Ex Parte GlessDownload PDFPatent Trials and Appeals BoardApr 29, 201914422977 - (D) (P.T.A.B. Apr. 29, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/422,977 02/20/2015 10800 7590 04/30/2019 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 FIRST NAMED INVENTOR Michael Gless 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2178-1329 7991 EXAMINER TRPISOVSKY, JOSEPH F ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 04/30/2019 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 APPEAL BOARD Ex parte MICHAEL GLESS Appeal2018-008175 Application 14/422,977 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's rejection2 of claims 1-10 and 12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Robert Bosch GmbH and Samsung SDI Co., Ltd. ("Appellant") are the applicants as provided under 3 7 C.F .R. § 1.46 and are identified as the real parties in interest. Br. 2. 2 Appeal is taken from the Final Office Action dated August 29, 2017. Appeal2018-008175 Application 14/422,977 STATEMENT OF THE CASE Claims 1, 10, and 12 are the independent claims on appeal. Claim 1, reproduced below with disputed limitations italicized for emphasis, is exemplary of the subject matter on appeal. 1. A battery system comprising: a battery cell housing; at least one battery cell contained within the battery cell housing; a thermoelectric element arranged on the battery cell housing; and a thermally controllable device configured to influence a current flow, wherein the thermally controllable device includes a thermostat, the thermostat comprising a bimetallic switch arranged on the battery cell housing, wherein the thermoelectric element and the thermostat are each in thermal contact with the at least one battery cell, and wherein the thermoelectric element and the bimetallic switch are connected in series. THE REJECTIONS I. Claims 1, 5, 6, 8-10, and 12 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Anderson (US 2010/0243346 Al; published Sept. 30, 2010), Roszyk (US 3,518,524; issued June 30, 1970), and Turano (US 4,867,102; issued Sept. 19, 1989). II. Claims 2 and 4 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Anderson, Roszyk, Turano, and Sakou (US 5,912,546; issued June 15, 1999). 2 Appeal2018-008175 Application 14/422,977 III. Claim 3 stands rejected under 35 U.S.C. § I03(a) as unpatentable over Anderson, Roszyk, Turano, Sakou, and Suzuki (JP 2005-222834; published Aug. 18, 2005). 3 IV. Claim 7 stands rejected under 35 U.S.C. § I03(a) as unpatentable over Anderson, Roszyk, Turano, and Chorian (US 2011/0082607 Al; published Apr. 7, 2011). ANALYSIS Rejection I Claims 1, 5, 6, and 8 Appellant does not offer arguments in favor of claims 5, 6, and 8 separate from those presented for independent claim 1. See Br. 5-9. We select claim 1 as the representative claim, and claims 5, 6, and 8 stand or fall with claim 1. Regarding independent claim 1, the Examiner finds, inter alia, that Anderson discloses a battery system comprising the various components as claimed, including a thermoelectric element ( thermoelectric semiconductor devices 202, 204, 206) arranged on a battery cell housing 112 and a thermally controllable device ( controller 118, variable voltage source 120, temperature sensor 122) configured to influence a current flow 224, wherein the thermally controllable device includes a thermostat. Final Act. 2-3 (citing Anderson ,r,r 19-20, Figs. 1-2). The Examiner acknowledges that Anderson does not disclose the thermostat comprising a bimetallic switch, or 3 Any reference to Suzuki hereinafter will be to the English-language translation provided by the Examiner. 3 Appeal2018-008175 Application 14/422,977 that the thermoelectric element and a bimetallic switch are connected in series. Id. at 3. The Examiner finds that Roszyk discloses a battery system having a thermostat 24 that comprises a bimetallic switch (bimetal strip 25). Id. (citing Roszyk, Figs. 1-3). The Examiner concludes that it would have been obvious to modify the battery system of Anderson to "have the thermostat comprise a bimetallic switch arranged on the battery cell housing in order to passively monitor the temperature of the battery and separate the thermostat at a predetermined value to prevent damage to the battery during a charging operation." Id. ( citing Roszyk 3:51-70). The Examiner also finds that Turano discloses a thermoelectric element (Peltier device 110) and a bimetallic switch (bimetallic strip 118) that are connected in series. Id. ( citing Turano, Fig. 1 ). The Examiner concludes that it would have been obvious to further modify the battery system of Anderson to "include a bimetallic switch in series with the thermoelectric element [as] taught by Turano in order to control the flow of current to the thermoelectric device to cause heating or cooling according to predetermined temperature values." Id. at 3--4 ( citing Turano 2 :49-68, 3:46-68). Appellant contends that the Examiner's rationale for combining the disclosures of Anderson and Roszyk is insufficient. Br. 5. In support for this contention, Appellant argues that: ( 1) "it is unclear how the thermal management system of Anderson modified to include a bimetallic switch as taught by Roszyk would be capable of utilizing the variable voltage source 120 and the thermoelectric semiconductor elements 208, 210 and 212 to provid[e] heating and cooling of the battery cells" because "[i]t is unclear 4 Appeal2018-008175 Application 14/422,977 how a bimetallic switch can be used to control the variable voltage source 120 or the thermoelectric semiconductor elements 208, 210 and 212" (id. at 5---6), and as such, "modifying Anderson with Roszyk in the manner proposed by the Examiner would eliminate the ability of the thermal management system to provide active heating or cooling of battery cells for a hybrid electric vehicle" (id. at 6). These arguments are unpersuasive. As the Examiner explains in the Answer, the proposed combination does not replace the active thermal management system of Anderson but merely provides an additional alternative thermostat provided to the battery system that includes a bimetallic switch arranged on the battery housing to provide an additional, passive, thermally controllable device that allows for redundancy and added safety for the thermal management system. Ans. 9; emphasis added. 4 As such, the Examiner's modification of Anderson's system would not "eliminate the ability of the thermal management system to provide active heating or cooling of battery cells for a hybrid electric vehicle," as Appellant contends. See id. We note that the Examiner's proposed modification would result in similar effects as disclosed by Appellant, namely, "the temperature control system can be 4 We note that in the Final Office Action, the Examiner proposes modifying Anderson's system to "have the thermostat comprise a bimetallic switch." See Final Act. 3. To the extent that the Examiner's Answer constitutes a new ground of rejection, Appellant could have filed a petition to the Director under 37 C.F.R. § 1.181. See 37 C.F.R. § 41.40(a). Further, Appellant chose not to file a Reply Brief, and thus waives any arguments against the Examiner's findings. See Exparte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) ("Informative") ("[ A ]rguments that could be made in the reply brief, but are not, are waived."). 5 Appeal2018-008175 Application 14/422,977 combined with already used existing safety functions such as, for example, an overcharge safety device ( or OSD for short) or a battery management system (BMS)." Spec. 7: 1--4; emphasis added. Appellant further argues that: (1) "[i]t is an object of Anderson to improve the efficiency of thermal management of batteries for a hybrid vehicle" (Br. 5 (citing Anderson ,r 6)); (2) in constrast, Roszyk's disclosure of "a passive cooling technique which would result in the charging current being shut off when the battery cells get too hot" which "is a very inefficient method of providing cooling for a battery system" (id.); and (3) thus, "the Examiner's proposed modification of Anderson with Roszyk would render the system of Anderson unsatisfactory for its intended purpose" (id. at 6). These contentions are unpersuasive. First, it appears that this line of argument does not take into account the proposed modifications as explained in the Answer and discussed above-in which redundancy and added safety is supplemental to Anderson's existing active thermal management system- -rather than a replacement for it. Appellant thus does not explain why modifying Anderson's system to have redundancy and added safety would result in a "very inefficient method of providing cooling for a battery system." See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ("[ A ]ttomey argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness"). Moreover, even if crediting Appellant's argument that there is some inefficiency in using a passive cooling technique from Roszyk's disclosure, "[w]hile a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention." In re Zhang, 654 Fed. Appx. 488, 490 6 Appeal2018-008175 Application 14/422,977 (2016) (referencing In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) ("[T]he teaching of [a reference] is not limited to the specific invention disclosed.")). Further, we note that claim 1 does not require any particular rate of cooling a battery that would relate to efficiency. See In re Self, 671 F.2d 1344, 1348 ( CCP A 19 82) (" [ A ]ppellant' s arguments fail from the outset because ... they are not based on limitations appearing in the claims."). Appellant also argues that "[i]t appears that the Examiner's proposed modification of Anderson with Roszyk would require 'a substantial reconstruction and redesign' of the elements shown in Anderson as well as a change in the basic principle under which the system of Anderson was designed to operate." Br. 6. This argument is unpersuasive for the reasons discussed above in that it does not address the rejection as explained in the Answer. Thus, Appellant does not explain why it is not possible to add the bimetal strip 25 of Roszyk, which prevents damage to the battery during a charging operation, to Anderson's battery system. In other words, Appellant does not provide any evidence or argument sufficient to show that the proposed modifications would have been beyond the level of ordinary skill in the art. We note that the Supreme Court has emphasized that "the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int'! v. Teleflex Inc., 550 U.S. 398, 418 (2007). As noted by the Court in KSR, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421. "The combination of familiar elements 7 Appeal2018-008175 Application 14/422,977 according to known methods is likely to be obvious when it does no more than yield predictable results." Id. at 416. Appellant next contends that the Examiner's rationale for combining the disclosures of Anderson and Turano is insufficient. Br. 7. In support for this contention, Appellant questions the operation of Anderson's system if its voltage source 120, controller 118, and sensor 112, are replaced with Turano' s bimetallic strip 118. See id. at 8-9. Similar to the arguments presented with respect to Roszyk's disclosure, these arguments do not address the rejection as explained in the Answer, which does not propose replacing Anderson's voltage source 120, controller 118, and sensor 112, but rather, adding to them. See Ans. 10. Further, to the extent Appellant is arguing that the references must be capable of bodily incorporation in order to combine their teachings, 5 the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of a primary reference. In re Keller, 642 F.2d 413,425 (CCPA 1981). "Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." Keller, 642 F.2d at 425. See also KSR at 416,421; Ans. 10. Therefore, Appellant's arguments do not apprise us of error in the Examiner's combination of the disclosures of Anderson, Roszyk, and Turano. Accordingly, we sustain the Examiner's rejection of claims 1, 5, 6, and 8. 5 See e.g., Br. 8 ("it is unclear how the bimetallic switch 118 would be configured [to] 'allow for heating if the temperature falls below a certain temperature and cooling if the temperature rises above a certain value' as proposed by the Examiner, even when configured as a double pole switch"). 8 Appeal2018-008175 Application 14/422,977 Claim 9 Claim 9 recites "the thermally controllable device and the thermoelectric element are electrically conductively connected to pole terminals of the at least one battery cell." Br. 16 (Claims App.). The Examiner finds that Turano discloses "the thermally controllable device (116) and the thermoelectric element (110) are electrically conductively connected to the pole terminals of the at least one battery cell (DC source 124 equivalent to a battery such as the battery of Anderson)." Final Act. 4; see also Turano, Fig. 1. Appellant contends that "neither Anderson, Roszyk nor Turano discloses or suggests connecting a thermally controllable de[v]ice and a thermoelectric element in series between the poles of a battery." Br. 13; see also id. at 11. This argument is unpersuasive. As the Examiner explains, an ordinary artisan would recognize that the "two lines connecting to DC source 124" of Turano "can be the readily available battery cells of Anderson" and "[t]herefore, the DC source of power of Anderson would be the poles of the battery cell and would be capable of supplying power to the thermoelectric devices connected in series with the bimetallic switch." Ans. 13. See also KSR at 416,418,421; In re Keller at 425. Accordingly, the rejection of claim 9 is sustained. Claim 10 Independent claim 10 recites limitations similar to independent claim 1 as discussed above. See Br. 15-16 (Claims App.); see also id. at 10. Appellant contends that "[a]s discussed above, it would not be obvious to modify Anderson with Roszyk or to modify Anderson with 9 Appeal2018-008175 Application 14/422,977 Turano, in the manner proposed by the Examiner, to arrive at these limitations." Id. This contention is unpersuasive for the reasons discussed supra. Accordingly, we sustain the Examiner's rejection of claim 10. Claim 12 Claim 12 recites similar limitations as those of claims 1 and 9. See Br. 15-17 (Claims App.). Appellant relies on arguments made previously for claims 1 and 9. Id. at 11; see also Ans. 11. As Appellant does not apprise us of error in the rejection of claims 1 and 9, we sustain the Examiner's rejection of claim 12 for the same reasons. Re} ection II Appellant does not provide any substantive argument in connection to the rejection of claim 4. Br. 5-13. In regard to claim 2, Appellant argues that "Turano does not disclose or suggest using a bimetallic switch and a thermistor in conjunction." Id. at 12. This argument is unpersuasive for the same reason as discussed supra for Rejection I, in that it does not address the rejection as explained in the Answer in which the Examiner proposes adding a bimetallic switch to the battery system of Anderson rather than replacing its active thermal management system. See Ans. 9, 11-12. Accordingly, the rejection of claims 2 and 4 is sustained. Rejection III In regard to claim 3, the Examiner acknowledges that the modified system of Anderson "does not explicitly teach the thermostat is connected in series with the thermistor." Final Act. 8. However, the Examiner finds that 10 Appeal2018-008175 Application 14/422,977 "Suzuki teaches the concept of a battery pack having a thermostat (switch) connected in series with the PTC thermistor (paragraph 12 of the machine translation) in order to provide for overcurrent protection and effectively prevent the spread of damage due to its overheating protection function (paragraph 12)." Id. at 8-9. The Examiner concludes that it would have been obvious to modify the battery system of Anderson "to have the thermostat connected in series with the PTC thermistor taught by Suzuki in order to provide a simple overcurrent protection switch to protect the battery system from damage." Id. at 9. Appellant argues that "Suzuki only discloses the use of a thermistor in a manually-operated mechanical switch, such as 'a slide switch, a toggle switch, a rotary switch, a push switch and a rocker switch.'" Br. 12 ( citing Suzuki ,r 2). This argument is unpersuasive in that it does not address the rejection in which the Examiner relies on Suzuki's disclosure in paragraph 12 rather than paragraph 2. See Final Act. 12; Ans. 12. Appellant further argues that "[t]here is no disclosure or suggestion in Suzuki of connecting a thermistor in series with a thermostat, such a bimetallic switch, which is not manually operated." Br. 12. This argument is unpersuasive in that, rather than relying on Suzuki, the Examiner instead relies on Roszyk and Turano as disclosing a bimetallic switch. See Final Act. 3; Ans. 12. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references []. [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 11 Appeal2018-008175 Application 14/422,977 We thus sustain the rejection of claim 3. Rejection IV In regard to claim 7, Appellant relies on arguments made against the rejection of claim 1. Br. 13. As Appellant does not apprise us of error in the rejection of claim 1, we sustain the Examiner's rejection of claim 7 for the same reasons. DECISION The Examiner's decision rejecting claims 1-10 and 12 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 12 Copy with citationCopy as parenthetical citation