15492084 - (D) (P.T.A.B. May. 11, 2020)

Ford Global Technologies, LLC

Patent Trials and Appeals BoardMay 11, 2020

15492084 - (D) (P.T.A.B. May. 11, 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. 15/492,084 04/20/2017 Steve F. Chorian 83799488; 67186-351 PUS1 6987 46442 7590 05/11/2020 CARLSON, GASKEY & OLDS, P.C./Ford 400 W. MAPLE RD. SUITE 350 BIRMINGHAM, MI 48009 EXAMINER HAN, KWANG S ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 05/11/2020 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 STEVE F. CHORIAN, KIMBERLEY KING, RAJARAM SUBRAMANIAN, STEVE DROSTE, and SARAVANA PARAMASIVAM ____________ Appeal 2019-006627 Application 15/492,084 Technology Center 1700 ____________ Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and DEBRA L. DENNETT, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1 and 4–22. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM–IN–PART and add a new ground of rejection for claims 1, 4, and 6–22. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ford Global Technologies, LLC (Appeal Br. 1). Appeal 2019-006627 Application 15/492,084 2 CLAIMED SUBJECT MATTER Claims 1 and 14 are illustrative of the appealed subject matter (emphasis added to identify key disputed limitations): 1. A support assembly for a battery array, comprising: a spacer axially separating a first battery cell from a second battery cell; a frame that holds the spacer; and an insert secured to the frame and compressed against the first battery cell, the frame made of a first material and the insert made of a second material, the first material having a higher durometer value than the second material. 14. A method of supporting a battery cell, comprising: compressing an insert against a corner region of at least one battery cell, the insert secured to a frame made of a first material, the insert made of a second material that is softer than the first material. Appeal Br. 10, 11 (Claims Appendix). REJECTIONS Claims 1, 7, 9, 10, 12, 14, 18, 20, and 21 stand rejected under 35 U.S.C. § 102 (a)(1) as being anticipated by Tsuruta et al. (US 2014/0302378 A1, published Oct. 9, 2014). Claim 4 stands rejected under 35 U.S.C. §103 as being unpatentable over the combined prior art of Tsuruta and Choi et al. (US 2017/0187080 A1, published Jun. 29, 2017). Claims 5, 6, 8, 11, 13, 15–17, 19, and 22 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combined prior art of Tsuruta and Malcolm et al. (US 2015/0037626 A1, published Feb. 5, 2015). Appeal 2019-006627 Application 15/492,084 3 ANALYSIS The § 102 Rejection based on Tsuruta We determine that a preponderance of the evidence supports Appellant’s position for this rejection. On the other hand, we determine that a preponderance of the evidence supports the Examiner’s position for the rejection of claim 14 based on Tsuruta. The Examiner relies upon Tsuruta, Figures 2 and 14, as well as Tsuruta e.g., paragraphs 51, 56, 59, 69, and 70 in the § 102 rejection (Final Action 3–5). Appellant argues that the Examiner has taken an unreasonably broad interpretation of the recited “the first material having a higher durometer value than the second material” of claim 1 and “the insert [is] made of a second material that is softer than the first material” of claim 14, and thus, has not shown how Tsuruta identically disclose each of these features (Appeal Br. 4–6; Reply Br. 1, 2). Appellant points out that the Examiner has not provided sufficient basis for the position that the molded resin material that forms both the frame and the insert/spacer in Tsuruta have different durometer hardness (Appeal Br. 4 (“The flanges and ribs are the same material”); Reply Br.2). We agree with Appellant that claim 1 when read in its entirety and in light of the Specification, requires that the first and second materials be different in order to have different durometer hardness.2 The Examiner has not shown that Tsuruta has this feature. We are also mindful that: 2 We note that dependent claim 22 which explicitly states that “the first and second materials are different materials” conflicts with Appellant’s position and does not further limit claim 1 as interpreted herein. Appeal 2019-006627 Application 15/492,084 4 [t]he correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is consistent with the specification. In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (internal quotation omitted); see also In re Baker Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO cannot adopt a construction that is “beyond that which was reasonable in light of the totality of the written description” in the Specification). Even though there is no special definition of “durometer value” disclosed in the Specification, Appellant’s position is that a durometer hardness value is an intrinsic measured property of a material (Appeal Br. 2). The Examiner’s position, that materials having different durometer hardness reasonably can be construed to mean the same material when one part (ribs 56a) is shaped to be elastically deformable (compared to another part) as discussed in Tsuruta is an unreasonably broad interpretation of the aforementioned claim limitation when considered in light of the Specification, as well as in light of the entirety of the plain meaning of the claim language, for the reasons explained in the Briefs (Appeal Br. 14–17; Reply Br. 9–11; Spec. ¶¶ 59, 60, 61). We agree with Appellant that claim 1 must be interpreted to require different materials for the first and second materials to have a different durometer hardness as required in claim 1. Appeal 2019-006627 Application 15/492,084 5 Accordingly, we reverse the Examiner’s 35 U.S.C. § 102 rejection of claims 1, 7, 9, 10, 12, 20, and 21 as anticipated by Tsuruta. On the other hand, we do not find Appellant’s arguments convincing of reversible error with respect to independent claim 14 which recites that the insert is made of a second material that is “softer” than the first material. Here the Examiner’s position that the claim term encompasses Tsuruta’s description that the ribs 56a are shaped so as to be “surely elastically deformable” (Tsuruta ¶ 59, see also Tsuruta ¶84 (side rib 56b has a cross section shaped such that it is “easily elastically deformable”)) is reasonable. “[T]he PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. See also, Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1370 (Fed. Cir. 2003) (A court must not read particular embodiments and examples appearing in the Specification into the claims unless the Specification requires it). Notably, the plain meaning of “soft” includes “yielding to physical pressure”.3 Thus, the Examiner’s position is reasonable: i.e., that the material of the ribs/insert due to their shape which is specifically designed to make them easily deformable is encompassed by the claimed “softer material” than that of the less elastically deformable “frame” material part of the insert. 3 https://www.merriam-webster.com/dictionary/soft Appeal 2019-006627 Application 15/492,084 6 Appellant has not directed our attention to any limiting definitions in the Specification or to any persuasive reasoning or credible evidence to establish that the Examiner’s interpretation of the language of claim 14 is unreasonable. Thus, we are not persuaded of any reversible error in the Examiner’s position that the claim language encompasses Tsuruta. Thus, a preponderance of the evidence supports the Examiner’s § 102 rejection of claims 14, 18, and 20 based on Tsuruta. The §103 rejection of dependent claim 4 based on Tsuruta and Choi The Examiner did not rely upon any other reasoning to cure the deficiency of independent claim 1 as explained above as anticipated by Tsuruta, thus we reverse the rejection under 35 U.S.C. § 103 of Tsuruta and Choi for the same reasons as described above. The § 103 rejection of claims 5, 6, 8, 11, 13, 15–17, 19, and 22 based on Tsuruta and Malcolm The Examiner relies upon Malcom for various different reasons in the rejections of these claims (Final Act. 7–9). Dependent claim 5 recites that “the spacer [of claim 1] is a metal or metal alloy fin.” The Examiner relies upon Malcom’s internal metal heat fins 112, stating that it would have been obvious to use metal as a material for the spacer [16] of Tsuruta for heat transfer (Final Act. 7; Malcom ¶ 162, Fig. 11). Appellant argues that modifying the spacer of Tsuruta to be metal goes against the express intended purpose of Tsuruta’s spacers/insulation frames 16 which are taught to electrically insulate the electric storage devices 14 from each other (Appeal Br. 8; Reply Br. 3; Tsuruta ¶ 51). The Appeal 2019-006627 Application 15/492,084 7 Examiner responds that one would “seek alternative means of maintaining electrical insulation” (Ans. 12, citing to Malcolm ¶¶ 162 and 136 for the respective ideas that one can have both an insulating polymer layer as well as electric heat fins in a battery module, and/or use pouch cells for thermal management in combination with electrical insulation). The Examiner’s response falls short of adequately explaining why one would have used metal as the material for the electrically insulating spacers 16 of Tsuruta; especially in light of Malcolm’s described use of an electrically insulating layer/spacer 120 similar to Tsuruta (Malcolm Fig. 12, ¶ 162). A preponderance of the evidence supports Appellant’s position that the proposed combination of Tsuruta/Malcolm so as to result in the spacers of Tsuruta to be made of electrically conductive metal would be based on improper hindsight reconstruction for the reasons discussed by Appellant in the Briefs. The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). Although the Examiner relies upon this same rationale to reject dependent claim 22, dependent claim 22 (in contrast to dependent claim 5) does not require a metal material, rather it merely states that the first and second materials are different materials. This claim is rendered obvious by the use of a silicone rubber gap pad as suggested by Malcolm as discussed below with respect to dependent claim 8. Appeal 2019-006627 Application 15/492,084 8 Appellant provided no response to the Examiner’s rejection of claims 6, 8, 11, and13 which depend from claim 1 or of claims 15–17 and 19 which are each dependent on claim 14 (Appeal Br. 8: relying upon arguments made for claims 1 and 14). The lack of specific arguments as to why the Examiner’s rejection is deficient fails to persuade us of reversible error with respect to those claims dependent on claim 14. See 37 C.F.R. § 41.37 (c) (1)(iv). See also, In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant to identify the alleged error in the Examiner’s rejection.). Since we have affirmed the rejection of claim 14 based on Tsuruta, we also summarily affirm the Examiner’s obviousness determination of its dependent claims 15–17 and 19 based on Tsuruta and Malcolm. We also affirm this §103 rejection of claim 6, 8, 11, and 13 which by definition includes their parent claim 1, but designate it a new ground of rejection for the reasons we discuss below. New Ground of Rejection on claims 1, 4, 6-22 under 35 USC § 103 as unpatentable over Tsuratu and Malcolm As noted above, Appellant provided no specific response to the Examiner’s rejection of dependent claim 8. Claim 8 recites that “the insert [of claim 1] comprises a foam or a rubber” (Appeal Br. 8). The Examiner relied upon Malcolm’s use of silicone elastomer/rubber gap pads 108 (Malcolm ¶ 134) in a battery module similar to that of Tsuruta as teaching what Tsuruta alone fails to disclose—an insert made of a second material having a different durometer hardness ( Final Act. 8). The Examiner’s Appeal 2019-006627 Application 15/492,084 9 obviousness determination of claim 8 is supported by a preponderance of the evidence. 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 thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (citation omitted). One of ordinary skill, using no more than ordinary creativity, would have immediately appreciated that one may use compressible rubber material and/or rubber gap pads as exemplified in Malcolm in Tsuruta’s electric storage apparatus/battery module, either as the material of the elastically deformably ridges in Tsuruta and/or in addition to same to more securely position the battery storage devices 14 (Tsurata ¶¶ 51, 84, 88). One of ordinary skill would have appreciated that the gap sealing pads and/or elastically deformable ridges may be made of a different material of lesser hardness (and/or be of a softer material) than the resin made to make the more rigid frame portions (main plate portion 40 that includes elastically deformable ridges 56a, and/or flange portions 42, 44, 46a, 46b, 48a, 48b that comprise elastically deformable ridges 56b) (Tsurata Appeal 2019-006627 Application 15/492,084 10 ¶ 56). It is further noted that Tsurata teaches that the flange portions may be provided as one continuous flange over the entire periphery of the main plate portion 40 (Tsurata ¶ 56). Since claim 8 is dependent on claim 1, claim 1 is likewise obvious over the combined prior art of Tsuruta and Malcolm, as well as not separately argued claims 11 and 13 that depend from claim 1. However, since we now include some reasoning that was not explicitly relied upon by the Examiner, and we include claims not previously rejected over the combination of Tsuruta and Malcolm, we shall designate this as a new ground of rejection on claims 1, 4, and 6–22. Because we have relied on reasoning that was not discussed by the Examiner, we designate our affirmance as including new grounds of rejection to safeguard Appellant’s procedural entitlements. Cf. In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner.”). Appellant provided no specific argument regarding dependent claims 10 and 12 that depend from claim 1 (Appeal Br. 6). While Appellant provided some argument with respect to dependent claims 7 and 9 (Appeal Br. 5), these limitations are adequately addressed by the Examiner’s reasoning that Tsuruta describes these features (e.g., Ans. 4, 11) and/or that the combined prior art of Tsuruta and Malcolm suggests these features. Appellant fails to consider the applied prior art as a whole and the inferences that one of ordinary skill would have made. Malcom also has a frame with frame corners and one would appreciate that the insert/gap pads 108 Appeal 2019-006627 Application 15/492,084 11 compress the frame corners (e.g., Malcolm Fig. 7). Indeed, Appellant has not directed us to any limiting definition as to what constitutes a “corner region” (claim 9; emphasis added). Notably, Tsurata teaches that the flange portions may be provided as one continuous flange over the entire periphery of the main plate portion 40 (Tsurata ¶ 56). Such a continuous flange would extend “forward and aft” of the spacer as recited in claim 4 since Tsuruta’s flanged corner pieces already extend forward and aft of the main spacer body 16 (Tsuruta Fig. 14). Thus, we also include claim 4 which recites the frame “extends circumferentially continuously about a periphery of the spacer” and “forward and aft” of the spacer in the new §103 rejection. We also include claims 14, 18, 20, and 21 in this new § 103 rejection since the same obviousness reasoning and determination applies to these claims. In summary, Appellant has not sufficiently explained why the claimed subject matter of claims 1, 4, and 6–22 is any “more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. Because we recognize our decision is based on further reasons that differ from the reasons advanced by the Examiner, we denominate the affirmed § 103 rejection based on Tsuruta and Malcolm, as well as the § 103 rejection based on the same references which newly further includes other claims, as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). Appeal 2019-006627 Application 15/492,084 12 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s) Affirmed Reversed New Ground 1, 7, 9, 10, 12, 14, 18, 20, 21 102 Tsuruta 14, 18, 20, 21 1, 7, 9, 10, 12 4 103 Tsuruta, Choi 4 5, 6, 8, 11, 13, 15–17, 19, 22 103 Tsuruta, Malcolm 6, 8, 11, 13, 15–17, 19, 22 5 6, 8, 11, 13, 15– 17, 19, 22 1, 7, 9, 10, 12, 14, 18, 20, 21 103 Tsuruta, Malcolm 1, 7, 9, 10, 12, 14, 18, 20, 21 OVERALL 1, 6, 8, 11, 13–22 5 1, 4, 6– 22 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, 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: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating Appeal 2019-006627 Application 15/492,084 13 to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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–IN–PART NEW GROUND OF REJECTION (37 C.F.R. § 41.50(b))