Harris, W. Porter. et al.

Patent Trials and Appeals Board

Oct 10, 2019

14841617 - (D) (P.T.A.B. Oct. 10, 2019)

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.
14/841,617 08/31/2015 W. Porter Harris FARA.069A 1873
142734 7590 10/10/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
ZENG, LINGWEN R
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
10/10/2019 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte W. PORTER HARRIS, BLAKE ROSENGREN and
NICHOLAS JOHN SAMPSON
____________

Appeal 2018-006645
Application 14/841,617
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1–10, and 12–20 under 35 U.S.C.
§ 103 as unpatentable over at least the combined prior art of Fuji (US
2009/0220852 A1, published Sep. 3, 2009), Marchio (US 2012/0177970,
published Jul. 12, 2012), Wood (US 2009/0274952 A1, published Nov. 5,

1 We use the word “Appellant” to refer to the “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant is Farady & Future Inc., which is also identified
as the real party in interest (Appeal Br. 1).

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2009), and Cicero (US 2012/0177971 A1, published Jul. 12, 2012).2,3 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitation):
1. An energy-storage system for a vehicle comprising:
a plurality of modules, each module comprising two half modules
coupled together, each half module including:
a plurality of cells, the cells being cylindrical rechargeable lithium-ion
cells each having a first end and a second end, the first end distal from the
second end, and having an anode terminal and a cathode terminal being
disposed at the first end;
a current carrier electrically coupled to the cells, the cathode terminal
of each of the cells being coupled to a respective first contact of the current
carrier, the anode terminal of each of the cells being coupled to a respective
second contact of the current carrier;
a blast plate disposed substantially parallel to the current carrier such
that the cells are disposed between the current carrier and the blast plate; and
an enclosure having the cells, current carrier, and blast plate disposed
therewithin, the enclosure including a coolant input port, a coolant output
port, and a power connector electrically coupled to the current carrier, the
enclosure having a coolant sub-system configured to circulate liquid coolant
between the two half modules and within each half module by directing the
coolant into the enclosure through the coolant input port and out of the
enclosure through the coolant output port such that each of the cells is at
approximately the same temperature, wherein the cells are disposed between
the current carrier and the blast plate such that an exterior side of each of the
cells is not in contact with the exterior sides of other cells, the coolant sub-
system further configured to circulate the liquid coolant among and between
the cells to provide submerged, substantially evenly distributed cooling;

2 The Examiner made a new ground of rejection in the Answer relying on
this same prior art with additional reasoning (Ans. 14).
3 The Examiner applied an additional reference to each of dependent claims
2 and 10. A discussion of these references is not needed for disposition of
this appeal.
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a tray having the plurality of modules disposed therein, wherein at
least two adjacent modules are fluidly coupled together such that at least
two adjacent coolant input ports are directly engaged with each other and at
least two adjacent coolant output ports are also directly engaged with each
other; the tray including:
a positive bus bar; and
a negative bus bar, the positive and negative bus bars being separately
electrically coupled to the power connectors associated with the plurality of
modules; and
a coolant system configured to circulate the liquid coolant being
pumped into the tray such that each of the modules is at approximately the
same temperature.

ANALYSIS
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejection (e.g., Ans. 3–25). In re Jung, 637 F.3d 1356, 1365–66
(Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring
Appellant(s) to identify the alleged error in the Examiner’s rejection.). We
sustain the rejections for the reasons expressed by the Examiner in the Final
Office Action and the Answer.
We add the following primarily for emphasis.
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
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thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
The Examiner’s rejection is based (in part) on modifying Fuji’s
external coolant inlet and outlet conduits to be segments of each module as
exemplified in Marchio (e.g., Ans. 5, 6, 17). Appellant’s arguments all
focus on the alleged failure of the Examiner’s Fuji/Marchio combination to
teach or suggest that two adjacent modules have two adjacent coolant input
ports “directly engaged with each other” and two adjacent coolant outlet
ports “directly engaged with each other” (e.g., Appeal Br. 4–6). To the
contrary, Marchio teaches that adjacent inlets and outlets are directly
engaged with one another (e.g., Figs. 16, 26; Ans. 17). First of all, we note
that the word “engaged” is not defined, and Appellant did not use the phrase
“directly connecting”. Marchio discusses the use of a coupler in paragraph
95 which Appellant contends is not a “direct connection” (Appeal Br. 6; see
also Reply Br. 4). The broadest reasonable interpretation of directly
engaged encompasses directly secured.4 Appellant has not directed our
attention to any persuasive reasoning or credible evidence to establish that
the use of a coupler is not within the scope of “directly engaging” that is,
directly securing two adjacent coolant ports. In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (it is well established that “the
PTO must give claims their broadest reasonable construction consistent with
the specification” and if the specification does not provide a definition for
claim terms, the PTO applies a broad interpretation).

4 One relevant definition of “engage” is “to attach or secure”; Random
House Kernerman Webster’s College Dictionary. (2010). Retrieved
September 26 2019 from https://www.thefreedictionary.com/engage.
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In any event, Marchio also discusses the use of male and female
connectors directly connecting adjacent components (see, e.g., ¶¶ 92–95,
Fig. 23). Accordingly, one of ordinary skill in the art would have
immediately inferred, using no more than ordinary creativity, that the use of
male and female connectors may be used instead of a coupler for the
respective fluid inlets and outlets of each of Marchio’s modules (see, e.g.,
Marchio Figs. 16, 18, 23, 26). The disputed claim term encompasses such a
connection because Appellant’s specify that the use of male and female
connectors falls within the scope of the adjacent respective inlets and outlets
being “directly engaged” (Appeal Br. 2, discussing the “non-limiting
embodiment” of Spec. ¶¶ 48, 49, Figs. 10A, 10B).
Appellant’s argument that both Fuji and Marchio require external
cooling conduits and that the claimed invention does not, and that the
proposed modification to Fuji/Marchio would render their battery modules
inoperable are unpersuasive (Reply Br. 5, 6). Claim 1 does not specify that
there be no external coolant conduits. In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (it is well established that limitations not appearing in the
claims cannot be relied upon for patentability). Appellant provides no
persuasive technical reasoning or evidence that the Examiner’s proposed
modification would have rendered Fuji/Marchio non-functional. Indeed, as
the Fuji/Marchio combination merely provides for multiple, segmented,
directly-engaged parts of a conduit versus a single conduit it is not seen how
such a modification makes Fuji inoperable. An attorney's arguments in a
brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
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In summary, Appellant has not directed our attention to any
persuasive reasoning or credible evidence to establish that the Examiner’s
interpretation that the claim encompasses the Fuji/Marchio coolant ports
combination is unreasonable. ICON, 496 F.3d at 1379. Appellant has not
adequately explained why one skilled in the art would not have combined
the teachings of the applied prior art as set forth by the Examiner. Thus, on
this record, Appellant has not shown error in the Examiner’s obviousness
determination. See KSR, 550 U.S. at 417 (the predictable use of known prior
art elements performing the same functions they have been known to
perform is normally obvious; the combination of familiar elements is likely
to be obvious when it does no more than yield predictable results); Ball
Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984,
993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme
Court, the PTO must take account of the “inferences and creative steps,” as
well as routine steps, that an ordinary artisan would employ).
Accordingly, we affirm the Examiner’s prior art rejections under 35
U.S.C. § 103 of all the claims on appeal for the reasons given above and
presented by the Examiner.

DECISION
The Examiner’s § 103 rejections are affirmed.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–9, 12–20 103 Fuji, Marchio,
Wood, Cicero
1, 3–9,
12–20

2 103 Fuji, Marchio,
Wood, Cicero, Goto
2
10 103 Fuji, Marchio,
Wood, Cicero,
Houchin-Miller
10
Overall
Outcome
1–10, 12–
20

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

AFFIRMED