Bayerische Motoren Werke Aktiengesellschaft

Patent Trials and Appeals BoardJul 1, 2020

2020000398 (P.T.A.B. Jul. 1, 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. 15/444,490 02/28/2017 Christophe SCHWARTZ 080437.69813US 3477 23911 7590 07/01/2020 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 EXAMINER COLON MORALES, DAVID ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 07/01/2020 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): edocket@crowell.com mloren@crowell.com tche@crowell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHRISTOPHE SCHWARTZ ____________ Appeal 2020-000398 Application 15/444,490 Technology Center 3700 ____________ Before JOHN C. KERINS, BRETT C. MARTIN, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection of claims 1, 3–11, 14, 17, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Bayerische Motoren Werke Aktiengesellschaft as the real party in interest. Appeal Br. 1. Appeal 2020-000398 Application 15/444,490 2 THE INVENTION Appellant’s invention relates to “a device for protecting a high- pressure gas tank of a motor vehicle.” Spec. ¶ 2. Claim 1, reproduced below as the sole independent claim on appeal, is illustrative of the subject matter on appeal. 1. A device for protecting a high-pressure gas tank of a motor vehicle, comprising: at least one heat-conducting plate; and a thermal triggering unit, wherein the heat-conducting plate has a distal region and a proximal region, the proximal region is disposed directly adjacent to the thermal triggering unit, the heat-conducting plate is shaped so as to taper from the distal region to the proximal region, and the heat-conducting plate at least in a region extends beyond a circumferential wall of the high-pressure tank. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Blumenthal US 5,711,547 Jan. 27, 1998 Winter US 2008/0066805 A1 Mar. 20, 2008 The following rejections are before us for review: I. Claims 4, 6, and 11 stand rejected under 35 U.S.C. § 112(b) as indefinite. Appeal 2020-000398 Application 15/444,490 3 II. Claims 1, 3–8, 10, 11, 14, 17, and 18 stand rejected under 35 U.S.C. §§ 102(a)(1), 102(a)(2), and 103 as anticipated, or alternatively, as unpatentable, over Winter. III. Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over Winter and Blumenthal. OPINION Rejection I The Examiner finds that claims 4, 6, and 11 are indefinite for ultimately depending from cancelled claim 2. Final Act. 3–4. Appellant does not present any argument for this rejection, and thus, Appellant has waived any argument of error. Appeal Br. 4–11; see Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection). Accordingly, we summarily affirm the Examiner’s rejection of claims 4, 6, and 11 under 35 U.S.C. § 112(b) as indefinite.2 Rejection II Anticipation Regarding independent claim 1, the Examiner finds that the assembly of Winter’s heat conductive strips 42 discloses a heat-conducting plate, as 2 See also 35 U.S.C. § 112(d) (“a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed”). Appeal 2020-000398 Application 15/444,490 4 claimed. Final Act. 4 (citing Winter, Fig. 3); see also Ans. 13 (finding that “the strips 42 shown in Fig. 3 of Winter can be considered to be ‘a plate or a plate assembly’”)). In support, the Examiner relies on a dictionary definition of the claim term “plate” as “a thin, flat sheet or strip of metal or other material . . . .” Ans. 13 (citing the Oxford dictionary). The Examiner also identifies distal and proximal regions of Winter’s assembly of strips, wherein the shape of the assembly tapers from the distal to the proximal region, as claimed. Final Act. 4. The Examiner’s annotated Figure 3 of Winter is reproduced below. Ans. 17. The Examiner’s annotated Figure 3 of Winter depicts “a length- wise view of a pressure tank system including heat conducting strips positioned along the pressure tank,” wherein the Examiner has indicated, with circles: a distal region of a plate, a taper (or tapered shape of the plate), and a proximal region of a plate, as required by claim 1. Winter ¶ 13. Appellant argues that Winter’s assembly of heat conductive strips 42 is not a plate, as claimed. Appeal Br. 4–5; Reply Br. 2 (“Appellant claims a plate and Winter’s strips 42 are not a plate”). Appellant submits that the Examiner’s interpretation of the claim term “plate” is “not reasonable” and is “inconsistent” with both the use of the claim term “plate” in the Appeal 2020-000398 Application 15/444,490 5 Specification and as the claim term “plate” is understood by a person of ordinary skill in the art. Appeal Br. 4–5; Reply Br. 1–3. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, the Specification expressly discloses that “[a] heat-conducting plate is a plate, a panel or a layer which is capable of conducting away heat well or particularly well.” Spec. ¶ 9. We are persuaded by Appellant’s argument. Winter discloses, with reference to Figure 3, that “heat conducting strips 42 are positioned in contact with a pressure tank 44.” Winter ¶ 18. Interpreting an assembly of Winter’s strips as a single plate is unreasonable, because the Examiner is arbitrarily grouping separate and non-intersecting structures to result in a plate, panel, or layer, as the claim term “plate” is defined in the Specification.3 The express definition of the claim term “plate” in the Specification does not include an assembly of plates, as the claim term plate is interpreted by the Examiner supra. Accordingly, we do not sustain the Examiner’s rejection of independent claim 1, and claims 3–8, 10, 11, 14, 17, and 18 depending 3 Notably, we find that a single aluminum strip 42, as well as each of Winter’s steel, copper, or aluminum layer 20 and aluminum foil layer 36, separately disclose “a plate,” as claimed, because an ordinary definition of the claim term “panel” includes an aluminum strip (i.e., a thin, flat strip of metal), as provided by the Examiner supra, and a metal layer is expressly included in the definition of the claim term “plate” as defined in the Specification supra (i.e., defining plate as a plate, panel or layer). See Spec. ¶ 9; Winter ¶¶ 16, 17; cf. Appeal Br. 4 (concluding that Winter’s layers 20, 36 are not plates). Appeal 2020-000398 Application 15/444,490 6 therefrom, under 35 U.S.C. §§ 102(a)(1) or 102(a)(2) as anticipated by Winter. Obviousness Alternatively, regarding the limitation of claim 1 requiring the plate to be shaped so as to taper from the distal region to the proximal region, the Examiner proposes modifying Winter’s pressure tank system to “optimize the width and/or thickness of [Winter’s] heat conducting strip assembly to have a greater width and/or thickness on the distal region that gradually tapers to a minimal width and/or thickness at the proximal region,” to improve “remote heat detection” while “reducing material cost,” to result in the claimed subject matter. Final Act. 5–6 (emphasis to “assembly” added) (citing Winter ¶ 18 (“[t]he number of strips 42, the thickness of the strips 42 and the width of the strips 42 can be designed for a particular tank system to be the most effective as possible”)). Notably, the Examiner proposes modifying Winter’s “strip assembly,” and therefore, the Examiner’s alternative rejection under 35 U.S.C. § 103 does not cure the deficiency in the Examiner’s finding with regard to the claim term “plate” as discussed supra pursuant to the Examiner’s rejection of claim 1 under to 35 U.S.C. §§ 102(a)(1) or 102(a)(2). Accordingly, we also do not sustain the Examiner’s rejection of independent claim 1, and claims 3–8, 10, 11, 14, 17, and 18 depending therefrom, under 35 U.S.C. § 103, as unpatentable over Winter. Final Act. 5–6. Appeal 2020-000398 Application 15/444,490 7 Rejection III The Examiner’s reliance on Blumenthal for disclosing concave side edges in at least one area and in a longitudinal direction of the plate does not cure the deficiency in the Examiner’s finding supra that the assembly of Winter’s strips 42 discloses a plate, as claimed; therefore, we do not sustain the Examiner’s rejection of claim 9, which depends from claim 1, under 35 U.S.C. § 103, as unpatentable over Winter and Blumenthal. Final Act. 12–13. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s) Affirmed Reversed 4, 6, 11 112(b) Indefiniteness 4, 6, 11 1, 3–8, 10, 11, 14, 17, 18 §§ 102(a)(1), 102(a)(2), 103 Winter 1, 3–8, 10, 11, 14, 17, 18 9 103 Winter, Blumenthal 9 Overall Outcome 4, 6, 11 1, 3–11, 14, 17, 18 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)(iv). AFFIRMED–IN–PART