Spare, Bradley L. et al.

Patent Trials and Appeals Board

Sep 2, 2020

2019005007 (P.T.A.B. Sep. 2, 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.
12/625,143 11/24/2009 Bradley L. Spare 090911-
P5194USX1-0973251
9671
65656 7590 09/02/2020
KILPATRICK TOWNSEND & STOCKTON LLP/Apple
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
YANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRADLEY L. SPARE
and ROBERT SEAN MURPHY
____________

Appeal 2019-005007
Application 12/625,143
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to finally reject claims 42–61 of Application
12/625,143. Final Act. (Mar. 7, 2018). We have jurisdiction under 35 U.S.C.
§ 6.
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Apple Inc. as the real party in interest.
Appeal Br. 3.
Appeal 2019-005007
Application 12/625,143
2
I. BACKGROUND
The ’143 Application describes systems for monitoring and
responding to forces on an electronic device’s battery. Spec. ¶¶ 2, 5–7.
According to the Specification, these forces may be caused by heat or a
physically adjacent object. Id. ¶ 3. The ’143 Application describes that the
detection of intense forces may predict battery failure. Id.
Claim 42 is representative of the ’143 Application’s claims and is
reproduced below from the claims listing in the Claims Appendix to the
Appeal Brief:
42. An electronic device, comprising:
a rigid enclosure containing operational components, the
operational components comprising:
a battery cell;
an external force sensor coupled with an exterior surface
of the battery cell and configured to detect physical contact
with an external surface of the battery cell, the external force
sensor further configured to generate a first sense signal
indicative of the contact in response to the detected contact;
an internal force sensor positioned within the battery cell
configured to detect an internal force generated by conditions
internal to the battery cell, and generate a second sense signal
indicative of a magnitude of the internal force in response to the
detected internal force; and
a processor coupled with the internal and the external
force sensors configured to receive the first sense signal and the
second sense signal and alter a facility of the electronic device
based on the received first and second sense signals such that
the facility of the electronic device is altered during operation
of the electronic device and in response to a force detected by
the external force sensor or internal force sensor.
Appeal Br. (Claims App.) 21 (emphasis added).
Appeal 2019-005007
Application 12/625,143
3
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 42–61 are rejected under 35 U.S.C. § 112, ¶ 2 as
indefinite. Final Act. 3.
2. Claims 42, 49, and 50 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hong,2 Notten,3 Cassidy,4
and Arakelian.5 Final Act. 4.
3. Claims 43–48 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hong, Notten, Cassidy,
Arakelian, and Ryu.6 Final Act. 7.
4. Claims 51–61 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hong, Notten, Ryu,
Cassidy, and Arakelian. Final Act. 9.
III. DISCUSSION
There are three independent claims on appeal: claims 42, 51, and 56.
Appeal Br. 21, 22–23. For the reasons set forth below, we need only discuss
claim 42 without reaching Appellant’s separate arguments for reversal of the
rejections of claims 49, 51–53, and 55–61. Id. at 11–19. Claims 51 and 56
will stand or fall with claim 42; dependent claims 43–50, 52–55, and 57–61

2 US 2006/0093896 A1, published May 4, 2006.
3 WO 2006/077519 A1, published July 27, 2006.
4 US 2007/0105010 A1, published May 10, 2007.
5 US 2007/0024236 A1, published Feb. 1, 2007.
6 US 2007/0054157 A1, published Mar. 8, 2007.
Appeal 2019-005007
Application 12/625,143
4
will stand or fall with their parent independent claims. 37 C.F.R.
§ 41.37(c)(1)(iv).
A. Rejection of claims 42–61 under 35 U.S.C. § 112, ¶ 2 as
indefinite.
The Examiner rejected claim 42 as indefinite. Final Act. 3.
Claim 42 recites “alter a facility of the electronic device.” The
Examiner determined that this claim is indefinite because it is unclear as to
what “facility is altered and in what manner.” Id. The Examiner concluded
that the output of the “electronic device/controller” for altering this facility is
similarly unclear. Id. The Examiner rejected claim 42 under § 112, ¶ 2
because “one of ordinary skill in the art at the time of the invention would
not have known how to implement the controller in a novel manner over that
of the prior art presented on the record. What scope of the instant claim is
outside that of the prior art?” Id. at 2.
Appellant asserts that the Examiner reversibly erred as there is no
requirement to explain what claim scope is outside of the prior art. Appeal
Br. 6. Appellant argues that the Specification informs those skilled in the art
about the scope of claim 42 with reasonable certainty. Id. To support this
argument, Appellant directs our attention (id.) to the following description in
the Specification:
Processor output 121 may be one or more signals that can
control a facility related to charging or drawing current from
battery 104, or that can control any other facility related to any
other feature of electronic device 100 and its maintenance,
including, but not limited to, a backlight, a hard disk, a CPU, a
charger for the battery, an input or output component of the
device, a fan or cooling unit, a backup system, a failover system
(e.g., a system that may switch over to a backup system), a
Appeal 2019-005007
Application 12/625,143
5
redundant system, a memory component device, an audible
and/or visual alarm, a dialog box, a user interface, and the like.
Spec. 26:10–24. Appellant also relies upon claim 51 (Appeal Br. 6), which
recites “wherein the facility altered includes operation of a cooling unit.” Id.
at (Claims App.) 23. Appellant notes that claims 60 and 61 similarly recite
components of an electronic device and a system, respectively, whose
functions are likewise altered. Appeal Br. 6; see id. at (Claims App.) 24.
Whether a claim is indefinite under 35 U.S.C. § 112, ¶ 2 requires
giving the claims the broadest reasonable interpretation and then
determining whether the metes and bounds of the claimed invention are
unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). The Board has
explained that “[t]he Office ‘determines the scope of claims . . . not solely on
the basis of the claim language, but upon giving claims their broadest
reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Ex parte McAward, No.
2015-006416, 2017 WL 3669566, at *2 (PTAB August 25, 2017)
(precedential in relevant part) (alteration in original) (quoting Phillips v.
AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)) (available at
http://bit.ly/2xEGpee).
In this case, we agree with Appellant that, based on the Specification,
one of ordinary skill in the art would understand with a reasonable certainty
what facilities may be altered within the scope of claim 42. Appellant,
moreover, persuasively argues that the Examiner rejected claim 42 under an
incorrect application of law. See Appeal Br. 5–6; Reply Br. 2–3.
Thus, we conclude that the rejected claim meets the necessary
thresholds of clarity and precision when read through the eyes of a skilled
Appeal 2019-005007
Application 12/625,143
6
artisan and in view of this disclosure. We, therefore, reverse the Examiner’s
rejection of claims 42–61. 37 C.F.R. § 41.37(c)(1)(iv).
B. Rejection of Claims 42, 49, and 50 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hong, Notten, Cassidy,
and Arakelian.
The patent examiner bears the initial burden of establishing a prima
facie case that an application’s claims would have been obvious based upon
what was known in the prior art. In re Dillon, 919 F.2d 688, 701 (Fed. Cir.
1990).
Here, the Examiner relied on Hong, which discloses a secondary
battery comprising safety device 120. Final Act. 4. The Examiner found that
Hong’s safety device 120 renders obvious the claimed “external force
sensor” recited in claim 42 because safety device 120 is: (i) coupled to the
battery’s exterior surface and (ii) capable of sending a signal after detecting
an external source. Id. (citing Hong Fig. 1); see also Hong ¶ 67 (disclosing
that safety device 120 has “a resistance value which changes . . . during
swelling” of the battery cell). The Examiner found that Hong’s secondary
battery is “capable of corresponding to two states, a normal state and [a]
swelled state; in both states, Hong would be in contact with the surface of
the battery cell and generate a single [sic, signal] in response to the condition
of such surface.” Final Act. 4.
The Examiner found that Cassidy teaches an electronic device
comprising a battery and a processor. Id. at 5. The Examiner determined that
“[i]t would have been obvious to one of ordinary skill in the art at the time
of invention to modify [Cassidy’s] batter[y] . . . to include [Hong’s] external
pressure sensors . . . to increase the battery life by being able to suppress
temperature increases detected by the sensor.” Id. at 4.
Appeal 2019-005007
Application 12/625,143
7
Appellant argues, inter alia, that the Examiner has not articulated a
sufficient reason why one of ordinary skill in the art would have combined
the teachings of Cassidy and Hong. Appeal Br. 10. In particular, Appellant
contends that the Examiner has not adequately explained how Cassidy’s
intravenous fluid warmer can be modified to incorporate Hong’s battery case
with safety device 120 attached thereto. Id.
Appellant also argues that “there is no evidence that [Hong’s] sensor
120 . . . , configured to detect swelling, would [have] necessarily be[en]
capable of detecting physical contact as claimed.” Id.
In response, the Examiner argued that one having ordinary skill in the
art would have been motivated to utilize Hong’s battery within Cassidy’s
larger system “whereby [Cassidy’s] larger system sends and receives signals
from [Hong’s] specific battery.” Answer 7. The Examiner provides modified
depictions of Hong’s Figure 6b, which purportedly demonstrate how Hong’s
battery is capable of detecting external forces. Id. at 5.
The Examiner’s modifications to Hong’s Figure 6b, reproduced
below, illustrates lateral views of the effects of external forces on a battery:

Appeal 2019-005007
Application 12/625,143
8
The Examiner’s modifications to Hong’s figure 6b illustrate features
of secondary battery 100, including safety device 120, which is electrically
connected to protective circuit module 130 via flexible wiring pattern 122
for detecting swelling in first regions 111. Answer 5–6; Hong ¶¶ 67–69, 72,
73, 75. According to the Examiner, Hong’s “force sensor activates based
upon the change of shape because of an applied force.” Answer 5. The
Examiner reasons that because “[e]xternal pressure applied to a casing is
predictable natural occurring phenomenon, the sensors of the prior art are
capable of detecting force as shown above.” Id. at 6.
Appellant, however, argues that “the Examiner’s attempted
fabrication of effects in Hong are not supported by that document, and are
not even reasonably likely to be a correct interpretation of how contact with
the Hong battery would [have] affect[ed] that device.” Reply Br. 5.
Appellant reiterates arguments made in the Appeal Brief (id. at 3), including
that Hong’s alleged sensor would not have necessarily detected physical
contact.
Elements found to be inherently present must necessarily be present in
or result from the prior art. In re Montgomery, 677 F.3d 1375, 1379–80
(Fed. Cir. 2012). “Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Olerich, 666 F.2d 578, 581 (CCPA
1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)).
To the extent the Examiner concluded that Hong’s regions 111 would
have inherently swelled as a consequence of naturally occurring
phenomenon (Answer 5–6), we are not convinced. The Examiner’s
conjecture that an external force may cause Hong’s battery 100 to change
shape does not mean that sensor 120 necessarily detects physical contact
Appeal 2019-005007
Application 12/625,143
9
with the battery’s external surfaces. Hong discloses that external regions
111, 112, or 113 may be constructed of metal, such as aluminum. See Hong
¶ 69. The Examiner has not adequately explained how any degree of
physical contact with these metallic or aluminum surfaces 111, 112, or 113
would have invariably caused swelling in region 111 coupled to sensor 120.
The Examiner, moreover, has not provided any argument or reasoning
supported by adequate facts to explain why a person of ordinary skill in the
art would have been motivated to make such changes to either Hong’s
battery or Cassidy’s intravenous fluid warming system to derive the claimed
electronic device. In the absence of such an explanation, we cannot affirm
the rejection of claim 42. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). (“[R]ejections on 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.”).
In view of the foregoing, we reverse the Examiner’s rejection of
claims 42, 49, and 50. 37 C.F.R. § 41.37(c)(1)(iv).
C. Rejections of Claims 43–48 and 51–61 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hong, Notten,
Cassidy, Arakelian, and Ryu.
As we discussed in connection with claim 42, the Examiner erred by
determining that one of ordinary skill in the art would have been led by
Hong’s safety device 120 to modify the battery in Cassidy’s intravenous
fluid warming system. See § III.B supra.
We, therefore, reverse the rejections of claims 43–48 and 51–61. 37
C.F.R. § 41.37(c)(1)(iv).
Appeal 2019-005007
Application 12/625,143
10
IV. CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
42–61 112, ¶ 2 Indefiniteness 42–61
42, 49, 50 103(a) Hong, Notten, Cassidy, Arakelian 42, 49, 50
43–48 103(a) Hong, Notten, Cassidy, Arakelian, Ryu 43–48
51–61 103(a) Hong, Notten, Ryu, Cassidy, Arakelian 51–61
Overall
Outcome 42–61
REVERSED