14805980 - (D) (P.T.A.B. Aug. 4, 2020)

FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals BoardAug 4, 2020

14805980 - (D) (P.T.A.B. Aug. 4, 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. 14/805,980 07/22/2015 Eid Farha 83553882; 67186-195 PUS1 2809 46442 7590 08/04/2020 CARLSON, GASKEY & OLDS, P.C./Ford 400 W. MAPLE RD. SUITE 350 BIRMINGHAM, MI 48009 EXAMINER HARRIS, GARY D ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 08/04/2020 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 EID FARHA, JAMES M. MCMANAMAN and PATRICK DANIEL MAGUIRE Appeal 2019-005400 Application 14/805,980 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the Examiner’s decision to reject claims 1–9, and 21–26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. We also enter a new ground of rejection as to claim 22. 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 Brief dated Apr. 25, 2019 (“Appeal Br.”) 1. Appeal 2019-005400 Application 14/805,980 2 CLAIMED SUBJECT MATTER The present application generally relates to a battery pack assembly of the type used in electrified vehicles. Specification filed July 22, 2015 (“Spec.”) ¶¶ 2, 4. The Specification teaches that the described battery pack assembly includes an endplate with a first side region and a second side region opposite the first side region. Id. ¶ 4. The Specification teaches a connector in each region to “secure the endplate to a support when a respective one of the first or second side regions is positioned proximate the support.” Id. Figure 5 of the Drawings is reproduced below. Figure 5 shows a perspective view of exemplary side-oriented (terminals 114 facing laterally outward) battery arrays. Id. ¶ 29. Appeal 2019-005400 Application 14/805,980 3 Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A battery pack assembly, comprising: an endplate with a first side region and a second side region opposite the first side region; a first connector in the first side region; and a second connector in the second side region, the first and second connectors each providing a connection point to secure the endplate to a support when a respective one of the first or second side regions is positioned proximate the support. Appeal Br. 12 (Claims App.) (reformatted for clarity) REFERENCES The Examiner relies upon the following prior art: Name Reference Date Kim US 2011/0104552 A1 May 5, 2011 Rajaie US 2012/0315528 A1 Dec. 13, 2012 REJECTIONS The Examiner maintains the following rejections: 1. Claims 1, 2, 4–9 and 21–25 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Kim. Final Action dated Dec. 18, 2018 (“Final Act.”) 2–8. 2. Claim 26 is rejected under 35 U.S.C. § 103 as being unpatentable over Kim. Id. at 9. 3. Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Kim in view of Rajaie. Id. at 10–11. Appeal 2019-005400 Application 14/805,980 4 DISCUSSION Rejection 1. The Examiner rejects claims 1, 2, 4–9 and 21–25 as anticipated by Kim. Id. at 2–8. In support of the rejection, the Examiner finds that Kim teaches a battery pack assembly including an endplate with a first side region and a second side region and a connector in each region to provide a connection point to secure the endplate to a support. Id. at 2–3. The Examiner cites to Figures 2 and 3 of Kim in support of these findings. Figures 2 and 3 of Kim are reproduced below. Figure 2 (left) is a perspective view of an endplate 108. Kim ¶ 30. The endplate of Figure 2 includes base plate 111, flange unit 112, and holes 113. Id. ¶¶ 48, 50. Figure 3 (right) is a magnified perspective view of a plurality of end plates. Id. ¶ 31. Figure 3 depicts several structures including reinforcement plates 401. Id. ¶ 61. Kim teaches that “reinforcement plates 401 for structurally reinforcing and supporting the battery modules 100 are Appeal 2019-005400 Application 14/805,980 5 further mounted on the battery modules 100. The reinforcement plates 401 include upper and lower reinforcement plates 402 and 403.” Id. The Examiner considers the top portion of the endplate of Kim’s Figure 2 to be equivalent to the “first side region” of the claim and the lower portion to be equivalent to the “second side region” of the claim. Final Act. 3. In the Final Action, the Examiner includes an annotated version of Kim’s Figure 2 where the first side region is identified as the upper left hand portion of the drawing. Id. The Examiner further finds that the bolts shown in Figure 3 satisfy the first and second connector limitations. Id. Appellant argues that the rejection is in error on several bases. Appeal Br. 2–10. Claim 1, 2, and 5 Appellant argues that the rejection of claim 1 is in error because Kim fails to teach a bolt that “provid[es] a connection point to secure the endplate to a support when” the alleged first side region “is positioned proximate the support.” Id. at 2–4. In regard to Kim’s Figure 3, Appellant asserts that “[a]s shown, a bolt connects the alleged first side region of a baseplate in Kim to the flange unit of another baseplate 111 that is vertically above the alleged first side region. No bolt ‘secures’ the alleged first side region ‘to’ the reinforcement plate 403.” Id. at 3. Appellant further asserts that “[n]o bolts in Kim secure the alleged first side region to the reinforcing plate 403.” In the Answer, the Examiner clarifies the rejection to emphasize that the first side region (top) of the endplate connects to “upper reinforcing Appeal 2019-005400 Application 14/805,980 6 plate 402” as shown in Figure 4. Examiner’s Answer dated June 17, 2019 (“Answer”) at 14. Figure 4 of Kim is reproduced below. Figure 4 of Kim is a perspective view of an end plate as mounted. Kim ¶ 62. In its Reply Brief, Appellant argues that the Examiner’s finding [t]hat the guide plates 109, the upper reinforcing plate 402, and lower reinforcing plate 403 are secured by bolts is not a teaching of ‘a first connector in the first side region’ of an endplate having a connection point to ‘to secure the endplate to a support’ as is recited in claim 1. Reply Brief dated July 9, 2019 (“Reply Br.”) at 1. This is not persuasive. Kim teaches as follows with regard to Figure 4: An upper reinforcement plate 402 is mounted on a top surface of a battery module 100 and a lower reinforcement plate 403 is mounted on a bottom surface of the battery module 100. The Appeal 2019-005400 Application 14/805,980 7 upper reinforcement plate 402 includes an upper base plate 404 located on the top surface of the battery module . . . . The lower reinforcement plate 403 includes a lower base plate 406 located on the bottom surface of the battery module. * * * An end of the upper base plate 404 is firmly fixed to the upper flange unit 112a at the low portion (e.g., the low portion receives the upper base plate 404) by using fasteners, such as a bolt 143 and a nut 144. Also, an end of the lower base plate 406 is combined with the lower flange unit 112b by using fasteners, such as bolts 143 and nuts 144. Kim ¶¶ 64–65 (emphasis added). Thus, the endplate of Kim includes a first connector (upper flange unit 112a) providing a connection point to a support (upper base plate 404) and a second connector (lower flange unit 112b) providing a connection point to a support (lower base plate 406). To the extent Appellant’s argument turns on some claim construction that requires some symmetry or interchangeability between the first side region and the second side region, that construction has neither been advocated nor adopted. In view of the foregoing, Appellant has not shown error with regard to the rejection of claim 1 as anticipated by Kim. As Appellant relies on the same arguments discussed above with regard to the rejection of claims 2 and 5 (Appeal Br. 4, 6), we similarly find that Appellant has not shown error in regard to these claims. Claim 4 Appellant additionally argues that the rejection of claim 4 is in error. Appeal Br. 5–6. Claim 4 depends from claim 1 and further requires that “the Appeal 2019-005400 Application 14/805,980 8 endplate is configured to hold a plurality of side-oriented battery cells, and further configured to hold a plurality of standard-oriented battery cells.” Appeal Br. 12 (Claims App.). In the Final Action, the Examiner finds that Kim teaches both side- oriented and standard-oriented battery cells. Final Act. 4. The Examiner further finds that “the cells of Kim are side orientated as clearly illustrated in figures 1 & 6. Additionally, they are side oriented as they do not have a flat (pancake) orientation. Applicant’s arguments regarding the terminal orientation [are] considered however, the claim does not require terminal orientation.” Final Act. 13. Appellant argues that the “Specification distinguishes side-oriented arrays 18, which have terminals facing laterally outward, from standard- oriented arrays 18', which can have terminals facing upwardly.” Appeal Br. 5. Appellant directs us to a portion of the Specification which provides that the “[t]erminals of the battery cells within the arrays 18 face laterally outward within the pack 14 in the example side-oriented arrays.” Id. at 6 (citing Spec. ¶ 44). Appellant further directs us to another portion of the Specification which provides that “the arrays 18' are considered standard- oriented arrays as the terminals of battery cells within the arrays 18' face upwardly within the battery pack 14'.” Id. (citing ¶ Spec. 44). Appellant concludes that “[i]nterpreting cells having terminals pointed upwardly as ‘side oriented’ is not consistent with the Applicant’s specification and with how a person having skill in this art would interpret this feature.” Id. In the Answer, the Examiner determines that “[s]ide oriented batteries do not define the location of the terminal and one skilled in the art would understand that a side-oriented battery has nothing to do with the Appeal 2019-005400 Application 14/805,980 9 terminal location.” Answer 16. Additionally, the Examiner finds that “nothing in the Kim specification is disclosed that would prohibit turning the battery pack 90 degrees to provide the terminals to face latterly outward similar to appellant. Terminal location is a matter of choice for the end user.” Answer 16. Appellant regards the Examiner’s view of battery orientation as in conflict with the Specification. Reply Br. 2. Review of the figures of the Drawings, as further described in the Specification, reveals that certain embodiments described as “side-oriented” battery packs have one row of batteries having the “bottom” (the side opposite the terminals) in contact with heat exchanger 68 and a second row with its bottom side in contact with the opposite side of the same heat exchanger. See, e.g., Spec. ¶¶ 62, 64–65, Fig. 5. Thus, there are two rows of batteries having terminals facing opposite directions. This contrasts with the “standard-oriented” batteries where all terminals face the same direction. See Spec. ¶ 82, Fig. 8. Appellant seems implicitly to seek a construction that goes to the manner in which one row of battery cells is arranged relative to another. Such a construction, however, would go beyond the plain meaning of the terms and has not been sufficiently developed by Appellant. Further, in its briefing, Appellant does not adequately specify the proposed meaning of “facing laterally outward” or “facing upwardly.” Absent reference to some other structure, the proposed constructions have little meaning. Regardless of the precise meaning of the terms at issue, we accept the Examiner’s finding that “nothing in the Kim specification is disclosed that would prohibit turning the battery pack 90 degrees to provide the terminals to face latterly outward similar to appellant.” Answer 16. Appellant does Appeal 2019-005400 Application 14/805,980 10 not dispute this finding. Thus, the endplate of Kim could be configured to face upwardly or outwardly. In view of the foregoing, we determine that Appellant has not shown error in the rejection of claim 4. Claim 6 Appellant additionally argues that the rejection of claim 6 is in error. Appeal Br. 6–7. Claim 6 depends from claim 5 which requires that the endplate have first and second flanges. Id. at 12 (Claims App.). Claim 6 further requires a first lifting feature in the first flange and a second lifting feature in the second flange, the first lifting feature providing a first lift assist link to couple a lift assist arm to the endplate when the second side region is positioned proximate the support, the second lifting feature providing a second lift assist link to couple the lift assist arm to the endplate when the first side region is positioned proximate the support. Id. The Specification describes the lifting feature as follows: The first flange 120 further includes a first lifting feature 130. The second flange 122 further includes a second lifting feature 132. The lifting features 130 and 132 are apertures in the first flange 120 and the second flange 122 in this example. The first lifting feature 130 provides a lift assist link to couple the endplate 64 with a lift assist arm. The lift assist link provided by the first lifting feature 130 can couple the endplate 64 to the lift assist arm when the second side region 82 is vertically below the first side region 80. Spec. ¶¶ 77–78. The lifting features can be seen in Figure 7 of the Application, reproduced below. Appeal 2019-005400 Application 14/805,980 11 Figure 7 is a top view of a battery array. Figure 7 shows lifting features 130 and 132. Figure 5 of the Application, reproduced below, also shows the lifting features. Appeal 2019-005400 Application 14/805,980 12 Figure 5 depicts a perspective view of a battery array. Spec. ¶ 29. The lifting features (not labeled in Figure 5) are slot-like apertures found near connection points 100 and 102. Id. ¶¶ 71, 77. The Examiner determines that “through holes in upper and lower flanges are capable of lifting or anywhere that provides a grip.” Final Act. 5 (citing Kim, Figs. 2, 3). The Examiner further finds that providing a first lift assist link to couple a lift assist arm to the endplate “is inherent as [flange holes] 113 would provide for a lifting feature as claimed.” Id. The dependent claim at issue recites functional language. A patent applicant may use functional language to limit an apparatus (or other) claim. In order to be accorded patentable weight, however, functional language in an apparatus claim must limit the claim in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477–78; MPEP § 2114. Further, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). Further, it has long been held that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Here, the “lifting feature” limitations require structure capable of coupling a lift assist arm to the endplate of the battery pack. The Examiner finds that holes 113 in the flanges of Kim’s endplate are structures capable of performing the stated function. Final Act. 17–18. As persons of scientific competence in the fields in which they work, examiners are responsible for making findings, informed by their scientific knowledge, as Appeal 2019-005400 Application 14/805,980 13 to the meaning of prior art references to persons of ordinary skill in the art. Absent legal error or contrary factual evidence, those findings can establish a prima facie case of obviousness. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Appellant argues that “[u]sing the bolt holes in Kim as a lift assist could damage the bolt holes.” Reply Br. 2. This assertion, however, is unsupported by citation to record evidence. Accordingly, it will be treated as attorney argument. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). In view of the foregoing, Appellant has not shown error with regard to the rejection of claim 6. Claim 7 Appellant additionally argues that claim 7 is rejected in error. Claim 7 depends from claim 1 and further requires, inter alia, a third connector “providing a connection point to secure the endplate to a heat exchanger plate that is transverse to the support.” Appeal Br. 13 (Claims App.). The Examiner rejects claim 7 as anticipated by Kim. Final Act. 5. In support of the rejection, the Examiner finds that guide plate 109 of Kim “would inherently function as a heat exchanger.” Id. On appeal, Appellant makes two assertions. First, Appellant states that “[t]he plate 109 in Kim . . . is a guide plate, not a heat exchanger plate.” Appeal Br. 7. Appellant does not address the Examiner’s finding that the guide plate “would inherently function as a heat exchanger.” Final Act. 5 Appeal 2019-005400 Application 14/805,980 14 (citing Kim ¶ 46 regarding “heat radiating holes” on guide plate 109). Accordingly, Appellant has not shown error in this regard. Second, Appellant asserts that “the area within 108 is not extending from the alleged first side region to the alleged second side region.” This is, essentially, an unsupported statement. Appellant makes no effort to describe the bounds of area 108. See 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant.”). Further, Appellant’s assertion appears to be in conflict with Figure 4 of Kim. Accordingly, Appellant has not shown error in this regard. Claim 8 Appellant additionally argues that claim 8 is rejected in error. Claim 8 depends from claim 7 and further requires that “the connection point provided by the third connector secures the endplate to both the heat exchanger plate and another endplate.” Appeal Br. 13 (Claims App.). Appellant reiterates prior arguments and, additionally, argues that “the ‘area within 108’ does not secure the alleged endplate ‘to both’ the guide plate 109 and another end plate. At most, the ‘area within 108’ secures the alleged end plate to the guide plate 109.” Id. at 7. Claim 8 requires that a single connection point affixes a first endplate to both a second endplate and the heat exchanger. In Kim, this is accomplished by two separate connection points. See Kim Figs. 3–5. Accordingly, Appellant has shown error in this regard. Appeal 2019-005400 Application 14/805,980 15 Claim 9 Appellant additionally argues that claim 9 is rejected in error. Appeal Br. 8. Claim 9 depends from claim 7 and, thus, includes the “heat exchanger” limitation. Appellant also relies on the same argument stated above with regard to this limitation. Id. As above, we find this argument to be unpersuasive. Claim 21 Appellant additionally argues that claim 21 is rejected in error. Appeal Br. 8. Claim 21 depends from claim 1. Appeal Br. 13 (Claims App.). Claim 21 requires two groups of side-oriented battery cells on two separate axes having “interchangeable” endplates. Id. The Examiner finds that these features are taught by Figure 6 of Kim, reproduced below. Appeal 2019-005400 Application 14/805,980 16 Figure 6 of Kim shows battery pack 300 which “forms an assembly of the battery modules 100 stacked in the horizontal and vertical directions.” Kim ¶ 70. Kim further teaches that “as the stacked battery modules have the same connection structure, manufacturing costs may be reduced.” Id. ¶ 75. Appellant argues that Kim does not teach side-oriented battery cells. Appeal Br. 8. We find this unpersuasive for the reasons set forth above with regard to claim 4. Appellant additionally argues that the rejection is in error because the Examiner has not supplied an adequate basis to infer that the claimed interchangeability necessarily flows from the teachings of the applied prior art. Id. Appellant argues “[t]hat Kim does not disclose the end plates are different does not necessarily mean that they are interchangeable.” Id. We do not find this argument to be persuasive. Kim collectively describes the endplates 106 and 107: “[n]eighboring battery modules 100 may be firmly fixed by connecting to each other the first and second end plates 106 and 107 located at outermost sides of the battery modules 100.” Kim ¶ 70. Kim further teaches that “the stacked battery modules have the same connection structure.” Id. ¶ 75. The foregoing teachings, taken in conjunction with Figure 6, well support the Examiner’s finding that the claimed endplates are interchangeable. Accordingly, Appellant has not shown error with regard to the rejection of claim 21. Claim 22 Appellant additionally argues that claim 22 is rejected in error. Appeal Br. 8–9. Claim 22 depends from claim 21 and further requires that “the first endplate mimics the second endplate when the first endplate is Appeal 2019-005400 Application 14/805,980 17 rotated 180 degrees relative to the second endplate about the first axis.” Appeal Br. 13 (Claims App.). In this regard, the Specification teaches an embodiment as follows: The endplate 64 can be used to secure the first group of battery cells 110. The endplate 64 can be rotated 180 degrees about the axis A1 and repositioned to secure the second group of battery cells 112. The endplate 64 can be used at a first axial end of the pack 14 or at an opposing axial end of the pack 14. Spec. ¶ 72 (with regard to Figs. 5–7). One can gain a general understanding of the claim by reference to the Specification and the figures. There remains, however, some ambiguity as to the meaning of the term “the first endplate is rotated 180 degrees relative to the second endplate about the first axis.” In particular, it is not apparent how the limitation “relative to the second endplate” relates to the remaining claim terms. Accordingly, we do not reach the merits of the Examiner's rejection under 35 U.S.C. § 102 at this time. Rather, we reverse pro forma the outstanding rejection because claim 22 fails to satisfy the requirements of 35 U.S.C. § 112(b). Before a proper review of the prior art rejection can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Presently, one must speculate as to the bounds of the claim. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite Appeal 2019-005400 Application 14/805,980 18 meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious – the claim becomes indefinite.”). Claim 23 Appellant additionally appeals the rejection of claim 23. Appeal Br. 9. Claim 23 depends from claim 21 and further requires the “support as a separator plate between the first and second groups.” Id. at 13 (Claims App.). The Examiner finds that Kim teaches “the support (reinforcement plate) as a separator plate between the first and second groups.” Final Act. 7. In support, the Examiner relies on Figures 3 and 6 of Kim. Id. The entirety of Appellant’s argument is that “[t]he reinforcement plate 403 is relied on as teaching the support, and the reinforcement plate 403 is not a separator plate.” Appeal Br. 9. This is inadequate to present an issue for appeal. See 37 C.F.R. § 41.37(c)(1)(iv). Claims 24 and 25 Appellant additionally appeals the rejection of claim 24. Appeal Br. 9. Claim 24 depends from claim 23 and further requires “the second endplate include[s] a first connector in a first side region, the first connector of the first endplate and the first connector of the second endplate joining the first and second endplates to each other and to the separator plate.” Appeal Br. 13 (Claims App.). The Examiner finds that Kim teaches the elements of claim 24. Final Act. 7–8. In support, the Examiner annotates Figure 3 of Kim so as to indicate that the bolts connecting adjacent endplates are the connectors joining the first and second endplates. Id. at 8. Appeal 2019-005400 Application 14/805,980 19 Appellant argues that “[n]o connector of the alleged second endplate joins the alleged second end plate to both the another end plate and the reinforcement plate 403. The reinforcement plate 403 is bolted to, at most, one endplate in Kim.” Appeal Br. 9. In the Answer, the Examiner asserts that Appellant’s argument is not persuasive because “the second endplate include[s] a first connector in a first side region . . . . The first connector of the first endplate and the first connector of the second endplate joining the first and second endplates to each other and to the separator plate.” Answer 22. Kim teaches to use guide plates 109 along the sides of the battery units to fix the cells in place. Kim ¶ 45. The guide plates attach to the endplates (base plate) 111. The guide plates, however, do not attach to adjacent endplates. Kim, Fig. 3. Accordingly, we find that Appellant’s argument, that “[t]he reinforcement plate 403 is bolted to, at most, one endplate in Kim,” persuasive. In view of the foregoing, Appellant has shown error with regard to the rejection of claim 24. As claim 25 depends from claim 24, and relies upon the teachings of Kim in relevant part (Final Act. 8), we similarly determine that Appellant has shown error with regard to the rejection of claim 25. In view of the foregoing, the rejection of claims 1, 2, 4–9, 21, and 23 is affirmed. The rejection of claim 22 is reversed pro forma. The rejection of claims 24 and 25 is reversed. Rejection 2. The Examiner rejects claim 26 as obvious over Kim. Final Act. 9. Claim 26 depends from claim 24. In support of the rejection, the Examiner relies on the same portion of Kim relied upon in connection Appeal 2019-005400 Application 14/805,980 20 with the rejection of claim 24. As we have found that Appellant has shown error in the rejection of claim 24, we similarly determine that Appellant has shown error in the rejection of claim 26. Rejection 3. The Examiner rejects claim 3 as obvious over Kim in view of Rajaie. Final Act. 10–11. Claim 3 depends from claim 1 and further requires that “the support is a tray.” Appeal Br. 12 (Claims App.). In support of the rejection, the Examiner finds that Rajaie teaches an integrated cooling, sealing, and structural battery tray for a vehicle. Final Act. 10. The Examiner determines that one of skill in the art would have had reason to “require the support to be a tray motivated to provide integrated cooling and a plurality of routing apertures that route liquid and dissipate heat from the battery.” Id. The Examiner further determines that one of skill in the art would have “been motivated to combine the structures in order to protect[ ] the battery itself from environmental factors, such as heat, moisture intrusion, dirt or the like and provide a seal between the battery and a support structure.” Id. at 10–11. Appellant argues that one of skill in the art would not have made the proposed modification because it would “prevent the lower reinforcement plate 403 from providing a gas discharge hole for venting when the Kim’s battery module when the lower reinforcement plate 403 is stacked on top of another battery module.” Appeal Br. 11. Rajaie describes the advantage of the disclosed tray structure as follows: An advantage of the present disclosure is that a battery tray is provided that integrates cooling, sealing and structural integrity Appeal 2019-005400 Application 14/805,980 21 features in one unit. Another advantage of the present disclosure is that the battery tray improves packagability of the battery. Yet another advantage of the present disclosure is that the integrated battery tray reduces overall vehicle weight. A further advantage of the present disclosure is that the battery tray protects the battery housing in the event of an impact force. Still a further advantage of the present disclosure is that the battery tray seals the battery from environmental intrusion. Yet a further advantage of the present disclosure is that durability, reliability and assembly of the battery and tray are enhanced. Still yet a further advantage of the present disclosure is that recyclability is enhanced by eliminating usage of multiple materials as compared to present batteries and trays. Rajaie ¶ 7. The Examiner determines that these benefits would have motivated a person of ordinary skill in the art to implement a tray structure. Answer 25–26. The Examiner further finds that the intended purpose of Kim is to create a battery pack with a plurality of stacked battery modules. Id. at 26. The Examiner finds that the tray structure of Rajaie would provide an additional safety feature for the battery pack. “[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Here, Appellant suggests that adopting the tray structure of Rajaie would prevent gas discharge through aperture 301. Appeal Br. 10–11. It is not apparent that this is so. Even if this is accurate, the Examiner has determined that the advantages of the tray structure would motivate one to implement the proposed modification. Appellant has not addressed this determination in its Reply Brief and has not otherwise shown it to be erroneous. Appeal 2019-005400 Application 14/805,980 22 CONCLUSION The Examiner’s rejection of claims 1, 2, 4–7, 9, 21, and 23 as anticipated by Kim is affirmed. The rejection of claims 8, 24 and 25 as anticipated by Kim is reversed. The rejection of claim 22 as anticipated by Kim is reversed pro forma. The rejection of claim 26 as obvious over Kim is reversed. The rejection of claim 3 as obvious over Kim in view of Rajaie is affirmed. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we newly reject claim 22 under 35 U.S.C. § 112(b) for failure to particularly point out and distinctly claim the subject matter which the inventors regard as the invention. Rule 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, Appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground[s] 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 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[s] of rejection [are] 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[s] of rejection designated in [this] decision. Should the examiner reject the claims, Appeal 2019-005400 Application 14/805,980 23 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. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2, 4–9, 21–25 102(a)(1) Kim 1, 2, 4–7, 9, 21, 23 8, 22, 24, 25 22 26 103 Kim 26 3 103 Kim, Rajaie 3 Overall Outcome 1–7, 9, 21, 23 8, 22, 24, 25, 26 22 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; 37 C.F.R. § 41.50(b)