Ex Parte JANG et al

Patent Trial and Appeal BoardMar 23, 2016

12750314 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121750,314 03/30/2010 8439 7590 03/25/2016 ROBERT E BUSHNELL & LAW FIRM 2029 K STREET NW SUITE 600 WASHINGTON, DC 20006-1004 FIRST NAMED INVENTOR Y oungcheol JANG 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. P59024 8583 EXAMINER GILLIAM, BARBARA LEE ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 03/25/2016 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): rebushnell@aol.com mail@rebushnell.com info@rebushnell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOUNGCHEOL JANG, EUNOK KWAK, and NOHYUNKWAG Appeal2014-008133 Application 12/750,314 Technology Center 1700 Before: 1\vLA~RK NAGUl\10, CHRISTOPHER 1\1. F~A~ISER, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-008133 Application 12/750,314 DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134 from a Final Rejection of claims 1-14 and 19-23.2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm substantially for reasons well-stated by the Examiner. OPINION A. Introduction The claims relate to a secondary battery (e.g., a rechargeable battery) having an energy source or "a bare cell" and a protection circuit module which may be used "to stably control the charging/discharging of the bare cell." (Spec. i-f 4.) More specifically, the claims are directed to a coupling member said to address the need to "increase the bonding strength between the bare cell and the protection circuit module." (Id. i-f 5.) Figure 5 of the '314 Specification,3 reproduced below, is a perspective view illustrating the coupling member: 1 The real party in interest is identified as Samsung SDI Co., Ltd. (Appeal Brief filed 07 April 2014 ("Br."), 3.) 2 Rejection mailed 05 December, 2013 (hereinafter "FR"). Claims 15-18 have been canceled. (Br. 9.) 3 Application No. 12/750,314, filed 30 March, 2010, claims foreign priority to 10-2009-0053017, filed 15 June 2009 in Korea. We refer to the "'314 Specification," which we cite as "Spec." 2 Appeal2014-008133 Application 12/750,314 As shown in Figure 5, coupling member 230 includes "first circuit board coupling portion 234" and "[ s ]econd circuit board coupling portion 235" which are coupled to the protection circuit module. (Id. i-fi-132, 55.) Coupling member 230 also includes bare cell coupling portion 231 which is coupled to the bare cell. (Id. i-f55.) Figure 4 of the '314 Specification showing a side view of the coupling member connecting the bare cell and the protection circuit module is reproduced below: 3 Appeal2014-008133 Application 12/750,314 /\ ~ ~ ' ' ~ : LJ F As illustrated in Figure 4, components of the secondary battery may include "bare cell 21 O" (bottom) which "is coupled to the protection circuit module 220" (top) "through the coupling member 230" (middle). (Spec. i-fi-1 26, 55.) Coupling member 230 is shown to include bare cell coupling portion 231 which is coupled to bare cell 210. (Id.) 4 Appeal2014-008133 Application 12/750,314 Figure 4 shows that when a force "F" is applied to the secondary battery, the force may be "divided by coupling member 230 into forces Fl and F2." (Id. i-f 55.) Forces Fl and F2 are "transmitted in directions substantially perpendicular to the first circuit board coupling portion 234 and the second circuit board coupling portion 235." (Id.) The '314 Specification provides: (Id.) The forces Fl and F2, which are applied perpendicular to the first circuit board coupling portion 234 and the second circuit board coupling portion 235, respectively, do not react to the application of forces Fl, F2 by functioning to separate coupling member 230 from circuit board 221. This therefore leads to improved bonding strength between circuit board 211 and coupling member 230. Claim 1, reproduced below, is illustrative of the claimed subject matter: A secondary battery, comprising a bare cell, a protection circuit module provided with a circuit board, and a coupling member having a bare cell coupling portion coupled to the bare cell, a first and second circuit board coupling portions coupled to a lower surface of the circuit board, and first and second connecting portions connecting the bare cell coupling portion to the first and second circuit board coupling portions, respectively, wherein the first and second connecting portions are diagonal structure members that are inclined to form acute included angles with respect to the bare cell coupling portion, and wherein the coupling member to divide an external impact force F transmitted from the bare cell into two smaller forces F 1 and F2 corresponding to the first and second circuit board coupling portions respectively, and to transmit the two smaller forces Fl and F2 to different portions of the circuit board in a direction 5 Appeal2014-008133 Application 12/750,314 substantially perpendicular to the lower surface of the circuit board. (Claims App., Br. 29) (emphases added).) The Examiner maintains the following grounds of rejection: A. Claims 1-9, 11, 13, 14, and 19-23 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Moon,4 Jang,5 Franklin,6 and Wiepen.7 (FR. 2.) A 1. Dependent claims 10 and 12 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Moon, Jang, Franklin, Wiepen, and Yoon.8 (FR. 5---6.) Appellants seek our review of the rejections of independent claim 1 (and independent claim 19, which stands or falls with claim 1),9 and the rejection of dependent claims 3, 5, 6, and 23. 10 4 Ki Eob Moon, et al., Cap Assembly Mold and Secondary Battery Having the Same, U.S. Patent 1A..pplication Publication 2006/0210870 1A..l (published Sep. 21, 2006) ("Moon"). 5 Youngcheol Jang, et al., Connection Terminal and Secondary Battery Using the Same, U.S. Patent Application Publication 2008/0226974 Al (published Sep. 18, 2008) ("Jang"). 6 Jerrold E. Franklin, et al., Compliant Electrical Contacts for Fuel Cell Use, U.S. Patent Application Publication 2005/0014057 Al (published Jan. 20, 2005) ("Franklin"). 7 RolfWiepen, Galvanic Element with A Set of Wound Electrodes, U.S. Patent Application Publication 2003/0049536 Al (published March 13, 2003) ("Wiepen"). 8 Heuisang Yoon, Polymer Battery Pack and Manufacturing Method of the Same, U.S. Patent Application Publication 2006/0257731 Al (published Nov. 16, 2006) ("Yoon"). 9 Claim 19 stands and falls with claim 1. (Br. 12.) 10 Appellants seek review of claims 10-12 "for similar reasons" based on Moon, Jang, Franklin, and Wiepen. (Br. 11.) Appellants have not presented separate arguments based on Yoon except generally stating that Yoon does 6 Appeal2014-008133 Application 12/750,314 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Claims 1 and 19 The issue dispositive of this appeal is whether the Examiner has shown that, upon "an external impact force F" being applied and divided into two smaller forces, a "coupling member" said to "transmit the two smaller forces F 1 and F2 to different portions of the circuit board in a direction substantially perpendicular to the lower surface of the circuit board" is present in or would have been obvious in view of the applied prior art. Appellants first argue that the Examiner erred in failing to "provide any details as to the size, flexibility, etc[.] of connection terminal 310 that would lead to a conclusion that connection terminal 310 of Moon must transmit external forces to the PCM 320 only in a direction perpendicular to a surface of the PCM 320." (Br. 13 (emphasis added).) Because the plain language of the claim at issue does not recite the term "only," Appellants' argument has not persuaded us that the Examiner erred in this aspect of the obviousness analysis. Appellants then annotate Figure 9 of Moon in support of their contentions. Figure 9 of Moon and the annotated drawing provided by Appellants are reproduced below. not solve the problem addressed in the '324 Specification. (Br. 19.) We accordingly find that claims 10-12 stand or fall with claim 1. 7 Appeal2014-008133 Application 12/750,314 301 \ \_""' \ \ Moon FIG. 9 (original) 301 Appellants' Drawing (annotating Moon FIG. 9) (Br. 14.) Based solely on the annotated drawing and without evidentiary support from the Moon reference or elsewhere in the record, Appellants argue that component 310 of Moon "would create lateral forces that would tend to cause detachment ... from PCM 320 upon external shock." (Id. at 14--15.) Appellants accordingly conclude that, unlike the claimed "coupling member" at issue, component 310 in Moon "transmit[ s] external forces with a significant horizontal component, which causes the bare cell to become electronically detached from the PCM [protection circuit module] upon an external force." (Br. 13 (emphasis added).) Appellants further assert that the Examiner erred in failing to recognize that none of the four prior art references teaches "a connection terminal that does not apply a lateral force to the protection circuit" and "the need to eliminate this lateral force between the connection terminal and the protection circuit board." (Id. at 22.) First and foremost, we decline to rely on the annotated drawing provided by Appellants for any part of this opinion. With regard to the 8 Appeal2014-008133 Application 12/750,314 Examiner's obviousness analysis, Appellants have not directed our attention to evidence of record, or arguments from first principles, supporting their characterization that Moon's component 310 creates lateral components to a perpendicular applied force. Appellants' arguments therefore have not shown that the Examiner erred in his fact findings. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). To the extent that Appellants attempt to argue, for the first time in the Reply Brief, 11 that the phrase "substantially perpendicular" should be construed to expressly exclude such lateral forces (Reply 4--5), we confine our consideration and discussion to the issues raised by Appellants in their principal brief. A new argument presented in the Reply Brief leaves the Examiner with no opportunity to respond and, therefore, will not be considered absent a showing of good cause explaining why the argument could not have been presented in the principal brief. Appellants offer no showing of good cause, and we cannot consider this improperly raised argument. 12 In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. Because Lovin did not provide such arguments, the Board did not err in refusing to separately address claims 2-15, 17-24, and 31-34."). 11 Reply Brief, filed 11 July 2015 ("Reply"). 12 For these reasons, we decline to consider other new arguments raised for the first time in the Reply Brief. 9 Appeal2014-008133 Application 12/750,314 Even accepting the claim construction as properly raised, Appellants have not shown that the Examiner erred here. Appellants asserts that component 310 of Moon "causes the bare cell to become electronically detached from the PCM upon an external force." (Br. 13 (emphasis added); see also Reply 2-3.) The claim construction offered by Appellants, however, does not specify the "detachment" prevented by the claimed coupling member to be electrical. (Reply 5.) Because Appellants fail to explain how the claim (as construed by Appellants) patentably distinguishes over the presence of an electrical detachment in Moon, we sustain the Examiner's findings. Appellants next argue that "Jang is not suggestive of a modification" to Moon. (Br. 16.) Although Appellants acknowledge that Moon and Jang similarly describe "a connection terminal"13 with "an elastic shock absorbing effect" to protect against "external impact" to the battery (Br. 17, 18.), Appellants argue that the various structural differences between Moon and Jang support the nonobviousness contentions. These differences include the locations of the connection terminals within the battery as well as the fact that Jang discloses "a single leg" structure and Moon shows a structure with two legs. (Br. 16-17.) In addition, Appellants argue that Wiepen and Franklin "are not fairly suggestive of a modification" to either Moon and/or Jang because, unlike the connection terminals in Moon and Jang that are located outside of the battery can, "each of the Wiepen and Franklin references are internal to a battery can and not exposed to the outside." (Br. 18 (emphasis in original).) Based on these differences but without showing 13 Appellants also use the term "connecting terminal." See Br. 18. 10 Appeal2014-008133 Application 12/750,314 how these differences might be applied in the obviousness analysis, Appellants conclude that the Examiner erred. "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). An analysis under section 103 "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'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420. "[T]he 'motivation-suggestion-teaching' test asks not merely what the references disclose, but whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims." In re Kahn, 441 F. 3d 977, 988 (Fed. Cir. 2006). The proper inquiry is therefore whether a skilled artisan, based on the teachings of the references including the shock absorbing components taught in Moon and Jang, and the "Z shaped" "contact springs" taught in 11 Appeal2014-008133 Application 12/750,314 Franklin14 and Wiepen, 15 would have found claim 1 obvious. The Examiner finds that a skilled artisan - one that has "extensive knowledge of chemistry, electricity, and even circuitry" - reasonably would have considered the connection terminal in Moon, the need for "a resilient, angled connection portion" in Jang and the "Z-Shaped" components in Franklin and Wiepen "to create a shock-absorbing connection portion." (Ans. 7, 9-10); see Pro- Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996) (citations omitted) (holding that rationale in combining references "may come from knowledge of those skilled in the art that certain references, or disclosures in the references, are known to be of special interest or importance in the particular field"). Appellants' listing of the various structural differences among the references, without providing further explanation or analysis particularly pointing out errors in the Examiner's reasoning, fall short of persuasively rebutting the Examiner's primafacie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants additionally support their nonobviousness contentions by arguing that a combination of Moon and Jang would "severely limit[]" the shock absorbing effect of the connection terminal. (Br. 17.) Appellants reason that, because Jang describes "only a single leg" "to save on materials 14 Franklin describes an "electrical contact" used in a "fuel cell." (Franklin, 3, i-f 45.) One embodiment of the "electrical contact" includes a "Z shaped" "spring." (Id.) The "electrical contact" may "provide substantially uniform internal pressure distribution and substantially uniform electrical contact." (Abstract.) 15 Wiepen describes a "galvanic element" with "contact tabs" that may be "bent outwardly in a Z-shaped manner" and "connected mechanically ... to the electrically conducting cover." (Wiepen i-f 36.) 12 Appeal2014-008133 Application 12/750,314 and costs," "Jang never intended to include two vertical support parts" and thus teaches away from the claim at issue. (Id. at 16, 17.) "That a given combination would not be made by businessmen for economic reasons does not mean that persons skilled in the art would not make the combination because of some technological incompatibility. Only the latter fact would be relevant." In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983). Here, Appellants have not shown why the shock absorbing capability of a Jang structure with more than one leg would be "severely limited" based on the use of the single-legged structure "to save on materials and costs." (See Br. 17.) Appellants' arguments, based on the fact that the connection terminal in Jang has one fewer "leg" than that of Moon, have not shown that the Examiner erred harmfully in finding that a skilled artisan would reasonably "consider the structural teachings of Jang, specifically the teaching to create a resilient, angled connection portion (leg), rather than significantly modify the battery structure of Moon to incorporate the coupling member of Jang." (Ans. 7.) Without a showing that the teaching in Jang would have persuaded persons of ordinary skill to exclude all structures but the single-legged one, we are not persuaded that the Examiner erred in this aspect of the analysis. With regard to Appellants' assertion that the claim at issue "discover[ s] a new problem that was not recognized by the applied prior art" and therefore novel (Br. 19; see Reply 9, 11), we again are not persuaded that the Examiner erred in his fact findings that the problem was already recognized. As Appellants acknowledge, the problem recognized in the pending application is that "a coupling member 230 becoming detached from a protective circuit module 220 due to the transmission of forces upon 13 Appeal2014-008133 Application 12/750,314 an external impact." (Br. 19; see Spec. if 5 (providing that the application seeks to address the need to "increase the bonding strength between the bare cell and the protection circuit module").) This "external impact" problem is similarly recognized in the Moon reference which is said to solve the problem of "low coupling force between the components" "when external impacts are applied to the secondary battery" by "secur[ing] coupling between the components." (Moon, ifil 3, 1 7.) To the extent that the claim at issue proposes a solution to the problem of the "externally applied impact" to a secondary battery (Spec. if 5), we are not persuaded that the Examiner erred by failing to recognize the problem purportedly addressed by the claim at issue. With regard to the problems solved by the Franklin and Wiepen references, the Examiner finds that the skilled artisan would have had the capability to apply the "availability of shapes" in Franklin and Wiepen in order to "create a shock-absorbing connection portion." (Ans. 10.) Without a specific showing of error in the Examiner's determination that Franklin and Wiepen are "reasonably pertinent to the particular problem with which the inventor was concerned," we are not persuaded that the Examiner erred here. Oetiker, 977 F.2d at 1447 ("In order to rely on a reference as a basis for rejection of the applicant's invention, the reference must either be in the field of the applicant's endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned."). The Appellants also argue that the Examiner fails to present a prima facie case of obviousness under KSR and Broadcom Corp. v. Emulex Corp., 732 F.3d 1325 (Fed. Cir. 2013). (Br. 21). Citing these cases, Appellants reiterate their contentions (including the structural differences 14 Appeal2014-008133 Application 12/750,314 among the references and the problem solved in the pending application) and conclude that "the Examiner's proposed combinations to the connection terminal 310 of Moon are not shown by the evidence present in the administrative record to be knowledge in the art or to be other than independent of the knowledge of any other constituent component of the pending claims." (Id.) "[M]ere statements of disagreement ... as to the existence of factual disputes do not amount to a developed argument." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006). Appellants' general statements regarding KSR and other cases have not persuaded us that the obviousness analysis is misapplied here. KSR provides 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, 550 U.S. at 418. As analyzed in detail supra, the Examiner has provided an evidentiary basis for his findings that a skilled artisan reasonably would have combined the collective teachings of the references. (See Ans. 7-10; see also FR 4.) Absent a showing of error supported by evidence, we are not persuaded by the conclusory assertion that "the Examiner has not provided a plausible rationale as to why the prior art references would have worked together to arrive at Appellant's claimed invention." (See Br. 20.) Appellants' assertion that Broadcom "forbids what the Examiner has done during examination" involves no analysis but mere quotations of the Broadcom case. (Br. 21-22.) It is unclear, therefore, how Appellants think the Examiner may have erred under Appellants' application of Broadcom. 15 Appeal2014-008133 Application 12/750,314 To the extent that Appellants attempt to rely on Broadcom for the proposition that the Examiner has not provided "a plausible rationale" for the references to work together, this argument has been addressed supra. Without a specific showing of error, we are not persuaded that the holdings of Broadcom has been misapplied in this case. Claims 3, 5, 6, and 23 With regard to dependent claims 3, 5, 6, and 23, we are not persuaded that the Examiner failed to address these claims. The Examiner states that these claims stand rejected based on the same logic in rejecting independent claim 1. (Ans. 10.) Appellants' arguments with regard to these dependent claims either repeat the arguments with regard to claim 1 or provide no more than conclusory statements that the references do not teach the features of these dependent claims without a sufficient explanation as to why these dependent claims are patentable. (Br. 24--27); Lovin, 652 F.3d at 1357 ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). We are not persuaded by these arguments for the reasons discussed with respect to claims 1 and 19, from which claims 3, 5, 6, and 23 depend. C. Order For the above reasons, the Examiner's rejections of claims 1-14 and 19-23 are affirmed. 16 Appeal2014-008133 Application 12/750,314 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)(l )(iv) (2009). AFFIRMED 17