Ex Parte Valencia et al

Patent Trial and Appeal BoardOct 25, 2016

12907641 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/907,641 10/19/2010 70422 7590 10/27/2016 LKGlobal (GM) 7010 E. COCHISE ROAD SCOTTSDALE, AZ 85253 FIRST NAMED INVENTOR PABLO VALEN CIA JR. 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. P013525-GMVE-LCH/003.0806 2378 EXAMINER DIGNAN, MICHAEL L ART UNIT PAPER NUMBER 1723 NOTIFICATION DATE DELIVERY MODE 10/27/2016 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): docketing@lkglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PABLO VALENCIA, JR. and KANTHASAMY ELANKUMARAN Appeal 2015-004836 Application 12/907,641 Technology Center 1700 Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134 from the Examiner's April 11, 2014 decision finally rejecting claims 1-20. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We reverse. 1 The real party in interest is GM Global Technology Operations, LLC (Appeal Br. 3). Appeal2015-004836 Application 12/907, 641 CLAil'vIED SUBJECT l'vIATTER Appellants' invention is directed to battery assemblies for powering electrical systems in alternative fuel vehicles (Spec. 1 ). According to the Specification, the battery modules within these assemblies include cooling systems for improved temperature regulation (id. at 1-2). Claim 1 is representative and is reproduced below from the Claims Appendix of the Appeal Brief (key claim limitation in italics): 1. A battery module, comprising: a first battery cell; a heat transfer plate contacting the first battery cell and defining a perimeter, the heat transfer plate having a first thickness; a heat transfer fin extending from the perimeter of the heat transfer plate, the heat transfer fin having a second thickness that is greater than the first thickness; and a fluid conduit coupled to the heat transfer fin, whereby, during operation, heat is transferred from the first battePJ cell, to the heat transfer plate, to the heat transfer fin, and to the fluid conduit. Appeal Br. 34 (Claims App.). REJECTIONS (1) Claims 1-3, 6, 7, and 13-19 are rejected under 35 U.S.C. Â§ 102(a) as anticipated by Hirsch. 2 2 Hirsch et al., DE 10 2009 014954 Al, published July 10, 2010. Hirsch is a German language document, so that the Examiner relies on an English- language counterpart Hirsch, US 2012/0171543 Al, published July 5, 2012. Citations to Hirsch will reference the U.S. publication. 2 Appeal2015-004836 Application 12/907, 641 (2) Claims 8, 9, 11, and 12 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Hirsch. (3) Claim 10 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Hirsch in view of Pode. 3 (4) Claims 4, 5, and 20 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Hirsch in view of Okajima. 4 DISCUSSION Figure 1 a of Hirsch, which illustrates an energy storage device in contact with a device for heat transfer, is reproduced below: FIG 1a Figure 1 a illustrates details of an energy storage device in which variable heat transfer between battery cell 102 and cooling fin 104b is facilitated through materials with different contact resistances, including film 104a and cooling plate 106 (Spec. i-fi-152 and 53). 3 Pode, US 2004/0194489 Al, published Oct. 7, 2004. 4 Okajima et al., JPH 08321329 A, published Dec. 3, 1996. Okajima is in Japanese. We shall follow the Examiner and Appellants by referring to a machine translation that was made of the record in this appeal on Nov. 5, 2013. 3 Appeal2015-004836 Application 12/907, 641 It is well established that "[a] prior art reference anticipates a patent claim under 35 U.S.C. Â§ 102(b) if it discloses every claim limitation." In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). The anticipatory reference, furthermore, must disclose the claimed invention "such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention." In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301F.2d929, 936 (CCPA 1962)). In this instance, Appellants argue5 that the Examiner has failed to show that Hirsch discloses a heat transfer plate contacting the first battery cell because "[t]he referenced heat transfer plate [104b] is separated from the battery cell [102] by an intermediate layer", i.e., film 104a (Appeal Br. 18; see also Hirsch Fig. la). The Examiner, however, finds that this claim limitation reads on Hirsch's disclosure of film 104a because the Examiner interprets "the entire structure, 104a and 104b, to be a 'heat transfer plate' as required by the instant language" (Ans. 13). According to the Examiner, this interpretation is reasonable because the Specification does not define a heat transfer plate "to be composed of a single homogeneous material" (id.). The Examiner concludes that it is "within the scope of the claim language, to interpret a cooling plate composed of a material with a large thermal mass and covered 5 Appellants make a number of other arguments urging reversal of the rejections. We need not and do not address those arguments. 4 Appeal2015-004836 Application 12/907, 641 in a thin thermally conductive coating to be interpreted as a 'heat transfer plate[]"' (id. at 13-14). However, as noted by Appellants (Reply Br. 4 ), a skilled artisan would not consider film 104a to be part of the claimed heat transfer plate because "[t]he arrangement of structure 104a is designed to manipulate the thermal resistivity between the structure 104b and [the] battery cell, including inhibiting the heat transfer" (id., citing Hirsch i-fi-162; 63 (see, e.g., "[F]ilm 104a can be realized with uniform contact resistance" (emphasis added); see also Hirsch i158 (disclosing that heat transfer between the battery cell and cooling fin may be varied using films with different contact resistances). Thus, Appellants' arguments (Appeal Br. 18, Reply Br. 4) are persuasive that the evidence of record does not support the Examiner's finding that Hirsch's film 104a is part of the claimed heat transfer plate in contact with the first battery cell. Graves, 69 F.3d at 1152. Furthermore, the Examiner's reliance on giving the term "heat transfer plate" its "reasonable interpretation" to find that it reads on Hirsch's film 104a (Ans. 13) is misplaced. During prosecution words in the claims under examination are given their broadest reasonable interpretation. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In this instance, the Examiner has, instead, applied the broadest reasonable interpretation standard to the cited prior art. Accordingly, because Hirsch does not disclose a heat transfer plate contacting the first battery cell, we find that the Examiner has erred in finding that Hirsch anticipates claims 1-3, 6, 7, and 13-19. Montgomery, 677 F.3d at 1379. The Examiner's findings in support of the obviousness 5 Appeal2015-004836 Application 12/907, 641 rejections of claims 4, 5, 8-12, and 20 do not address Hirsch's deficiency (see, Ans. 5-16). Therefore, we also reverse the obviousness rejections. CONCLUSION We REVERSE the rejection of claims 1-3, 6, 7, and 13-19 under 35 U.S.C. Â§ 102(a) as anticipated by Hirsch. We REVERSE the rejection of claims 8, 9, 11, and 12 under 35 U.S.C. Â§ 103(a) as unpatentable over Hirsch. We REVERSE the rejection of claim 10 under 35 U.S.C. Â§ 103(a) as unpatentable over Hirsch in view of Pode. We REVERSE the rejection of claims 4, 5, and 20 under 35 U.S.C. Â§ 103(a) as unpatentable over Hirsch in view of Okajima. REVERSED 6