Tyler, Matthew R. et al.

Patent Trials and Appeals Board

Dec 9, 2019

14815447 - (D) (P.T.A.B. Dec. 9, 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.
14/815,447 07/31/2015 Matthew R. Tyler 57501-1239 1386
15602 7590 12/09/2019
Boardman & Clark LLP
CPS Technology Holdings LLC
1 South Pinckney St.
P.O. Box 927
Madison, WI 53701-0927
EXAMINER
CHAN, HENG M
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
12/09/2019 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):
docket_patents@boardmanclark.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW R. TYLER and XUGANG ZHANG
____________

Appeal 2019-003289
Application 14/815,447
Technology Center 1700
____________

Before DONNA M. PRAISS, CHRISTOPHER L. OGDEN, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 11–19 and 27.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Johnson Controls Technology Company
as the real party in interest. Appeal Brief filed October 16, 2018 (“Appeal
Br.”) at 2.
2 Final Office Action entered April 17, 2018 (“Final Act.”) at 1.
Appeal 2019-003289
Application 14/815,447

2
CLAIMED SUBJECT MATTER
Appellant claims a method of manufacturing a battery module.
Appeal Br. 2–3. Claim 11, the sole pending independent claim, illustrates
the subject matter on appeal, and is reproduced below with contested subject
matter italicized:
11. A method of manufacturing a battery module,
comprising:
applying an adhesive to a housing of the battery module
at an interface between an electrochemical cell and a heat sink
of the battery module, wherein the adhesive comprises a
viscosity of between approximately 40,000 centipoise (cP) and
approximately 50,000 cP and a working life of between
approximately 1 hour and approximately 3 hours;
inserting the electrochemical cell into the housing toward
the heat sink after applying the adhesive; and
curing the adhesive to secure the electrochemical cells to
the heat sink at the interface.

Appeal Br. 2 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered January 25, 2019 (“Ans.”):
I. Claims 11–15, 17, 18, and 273 under 35 U.S.C. § 103 as
unpatentable over Obasih4 in view of 3M;5

3 Appellant cancelled claims 1–9 and 20–26 and amended claim 27 in a
Reply filed October 15, 2018, and the Examiner confirmed entry of the
amendments in an Advisory Action entered October 19, 2018.
4 Obasih et al., US 2012/0263988 A1, published October 18, 2012
(“Obasih”).
5 3MTM Thermally Conductive Epoxy Adhesive TC-2707, Technical Data,
Online Publication (August 2014) (“3M”).
Appeal 2019-003289
Application 14/815,447

3
II. Claim 16 under 35 U.S.C. § 103 as unpatentable over Obasih in
view of 3M and Hermann;6 and
III. Claim 19 under 35 U.S.C. § 103 as unpatentable over Obasih in
view of 3M and Omura.7
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 11–19 and 27 under 35 U.S.C. § 103 for the reasons set forth in the
Appeal Brief and below.
Claim 11 requires the recited method of manufacturing a battery
module to comprise, in part, applying an adhesive having a viscosity of
between approximately 40,000 centipoise (cP) and approximately 50,000 cP
to a housing of a battery module.
The Examiner finds that Obasih discloses a method of manufacturing
a battery module that comprises applying a thermally conductive epoxy
adhesive to a housing of the battery module. Final Act. 9 (citing Obasih
¶¶ 5, 6, 41, 46, 65, Figs. 4, 5, and 8). The Examiner finds that Obasih does
not teach that the adhesive has a viscosity of between approximately 40,000
centipoise (cP) and approximately 50,000 cP, however. Final Act. 9.
The Examiner finds that 3M discloses a thermally conductivity epoxy
adhesive that exhibits high adhesive strength, good surface wet out, a low
viscosity for potting application, good gap filling, a thin bonding line, and a

6 Hermann et al., US 2011/0214808 A1, published September 8, 2011
(“Hermann”).
7 Omura et al., US 2013/0337310 A1, published December 19, 2013
(“Omura”).
Appeal 2019-003289
Application 14/815,447

4
low Cl ion content and outgassing. Final Act. 9 (citing 3M pg. 1). In view
of 3M’s disclosures, the Examiner concludes that it would have been
obvious to one of ordinary skill in the art to use 3M’s epoxy adhesive as the
thermally conductive epoxy adhesive in Obasih’s method. Final Act. 10.
The Examiner finds that although 3M’s epoxy adhesive has a viscosity of
about 100,000 cP, “[t]he viscosity of the adhesive is result-effective as it
directly affects the adhesive strength, means of application, gap filling
ability, bond thickness, thermal conductivity, and other qualities of the
resulting bond.” Final Act. 10. The Examiner determines that one of
ordinary skill in the art, therefore, “would have optimized” the viscosity of
3M’s adhesive when using the adhesive in Obasih’s method “to enable
efficient handling and applying the adhesive within a reasonable amount of
time and achieve the desired adhesive strength and qualities.” Id.
As Appellant points out (Appeal Br. 7–8), however, the viscosity of
3M’s epoxy adhesive is 100,000 cP, which is two times greater than the
50,000 cP upper limit of the viscosity range recited in claim 11. 3M pg. 1.
Although the Examiner asserts that one of ordinary skill in the art would
have optimized the viscosity of 3M’s epoxy adhesive when using the
adhesive in Obasih’s method, the Examiner does not provide an explanation
supported by objective evidence as to why one of ordinary skill would have
departed significantly from the viscosity disclosed in 3M. The Examiner
does not, for example, identify any disclosure in 3M that indicates or would
have suggested that lowering the viscosity of the epoxy adhesive described
in the reference by at least half would provide any benefit or render the
adhesive useful for any particular application. Nor does the Examiner
identify any disclosure in 3M indicating that the advantageous properties of
Appeal 2019-003289
Application 14/815,447

5
the epoxy adhesive described in the reference would be maintained if the
viscosity of the adhesive were lowered considerably. Furthermore, in view
of 3M’s disclosure that the epoxy adhesive exhibits good surface wet out, a
low viscosity for potting application, good gap filling, and provides a thin
bonding line—at a viscosity of 100,000 cP—the Examiner does not explain
why one of ordinary skill in the art would have lowered the viscosity of the
adhesive by at least half when using the adhesive in Obashi’s method. In re
Sebek, 465 F.2d 904, 907 (CCPA 1972) (“[W]hile it may ordinarily be the
case that the determination of optimum values for the parameters of a prior
art process would be at least prima facie obvious, that conclusion depends
upon what the prior art discloses with respect to those parameters. Where, as
here, the prior art disclosure suggests the outer limits of the range of suitable
values, and that the optimum resides within that range, and where there are
indications elsewhere that in fact the optimum should be sought within that
range, the determination of optimum values outside that range may not be
obvious.”)
The Examiner, therefore, does not establish that one of ordinary skill
in the art would have lowered the viscosity of 3M’s epoxy adhesive by at
least half when using the adhesive in Obashi’s method of manufacturing a
battery module. We, accordingly, do not sustain the Examiner’s rejection of
claim 11 under 35 U.S.C. § 103. We also do not sustain the Examiner’s
rejections of claims 12–19 and 27 under 35 U.S.C. § 103, because each of
these claims depend from claim 11, and the Examiner does not rely on the
additional prior art references applied in rejecting these claims for any
disclosure that remedies the deficiencies of Obashi and 3M discussed above.
Final Act. 14–15.
Appeal 2019-003289
Application 14/815,447

6
CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–15, 17,
18, 27
103 Obasih, 3M 11–15, 17, 18,
27
16 103 Obasih, 3M,
Hermann
16
19 103 Obasih, 3M,
Omura
19
Overall
Outcome
11–19, 27

REVERSED