Ex Parte 8,100,271 B2 et al

Patent Trial and Appeal Board

May 31, 2016

95002323 (P.T.A.B. May. 31, 2016)

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.
95/002,323 09/14/2012 8,100,271 B2 7893-400190 6149
757 7590 05/31/2016
BGL
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEALS BOARD
____________________

DIVERSIFIED ASSEMBLY TECHNOLOGIES CORP.,
Requester

v.

C & C POWER, INC.
Patent Owner
____________________

Appeal 2015-004507
Reexamination Control Nos. 95/002,323
United States Patent No. 8,100,271 B2
Technology Center 3900
____________________

Before DANIEL S. SONG, DENISE M. POTHIER, and
BRETT C. MARTIN, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF CASE
Diversified Assembly Technologies Corporation (hereafter “Requester”)
made a third party request for inter partes reexamination of U.S. Patent No.
8,100,271 B2 (“the ’271 patent”) entitled Tiered Battery Cabinet, issued January
24, 2012 and currently assigned to C & C Power, Incorporated (hereafter “Patent
Owner”).
Originally, claims 1–12, 15–20, 26–29, and 31–36 were subject to
reexamination. Claims 37–77 were added. App. Br. 1.1 An amendment to the
claims filed in response to the Action Closing Prosecution has not been entered.
Id.; RAN 1.
Patent Owner appeals from the decision in the RAN, rejecting claims 1–12,
15–20, 26–29, and 31–77 under various grounds. App. Br. 5–8. Requester
responded, and Patent Owner rebutted. Resp. Br; Reb. Br.
The Examiner’s Answer relies on the RAN, incorporating it by reference.
Ans. 1.
We are informed that the ’271 patent is involved in litigation, entitled C&C
Power, Inc. v. C&D Technologies et al., No. 12-3376 (N.D. Ill. 2012). App. Br. 1.
This case has been stayed pending the outcome of this reexamination. Id.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315 (pre AIA).
We AFFIRM the Examiner’s decision to reject claims 1–12, 15–20, 26–29,
and 31–77.

1Throughout this opinion, we refer to (1) the Patent Owner’s Appeal Brief (App.
Br.) filed September 15, 2014; (2) the Requester’s Respondent Brief (Resp. Br.)
filed October 14, 2014; (3) the Patent Owner’s Rebuttal Brief (Reb. Br.) filed
December 17, 2014; (4) the Examiner’s Answer (Ans.) mailed November 18,
2014; and (5) the Right of Appeal Notice (RAN) mailed June 20, 2014.
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Independent claim 1 on appeal reads as follows:
1. A battery mounting apparatus, comprising:
a vertical rectangular support, the vertical rectangular support
disposed orthogonal to a base and fixedly attached thereto; and
a first and a second horizontal support, each horizontal support
configured to be attachable to the vertical support and to support a
plurality of storage batteries;
wherein a front part of the first horizontal support is spaced a
horizontal distance from the front part of the second horizontal
support, and the second horizontal support is spaced a vertical
distance from the first horizontal support.

App. Br. 39, Claims App’x.

A. Prior Art Cited
The Examiner relies on the following evidence:
Archer US 2,129,396 Sept. 6, 1938
Sulentic US 2,147,759 Feb. 21, 1939
Burrell US 4,540,222 Sept. 10, 1985
Hammond US 5,197,409 Mar. 30, 1993
Marraffa
(Marraffa ’891)
US 2005/0058891 A1 Mar. 17, 2005
Marraffa
(Marraffa ’171)
US 2006/0028171 A1 Feb. 9, 2006
Yuasa EP 0 281 710 A1 Sept. 14, 1988

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B. Rejections
The Examiner adopts or presents the following rejections:
Reference(s) Basis Claims Presented
Burrell (Ground A)2 § 102
1–12, 15, 16,
19, 20, 26–28,
31, 35, 36, 41,
42, 45, 50–64,
66–75, 77
RAN 4–7
Hammond (Ground B) § 102
1–3, 7–9, 17,
18, 20, 26, 28,
32, 33, 41, 42,
50–64, 67–75,
77
RAN 11–13
Archer (Ground C) § 102
1–5, 10–12,
15, 16, 19, 20,
26, 41, 42,
50–64, 67–75,
77
RAN 16–18
Yuasa (Ground W) § 102
1–5, 10–12,
15, 17–20, 26,
32, 33, 37, 38,
40–44, 52–64,
67–75, 77
RAN 56–58
Burrell (Ground D) § 103 29, 34 RAN 21–22
Yuasa (Ground X) § 103 28, 29, 34, 35 RAN 60
Sulentic and Burrell
(Ground E) § 103
1–12, 15–20,
26–28, 31–33,
35, 36, 41, 42,
45, 50–64,
67–75, 77

RAN 22–24

2 Throughout the briefs and RAN, the rejections are referred to by grounds. We
include here and in the Opinion for consistency.
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Hammond and Burrell
(Ground F) § 103
1–12, 15–20,
26–29, 31–36,
41, 42, 45,
50–64, 67–75,
77
RAN 27–28
Archer and Burrell
(Ground G) § 103
1–6, 10–12,
15, 16, 19, 20,
26–29, 31,
34–36, 41, 42,
45, 50–64,
67–75, 77
RAN 31–32
Yuasa and Burrell
(Ground Y) § 103
6, 16, 27–29,
31, 34–36, 39,
45–49, 52–64,
67–77
RAN 61
Burrell and Sulentic
(Ground H) § 103 6, 27, 31, 76 RAN 35
Burrell and Yuasa,
Marraffa ’891, or
Marraffa ’171 (Ground I)
§ 103 37–40, 42, 50, 51 RAN 36–37
Hammond and Yuasa,
Marraffa ’891, or
Marraffa ’171 (Ground J)
§ 103
37, 38, 42,
50–65, 67–75,
77
RAN 39–41
Archer and Yuasa,
Marraffa ’891, or
Marraffa ’171 (Ground
K)
§ 103
37, 38, 40, 42,
50–65, 67–75,
77
RAN 41–42
Sulentic, Burrell and
Yuasa, Marraffa ’891, or
Marraffa ’171 (Ground L)
§ 103
37–40, 42,
50–65, 67–75,
77
RAN 43–44
Hammond, Burrell and
Yuasa, Marraffa ’891, or
Marraffa ’171 (Ground
M)
§ 103
37–40, 42,
50–65, 67–75,
77
RAN 45–46
Archer, Burrell and
Yuasa, Marraffa ’891, or
Marraffa ’171 (Ground
N)
§ 103
37–40, 42,
50–65, 67–75,
77
RAN 47–48
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Burrell and Marraffa ’891
or Marraffa ’171 (Ground
O)
§ 103 43–49, 52–75, 77 RAN 48–49
Hammond and Marraffa
’891 or Marraffa ’171
(Ground P)
§ 103 43, 44, 52–65, 67–75, 77 RAN 49–50
Archer and Marraffa ’891
or Marraffa ’171 (Ground
Q)
§ 103 43, 44, 52–65, 67–75, 77 RAN 50–51
Sulentic, Burrell, and
Marraffa ’891 or
Marraffa ’171 (Ground
R)
§ 103 43–49, 52–65, 67–75, 77 RAN 51–52
Hammond, Burrell, and
Marraffa ’891 or
Marraffa ’171 (Ground S)
§ 103 43–49, 52–65, 67–75, 77 RAN 52–53
Archer, Burrell, and
Marraffa ’891 or
Marraffa ’171 (Ground T)
§ 103 43–49, 52–65, 67–75, 77 RAN 53–54
Enlarging the Scope
(Grounds AA and DD) § 314(a) 57, 63, 71
RAN 54,
63
Written Description
(Grounds BB and EE)
§ 112(a)/¶ 1
(pre AIA)
6, 31, 64, 66,
67, 69, 76, 77
RAN 55, 64–
65
Indefinite (Grounds Z,
CC, and FF)
§ 112(b)/¶ 2
(pre AIA)
3, 6, 17–20,
31, 33–35, 37,
40, 46, 47,
55–61, 64, 66,
67, 69, 73, 76
RAN 55–56,
62, 65–67
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The Examiner has not adopted or withdrew several rejections, including:
Reference(s) Basis Claims Presented
Indefinite (Grounds U
and Z)
§ 112(b)/¶ 2
(pre AIA)
38, 39, 40 (in
part), 47 (in
part), 51
RAN 70–72
Written Description
(Ground V)
§ 112(a)/¶ 1
(pre AIA) 40 RAN 71

II. ISSUES ON APPEAL
Patent Owner raises the following main issues:
(1) Did the Examiner err in construing the recitations: (a) to a “storage
battery” and similar limitations in the claims and (b) “a first means for supporting a
first storage battery” and “a second means for supporting a second storage battery”
in claim 20?
(2) Under 35 U.S.C. §§ 102 and 103,
(a) Did the Examiner err in determining the cited prior art teaches the recited
limitations to the batteries found in the claims and
(b) Did the Examiner err in determining the cited prior art teaches the
limitation “each of the first and the second horizontal supports has a same front-to-
back dimension” as recited in claim 52 and similar limitations in other claims?
(3) Did the Examiner err in determining certain claims (1) enlarge the scope
under 35 U.S.C. § 314(a), (2) are indefinite, and (3) lack written description
support?
III. ANALYSIS
A. Preliminary Matters
Requester notes that no arguments have been presented for Grounds D, X, Z,
and AA–CC. Resp. Br. 5–6, 36–37. We summarily sustain these rejections. See
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Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that when
appellant fails to contest a ground of rejection, the Board may affirm the rejection
without considering its substantive merits); see also 37 C.F.R. § 41.67(c)(1)(vii);
Manual of Patent Examining Procedure (MPEP) § 1205.02, 9th ed. (Nov. 2015)
(“If a ground of rejection stated by the examiner is not addressed in the appellant’s
brief, that ground of rejection will be summarily sustained by the Board.”)
Additionally, Patent Owner raises several arguments related to petitionable
matters. See, e.g., App. Br. 36–37 (relating to an amendment denied entry and
objections raised by the Examiner). These issues are not within the jurisdiction of
the Board and will not be addressed. See MPEP §§ 1002 and 1201, 9th ed. (Oct.
and Nov. 2015 respectively); see also In re Hengehold, 440 F.2d 1395, 1403
(CCPA 1971) (stating that there are many kinds of decisions made by examiners,
“which have not been and are not now appealable to the board or to this court
when they are not directly connected with the merits of issues involving rejections
of claims, but traditionally have been settled by petition to the Commissioner.”)
B. Claim Construction
During examination of a patent application, a claim is given its broadest
reasonable construction and read “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations and internal quotation marks
omitted). We presume that claim terms have their ordinary and customary
meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)
(“The ordinary and customary meaning ‘is the meaning that the term would have
to a person of ordinary skill in the art in question.’”) (internal citations omitted).

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1. “Battery” or “Storage Battery”
Patent Owner dedicates significant portions of its briefs to how the claims
should be construed. App. Br. 9–18; Reply Br. 2–13. Patent Owner argues the
Examiner misconstrued the phrase, “storage battery” found in the independent
claims. App. Br. 9–16. Specifically, Patent Owner contends that the storage
battery must be given patentable weight in all the claims (App. Br. 9–10),
including “specifically defin[ing] physical properties and components of the
apparatus and the interrelation of dimensions and orientation of components of the
apparatus, including the storage batteries and their connection terminals.” App. Br.
9 (underlining omitted). Patent Owner further asserts that the claims specify “a
specific known type of battery whose characteristics would be known by a person
of skill in the art” (App. Br. 10) and having a particular meaning in the art when
considered in light of the ’271 patent’s disclosure. App. Br. 12–15.
We agree with Requester and the Examiner that the recitations to the
“storage battery” in the preamble when read in the context of the entire claim (e.g.,
the independent claims) and the ’271 disclosure do not impart a particular,
structural limitation. RAN 7–8 (referring to and agreeing with Requester’s
February 22, 2013 Comments); Resp. Br. 8. At best, these claims recite an
apparatus or cabinet that has the ability to support storage batteries or for mounting
storage batteries. See id. For example, the preamble of independent claims 1, 7,
10, 17, 19, 20, 32, 41, 57, 63, and 71 recite the word “battery,” such as “[a] battery
mounting apparatus” (e.g., claim 1, 36, 70), “[a] storage battery mounting
apparatus” (e.g., claims 7, 10, 17, 19, 32), “[a]n apparatus for housing storage
batteries” (e.g., claim 20, 57, 63, 71), or “[a] storage battery cabinet” (claim 41).
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App. Br. 39–51, Claims App’x. These limitations recite how the apparatus or
cabinet is intended to be used but do not impart any particular structure.
Patent Owner directs us to the ’271 patent in arguing that only a “specific
type of battery,” which is not a conventional battery, can be used and thus, this
type of battery limits the structure, dimensions, or sizing of the recited apparatuses.
App. Br. 12–13; Reb. Br. 3. For support, Patent Owner focuses on columns 1 and
2 of the ’271 patent. App. Br. 13–14 (citing the ’271 patent, 1:5–9, 12–19, 27–29,
2:63–65, Abstract); Reb. Br. 13 (citing the ’271 patent, 2:56–3:4). Some of these
cited portions discuss no more than that the apparatus retains or mounts storage
batteries but do not define any characteristics of the retained batteries, such that the
preamble in the claims imparts a particular structure. The ’271 patent, 1:5–6,
Abstract. Other citations discuss that the rack or cabinet “may be designed in
accordance with industry standard dimensions and configurations” and further
discusses a standard dimension for vertical separation of rack units. The ’271
patent, 2:56–67. However, the ’271 patent also states “nothing in the use of such
terms in the description or figures herein is intended to require or suggest that the
dimensions of any aspect of the apparatus conform to any industry standard.” The
’271 patent, 3:1–3, cited in Resp. Br. 8.
The ’271 patent also does not define the term “storage battery” with
reasonable clarity or precision. See generally the ’271 patent. Nor had Patent
Owner demonstrated sufficiently that the term “storage battery” in the claims has a
particular meaning to an ordinarily skilled artisan. App. Br. 12–13. Patent Owner
points to the Background of the ’271 patent, which discusses a particular
application where the battery cabinet or rack may be required to supply high
current and may be used as a component of a battery backup system used in
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telephone, computer, and other systems requiring auxiliary or uninterrupted power.
App. Br. 13 (citing the ’271 patent, 1:12–16). Notably, the claims do not recite
any of these features (e.g., used in an auxiliary or backup power supply
applications or to supply high currents). Additionally, the ’271 patent states the
device may be used in this manner, which describes an option but not a
requirement of the device.
Patent Owner further argues that the Examiner has “ignore[d] the meaning
of the term [‘storage battery’] as understood by those skilled in the art.” App. Br.
14. But, Patent Owner has provided inadequate supporting evidence (e.g.,
definitions or declaratory evidence) to demonstrate that the recited mounting
apparatus must have a particular dimension or size in order to support or mount
batteries. Based on the ’271 patent’s disclosure, we determine that the claimed
“battery” or “storage battery” is not defined so as to impart a particular meaning or
limited to any particular characteristics as to the mounting apparatus. As such,
even when construing the claims in light of the ’271 patent, we are not persuaded
that the claims require or otherwise define a “battery,” such that the recited
apparatus must have a particular dimension or sizing.
Independent claims 1, 36 and 70 are even broader in scope reciting only a
“battery” and not a “storage battery” (emphasis added) in their preambles. App.
Br. 45–46, 50–51, Claims App’x. Claim 1, however, does recite a storage battery
in the body of its claims. Thus, to the extent the word “storage” imparts any
additional structure into the claims, claims 36 and 70 do not recite such a battery.
Also, independent claims 19, 36, 41, 63, and 70 do not recite a battery in the body
of their claims. App. Br. 42–43, 45–47, 50–51, Claims App’x. As such, when
considering these claims as a whole, they recite no more than a statement of the
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apparatus’ purpose of mounting a battery. These claims lack a recitation that
imparts a particular structure or dimensions to the recited apparatus or a cabinet.
On the other hand, the body of some of the claims recites various phrases,
including “configured . . . to support a plurality of storage batteries” (e.g., claim 1)
and “capable of supporting storage batteries” (e.g., claims 10 and 71). Id. at 39,
41, 51, Claims App’x. Even so, these limitation recite no more than intended use
of the claimed apparatus or cabinet. As discussed above, we agree with the
Examiner and Requester that the claimed “battery” or “batteries” configured to be
supported by the mounting apparatus or capable of supporting storage batteries
include(s) various sizes and shapes, including conventional batteries. RAN 7–8
(indicating agreement with the Requester’s position that “the term ‘battery’ is not
delineated in any way and, therefore encompasses any kind and size of
conventional battery.”)
To be sure, other claims recite phrases such as “such that a front or a top of a
storage battery disposed on the plane may be accessed from the top” (claim 7),
“being dimensioned so as to provide support for the storage battery” (claim 17),
“disposed such that a portion of a top surface of a battery disposed on top of the
first group of second horizontal beams may be accessed from a top direction”
(claim 32), and “the vertical distance being at least equal to a height of the storage
battery” (claim 57). App. Br. 42, 44–45, 49, Claims App’x. These claims do
recite a dimensional relationship of the claim elements in terms of the batteries so
that batteries can be serviced. See id. at 13. Even so, the ’271 patent does not
describe this space arrangement with precision and, at best, indicates choosing a
set-back distance D that is sufficient to access the battery from a top direction (the
’271 patent, 3:10–14) but further stating that this distance D is “chosen depending
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on the construction of the batteries, the choice of a connector type for the battery
interface terminals, and other ergonomic type considerations, including the types
of servicing tools that are desired to be used.” The ’271 patent, 3:14–18. As such,
the broad disclosure discusses the apparatus’ dimensions to have various sizes
based on the battery’s construction, each battery’s terminals, and the servicing
tools used. See id.; see also RAN 8–10 (agreeing with Requester that the battery’s
particular size and type has not been defined in the claims).
Moreover, the prior art need only demonstrate having the ability to perform
the recitations of the claims, such as claims 7, 17, and 32. See In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). That is, the prior art need not discuss storage
batteries to anticipate the claims. See id. Also, “the absence of a disclosure
relating to function does not defeat the Board’s finding of anticipation,” and “[i]t is
well settled that the recitation of a new intended use for an old product does not
make a claim to the old product patentable.” Id. at 1477.
Lastly, we note that unlike the claims discussed above, certain claims (e.g.,
claims 37, 39, 40, 43) positively recite storage batteries. App. Br. 10–11, 22–23,
Claims App’x.
2. “First Means For Supporting a First Storage Battery” and “Second
Means For Supporting a Second Storage Battery”

Concerning claim 20, both Patent Owner and the Examiner appear to agree
that this claim includes two means-plus-function limitations — a “first means for
supporting a first storage battery” and a “second means for supporting a second
storage battery.” App. Br. 43, Claims App’x; see RAN 6. We agree. As such,
these limitations are construed to cover the corresponding structure described in
the specification of the ’271 patent and its equivalents. In re Donaldson Co., Inc.,
16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). The ’271 patent describes various
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structural embodiments for supporting batteries. A first embodiment, consisting of
transverse horizontal supports 20 in the form of “U” or “L” shaped channels, box
beams, or any structure capable of supporting the battery without permanent
deflection of the support or damage to the battery. The ’271 patent, 2:11–15, 3:25–
36, 53–57, 3:4–6; Figs. 1–3. This embodiment also states the supports are capable
of supporting the battery (1) having structural requirements, including applicable
civil or industry codes, and (2) are of a sufficient number so that there is little or no
tendency for the battery to drop below the established plane of the support’s top
surface. Id. at 3:29–36.
A second embodiment, consisting of a tray, is shown in Figure 4. The ’271
patent 2:16–17, 4:35–42; Fig. 4. Just like the above embodiment, this example has
trays that support the weight of the batteries without permanent deformation or
deflection or “may be of a lesser strength and supported by the same types of
structures as shown in FIG. 2.” Id. at 4:35–40. Another option is for the beams to
be integrated with the tray. Id. at 4:40–42. Additionally, the tray can include front
retaining portion or front lip 44 and rear retaining or rear lip 42 to assist in
retaining the battery. Id. at 4:42–45; Fig. 4. The tray can also include retaining
plate 52 and a top retaining element (not labeled) attached to the tray to assist in
retaining the battery as shown in Figures 5–6C. Id. at 2:17–25, 5:6–9; Figs. 5–6A.
Given the disclosure, we determine that the corresponding structure for the
recited means “for supporting a first storage battery” and “for supporting a second
storage battery” include (1) horizontal supports, including channels and box
beams, and (2) trays that may include horizontal supports or beams and retaining
portions, both of which are strong enough to support the batteries without
permanent deformation or deflection. We thus disagree that the Examiner erred in
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finding the first and second means include supports and trays. App. Br. 22–23
(citing RAN 6).
3. “Vertical,” “Horizontal,” and “Orthogonal”
Patent Owner discusses other terms, such as “vertical,” “horizontal,” and
“orthogonal,” asserting that the Examiner has misconstrued them. App. Br. 16–18;
Reb. Br. 3–4. Patent Owner argues the Examiner has deviated from the plain and
ordinary understanding of these terms. See id. Patent Owner discusses the term
“vertical” having been defined to include “perpendicular to the plane of the
horizon or to a primary axis: UPRIGHT,” but then in Patent Owner’s view, the
Examiner misconstrues this term as meaning “vertical in an aspect.” App. Br. 16–
17 (quoting the June 25, 2010 Amendment from the original prosecution of the
’271 patent); Reb. Br. 7, 17.
We are not persuaded of error. The claims recite the term “vertical” in
various claims, such as “vertical rectangular support” in claim 1, “vertical beams”
in claim 7, and “vertical supports” in claim 10. We recognize that the ’271 patent
discloses vertical supports that are vertical in many aspects. The ’271 patent, Figs.
1–3, 5, 7A–C. Even so, construing the claims broadly, but reasonably in light of
the disclosure, there is nothing in these claims that requires the supports or beams
to be vertical and rectangular from every aspect or angle. That is, the Examiner
agrees (RAN 8, 10) with the Requester’s position that “the claims do not require
‘rectangular’ sides” (RAN 8 (emphasis added)), “the claim[s] fail[] to define which
dimension is ‘rectangular’” (RAN 9), and that the recited “vertical supports [can]
have a rectangular profile when viewed from the front or back of [a] unit” (RAN
9).
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Patent Owner provides no ordinary understanding for the words “horizontal”
or “orthogonal.” See, e.g., App. Br. 12, 16–18. We will construe these terms using
their plain meaning.
We next turn to the prior art rejections.
C. Burrell (Ground A)
Patent Owner argues claims 1, 4–9, 15, 16, 19, 26–28, 31, 35, 36, 41, 42, 45,
50–53, 56, 57, 59–64, 66–75, and 77 as a group. See App. Br. 5–8. We select
independent claim 1 as representative. 37 C.F.R. § 41.67(c)(1)(vii). Claim 1 is
rejected under 35 U.S.C. § 102 based on Burrell. RAN 4–6.
Discussion
Patent Owner first argues that Burrell fails to disclose a storage battery.
App. Br. 18–19; Reb. Br. 13. We are not persuaded. As stated above in the Claim
Construction section and contrary to Patent Owner’s assertions (App. Br. 19),
Burrell, or any cited prior art for that matter, need only demonstrate having the
ability to perform the recited function of claim 1 of supporting or mounting storage
batteries. See Schreiber, 128 F.3d at 1478. Similarly, Burrell need only
demonstrate the ability of “supporting storage batteries” as recited in claim 1.
App. Br. 21.
Because Burrell is “suitable for storage and-/or [sic] display of a wide
variety of small and medium sized products” (Burrell, 1:7–9; see also Burrell
2:10–11), we determine that Burrell is capable of mounting and supporting “a
plurality of storage batteries” as recited in claim 1, which includes batteries of
various sizes and shapes as previously discussed. Patent Owner has not provided
sufficient persuasive evidence or arguments to rebut that Burrell is capable of
supporting the recited “plurality of storage batteries.” Similarly, for claims 2 and 3
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(App. Br. 21), the horizontal supports in Burrell are arranged and dimensioned (1)
sufficiently between their front parts such that a storage battery with a top mounted
connection terminal can be accessed from the top (i.e., claim 2) and (2) such that
the vertical distance is at least equal to the storage battery’s height (i.e., claim 3).
See Burrell, Fig. 1.
Next, Patent Owner argues that Burrell fails to disclose a vertical support.
App. Br. 17–18. Specifically, Patent Owner traverses that a vertical support
includes “a component of a structure that appears vertical when viewed from any
aspect, even if the same structure when viewed from other comparable aspects is
clearly inclined or has a complex shape.” Id. at 17. Patent Owner argues that the
side panel 2 in Burrell has “an asymmetrical trapezoidal” shape. Id. at 18.
As stated above, there is nothing in claim 1 that limits the support to be
vertical from every aspect or angle. Moreover, Burrell describes its structures as
“a pair of spaced vertical sides 2.” Burrell, 3:33–34 (emphasis added); Fig. 1.
Granted, Burrell also states sides 2 are “inclined at the front edge tapering to the
top” (Burrell, 3:34–35). Even so, we agree with the Examiner and Burrell’s own
description that sides 2 are vertical supports. See RAN 5 (incorporating Request
19–26, Ex. F).
Patent Owner even further argues that Burrell’s sides 2 are not “rectangular”
supports and thus not orthogonal to base 1. App. Br. 19 (quoting from page 21 of
the response to the November 28, 2012 Office Action). This argument is
unavailing. First, although the word “rectangular” describes the vertical support in
claim 1, the remaining independent claims do not include the “vertical rectangular
support” limitation. Second, as the Examiner indicates, “Burrell’s vertical supports
2 have a rectangular profile when viewed from the front or back of the unit and . . .
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when cut from top-to-bottom[.]” RAN 6; see also RAN 10 and Resp. Br. 12.
Additionally, the support intersects or lies at a right angle to the base from several
perspectives as illustrated in Figure 1 and thus is “orthogonal to a base” as broadly
recited in claim 1 or “orthogonal to a plane of the base” as recited in claim 10. See
Burrell, Fig. 1; see also RAN 8–10 and Resp. Br. 12. As such, even when
adopting a plain meaning of the term, “vertical,” to include “perpendicular to the
plane of the horizon or to a primary axis: UPRIGHT” as advocated by the Patent
Owner (App. Br. 17), Burrell discloses sides 2 perpendicular to the horizontal
plane of base 1 or a primary axis. See id.
Patent Owner separately argues claims 2, 3, 10, 20, 37, 54, 55, and 58. App.
Br. 21–23. Above, arguments regarding claims 2, 3, and 10 have been addressed.
Although argued, claim 37 has not been rejected based on Burrell under § 102 and
will not be further addressed for the rejection based on Burrell.
Claim 54 recites “a plurality of the horizontally disposed trays have the same
front-to-back dimension.” The Examiner finds that Burrell teaches this limitation,
because the horizontal support 6 consists of two telescoping sections 7 and 8 of
fixed dimension and thus, these sections, which collectively make up each support
6, do not change in dimension from front to back. RAN 6, 10, cited in App. Br. 21.
Patent Owner traverses this finding. App. Br. 21–22. We are not persuaded of
error by the Examiner, given the claim’s breath and because the claim does not
qualify further the front-to-back dimension. As such, we determine Examiner’s
finding concerning the same fixed dimension for Burrell’s sections 7 and 8
reasonably teaches the recited “same front-to-back dimension.”
To the extent claims 19, 52, 53, and 63 are argued separately (see App. Br.
21–22), we refer to the above discussion. Concerning claims 19 and 53, they differ
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in scope from claim 54. As Requester notes (Resp. Br. 15), claim 19 does not
recite a “front-to-back” dimension but rather “a same dimension in orthogonal
directions in a horizontal plane.” Additionally, claim 53 broadly recites “each of
the first and the second horizontal supports has a same configuration,” but such
same configuration can be its length, width, or height. Thus, the arguments
presented by Patent Owner for claims 19 and 53 do not specifically address their
limitations. See App. Br. 21–22.
As for claims 55 and 58, Patent Owner argues that a specific type of storage
battery is recited. Id. at 22. We disagree. Like claims previous discussed, these
claims further specify the intended use of the apparatus concerning the storage
batteries. For example, claim 1 recites an apparatus configured to support a
plurality of storage batteries, and claim 55 further specifies the type of battery the
apparatus is capable of supporting (e.g., one used in back-up power supply
systems) and even how batteries capable of being supported are connected in
series. App. Br. 39, 48, Claims App’x. We refer to our previous discussion
addressing how Burrell has the ability to support various types of batteries,
including those recited (e.g., used in back-up power supply systems) and arranged
(e.g., connected in series and having an accessible top terminal) in claims 55 and
58. Concerning any dimensional requirements imparted by these claims, we
discussed above how Burrell is capable of mounting batteries arranged as recited
depending on the type of size or the storage batteries used.
Lastly, Patent Owner argues that Burrell does not disclose the recited “first
means” and “second means.” App. Br. 22–23. As discussed above, these
limitations invoke 35 U.S.C. § 112 (f) or ¶ 6 (pre AIA) and that the corresponding
structure includes (1) horizontal supports, including channels and box beams, and
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(2) trays that may include horizontal supports or beams and retaining portions, both
of which are strong enough to support the batteries without permanent deformation
or deflection.
Similarly, Burrell discloses shelves or trays 6. Burrell, 3:61, Fig. 1. That is,
Burrell’s shelves perform the identical function of supporting objects, including the
ability to support storage batteries as recited in claim 20. Alternatively, Burrell’s
shelves are an equivalent to the structure disclosed in the Specification of the ’271
patent. That is, Burrell’s shelves (1) perform the identical function of supporting
storage batteries by providing horizontal supports as the corresponding structure in
the Specification does, (2) would have been recognized by an ordinarily skilled
artisan as interchangeable with the trays of the ’271 patent’s disclosure because
both provide horizontal support for objects, and (3) would have been considered as
only insubstantially different from the corresponding structure in the ’271 patent’s
disclosure given that both provide horizontal support for the objects and both are
shelves.
Furthermore, there is no evidence in the record that Burrell’s shelves are not
sufficiently strong to support the batteries without permanent deformation or
deflection. For example, Burrell states that the shelf sections are supported by
bolt/nuts, tubular brackets, or other mechanism, such as longitudinally extending
reinforcement members 22 for strength to meet varying demands. The ’271 patent,
4:59–64, 5:23–32.
Patent Owner contends that the recited means imply a “dimensioning of the
apparatus . . . governed by the dimensions of the storage battery.” App. Br. 23. As
previously discussed, we are not persuaded. Also, although Figure 6 of the ’271
patent shows front restraint 52 (id.), this is only one of multiple types of
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corresponding structures for the “first means” and “second means” recited in claim
20. As discussed above, we determined that Burrell’s shelves are either the
corresponding structure or an equivalent structure to the recited “first means” and
“second means” for supporting a storage battery.
Accordingly, we sustain the rejection based on Burrell under 35 U.S.C.
§ 102 of claims 1–3, 10, 19, 20, 52–55, 58, and 63 and dependent claims 4–9, 11,
12, 15, 16, 26–28, 31, 35, 36, 41, 42, 45, 50, 51, 56, 57, 59–62, 64, 66–75, and 77
not argued separately.
D. Hammond (Ground B)
Patent Owner argues claims 1–3, 7–9, 17, 18, 20, 26, 28, 32, 33, 41, 42, 50,
51, 53, 55–64, 67–75, and 773 as a group. See App. Br. 23–25. We select
independent claim 1 as representative. 37 C.F.R. § 41.67(c)(1)(vii). Claim 1 is
rejected under 35 U.S.C. § 102 based on Hammond. RAN 11–12.
Several of the arguments repeat those presented above when discussing
Burrell, including that Hammond similarly fails to disclose a storage battery and
the “front-to-back dimensions of the battery.” App. Br. 23, 25. We are not
persuaded.
First, claim 1 does not positively recite a storage battery but rather recites
that the intended use of the apparatus is to mount storage batteries. See Schreiber,
128 F.3d at 1478. Hammond’s structure illustrates the ability to mount the storage
batteries. For example, Hammond’s Figure 2 shows an apparatus with fish tanks
mounted on the apparatus. Hammond, 1:6–13, 3:65–4:3; Fig. 2. Given the size

3 Patent Owner argues claims 1–3, 10, 20, 37, 39, 41, 43, 51, 52, 54, and 55 are
representative. App. Br. 23. We address all the rejected claims for completeness
but select only claim 1 as representative. Notably, only claims 52 and 54 are
separately argued. App. Br. 24.
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and dimensions of known fish tanks, Hammond also is configured to and has such
an ability to support “a plurality of storage batteries” as recited. See RAN 15
(agreeing with Requester’s positions, including those discussing the storage
batteries limitations); Resp. Br. 14.
Once again, Patent Owner contends that “the storage batteries define the
dimensions of the claimed apparatus yielding a different spatial relationship and
dimensioning of the structural parts than obtained for [Hammond].” App. Br. 23.
But, Patent Owner provides no further support for this proposition. As such, there
is inadequate evidence in the record to rebut that Hammond is capable of
supporting the recited “plurality of storage batteries.” Moreover, Patent Owner’s
assertion is equally unavailing because the claim covers various sized and shaped
storage batteries, and Hammond discloses an apparatus that has the ability to
support at least some sizes and shapes of such storage batteries by preponderance
of the evidence. See Resp. Br. 14.
Patent Owner further argues claim 10. App. Br. 24. Claim 10 has not been
rejected based on Hammond (RAN 11) and will not be further addressed here.
Regarding claims 52 and 54, Patent Owner traverses the Examiner’s finding
that portions of the horizontal supports 32, 34, 36 form shelves and “all have the
same front-to-back dimension” (RAN 12) that “could be defined as the dimension
extending into the page . . . with reference to Fig. 2 of Hammond” (RAN 13, cited
in App. Br. 24). See also RAN 16. Patent Owner states that supports 32, 34, and
36 are of different lengths and have different front-to-back dimensions. App. Br.
24–25; Reb. Br. 14. We are not persuaded.
Granted, the Examiner provides an example in Hammond of a “‘front-to-
back dimension’ [that] could be defined as the dimension extending into the page
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with reference to Fig. 2 of Hammond.” RAN 13. We agree that the dimension of
the supports from this perspective is not a “front-to-back dimension” as understood
by an ordinary artisan in light of the disclosure. See the ’271 patent, Fig. 5. Also,
reading a portion of Hammond’s supports 32, 34, and 36 as having the same front-
to-back dimension is unreasonably broad. Even so, Hammond discloses horizontal
supports that form the shelves that support items 40, 42, and 44 all have the same
front-to-back dimension. Cf. RAN 12. That is, Hammond discloses in Figure 1
horizontal supports (e.g., second 20 to the right shown at the bottom of Fig. 1)
forming shelves have the same front-to-back dimension as other horizontal
supports that extend from and between side supports 22. See Resp. Br. 13–14
(discussing horizontal struts going lengthwise in Figure 1).
Even further, Patent Owner contends that claim 54 requires a tray and
Hammond teaches no such tray. App. Br. 24. We agree when considering one
plain meaning of “tray” to include “an open receptacle with a flat bottom and a low
rim for holding, carrying, or exhibiting articles.”4 At best, Hammond discloses
rectangular horizontal beams. Hammond, Fig. 1. Thus, we disagree with
Requester that that the support structures in Hammond are “a plurality of
horizontally disposed trays” as recited in claim 54. Resp. Br. 13.
Accordingly, we sustain the rejection based on Hammond under 35 U.S.C.
§ 102 of claim 1 and 52 and claims 2, 3, 7–9, 17, 18, 20, 26, 28, 32, 33, 41, 42, 50,
51, 53, 55–64, 67–75, and 77 not argued separately. We do not sustain the
rejection of claim 54 based on Hammond under § 102.

4 Merriam-Webster Online Dictionary, 11th ed., available at http://www.merriam-
webster.com/dictionary/tray.
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E. Archer (Ground C)
With the exception of claims 19, 52–54, and 63, Patent Owner argues the
remaining rejected claims based on Ground C as a group. See App. Br. 25–26.
We select independent claim 1 as representative. 37 C.F.R. § 41.67(c)(1)(vii).
Claim 1 is rejected under 35 U.S.C. § 102 based on Archer. RAN 16–17.
Like Burrell and Hammond, Patent Owner argues that Archer fails to
disclose a storage battery. App. Br. 25–26. We are not persuaded that claim 1
requires a storage battery and further determine that Archer is capable of
supporting a plurality of batteries as recited. Archer discusses horizontally
extending partitions or floors 11, 21, and 41 forming display sections 2–4. Archer,
p. 1, 1:27–29, 39–45, 2:5–16, 46–52; Figs. 1–2. Archer further discusses that the
rack is for supporting “various articles” (Archer, 1:3) and of “rigid construction”
(Archer, p. 1, 1:7, p. 2, 2:23–24). See also Archer p. 1, 1:1–4, p. 2, 1:34–37.
Despite Patent Owner’s assertions (App. Br. 26), Archer has the ability to support
“a plurality of storage batteries” as recited, given the size and rigidity of Archer’s
rack and lack of specific limitations regarding the storage batteries. See also RAN
18–19 (agreeing with Requester’s position concerning the storage batteries).
Moreover, although Patent Owner argues that Archer lacks a front restraint (App.
Br. 26), no such limitation is found in independent claim 1.
Patent Owner argues claims 19, 52–54, and 63 separately. Claim 52, for
example, recites “each of the first and the second horizontal supports has a same
front-to-back dimension.” App. Br. 38, Claims App’x. Patent Owner argues
Archer’s shelves have different front-to-back dimensions in contrast with the
claims. App. Br. 26; Reb. Br. 15. Patent Owner acknowledges a contradiction in
its discussion between the Appeal Brief and the Rebuttal Brief concerning this
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limitation. Reb. Br. 15. In the Appeal Brief, Patent Owner argues that the front-
to-back dimension would be understood by an artisan “as the dimension extending
into the page with reference to Fig. 2 of Archer.” App. Br. 26. In the Rebuttal
Brief, Patent Owner clarifies that it intended to state that the front-to-back
dimension would be understood to be the dimension in a plane of the page in
Figure 2 extending side-to-side of the page in Archer. Reb. Br. 15.
Using the dimension discussed by Patent Owner in the Appeal Brief, the
Examiner found that the “each of the tiered shelves or trays 21, 41 has the same
dimension in this direction.” RAN 18. However, based on Patent Owner’s
clarification, we agree that Archer does not have the recited “front-to-back
dimension” as understood by an ordinarily artisan in light of the ’271 disclosure.
That is, Figure 1 of the ’271 patent and Figure 5 of the ’271 patent (left-most
figure) show the front of the apparatus. The ’271 patent, 2:11, Figs. 1, 5. As such,
the front-to-back dimension in the context of claim 52 as understood by an
ordinary skilled artisan would be the dimension extending from 24A to 24B in
Figure 2 or extending from left to right in Figure 5. See id., Figs. 1, 2, 5. Using
this understanding, Archer’s front-to-back dimension for each horizontal support
(e.g., 11, 21, and 41) is not the same. See Archer, Fig. 2. Moreover, Archer
further states that horizontal section 41 is of less width than sections 11 and 21 to
provide a set-back for facilitating observation of articles displayed on the rack.”
Archer, p. 1, 2:46–52.
Claim 19 differs in scope, reciting “each of the first and the second trays
having a same dimension in orthogonal directions in a horizontal plane.” App. Br.
42, Claims App’x. Using the dimension extending into the page in Archer’s Figure
2, the Examiner found that both first and second trays (e.g., 11, 21) have a same
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dimension (e.g., the length) in orthogonal directions (e.g., extending into the page
of Figure 2 from 11, 21) in a horizontal plane. RAN 18; see Archer, Figs. 1–2.
Although this dimension is the same, we are not persuaded that each tray has the
same dimension in orthogonal directions. Rather, the findings support that each
tray has the same dimension in one direction.
Accordingly, we sustain the rejection based on Archer under 35 U.S.C.
§ 102 of claim 1 and claims 2–5, 10–12, 15, 16, 20, 26, 41, 42, 50–51, 55–62, 64,
67–75, and 77 not argued separately. We do not sustain the rejection of claims 19,
52, 54, and 63 and claim 53, which depends from claim 52.
F. Hammond or Archer and Burrell (Grounds F–G)
Claims 1–12, 15–20, 26–29, 31–36, 41, 42, 45, 50–64, 67–75, and 77 are
rejected based on (1) Hammond or Archer and (2) Burrell. RAN 27–28, 31–32.
For Grounds F and G, Patent Owner refers to and repeats its previous arguments.
App. Br. 32–33. We are not persuaded for above-discussed reasons when
addressing Hammond, Burrell, and Archer. Moreover, one cannot show
nonobviousness by attacking Hammond, Burrell, and Archer individually where,
as is here, the rejections are based on combinations of Hammond and Burrell or
Archer and Burrell. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Regarding the “front-to-back dimension” of claim 52 (App. Br. 33), we
explained above that at least Burrell and Hammond teach this limitation.5
Additionally, for both Ground F and G and claim 20, we further determine
that, to the extent that Hammond, Archer, and Burrell do not disclose the recited
first and second means, it would have been obvious to one of ordinary skill in the

5 Although not relied upon, we note that adjusting shelves to have a consistent or
fixed depth dimension would have been known to an ordinarily skilled artisan,
especially in view of Hammond.
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art to substitute the horizontal supports in Hammond, Archer, or Burrell for a
corresponding structure discussed in the ’271 patent. That is, given that the prior
art shows various similar horizontal supports for supporting objects, an ordinarily
skilled artisan would have known to use horizontal supports corresponding to the
structure in the ’271 patent, which include those that provide sufficient rigidity
(e.g., Archer, 1:5–10) and strength to support items having substantial weight (e.g.,
Hammond, 1:9–13 (discussing fish tanks)) without deformation or deflection.
Accordingly, we sustain the rejection based on (1) Hammond and Burrell
under § 103 of claims 1–12, 15–20, 26–29, 31–36, 41, 42, 45, 50–64, 67–75, and
77 and (2) Archer and Burrell under § 103 of claims 1–6, 10–12, 15, 16, 19, 20,
26–29, 31, 34–36, 41, 42, 45, 50–64, 67–75, and 77.
G. Burrell and Sulentic (Ground H)
Claims 6, 27, 31, and 76 are rejected under 35 U.S.C. § 103 based on Burrell
and Sulentic. RAN 35–36. For Ground H, Patent Owner refers to and repeats its
previous arguments. App. Br. 33. We are not persuaded for above-discussed
reasons when addressing Burrell. Additionally, concerning Sulentic, Patent Owner
argues that this apparatus cannot be used to support storage batteries. Id. at 32.
This argument is unavailing. As indicated above, the recitations to the batteries in
these claims are limitations related to intended use or requiring the ability to
perform the recited function. We agree with the Examiner that Sulentic is capable
of supporting goods, including storage batteries, as recited. RAN 35 (referring to
the Request 55, Ex. M and September 6, 2013 Comments); App. Br. 32 (discussing
Sulentic, p. 2, 1:7–8). Sulentic further discusses a preference that the apparatus
includes steel components. Sulentic, p. 1, 2:10–11. As such, we determine that
Sulentic also is capable of supporting storage batteries.
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Moreover, one cannot show nonobviousness by attacking Burrell and
Sulentic individually where, as is here, the rejections are based on combinations of
Burrell and Sulentic. See Merck, 800 F.2d at 1097.
Regarding the “front-to-back dimension” of claim 52 (App. Br. 33), we
explained above that at least Burrell teaches this limitation.
Accordingly, we sustain the rejection of claims 6, 27, 31, and 76.
H. Hammond or Archer, Burrell, and Yuasa, Marraffa ’891,
or Marraffa ’171 (Grounds M–N)

Claims 37–40, 42, 50–65, 67–75, and 77 are rejected under § 103 based on
Hammond, Burrell, and Yuasa, Marraffa ’891 or Marraffa ’171. RAN 45–46.
These claims are also rejected under § 103 based on Archer, Burrell, Archer, and
Yuasa, Marraffa ’891 or Marraffa ’171. RAN 47–48. For these rejections, Patent
Owner relies on its previous arguments. App. Br. 35. We are not persuaded for
the reasons previously discussed concerning Hammond, Burrell, and Archer.
Additionally, regarding Yuasa, the Examiner relies on this reference as well as
Marraffa ’891 and ’171 to teach that it is known to support storage batteries using
shelves and racks. See RAN 45 (referring to February 22, 2013 Comments and
incorporating Ground I’s explanation found at RAN 36–37 (further discussing
known racks for supporting storage batteries)); see also February 22, 2013
Comments 19–20 (discussing Yuasa, Marraffa ’891, and Marraffa ’171 having
batteries supported by racks, shelves, or trays) and Resp. Br. 18.
For the above reasons, we sustain the rejection based on (1) Hammond,
Burrell, and Yuasa, Marraffa ’891 or Marraffa ’171 of claims 37–40, 42, 50–65,
67–75, and 77 and (2) Archer, Burrell, and Yuasa, Marraffa ’891 or Marraffa ’171
of claims 37–40, 42, 50–65, 67–75, and 77.
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I. Burrell, Hammond, or Archer and Marraffa ’891
or Marraffa ’171 (Grounds O–Q)

Claims 43–49, 52–75, and 77 are rejected based on Burrell and Marraffa
’891 or Marraffa ’171; claims 43, 44, 52–65, 67–75, and 77 are rejected based on
(1) Hammond and Marraffa ’891 or Marraffa ’171 and (2) Archer and Marraffa
’891 or Marraffa ’171. RAN 48–51. For these rejections, Patent Owner relies on
its previous arguments. App. Br. 35. We are not persuaded for the reasons
previous discussed concerning Hammond, Burrell, Archer, and Marraffa ’891 and
Marraffa ’171.
For the above reasons, we sustain the rejection of the above claims based on
(1) Burrell and Marraffa ’891 or Marraffa ’171, (2) Hammond and Marraffa ’891
or Marraffa ’171, and (3) Archer and Marraffa ’891 or Marraffa ’171.
J. Rejection Under 35 U.S.C. § 314(a) (Ground DD)
Claims 57, 63, and 71 are rejected under 37 U.S.C. § 314(a) as enlarging the
scope of the claims of the ’271 patent. Patent Owner argues the phrase “support”
is found 133 times in the claims and that choosing claim 7 to make the rejection
that claim 57 is broader in scope than claim 7 is arbitrary. App. Br. 37. We are not
persuaded.
First, the Examiner does not compare claim 57 with claim 7, but rather with
claim 1. RAN 63; Resp. Br. 20. Second, even assuming Patent Owner is correct
that amending the limitation from “a front part of the first horizontal support” to “a
front part of a first horizontal [beam] support” does not enlarge the scope of claim
57 (see App. Br. 37), Patent Owner has not attempted to address the other
limitations in claim 57 the Examiner further found enlarges claim 1’s scope. These
include (1) removing “mounting” from the phrase “mounting apparatus” in claims
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57, 63, and 71, (2) not including at least one support disposed orthogonal to a base
in claim 57, and (2) not including at least one of the supports disposed orthogonal
to the base as being a vertical support in claims 57 and 63. RAN 63. We find
these positions reasonable and without rebuttal by Patent Owner.
As noted above, Ground AA rejecting claim 71 was not argued and is
summarily sustained. Claim 63 also has not been separately argued. App. Br. 37.
Accordingly, we sustain the rejection of claims 57, 63, and 71 under
§ 314(a).
K. Rejection Under 35 U.S.C. § 112, 1st Paragraph (Ground EE)
Claims 6, 31, 64, 66, 67, 69, 76, and 77 are rejected under 35 U.S.C.
§ 112(a) or first paragraph (pre AIA). RAN 64–65. Other than claim 6, Patent
Owner does not discuss an error in the Examiner’s rejection. App. Br. 37. We
thus summarily sustain the rejection of claims 64, 66, 67, 69 (Ground B), 76, and
77.
With regards to claim 6, the Examiner found that the disclosure of the ’271
patent does not describe “the trays 46 as having ‘a first and a second side surface
disposed orthogonal to the horizontal plate[,’] which first and second side surfaces
are separate from the vertical plates in which the mounting holes are formed.”
RAN 64. Patent Owner asserts that it “has already pointed out that the Examiner
has made an error in describing FIG. 4.” App. Br. 37.
However, Patent Owner provides no reference to where this error was
previously discussed. Id. Although Figure 4 is discussed in the context of the
prior art (see App. Br. 17, 21, 24, 27, 29–30) and when describing the front edge of
each tray in claim 10 (App. Br. 3), we fail to see how these discussions address a
purported error for claim 6. Moreover, it is not clear whether Patent Owner is
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referring to claim 6 in the context of the rejection under § 112(a), first paragraph or
(b), second paragraph. See App. Br. 37. As such, Patent Owner has not
sufficiently established an error in the Examiner’s rejection of claim 6. Claim 31
depends from claim 6 but is not separately argued. Thus, claim 31 falls with claim
6.
L. Rejection Under 35 U.S.C. § 112, 2nd Paragraph (Ground FF)
Claims 3, 6, 17–20, 31, 33–35, 37, 40, 46, 47, 55–61, 64, 66, 67, 69, 73, and
76 are rejected under 35 U.S.C. § 112(b) or second paragraph (pre AIA). RAN
55–56 (Ground CC), 62 (Ground Z), 65–67. Other than claims 6, 17, 55, and 56,
Patent Owner does not discuss an error in the Examiner’s rejection. App. Br. 37.
We thus sustain the rejection of claims 3, 19, 20, 34, 35, 37, 40, 46, 47, 57–61, 64,
66, 67, 69, 73, and 76. Notably, as stated above, Grounds Z and CC rejecting
claims 46, 47, 59, 64, 67, and 69 was not argued and has been summarily
sustained.
Concerning claim 6, the Examiner found that the disclosure of the ’271
patent does not describe “the trays 46 as having ‘a first and a second side surface
disposed orthogonal to the horizontal plate[,’] which first and second side surfaces
are separate from the vertical plates in which the mounting holes are formed.”
RAN 66. Patent Owner asserts that it “has already pointed out that the Examiner
has made an error in describing FIG. 4” (App. Br. 37) but as noted above provides
no reference where this error was previously discussed. Id.; Resp. Br. 19–20. As
such, Patent Owner has not sufficiently established an error in the Examiner’s
rejection of claim 6. Claim 31 depends from claim 6 but is not separately argued.
Thus, claim 31 falls with claim 6.
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As for claim 17, the Examiner determines that the phrase “the plurality of
horizontal support beams” is indefinite because more than one set of horizontal
support beams is recited and the claim does not identify to which of the
“longitudinal” or the “transverse” horizontal support beams “the plurality of
horizontal support beams” refers. RAN 66. Patent Owner contends that the recited
“plurality of horizontal support beams” is “reasonably interpreted to refer to all
kinds of horizontal support beams.” App. Br. 37 (emphasis added). Yet, this
response does not clarify the issue or rebut the Examiner’s determination, and also
possibly indicates that the recitation to “the plurality of horizontal support beams”
may include other “kinds” of horizontal support beams beyond the recited
longitudinal and transverse types. See id. Thus, based on the record, we sustain
the Examiner’s rejection. Claims 18 and 33 depends from claim 17 but are not
separately argued. Thus, claims 18 and 33 fall with claim 17.
Regarding claims 55 and 56, the Examiner contends that the scope of these
claims is unclear and indefinite because the claims limit the storage batteries and
not the recited battery mounting apparatus. RAN 66–67. Patent Owner argues that
these limitations further characterize the batteries and the terms are well known by
persons of skill. App. Br. 37 (citing the Specification of the ’271 patent6). As
noted above, we determine that the recitation to the storage battery in claim 55 is
found to be at best a functional limitation or an intended use limitation further
specifying the type of battery the apparatus is capable of supporting and how those
batteries that are capable of being supported are connected in series. We thus
determine that claim 55 is definite. On the other hand, as recited, claim 56 appears

6 Patent Owner refers to disclosure of the ’271 patent by paragraphs number 2, 5,
and 9. App. Br. 37. However, the ’271 patent has column and line numbers.
Appeal 2015-004507
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Patent 8,100,271 B2

33
to recite an active method step of connecting batteries in an apparatus claim. As
such, we agree with the Examiner that the scope of the claim is not clear as to
whether this claim means to recite the storage batteries positively and thus is
indefinite.
Accordingly, we sustain the rejection of claims 3, 6, 17–20, 31, 33–35, 37,
40, 46, 47, 56–61, 66, 67, 69, 73, and 76 but do not sustain the rejection of claim
55.
M. Remaining Adopted Rejections
Our conclusion that the Examiner did not err in rejecting claims based on the
adopted rejections discussed above renders it unnecessary to reach the propriety of
the remaining disputed rejections (e.g., Grounds E, I–L, R–T, W, and Y) of those
claims. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984); cf.
In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).

IV. CONCLUSIONS
Patent Owner did not demonstrate that the Examiner erred in rejecting
claims 1–12, 15–20, 26–29, and 31–77 on various statutory bases.

V. TIME PERIOD FOR RESPONSE
Requests for extensions of time in this proceeding are governed by 37 C.F.R.
§§ 1.956 and 41.79(e). In the event neither party files a request for rehearing
within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely
serve notice on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.
Appeal 2015-004507
Control 95/002,323
Patent 8,100,271 B2

34

AFFIRMED

em

FOR OWNER:

BGL
P.O. Box 10395
Chicago, IL 60610

FOR THIRD-PARTY REQUESTER:

Seyfarth Shaw LLP
131 S. Dearbron St.
Suite 2400
Chicago, IL 60603-5803