of
Iwamoto “to lock into place the battery of Tsukamoto.” Id.
The Appellant argues that the belt of Iwamoto is a single belt rather
than a plurality of belts, and that the belt “is not part of a barrier that is
received around a foam shell. At best, Iwamoto could motivate a person of
ordinary skill in the art to add a belt around the battery cells inside the case,
but that is not what is claimed.” Appeal Br. 8–9.
In the Answer, the Examiner responds that it would have been
obvious to use more than one belt to secure the battery in two different
directions. Ans. 16–17.
In the Reply Brief, the Appellant argues that “[t]he Examiner has not
responded to” the Appellant’s argument that the Examiner has not identified
any reference in which a strap is used to secure a barrier to a foam shell.
Reply Br. 6.
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We agree with the Appellant. The Examiner fails to address the
Appellant’s argument that the proposed combination, at most, would lead to
securing Tsukamoto’s batteries 18 to Tsukamoto’s porous medium 20,
which is not what the claim requires. The Examiner fails to identify any
portion of any reference that suggests the use of straps to secure a barrier to
a foam shell, or to otherwise provide reasoning as to why that would have
been suggested by the prior art. We reverse the Examiner’s rejection of
claim 5.
Claim 19. Claim 19 depends from claim 1 and recites that “the
structural, microcellular foam material includes an expanded polypropylene
(EPP) or an expanded polyethylene (EPE).” Appeal Br. 13 (Claims
Appendix).
The Examiner finds that Tsukamoto teaches that its porous
medium 20 may be made of plastic, but that it does not specifically teach
EPP or EPE. Final Act. 12. The Examiner finds that Deponte teaches the
use of EPP “which is disposed between the cell housing and the chemicals
carrier,” and that such material is “elastic or deformable and
compressible . . . with high thermal conductivity.” Id. The Examiner
determines that it would have been obvious to use EPP “as the plastic
composition of the porous medium of Tsukamoto, since Deponte teaches it
is a deformable and compressible material, with high thermal conductivity.”
Id. at 12–13.
The Appellant argues that Deponte teaches “that the battery cell itself
may be made from an expanded foam material,” but does not “disclose
making a foam shell that houses a battery array out of an expanded foam
material.” Appeal Br. 9. The Appellant also argues that the proposed
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combination would render Tsukamoto unsatisfactory for its intended
purpose because “the porous medium 20 of Tsukamoto is specifically made
from materials having specific heat-absorbing, thermally conductive, and/or
phase transition characteristics. Modifying the porous medium 20 . . . would
completely change the material make-up of the medium 20, thereby
removing the intended” properties. Id. at 9–10 (internal citation omitted).
The Appellant states that “[i]t is also unclear whether the revised medium
would be capable of absorbing a flame retardant in the manner desired by
Tsukamoto.” Id. at 10.
Those arguments are not persuasive because the Examiner finds that
Deponte teaches that EPP has properties, including thermal conductivity,
that make it desirable for use as the porous medium of Tsukamoto. Final
Act. 12. The Appellant does not address those findings. Given that
Tsukamoto broadly discloses the use of “plastic” as its porous medium, we
discern no reason to reject the Examiner’s finding that a person of ordinary
skill in the art would have understood EPP to be one such suitable plastic in
view of Deponte.
As to absorption of flame retardant, Tsukamoto indicates that it is the
pores within the plastic that absorb the retardant, not the material itself.
E.g., Tsukamoto at Abstr. (“The battery pack also includes a flame retardant
absorbed into pores of the porous medium.”). The Appellant provides no
reason to believe that it would have been beyond the ordinary level of skill
in the art to maintain Tsukamoto’s desired porosity using EPP as the plastic.
On this record, we are not persuaded of reversible error in the
Examiner’s rejection of claim 19.
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Rejection 9
Rejection 9 concerns independent claim 23, and, similar to claim 5,
claim 23 requires the use of “a plurality of straps” to “position[] a barrier
against the foam shell.” Appeal Br. 14 (Claims App.).
The Examiner does not provide any additional analysis of the “strap”
limitation beyond that discussed above as to claim 5. Final Act. 17.
The Appellant requests reversal of claim 23 “for at least the same
reasons noted above with respect to claims 1, 2, 5, and 19.” Appeal Br. 11.
Because the Examiner’s analysis of claim 23 does not remedy the
deficiency identified above as to claim 5, we likewise reverse the
Examiner’s rejection of claim 23.
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CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
2–4, 13, 20 112(b) Indefiniteness 2–4, 13, 20
1, 3, 4, 8, 9,
17 103 Tsukamoto 1, 3, 4, 8, 9, 17
2 103 Tsukamoto, Meintschel 2
5–7, 14, 15,
18 103
Tsukamoto,
Iwamoto 6, 7, 14, 15, 18 5
19, 21 103 Tsukamoto, Deponte 19, 21
20 103
Tsukamoto,
Meintschel,
Deponte
20
10–12, 22 103 Tsukamoto, Schröter 10–12, 22
13 103
Tsukamoto,
Schröter,
Meintschel
13
23 103
Tsukamoto,
Deponte, Iwamoto,
Meintschel
23
Overall
Outcome
1–4, 6–15, 17–
22 5, 23
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART