Makoto Iwasa et al.

Patent Trials and Appeals Board

Jan 19, 2021

2020003807 (P.T.A.B. Jan. 19, 2021)

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.
13/202,469 08/19/2011 Makoto Iwasa 040356-0667 8701
22428 7590 01/19/2021
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
MCDERMOTT, HELEN M
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
01/19/2021 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAKOTO IWASA, HIDETOSHI KADOTA,
TADAYOSHI HASHIMURA, SHINYA OGATA, and
SATOSHI SHIGEMATSU
Appeal 2020-003807
Application 13/202,469
Technology Center 1700
Before ADRIENE LEPIANE HANLON, DEBRA L. DENNETT, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1

1 In our Decision, we refer to the Specification (“Spec.”) of Application
13/202,469 filed Aug. 19, 2011 (“the ’469 App.”); the Final Office Action
dated May 16, 2019 (“Final Act.”); the Appeal Brief filed Sept. 27, 2019
(“Appeal Br.”); the Examiner’s Answer dated Feb. 21, 2020 (“Ans.”); and
the Reply Brief filed Apr. 21, 2020 (“Reply Br.”).
Appeal 2020-003807
Application 13/202,469

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 18–25, 27–30, and 34.3 See Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b). A hearing was held
December 8, 2020.
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a vehicle battery mounting structure. Claim
18, reproduced below, is illustrative of the claimed subject matter:
18. A vehicle mounting a plurality of batteries under a floor
panel of the vehicle, comprising:
a first group of the batteries;
a second group of the batteries disposed to the rear of the
first group of the batteries with respect to a vehicle longitudinal
direction; and
a third group of the batteries disposed to the rear of the
second group of the batteries with respect to the vehicle
longitudinal direction;
wherein each of the first group of batteries, the second
group of batteries and the third group of batteries has a topmost
surface parallel to a road surface that the vehicle is on and not
in contact with other batteries or other group of batteries,
wherein, when measured from the road surface, a height
to the topmost surface of the second group of the batteries is set
to be lower than a height to the topmost surface of the first

2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as NISSAN MOTOR
CO., LTD. Appeal Br. 2.
3 Applicant cancelled claims 35–38 in an Amendment filed Sept. 27, 2019,
after issuance of the Final Office Action.
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group of the batteries and a height to the topmost surface of the
third group of the batteries, and the height to the topmost
surface of the third group of the batteries is set to be higher than
the height to the topmost surface of the first group of the
batteries, and
wherein the vehicle comprises a passenger compartment
in which a front seat, a rear seat, and a floor located between
the front seat and the rear seat are provided, the first group of
the batteries is mounted under the front seat, the second group
of the batteries is mounted under the floor, and the third group
of the batteries is mounted under the rear seat.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Nishikawa US 6,085,854 July 11, 2000
Anazawa US 6,188,574 B1 Feb. 13, 2001
Mita US 2003/0066694 A1 Apr. 10, 2003
Suzuki US 2003/0209375 A1 Nov. 13, 2003
Straubel US 2007/0009787 A1 Jan. 11, 2007
Hashida US 2008/0248377 A1 Oct. 9, 2008
REJECTIONS4
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a): (1) claims 18–21 and 28–30 are rejected over Suzuki in view of
Straubel and Mita; (2) claims 22–25, and 27 over Suzuki, Straubel, Mita,
and Nishikawa; and (3) claim 34 over Suzuki, Straubel, Mita, and Anazawa.
Final Act. 4–13.

4 In the Answer, the Examiner withdrew rejections on cancelled claims 35–
38. Ans. 12.
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OPINION
Obviousness rejection of claims 18–21 and 28–30 over Suzuki, Straubel, and
Mita
The Examiner rejects most of the claims over Suzuki in view of
Straubel and Mita. Final Act. 4.
The Examiner finds that Suzuki teaches four sets of batteries in an
electric vehicle. Id. at 5. The Examiner finds that Figures 2A–2D of Suzuki
appear to show the width of each battery is at least greater than three times
its thickness, thus if the rearmost set of batteries is arranged perpendicular to
the horizontal, the height to the topmost surface of the rearmost set of
batteries will be taller than the heights of the forward sets of batteries which
stack three batteries vertically. Id. at 6. The Examiner thus finds that the
batteries in Suzuki’s rearmost set are equivalent to the claimed third set of
batteries. Id. at 7. The Examiner acknowledges that Suzuki does not
disclose that the height of the first set of batteries in Suzuki is taller than the
height of the second set of batteries (as required by the claims), but
determines that it would have been obvious to increase the height of
Suzuki’s first set of batteries or decrease the height of Suzuki’s second set of
batteries “because it would not have changed the operation thereof.” Id.
The Examiner finds that Suzuki does not disclose the claimed
positions of batteries, but that the positions would not have affected their
operation and would have been a matter of design choice. Id. at 8.
The Examiner finds that Straubel teaches shaping a battery pack to
maximize use of the available space. Id. The Examiner finds that Mita
discloses the height of the rear seat is higher than the height of the front seat,
which is higher than the height of the floor. Id., Ans. 15. The Examiner
concludes that it would have been obvious to mount the first, second, and
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third sets of Suzuki’s batteries with the first, second, and third heights under
the front seat, floor, and rear seat to maximize use of the available space
when the rear seat is disposed higher than the front seat. Final Act. 8–9.
Appellant argues that the combined references do not disclose or
render obvious the claimed battery groups’ locations and relative heights.
Appeal Br. 8. Appellant contends that the rearmost batteries in Suzuki
cannot be equivalent to the claimed third group of batteries, as Suzuki
teaches the rearmost batteries are in the trunk, not mounted under the rear
seat as claimed. Id. at 13. In addition, none of the cited references discloses
groups of batteries at different heights, depending upon their location,
according to Appellant. Id. at 13–14. Appellant argues that the Examiner
does not show motivation to modify Suzuki to produce the claimed
arrangement, and instead relies on improper hindsight reconstruction. Reply
Br. 8, 13.
The Examiner does not demonstrate prima facie obviousness by a
preponderance of the evidence. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“patentability is determined on the totality of the record, by
a preponderance of evidence with due consideration to persuasiveness of
argument”). The Examiner errs in at least two important factual findings:
(1) Suzuki does not teach a group of batteries equivalent to the claimed third
group located under the rear seat, as Suzuki’s rearmost batteries are located
in the trunk (compare Final Act. 7 with Suzuki Fig. 3B); and (2) Mita does
not disclose any group of batteries at a different height from another group
of batteries (compare Final Act. 8 with Mita Fig. 1, ¶ 27). Such factual
errors demonstrate a lack of “rational underpinning” to support obviousness.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
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obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Moreover,
modification of Suzuki because such proposed modification “would not have
changed the operation” of the reference (Final Act. 7) is insufficient to
provide the requisite articulated reasoning with some rational underpinning.
There is merely a proposal by the Examiner that modifications could be
made—but not that one of ordinary skill in the art would have made such
modifications to arrive at the claimed invention. See Personal Web Techs.,
LLC, v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017). “[O]bviousness
concerns whether a skilled artisan not only could have made but would
have been motivated to make the combinations or modifications of prior art
to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805
F.3d 1064, 1073 (Fed. Cir. 2015).
Mita discloses only a difference in the height of the rear seat in
comparison to the height of the front seat. Mita Fig. 1. We find no support
in Mita for modifying the height of a group of batteries under the rear seat to
achieve the claimed arrangement. Rather, review of Mita shows that all of
the batteries are the same height, and all collectively located in a battery box
detachably supported on a lower surface of the vehicle body frame
assembly. Id. Fig. 1, ¶ 27. The seating height in Mita suggests nothing in
terms of battery height.
“A rejection based on section 103 clearly must rest on a factual basis,
and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art.” In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). Rather than a factual basis, however, combining and modifying the
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prior art appears to be proposed out of hindsight. See Metalcraft of
Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e
cannot allow hindsight bias to be the thread that stitches together prior art
patches into something that is the claimed invention.”). “To draw on
hindsight knowledge of the patented invention, when the prior art does not
contain or suggest that knowledge, is to use the invention as a template for
its own reconstruction—an illogical and inappropriate process by which to
determine patentability.” Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566,
1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d
1540, 1553 (Fed. Cir.1983)).
We do not sustain the rejection of claims 18–21 and 28–30 over
Suzuki in view of Straubel and Mita.
Because the additional references do not cure the deficiencies in
Suzuki, Straubel, and Mita, we do not sustain the rejections of claims 22–25,
and 27 over Suzuki, Straubel, Mita, and Nishikawa or claim 34 over Suzuki,
Straubel, Mita, and Anazawa.
CONCLUSION
The Examiner’s rejections are reversed.
More specifically,
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
18–21, 28–
30
103(a) Suzuki, Straubel,
Mita
18–21, 28–
30
22–25, 27 103(a) Suzuki, Straubel,
Mita, Nishikawa
22–25, 27
34 103(a) Suzuki, Straubel,
Mita, Anazawa
34
Overall
Outcome
18–25, 27–
30, 34

REVERSED