Ex Parte Hermansson et al

Patent Trial and Appeal Board

Jul 18, 2016

13109757 (P.T.A.B. Jul. 18, 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.
13/109,757 05/17/2011 Willy Hermansson 04189-P0007AUS 2067
131672 7590 07/18/2016
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
LEWIS, BEN
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
07/18/2016 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 APPEAL BOARD
____________

Ex parte WILLY HERMANSSON, BERTIL NYGREN, FALAH HOSINI,
FREDRIK TINGLOW, and JAN R. SVENSSON
____________

Appeal 2014-006239
Application 13/109,757
Technology Center 1700
____________
Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request review pursuant to 35 U.S.C. § 134(a) of the
Examiner’s decision finally rejecting claims 1, 3–10, and 12–22 of
Application 13/109,757.2 We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 Appellants identify the real party in interest as ABB Research Ltd. App.
Br. 2.
2 Final Action mailed May 10, 2013 (“Final Act.”) and the Examiner’s
Answer mailed February 28, 2014 (“Ans.”).
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Application 13/109,757
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BACKGROUND
The subject matter on appeal relates to a non-conductive casing for a
battery pack and a method for stacking batteries for power compensation in
high voltage systems. App. Br. 3.
Claims 1 and 22 are illustrative of the subject matter on appeal, and
are reproduced below from the Claims Appendix of the Appeal Brief:
1. A cassette for a battery stack, comprising
a casing for a battery pack, the casing having a front side
with an opening for receiving the battery pack, and the casing
comprises a non-conducting material,
wherein the casing has a back side, opposite the front
side, the back side being provided with electrical connectors
leading into the casing and arranged to connect to the poles of a
battery pack when a battery pack is inserted into the casing
through the front side.
22. A method for stacking batteries for power compensation
in high voltage systems, comprising the steps of:
providing a plurality of modular cassettes, having front
openings for receiving the batteries, and back connections for
electrical power supply;
stacking said plurality of modular cassettes either side-
by-side or top-to-bottom.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Ovshinsky et al. US 2005/0058892 A1 Mar. 17, 2005
(hereinafter “Ovshinsky”)
Ijaz et al. US 2009/0297892 A1 Dec. 3, 2009
(hereinafter “Ijaz”)
Ha et al. US 2010/0035142 A1 Feb. 11, 2010
(hereinafter “Ha”)

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THE REJECTIONS
1. Claims 1, 3–9, 12–17, and 20–22 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Ha and
Ovshinsky.
2. Claims 10, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Ha, Ovshinsky, and Ijaz.
DISCUSSION
Appellants argue that the Final Action does not establish prima facie
obviousness of independent claims 1 and 22 because it fails to show all of
the claim limitations in the prior art references Ha and Ovshinsky, and
proposes a hypothetical modification of Ha where there would have been no
motivation for doing so. App. Br. 6–16. Appellants do not present
substantively distinct arguments for any of the dependent claims. Id. at 16–
17. Therefore, we need only address claims 1 and 22; all dependent claims
stand or fall with the claim from which they depend.
Ha discloses a battery module 100 with case 200 mounted to the
outside of the module. Ha ¶ 39. The case does not have an opening on the
front side for receiving the battery module, but rather a plate bolted to the
front side with fastening elements. Id. Fig. 5. The Examiner finds that an
opening in the front side is inherent because a person of ordinary skill would
be able to remove the front plate and insert and remove the battery module.
Ans. 5. With respect to electrical connectors, Ha discloses a power
connector 420 and a communication connector 410 at the rear of the battery
module and the module case, through which the battery module is
electrically connected to an external circuit. Ha ¶¶ 41–43. Ha does not
disclose that the module case is non-conductive; Ha teaches that the case
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Application 13/109,757
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preferably is made of metal. Id. ¶ 19. The Examiner finds that Ovshinsky
teaches it is advantageous to electrically insulate the exterior of a battery
case from the environment by coating it with a non-conductive polymer
coating. Ans. 7. The Examiner determines it would have been obvious to a
person of ordinary skill in the art to incorporate the non-conductive polymer
coating of Ovshinsky into Ha’s module case because Ovshinsky teaches the
mechanical strength, ruggedness, and insulating properties of polymer tape.
Id. (citing Ovshinsky ¶ 65).
Appellants argue that the Examiner did not establish that an opening
is inherent in the front of Ha, and that Ha teaches away from an opening
because the front plate is bolted onto the module case during manufacture
and the battery module is intended to be replaced as a whole, rather than
removed from the module case. App. Br. 7. Appellants’ argument is not
persuasive of reversible error in the rejection. Having reviewed the
evidence, we find that there was a reasonable basis for the Examiner’s
determination that it would have been within the skill of one of ordinary skill
in the art to remove the bolts of Ha’s case to replace the battery module, and
thus an opening in the front of Ha’s module case would necessarily be
present. Ans. 15; see Continental Can Co. v. Monsanto Co., 948 F.2d 1264,
1268 (Fed. Cir. 1991) (to establish inherency, the evidence “must make clear
that the missing descriptive matter is necessarily present in the thing
described in the reference.”).
Appellants next argue that Ha teaches away from the modular
structures claimed by Appellants, which provide a safe and easy manner for
an operator to replace batteries from the front of a battery stack because the
connectors are at the back, away from the operator. App. Br. 10–11.
Appellants point to Ha’s disclosure of a preferably metal module case, and a
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grip bolted to the conductive case, as teaching away. Id. (citing Spec. ¶ 13);
Ha ¶¶ 19, 25, 46. Appellants’ argument is not persuasive. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from
claimed subject matter merely by disclosing a different solution to a similar
problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed).
As to Appellants’ argument that Ha does not teach that insertion of its
battery module would result in connecting the battery to the stack (App. Br.
11–13), that argument is based on distinguishing Ha’s function, rather than
its structure. As an apparatus claim, however, claim 1 must be distinguished
from the prior art in terms of structure rather than function. See In re
Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997). Further, it is not
necessary for a prior art structure to serve the same purpose as that disclosed
in Appellants’ specification to support the conclusion that the claimed
subject matter would have been obvious. See In re Lintner, 458 F.2d 1013,
1016 (CCPA 1972).
Finally, Appellants argue that there would have been no motivation to
combine Ovshinsky with Ha because Ha prefers a module case made of
metal, and there is no indication that applying Ovshinsky’s polymer coating
to Ha’s metal case would reduce the risk of danger should an operator try to
unbolt and remove Ha’s front panel. App. Br. 15–16. Appellants’ argument
is not persuasive because obviousness does not require bodily incorporation
of Ovshinsky in the structure of Ha; rather, the test is what the combined
teachings of the references would have suggested to a person of ordinary
skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.”).
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SUMMARY
We affirm the rejection of claims 1, 3–10, and 12–22.
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