Ex Parte Gless

Patent Trials and Appeals Board

Apr 29, 2019

14422977 - (D) (P.T.A.B. Apr. 29, 2019)

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).
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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.
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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
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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.").
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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
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(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
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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").
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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
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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
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"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).
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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
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