Ex Parte INOUE

Patent Trials and Appeals BoardApr 12, 2019

14294488 - (D) (P.T.A.B. Apr. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/294,488 06/03/2014 23117 7590 04/16/2019 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Y oshimitsu INOUE 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. RYM-2635-1433 3677 EXAMINER AMPONSAH, OSEI K ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 04/16/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOSHIMITSU INOUE Appeal2018-005426 Application 14/294,488 Technology Center 1700 Before KAREN M. HASTINGS, BRIAND. RANGE, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. Â§ 134 from a rejection2 of claims 1-9. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The real party in interest is identified as "DENSO CORPORATION." Appeal Brief of December 1, 2017 ("Br."), 3. 2 Final Office Action of July 6, 2017 ("Final Act."). In this opinion, we also refer to the Examiner's Answer of March 19, 2018 ("Ans.") and the Reply Brief of May 2, 2018 ("Reply Br."). Appeal2018-005426 Application 14/294,488 CLAIMED SUBJECT MATTER The claims are directed to "a battery cooling apparatus for cooling battery cells housed in a case." Spec. 1:9-10. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A battery cooling apparatus comprising: a case for housing battery cells arranged in the casing; a fan device disposed in the case and configured to blow air to cool the battery cells; a circulation passage formed inside the case and including a collective passage, a top plate side passage and battery passages extending in parallel from portions of the top plate side passage, wherein the circulation passage is configured so that the air blown from the fan device is sucked into the fan device after having circulated through the circulation passage, and having collected in the collective passage after having exchanged heat with the battery cells each of the battery passages extends from a portion of the top plate side passage to the collective passage through a respective one of the battery cells so that a portion of the air, after moving through the top plate passage, flows along a surface of one of the battery cells to the collective passage; and a discharge passage configured to provide communication between inside and outside of the case to allow part of the air that circulates through the circulation passage to leak to outside the case through the discharge passage after having exchanged heat with the battery cells, the discharge passage including a pressure valve that is configured to open when a predetermined pressure condition is satisfied so that the discharge passage discharges air; wherein the fan device includes a first inflow passage and a second inflow passage, the first inflow passage is part of the circulation passage and configured to allow the air having exchanged heat with the battery cells to be sucked into the fan device through the first inflow passage, the second inflow passage is configured to provide communication between the outside of the case and the fan device to allow air outside the case to be sucked into the circulation passage through the second inflow passage by suction force of the fan device, the collective passage extends in a direction along which the battery cells are 2 Appeal2018-005426 Application 14/294,488 arranged and each of the battery cells is exposed to the collective passage. Claims Appendix (Br. 12). REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Kamata Shimizu Kurokuzuno Matsuno JP 2011134615 JP 2008041461 JP 2008290636 us 5,937,664 REJECTIONS Jul. 7, 2011 Feb.21,2008 Jun.20,2012 Aug. 17, 1999 Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kamata in view of Kurokuzuno and Shimizu. Final Act. 2 Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kamata, Kurokuzuno, Shimizu and Matsuno. Final Act. 10. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections")). After having considered the evidence presented in this Appeal and each of Appellant's contentions, we are not persuaded that reversible error has been identified, and we affirm the Examiner's Â§ 103 rejections for the reasons expressed in 3 Appeal2018-005426 Application 14/294,488 the Final Office Action and the Answer. We add the following primarily for emphasis. Rejection of Claim l3 Appellant argues that the Examiner reversibly erred in rejecting claim 1 because path 63 of Kamata does not teach or suggest "a discharge passage ... " as recited in claim 1. Br. 7. More specifically, Appellant argues that claim 1 is patentably distinguished as Kamata's "discharge path 63 is for discharging evaporated refrigerant, not for discharging air." Id. ( citing Kamata ,r 29). "[T]he patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure." Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). "A patent applicant is free to recite features of an apparatus either structurally or functionally." In re Swinehart, 439 F.2d 210,212, (CCPA 1971) ("There is nothing intrinsically wrong with [ defining something by what it does rather than what it is] in drafting patent claims."). "Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Swinehart, 439 F.2d at 213. 3 Because Appellant does not argue claims 3-9 separately, they stand or fall with claim 1. Br. 10; see also 37 C.F.R. Â§ 4I.37(c)(l)(iv). 4 Appeal2018-005426 Application 14/294,488 In this case, the Examiner annotates Figures 5a and 5b of Kamata (reproduced below) as well as Figure 3 and finds Kamata describes a battery cooling apparatus having various components including "air flow ( circulation 100)" meeting the limitations of claim 1. Final Act. 3-5 ( citing Figures 3, 5a, 5b of Kamata; citing Kamata ,r,r 24--47). (~SJ 1~(<Â£~hl CA H.ll(4u} Â·,'"''"' ... "'''"''"Â· ... ,,,,.,, .... ,,,,-...,,,,',,,,.,.,,,., L,~::~0~;7,~;:~~~~~,,),,,J ,O's(.42.ii; . ./ .. < ..... /~Â· !:-"--:'--~-"t"-. ------------< Â·, \,, 4ti so 4J so Figures 5a and 5b of Kamata Annotated in Final Act. 4. Appellant does not address the Examiner's findings detailed in the Final Action-in particular the Examiner's findings with regard to the Figures and paragraphs 43--46 ofKamata. Compare Br. 7, with Final Act. 3-5; see Kamata ,r,r 43--46 ( describing Figures 5a and 5b including the circulation of "cooling air CA"). Appellant does not structurally distinguish Kamata' s device. See Br. 7 (arguing that Kamata's "discharge path 63" does not 5 Appeal2018-005426 Application 14/294,488 provide "communication between inside and outside of the case ... "). 4 Appellant does not dispute the Examiner's finding that "Kamata further teaches that the refrigerant for cooling the battery cells is cooling wind (cooling air) [CA] supplied from the fan apparatus [60 and 80] (paragraphs 30-31 ), and each battery cell [20] is effectively cooled by the cooing wind (cooling air) (paragraphs 43--46)." Compare Ans. 11, with Reply Br. 1-2. Based on the record and argument raised in the Appeal Brief, we are not persuaded that the Examiner reversibly erred here. Appellant's argument regarding whether Kamata teaches or suggests a "second inflow passage" likewise does not address the Examiner's findings with regard to Figures 5a and 5b of Kamata. Compare Br. 7-8, with Final Act. 3-5. Nor does Appellant structurally distinguish the recited "second inflow passage" from the prior art. Br. 7-8 (arguing that Kamata's "introduction path 62" does not provide "communication between inside and outside of the case ... "). Based on the record and argument raised in the Appeal Brief, we are not persuaded that the Examiner reversibly erred here. 4 In the Reply Brief, Appellant raises certain arguments for Figures 5a and 5b of Kamata but does not address the cited texts of Kamata. Reply Br. 1. Because the Examiner has not been afforded an opportunity to consider these arguments raised for the first time in the Reply Brief and Appellant does not explain why it could not have been raised previously, we decline to consider them. See Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) ( explaining that arguments and evidence not timely presented in the principal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 14 77 (BP AI 2010) (informative) ("Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause."). 6 Appeal2018-005426 Application 14/294,488 Appellant next argues that changing from the prior art refrigerant to air would change the principle of operation. Br. 8. More specifically, Appellant argues that: ( 1) "instead of having separated paths for air and refrigerant across which heat is exchanged, Kamata's device would have to be changed to allow mixing of the flow paths," (2) "air is typically not suitable for use as a coolant where evaporation is used," and (3) "[ m ]odifying Kamata to allow air outside the case to be sucked into the circulation passage would also likely allow entry of contaminants such water, which is contrary to [Kamata's] purpose of sealing." Id. 8-9. Appellant's arguments are unpersuasive for at least two reasons. First, the Supreme Court has stated that it is error to "look only to the problem the patentee [or applicant] was trying to solve." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Appellant's argument too narrowly characterizes the scope of Kamata's disclosures, including the principle of operation, applicable fields of endeavor and pertinence of the problems addressed to the problem in which the invention is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Second, Appellant's argument is not supported by evidence. Br. 8-9 (supporting the various arguments raised with a sole citation to Kamata ,r 28 for "Kamata discloses a system that is sealed ... "). "Attorneys' argument is no substitute for evidence." Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). The record before us therefore does not persuade us of reversible error. Appellant lastly argues that the Examiner failed to provide sufficient justification for the reason to combine. Br. 9-10. Appellant disagrees with Examiner's rationale to combine Kamata with Kurokuzuno arguing that there is not motivation to add the components including a valve of 7 Appeal2018-005426 Application 14/294,488 Kurokuzuno to Kamata's device as Kamata alone "can be presumed to provide adequate cooling." Id. at 9. The Examiner, however, provides an analysis showing that the "technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way" supporting the obviousness rejection. See KSR, 550 U.S. at 417; Final Act. 5---6 (explaining that a skilled artisan would combine known structures to arrive at claim 1 ). Appellant also disagrees with the Examiner's reason to combine Kamata with Shimizu arguing "Kamata uses refrigerant for cooling" and "the improvement is not to a similar device in the same way." Br. 10. We again are not persuaded by Appellant's narrow reading of the prior art. "[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR, 550 U.S. 416 (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). Appellant does not argue that the combination does "more than yield a predictable result" and we are not persuaded that the Examiner reversibly erred here. Rejection of Claim 2 Claim 2 depends from claim 1 and additionally recites: "wherein the discharge passage is disposed downstream of a first passage part of the circulation passage and upstream of the first inflow passage so that the air blown from the fan device can exchange heat with the battery cells while passing through the first passage part." Appellant's sole argument with regard to claim 2 is that the recited "function is different from Kamata because Kamata relies on refrigerant" 8 Appeal2018-005426 Application 14/294,488 and that the recited limitation "is a new function compared to Kamata." Br. 10. For the reasons provided with regard to claim 1 (i.e., lack of structural distinction), we are not persuaded that the Examiner reversibly erred here. Compare id., with Final Act. 7-8 ( citing various parts of Kamata in support of the rejection of claim 2 including Figures 5a and 5b and ,r,r 51, 52). DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 9