FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Aug 27, 2020

14177437 - (D) (P.T.A.B. Aug. 27, 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.
14/177,437 02/11/2014 Giriraj SRINIVASAN 83403227; 67186-056PUS1 1045
46442 7590 08/27/2020
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
LEE, JAMES
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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 GIRIRAJ SRINIVASAN and PATRICK DANIEL MAGUIRE

Appeal 2019-005687
Application 14/177,437
Technology Center 1700
____________

Before MICHAEL G. McMANUS, MERRELL C. CASHION, JR., and
JANE E. INGLESE, 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 1–6, 10, 11, 13, 16, 22, and 24–31. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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 Feb. 4, 2019 (“Appeal Br.”) 2.
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CLAIMED SUBJECT MATTER

The present application generally relates to battery modules of the
type used in electric or hybrid electric vehicles. Specification filed Feb. 11,
2014 (“Spec.”) ¶¶ 2–3. The Specification teaches that a battery module may
include a plurality of battery cells with spacers arranged between adjacent
battery cells. Id. ¶ 3.
The Specification further teaches as follows:
The battery cell spacer may include a unitary or molded body
made up of a plurality of walls. A pocket extends between
adjacent dividing walls of the plurality of walls and can
accommodate a battery cell. End or hinged walls may connect
between the adjacent dividing walls. The unitary body of the
battery cell spacer is adjustable between a first position and a
second position, such as by applying a compressive force, to
change a dimension of the pocket.

Id. ¶ 38. Figure 4 of the Drawings is reproduced below.

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Figure 4 is a top view of a battery cell spacer that separates the battery cells
of a battery module. Id. ¶¶ 29, 49. Figure 4 shows battery cells 62, dividing
walls 68, end walls 70, and living hinges 78. Id. ¶¶ 47, 49.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:

1. A battery cell spacer, comprising:
a unitary body including at least a first dividing wall, a second
dividing wall, and a hinged wall connecting said first dividing
wall and said second dividing wall, said hinged wall including a
first height that is less than a second height of said first dividing
wall and said second dividing wall;
a pocket defined between said first dividing wall and said
second dividing wall; and
said unitary body flexible between a first position and a second
position in which said first dividing wall and said second
dividing wall are closer together to change a dimension
associated with said pocket.
Appeal Br. 14 (Claims App.) (reformatted for clarity).

REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Van de Ven et al. (“Van
de Ven”)
US 6,457,636 B1 Oct.1, 2002
Ho US 2003/0234281 A1 Dec. 25, 2003
Humphrey et al.
(“Humphrey”)
US 2006/0254815 A1 Nov. 16, 2006
Genosar et al.
(“Genosar”)
US 2010/0022992 A1 Jan. 28, 2010
Cheon et al. (“Cheon”) US 2010/0233519 A1 Sept. 16, 2010
Cho et al. (“Cho”) US 2012/0040235 A1 Feb. 16, 2012
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Lev et al. (“Lev”) US 2013/0209847 A1 Aug. 15, 2013
Kuehn et al. (“Kuehn”) US 2014/0311933 A1 Oct. 23, 2014

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–3, 6, 13, 16, 27, and 28 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Genosar. Final Action dated
Sept. 9, 2019 (“Final Act.”) 3–5.
2. Claim 31 is rejected under § 102(a)(1) as anticipated by Cho.
Id. at 5–7.
3. Claims 24, 25, 29, and 30 are rejected under 35 U.S.C. § 103
as being unpatentable over Genosar in view of Cheon. Id. at
8–10.
4. Claim 26 is rejected under 35 U.S.C. § 103 as being
unpatentable over Genosar in view of Van de Ven. Id. at 11.
5. Claim 1–3, 6, 10, 11, 13, 16, and 24–30 are rejected under 35
U.S.C. § 103 as being unpatentable over Humphrey in view
of Kuehn. Id. at 11–18.
6. Claims 4, 5, and 22 are rejected under 35 U.S.C. § 103 as
being unpatentable over Humphrey in view of Kuehn and
further in view of Ho. Id. at 18–20.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–3, 6, 13, 16, 27, and 28
as anticipated by Genosar. Id. at 3–4. Genosar is titled “Drug Delivery
Device.” Genosar, code (54). The drug delivery device of Genosar includes
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a “displacement-generating battery cell” that displaces a wall of a “drug
reservoir chamber” to expel the drug from the chamber. Id., Abstract.
The battery cell of Genosar is shown in Figures 3a and 3b, reproduced
below.

Figure 3 is described as “a preferred embodiment of the battery cell 10
which drives the drug-delivery device.” Id. ¶ 68. The cell includes lithium
cathode 30 and tin anode 19 as well as electrolyte 32. Id.
In support of the rejection, the Examiner finds that Genosar teaches “a
unitary body including at least a first dividing wall (first (upper) main wall
of housing 35, Fig. 3a-3d)” and “a second dividing wall (second (lower)
main wall of housing 35, Fig. 3a-3d).” Final Act. 3. The Examiner further
finds that the height of the “hinged wall” includes a height that is less than a
height of the dividing walls (top and bottom walls). Id.
Appellant argues that the rejection is in error on several bases.
Appeal Br. 4–7.

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“Battery Cell Spacer”
First, with respect to claims 1 and 13, Appellant argues that the
portion of Genosar relied upon by the Examiner does not teach a battery cell
spacer. Id. at 4, 6. Rather, Appellant contends, housing 35 of Genosar is a
battery cell housing. Id.
In a similar vein, Appellant argues that the rejection of claim 3 is in
error. Claim 3 depends from claim 1 and further requires “a battery cell
received in said pocket.” Id. at 14 (Claims App.). Appellant argues that
“[f]eature 10 of Figures 3a-3d of Genosar is a battery cell. Thus, every
feature shown in Figures 3a-3d is part of a single battery cell rather than a
battery cell spacer that includes a pocket for receiving a battery cell.” Id. at
5.
In the context of claim 1, the Examiner determines that Appellant
seeks “an overly narrow interpretation of . . . ‘batter cell spacer.’” Answer
(dated May 17, 2019) 20. In regard to claim 3, the Examiner finds that the
battery components (cathode 19, anode 30, and electrolyte 32) of Genosar
“form a battery cell that is received within a pocket defined by the walls of
housing 35.” Id. at 21. Thus, the Examiner determines that the housing of
Genosar teaches the claimed “spacer” while other components of Genosar
teach the claimed “battery cell.” See Answer 20 (“The housing 35 of
Genosar defines a space that separates the battery cell from the outside and,
thus, is considered to be a ‘battery cell spacer’”).
In its Reply Brief (dated July 17, 2019 (“Reply Br.”)), Appellant
argues that each embodiment described in the Specification describes a cell
spacer separate from the battery cells. Reply Br. 2. Appellant further
reiterates its view that housing 35 of Genosar is the outer casing of the
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battery cell 10 rather than a separate battery cell spacer. In the context of
claim 3, Appellant argues that “the tin anode/cathode 19 [of Genosar] is a
sub-component of a battery cell, it is not itself a battery cell.” Reply Br. 3.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “[W]e look to the words of
the claims themselves, both asserted and nonasserted, to define the scope of
the patented invention.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996).
Review of the Specification and claims indicates that the terms
“battery cell” and “battery cell spacer” are generally used to indicate
separate elements in the claims and, for purposes of this decision, we
construe them accordingly. The drawings depict battery cells 62 having wall
structures separate from the spacer. See, e.g., Fig. 7A. Genosar teaches that
“battery cell 10” includes “housing 35.” Genosar ¶ 68. Accordingly, we are
persuaded that the Examiner erred in finding that the housing (of Genosar)
falls within the scope of the “battery cell spacer” rather than the “battery
cell” (of, for example, claims 3, 13, and 31).

“A First Height that is Less than a Second Height”
Appellant additionally argues that Genosar fails to teach a hinged wall
having “a first height that is less than a second height of said first dividing
wall and said second dividing wall” as required by claim 1. Appeal Br. 5.
The Examiner finds, with respect to Genosar’s Figures 3a–3d, that
“[i]f the housing 35 were to be placed on its side, a ‘first height’/thickness of
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the folded side wall of the housing 35 is less than a ‘second height’/length of
either main wall).” Final Act. 3.
Appellant argues that “[s]ince the housing 35 is cylindrical, each of
these walls would extend to a common height if the housing 35 were to be
placed on its side in the manner argued by the Office.” Appeal Br. 5.
Appellant further offers the following annotated figure reproduced below.
Id.

The figure is an annotated version of Figure 3a of Genosar.
Appellant appears to argue that some portions of housing 35 are the
same “height” as the top and bottom portions (dividing walls). This is not
persuasive of error because the claim requires only a “hinged wall including
a first height that is less than a second height of said first dividing wall and
said second dividing wall.” Id. at 14 (Claims App.). The lower portions of
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the hinged wall of Figure 3a of Genosar have a height that is less than that of
the dividing walls. See Answer 21 (Annotated Figure 3a).2
Accordingly, Appellant has not shown error in this regard.

“Living Hinge”
Claim 13 requires that “said end wall includ[e] a living hinge
adjustable to move said end wall between an expanded position and a
collapsed position.” Appeal Br. 15 (Claims App.). In support of the
rejection, the Examiner determines that the “specification discloses that the
living hinge may be a thinned portion of an end wall that allows the end wall
to collapse upon itself.” Final Act. 2. The Examiner finds that “Fig. 4 [of
the Drawings] identifies a bent portion/fold line in the end wall 70 as a
living hinge 78.” Id. The Examiner further directs us to the Specification’s
teaching of an embodiment where “living hinge 178 includes a flap of
material 80 rather than a thinned portion of the end wall 70.” Spec. ¶ 52.
The Specification further teaches that “[o]ther living hinge configurations
are also contemplated as within the scope of this disclosure.” Spec. ¶ 52.
The Examiner finds that Genosar teaches that the end walls have “a
flexible concertina shape . . . said end wall including a living hinge.” Final
Act. 5. The Examiner further finds “Fig. 3a-3b and Fig. 3c-3d show
contracted and expanded positions of the housing 35, where fold lines of the
side walls are considered to form a ‘living hinge.’” Id.

2 To the extent Appellant contemplates some other theory, Appellant has not
adequately stated such theory to present an issue for appeal. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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Appellant argues that Genosar fails to teach the “living hinge”
limitation required by claim 13. Appeal Br. 6–7. Appellant argues that the
Examiner relies upon “fold lines” but this is insufficient because “Genosar
does not describe any ‘fold lines’ nor show any ‘fold lines’ in its various
figures.” Id. at 7. Appellant does not offer a proposed construction of
“living hinge.”
In reference to Figures 3a–3d, Genosar teaches as follows:
The resulting expansion . . . is enabled by the flexible nature of
the cell’s housing 35. In the preferred embodiment shown, the
flexible concertina shape shown is readily adaptable to the
new configuration of the battery cell 10, as it adjusts to being
lengthened by reducing the extent of the folds in the side
walls.

Genosar ¶ 69 (emphasis added). Genosar’s disclosure of “reducing the
extent of the folds in the side walls” supports the Examiner’s finding that
“fold lines of the side walls are considered to form a ‘living hinge.’”
Appellant does not substantively dispute this finding. Accordingly,
Appellant has not shown error in this regard.
In view of our determination, above, regarding the “battery cell” and
“battery cell spacer” limitations, the rejection of claims 1–3, 6, 13, 16, 27,
and 28 as anticipated by Genosar is reversed.

Rejection 2. The Examiner rejects claim 31 as anticipated by Cho.
Final Act. 5–7.
Claim 31 is an independent claim to a battery module including a
spacer having three dividing walls so as to form two pockets for battery
cells.
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Cho teaches “a pouch-type secondary battery having improved safety”
where “[w]hen inner pressure of a pouch is increased by an overdischarge,
the pouch is deformed to separate electrode leads from electrode tabs.” Cho,
Abstract. Figures 3 and 4 of Cho are reproduced below.

Figure 3 (left) is a perspective view of a pouch-type battery. Id. ¶ 58.
Figure 4 (right) is a perspective view illustrating a pouch-type battery in an
expanded state so as to separate electrode tabs (50 and 60) from electrode
leads (70 and 80). Id. Figure 13 is additionally reproduced below.
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Figure 13 is a perspective view illustrating a battery module including
several pouch-type secondary batteries. Id. ¶ 54.
The Examiner finds as follows:
Fig. 13 shows a plurality of pouch-type secondary batteries 210
arranged next to each other, wherein spacing edges 110 and
spacing edges 120 together on one end of a pouch is considered
to be an ‘end wall’, spacing edges 110 and spacing edges 120
together one another end of the same pouch is considered to be
another ‘end wall’, one of the main faces of the pouch
positioned between adjacent batteries is considered to be a
‘dividing wall’ such that first, second and third dividing walls
and first, second, third and fourth end walls are formed among
two adjacent battery cells 210 within said module.

Final Act. 6–7.
Appellant argues that “Cho does not disclose a battery cell spacer and
therefore cannot teach battery cells received within pockets of a spacer.”
Appeal Br. 7. Appellant characterizes Cho as disclosing “battery cells 210
stacked directly next to one another to establish a module 300.” Id.
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Similar to its arguments regarding the Genosar reference, Appellant
argues that walls 120, 130 of Cho are a part of the battery cell, not the
battery cell spacer. In the Answer, the Examiner finds that “the contents of
the battery 210 contained within each pouch is considered to be a battery
cell.” Answer 23.
In its Reply Brief, Appellant argues that “[t]he Office appears to be
arguing that the battery cell 210 of Cho reads on both the claimed ‘battery
cell’ and the ‘battery cell spacer’ limitations of claim 31.” Reply Br. 5.
This presents an issue similar to Rejection 1. Claim 31 differentiates
between a battery cell and a battery cell spacer. Appeal Br. 16 (Claims
App.). Cho describes a “pouch-type battery” that includes electrode leads as
a component of the pouch (exterior) portion. The Examiner seeks to read
the spacer limitations on the pouch structure and the battery cell limitations
on the interior components of the Cho battery. Answer 23. We are
persuaded that the battery of Cho, taken as a whole, may satisfy the “battery
cell” limitation but not the “battery cell spacer” limitation. Nor may such
structure satisfy both limitations. See In re Robertson, 169 F.3d 743 (Fed.
Cir. 1999) (claim requiring three separate means not anticipated by structure
containing two means where one of the two means was argued to meet two
of the three claimed means).
Accordingly, Appellant has shown error in this regard and the
rejection of claim 31 as anticipated by Cho is reversed.

Rejection 3. The Examiner rejects claims 24, 25, 29, and 30 as
obvious over Genosar in view of Cheon. Final Act. 8–10. In support of the
rejection, the Examiner finds that Cheon teaches “a rechargeable battery
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comprising a case including a wrinkle portion (45) having a thickness
thinner than that of the connection portion (41) and the supporting portion
(47) such that the wrinkle portion (45) may be easily changed such as by
expanding or flattening the wrinkle portion (45).” Id. at 8. These structures
are shown in Figure 4 of Cheon, reproduced in part below.

The excerpt of Figure 4 shows a cross-sectional view of a portion of a
rechargeable battery. Cheon ¶ 29.
The Examiner determines that one of ordinary skill in the art would
have had reason “to modify the flexible wall portion of the concertina-
shaped housing of Genosar to be thinner than the other parts of the housing
because Cheon teaches easier manipulation for accommodating the
expanding/flattening motion.” Id. at 9.
With respect to claims 24 and 25, Appellant argues that “thinned
portion 45 of Cheon is not part of an end wall of a ‘battery cell spacer’” but,
instead, “is part of a plate of a cell casing.” Appeal Br. 8. This is not
persuasive of error as the Examiner did not find that the thinned portion 45
of Cheon is part of an end wall of a battery spacer. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (Patentability “cannot be established
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by attacking references individually where the rejection is based upon the
teachings of a combination of references.”).
Appellant additionally argues that the thinned portion 45 of Cheon
would not function as a hinge but would “result in walls that bulge away
from one another.” Id. at 8–9. Appellant does not direct us to any teaching
of an expanding gas in Genosar that would cause the end wall to bulge
outwardly. See Answer 24. It is not apparent why the living hinge of the
hypothetical combination would not function as proposed. Further,
Appellant’s assertion regarding bulging is not adequately supported by
evidence of record. An argument made by counsel in a brief does not
substitute for evidence lacking in the record. See Estee Lauder, Inc. v.
L’Oréal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997); see also Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332 (Fed. Cir. 2010) (rejecting
a nonobviousness position that was “merely attorney argument lacking
evidentiary support”).
Accordingly, Appellant has not shown error in this regard.
Dependent claims 29 and 30 each require that “said thinned portion is
formed at an apex of said end wall.” Appeal Br. 16 (Claims App.). In this
regard, the Examiner finds that “[m]odified Genosar further envisages ‘said
thinned portion is formed at an apex of said end wall’ because Fig. 3a-3d of
Genosar shows valleys and peaks/apexes and the modification as set forth
above teaches thinning the wrinkle portion of the housing.” Final Act. 9.
Appellant argues that “Genosar does not disclose any thinned
portion.” Appeal Br. 9. That Genosar does not teach a thinned portion,
however, is conceded by the Examiner (Final Act. 8) and is not persuasive of
error.
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Appellant further argues that “the alleged thin portion 45 of Cheon is
not formed at an apex of an end wall.” Appeal Br. 9. In this regard, the
Examiner determines
that Cheon teaching a wrinkle portion having thickness thinner
than that of the rest of that particular wall including the
connection portion and the supporting portion ([Abstract],
[0066]) necessarily teaches a thinned portion at an apex because
the thinned portion is present along the entire wrinkle portion,
including the apex of the wrinkle portion. Thus, incorporating
said teaching in the concertina-shaped side wall of Genosar
would similarly result in a thinned portion along the entirety of
the concertina-shaped side wall, including the apex of the fold.

Answer 25. Thus, the hypothetical combination incorporates the thinned
portion of Cheon into the entirety of the sidewall. In its Reply, Appellant
asserts that “[t]he alleged end wall 41 of Cheon is flat and does not appear to
have an apex.” Reply Br. 6.
The claims at issue require a thinned portion “formed at an apex” of
the end wall. The hypothetical combination incorporates the (thinned)
wrinkle portion 45 of Cheon into the sidewall of Genosar. Thus, the
rejection contemplates that the wrinkle portion 45 of Cheon would be found
at the apex(es) of the walls of Genosar as well as elsewhere. Appellant has
not shown error in the foregoing.
Rejection 3 depends, in part, upon the Examiner’s findings made in
connection with Rejection 1, including the Examiner’s findings regarding
the “battery cell” and “battery cell spacer” limitations. Final Act. 8. In view
of our determination, of error with regard to these limitations, the rejection
of claims 24, 25, 29, and 30 as obvious over Genosar in view of Cheon is
reversed.
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Rejection 4. The Examiner rejects claim 26 as obvious over Genosar
in view of Van de Ven. Final Act. 11.
Claim 26 depends from claim 13 and further requires that “said living
hinge includes a flap of material attached at an apex of said end wall.”
Appeal Br. 15–16 (Claims App.).
Van de Ven concerns “a collapsible U-channel” for use in packing
applications. Van de Ven, col. 1:6–9. The Examiner finds that “Van de Ven
discloses using a tape for reinforcing a fold line for a pleated structure.”
Final Act. 11. The Examiner cites to Figure 12 of Van de Ven, reproduced
below, in support of the rejection. Id.

Figure 12(a) depicts a U-channel in its use configuration and Figure 12(b)
depicts a U-channel in its stacking configuration. Van de Ven, col. 2:58–60.
The Examiner determines that one of ordinary skill in the art would have had
reason “to modify Genosar to include a strip of material at an apex of the
flexible wall of the concertina-shaped housing because Van de Ven teaches
reinforcing/strengthening the fold line of the structure.” Final Act. 11. In
the Answer, the Examiner directs us to a portion of the Specification which
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describes an embodiment where “the living hinge 178 includes a flap of
material 80 rather than a thinned portion of the end wall 70.” Answer 26;
Spec. ¶ 52.
Appellant argues that “the tape of Van de Ven is not a living hinge
that includes a flap of material attached at an apex of an end wall of a battery
cell spacer” and that Van de Ven’s teachings “have nothing to do with living
hinges.” Appeal Br. 10. Appellant does not address claim 26 in its Reply
Brief.
We have determined, above, that Appellant has not shown error in the
Examiner’s finding that Genosar teaches a living hinge. Nor does Appellant
clearly articulate why the tape of Van de Ven does not satisfy the “flap of
material” limitation. Accordingly, Appellant has not shown error in this
regard.
The rejection of claim 26 as obvious over Genosar in view of Van de
Ven depends, in part, upon the stated basis of Rejection 1, including the
Examiner’s findings regarding the “battery cell” and “battery cell spacer”
limitations. Final Act. 11. In view of our determination of error with regard
to these limitations, the rejection of claim 26 as obvious over Genosar in
view of Van de Ven is reversed.

Rejection 5. The Examiner rejects claims 1–3, 6, 10, 11, 13, 16, and
24–30 as obvious over Humphrey in view of Kuehn. Final Act. 11–18.
Humphrey is titled “Radiofrequency Identification Shielding.”
Humphrey, code (54). Humphrey teaches the incorporation of conductive
materials into containers so as to form a Faraday cage around the contents to
protect RF-ID tags therein from unauthorized interrogation. Id., Abstract.
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The Examiner cites, inter alia, Figure 12 of Humphrey in support of the
rejection. Final Act. 11–12. Figure 12 is reproduced below.

Figure 12 illustrates an expendable folder style folder made of a conductive
material. Humphrey ¶ 58.
The secondary reference, Kuehn, is titled “File Folder.” Kuehn, code
(54). The Examiner finds that Kuehn teaches a file folder including
opposing sides (104, 106) that are gusseted to form an expandable file
folder. Final Act. 12. The Examiner further indicates that “gusseted means
folded, creased or hinged like an accordion pleat.” Id.

Claim 1
Appellant argues that neither Humphrey nor Kuehn discloses a hinged
wall that includes a height that is less than a second height of first and
second dividing walls. Appeal Br. 11.
In the Answer, the Examiner supplies the following graphic,
reproduced below, designated as “Modified Fig. 12 of Humphrey.” Answer
27.
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Modified Figure 12 includes the Examiner’s annotations indicating the
Examiner’s findings as to the first and second height limitations.
Appellant argues that the Examiner has designated the width of the
container as the height but that the more correct view is to view the vertical
dimension as the height. Reply Br. 6–7.
The Specification indicates that the area opposite the open pocket is
the bottom. See, e.g., Spec. ¶¶ 53–56 (referring to “bottom 86”); Figures
6A, 7A. Height is typically construed as the dimension from bottom to top.
Further, the Specification describes an embodiment where “[t]he hinged
walls 195 do not extend across an entire height of the dividing walls 168
such that open spaces 191 may be defined at the dividing wall 168 ends.”
Spec. ¶ 65. This embodiment is depicted in Figure 12, reproduced below.
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“Figure 12 illustrates another exemplary battery cell spacer 160 that may be
suited for an air cooled battery system.” Spec. ¶ 62. The teachings in the
Specification, in conjunction with Figure 12, indicate that the “height”
direction extends from the bottom of the pocket to the opening for receiving
the battery (vertically in Figure 12). Accordingly, we do not adopt the
Examiner’s findings regarding Humphrey teaching the “height” limitation.
This determination is equally applicable to claims 2–6, 10, 11, 22, 27, and
28 which depend, directly or indirectly, from claim 1.

Claim 13
Claim 13 requires an “end wall including a living hinge.” The
Examiner finds that Kuehn teaches a file folder with gusseted sides and
“wherein the rigid structural pieces of file folder 100 [are] thicker than the
more flexible structural pieces.” Final Act. 15.
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Appellant argues that “[t]he file folder of Kuehn is not a battery cell
separator. Nor does Kuehn describe the gusseted portion as establishing a
living hinge.” Appeal Br. 11.
This is insufficient to show error in the rejection. The first argument
seeks to argue against a cited reference individually rather than against the
combination relied upon by the Examiner. In re Merck & Co., 800 F.2d at
1097 (Fed. Cir. 1986) (Patentability “cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”). The second argument fails to show error in
the Examiner’s finding regarding the gusseted sides. Further, there is no
requirement that a reference use the same language as the claim at issue.

Claim 24
Claim 24 requires an “end wall including a thinned portion that is
thinner than a remaining portion of said end wall.” Appeal Br. 15 (Claims
App.). The Examiner finds that Kuehn teaches this limitation by its
disclosure of a file folder where the rigid structural pieces are thicker than
the more flexible structural pieces. Final Act. 17 (citing Kuehn ¶ 31).
Appellant argues that Kuehn does not describe the gusseted portion as
including any thinned portions. Appeal Br. 11–12. The relevant portion of
Kuehn provides as follows:
File folder 100 includes a bottom 102, a pair of opposing sides
104 and 106, a front 108, a back 110 and a top flap or rotatable
cover 112 . . . . bottom 102, front 108, back 110 and top flap or
rotatable cover 112 can be made of a rigid polymer, while the
pair of opposing sides 104 and 106 can be made of a more
flexible polymer. This can be accomplished by using the same
or different polymers throughout file folder 100 or by making
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23
the more rigid structural pieces of file folder 100 thicker
than the more flexible structural pieces.

Kuehn ¶ 31 (emphasis added). Thus, Kuehn teaches end walls that are less
thick than other structures but does not specify that the thinned portion is
“thinner than a remaining portion of said end wall” as required by claim 24.
Accordingly, we do not adopt the Examiner’s finding that Kuehn teaches an
“end wall including a thinned portion that is thinner than a remaining portion
of said end wall” as required by claim 24. This determination is applicable
to claim 30 which depends from claim 24.

Analogous Art
Appellant argues that neither Humphrey nor Kuehn are analogous
prior art. Appeal Br. 12–13.
Federal Circuit precedent teaches that
[t]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.

In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The Examiner asserts
that Humphrey and Kuehn both qualify as analogous art under the second
test because both would have been “reasonably pertinent to problems
relating to a spacer having flexible walls.” Answer 29–30.
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
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an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992).
The Specification teaches that the application “relates to an electrified
vehicle, and more particularly, but not exclusively, to a battery cell spacer or
separator for separating adjacent battery cells of a battery module.” Spec. ¶
1.
Here, the Examiner posits that the references are reasonably pertinent
to problems relating to a spacer having flexible walls. Such a spacer,
however, is the inventors’ solution rather than the problem they faced. As a
result, the Examiner has not shown that the Humphrey and Kuehn references
are reasonably pertinent to the particular problem with which the inventor is
involved.
Accordingly, Appellant has shown error with regard to the rejection of
claims 1–3, 6, 10, 11, 13, 16, and 24–30 as obvious over Humphrey in view
of Kuehn.

Rejection 6. The Examiner rejects claims 4, 5, and 22 as obvious
over Humphrey in view of Kuehn and further in view of Ho. Final Act. 18–
20. Appellant alleges error for the same reasons discussed above. Appeal
Br. 13. As we have found that Appellant has shown error with respect to
whether the Humphrey and Kuehn references are reasonably pertinent to the
particular problem with which the inventor was faced, we determine that
Appellant has similarly shown error in the rejection of claims 4, 5, and 22 as
obvious over Humphrey in view of Kuehn and further in view of Ho.

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25
CONCLUSION

The Examiner’s rejections are reversed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6, 13,
16, 27, 28
102(a)(1) Genosar 1–3, 6, 13,
16, 27, 28
31 102(a)(1) Cho 31
24, 25, 29,
30
103 Genosar, Cheon 24, 25, 29,
30
26 103 Genosar, Van de
Ven
26
1–3, 6, 10,
11, 13, 16,
24–30
103 Humphrey, Kuehn 1–3, 6, 10,
11, 13, 16,
24–30
4, 5, 22 103 Humphrey, Kuehn,
Ho
4, 5, 22
Overall
Outcome
1–6, 10,
11, 13, 16,
22, 24–31

REVERSED