Jaguar Land Rover Limited

Patent Trials and Appeals Board

Apr 21, 2020

14406811 - (D) (P.T.A.B. Apr. 21, 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.
14/406,811 12/10/2014 Stephen Nicholls 1246-25TS 7461
20792 7590 04/21/2020
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
ZENG, LINGWEN R
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
04/21/2020 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):
uspto@myersbigel.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN NICHOLLS

Appeal 2019-004054
Application 14/406,811
Technology Center 1700
Before ROMULO H. DELMENDO, BRIAN D. RANGE, and JANE E.
INGLESE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 4–11. 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 Jaguar Land
Rover Limited. Appeal Br. 1.
Appeal 2019-004054
Application 14/406,811

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a system for
controlling the temperature of a battery pack for an electric vehicle. Spec.
1:5–14. Claim 1 is the only independent claim on appeal and is illustrative:
1. A system for controlling the temperature of a
rechargeable electric battery pack comprising a plurality of
rechargeable electrochemical storage cells disposed in a
plurality of rows of one or more cells each, the system
comprising two heat exchanger plates for each of said rows of
one or more cells, each said row being disposed between the
two heat exchanger plates for said row, and each heat
exchanger plate being arranged to allow heat transfer fluid to
flow internally thereof;
wherein a first of the two heat exchanger plates for a first
of said rows is configured and/or arranged to allow heat transfer
fluid to flow in a first general direction;
wherein a second of the two heat exchanger plates for
said first row is configured and/or arranged to allow heat
transfer fluid to flow in a second general direction;
wherein the first and second general directions are
substantially different to one another; and
wherein each heat exchanger plate of the system
comprises an inlet and an outlet, and
wherein, in use, the inlet is disposed at a higher elevation
than the outlet.

2 In this Decision, we refer to the Final Office Action dated June 26, 2018
(“Final Act.”), the Appeal Brief filed November 26, 2018 (“Appeal Br.”),
the Examiner’s Answer dated March 7, 2019 (“Ans.”), and the Reply Brief
filed April 23, 2019 (“Reply Br.”).
Appeal 2019-004054
Application 14/406,811

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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name
Yoshimoto et al.
(“Yoshimoto”)
Nakamura
You et al.
(“You”)

Reference
US 2001/0038935 A1

US 2010/0163325 A1
US 2012/0325447 A1

Date
Nov. 8, 2001

July 1, 2010
Dec. 27, 2012

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1, 2, and 4–8 under 35 U.S.C. § 103 as obvious over
Nakamurain view of Yoshimoto. Ans. 3.
B. Claims 9–11 under U.S.C. § 103 as obvious over Nakamura in view
of Yoshimoto and You. Id. at 5–6.

OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
Appeal 2019-004054
Application 14/406,811

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837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies. The
Examiner finds that Nakamura discloses a structure meeting most of the
recitations of claim 1. Ans. 3. The Examiner finds that Nakamura does not
teach a cooling system with an inlet disposed at a higher elevation than the
outlet. Id. at 4. The Examiner finds that Yoshimoto teaches a cooling system
with a cooling water inlet disposed at a higher elevation than a cooling water
outlet. Id. The Examiner determines that
it would have been obvious . . . to have modified Nakamura et
al. with the inlet [] disposed at a higher elevation than the outlet
from Yoshimoto et al. with the motivation of having a means
such the diagonal flow direction of the coolant would make the
water temperature uniform and improve the cooling
performance of the heat exchanging plate.
Id.
Appellant argues that the Examiner has not provided an adequate
rationale as to why a person of skill in the art would have modified
Nakamura in view of Yoshimoto. Appeal Br. 6–8. In particular, Appellant
argues that the Examiner’s proposed combination would require substantial
modification of Nakamura and that the Examiner has not identified adequate
evidence to justify such a modification. Id. For the reasons explained below,
Appellant’s argument persuades of error.
Nakamura’s system is illustrated by Nakamura Figure 1 which we
reproduce below.
Appeal 2019-004054
Application 14/406,811

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Nakamura Figure 1 is a perspective view showing the Nakamura assembled
battery. Nakamura ¶ 26. Nakamura’s battery could be used, like Appellant’s
battery, in an electric vehicle. Id. ¶ 1. Nakamura teaches a stack of bipolar
secondary batteries 4 where each secondary battery 4 is separated by either a
negative collector plate 21 or a positive electrode collector plate 23. Id. ¶ 42.
To cool the stack, a plurality of through holes (cooling passages) 2A are
formed through each of the negative and positive electrode collector plates.
Id. at ¶ 45. Nakamura teaches that a cooling media (cooling air or water)
may be caused to flow through this plurality of holes. Id.
Yoshimoto, in contrast, relates to a polymer electrolyte fuel cell.
Yoshimoto Abstract; see also Appeal Br. 10–11. Yoshimoto teaches a
cooling plate for the fuel cell where consecutive cooling plates each have an
inlet located above an outlet. Yoshimoto Fig. 3a. This aspect of Yoshimoto
is similar to Appellant’s cooling plates. See Spec. Figs. 5A, 6A. In
particular, claim 1 requires two heat exchanger plates with a row of
rechargeable electrochemical storage cells disposed between each of the two
plates. Each of the two plates must have an inlet and an outlet where (1) the
plates are configured to allow fluid flow in “substantially different” general
Appeal 2019-004054
Application 14/406,811

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directions and (2) where, when “in use,” the inlet of each plate is disposed at
a higher elevation than the outlet.
The Examiner does not find that Nakamura’s assembled battery,
without modification, can ever be orientated so that “in use, the inlet is
disposed at a higher elevation than the outlet” for each recited heat
exchanger plate. The Examiner appears to determine that a person of skill in
the art would modify Nakamura to reach this recitation, but the Examiner’s
stated reason for such a modification is conclusory. See, e.g., Ans. 9
(explaining motivation “of having a means such the diagonal flow direction
of the coolant would make the water temperature uniform and improve the
cooling performance of the heat exchanging plate”). The Examiner does not
provide a clear explanation of what modifications to Nakamura would be
necessary to reach claim 1’s elevation recitation, and the Examiner does not
identify evidence or provide persuasive reasoning as to why a person of skill
in the art would have reason to make such modifications. See, e.g., Reply Br.
1–5. Rather, Yoshimoto indicates that its design is intended to solve
particular problems related to fuel cells (as compared to Nakamura’s
batteries). Yoshimoto ¶¶ 18–19, 33, 74, 87–89. Moreover, as Appellant
emphasizes, Yoshimoto teaches the advantage of its coolant flow pattern for
its particular apparatus for its application. Reply Br. 4 (citing Nakamura ¶
50).
For the reasons above, we do not sustain the Examiner’s rejection of
claim 1. Because the Examiner’s treatment of dependent claims (including
use of the You reference) does not cure the error addressed above, we also
do not sustain the Examiner’s rejection of dependent claims.
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Application 14/406,811

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–8 103 Nakamura, Yoshimoto 1, 2, 4–8
9–11 103 Nakamura, Yoshimoto,
You
9–11
Overall
Outcome
1, 2, 4–11

REVERSED