Lisa Dräxlmaier GmbH

Patent Trials and Appeals BoardMar 16, 2021

2020005539 (P.T.A.B. Mar. 16, 2021)

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. 14/260,686 04/24/2014 Karsten Rüter 12326.0012-00000 4775 22852 7590 03/16/2021 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER KOROVINA, ANNA ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 03/16/2021 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): regional-desk@finnegan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KARSTEN RÜTER, MARTIN HUBER, and GUIDO HOFER Appeal 2020-005539 Application 14/260,686 Technology Center 1700 Before JAMES C. HOUSEL, JEFFREY R. SNAY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 16 and 19–28. Final Act. 1. A telephonic hearing was held on March 5, 2021, a transcript of which will be made part of the record. We have jurisdiction under 35 U.S.C. § 6. 1 In our Decision, we refer to the Specification (“Spec.”) of Application 14/260,686 filed Apr. 24, 2014 (“the ’260 App.”); the Final Office Action dated Mar. 8, 2019 (“Final Act.”); the Appeal Brief filed Feb. 24, 2020 (“Appeal Br.”); the Examiner’s Answer dated May 26, 2020 (“Ans.”); and the Reply Brief filed July 22, 2020 (“Reply Br.”). 2 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies LISA DRAEXLMAIER GMBH as the real party in interest. Appeal Br. 2. Appeal 2020-005539 Application 14/260,686 2 For the reasons set forth below, we REVERSE. STATEMENT OF THE CASE The claims on appeal relate to cell blocks for batteries having one or more battery cells. Spec. ¶ 2. Claim 16, reproduced below from the Claims Appendix of the Appeal Brief, illustrates the claimed subject matter: 16. A cell block for a battery having a first terminal and a second terminal, comprising: a box-shaped housing including: an open side, and a base opposite the open side, the base including a cell-insertion opening; a battery cell contained in the housing and received through the cell-insertion opening; a cell fixation inserted in the housing near the open side of the housing, the cell fixation being configured to fix the battery cell in the housing, and the cell fixation including a bond opening aligning with the battery cell, the bond opening being configured to allow the battery cell to be accessed through the bond opening; a first projecting collar provided on a side of the cell fixation, projecting away from the battery cell and at least partially surrounding the bond opening; a second projecting collar provided on the side of the cell fixation, projecting towards the battery cell and at least partially surrounding the bond opening; and a terminal connection plate having a first end plate electrically coupled to the first terminal and in contact with the first projecting collar, a second end plate in contact with a second terminal of an adjacent cell block, Appeal 2020-005539 Application 14/260,686 3 and a bridge connecting the first end plate to the second end plate.3 REFERENCES The Examiner relies on the following prior art: Name Reference Date Oweis et al. (“Oweis”) US 6,399,238 B1 June 4, 2002 Takahashi US 2005/0022966 A1 Feb. 3, 2005 Meintschel et al. (“Meintschel”) US 2010/0104936 A1 Apr. 29, 2010 Straubel et al. (“Straubel”) US 2011/0020678 A1 Jan. 27, 2011 Kreiner et al. (“Kreiner”) US 2011/0076538 A1 Mar. 31, 2011 Yasui et al. (“Yasui”) US 2011/0195284 A1 Aug. 11, 2011 Naito et al. (“Naito”) US 2012/0263995 A1 Oct. 18, 2012 Okutani et al. (“Okutani”)4 WO 2012/073399 A1 June 7, 2012 3M Thermally Conductive Heat Spreading Tape, Technical Data, 2012, https://multimedia.3m.com/mws/media/650535O/3mtm-thermally- conductive-heat-spreading-tape-9876.pdf (retrieved Mar. 3, 2021) (“3M”). 3 During the hearing Appellant was made aware that the second projecting collar limitation should read “on a side of the cell fixation” rather than “on the side of the cell fixation,” as the latter language may lead to confusion as to the location of the second projecting collar. We advise Appellant to correct this typographical error. 4 The Examiner relies on Okutani, US 2013/0230761 A1 as the English- language translation of the reference. Final Act. 5–6. Appellant does not object. Appeal 2020-005539 Application 14/260,686 4 REJECTIONS5 The Examiner rejects claims under 35 U.S.C. § 1036 as follows: I. Claims 16, 19–21, 23, 24, and 26–28 over Kreiner, Okutani, Naito, Yasui, and Oweis; II. Claim 22 over Kreiner, Okutani, Naito, Yasui, and Oweis in view of Meintschel and 3M; and III. Claim 25 over Kreiner, Okutani, Naito, Yasui, and Oweis in view of Takahashi and Straubel. Final Act. 5–15. OPINION After review of the respective positions Appellant and the Examiner provide, we determine that Appellant has identified reversible error in the Examiner’s rejections under 35 U.S.C. § 103. The Examiner has the initial burden of establishing a prima facie case of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative 5 In the Final Office Action the Examiner rejects claims 20–22 under 35 U.S.C. § 112(b). Final Act. 4–5. In response to amendments to the claims, the Examiner withdrew the rejection in an Advisory Action mailed Mar. 3, 2020. 6 Because this application was filed after the 16 March 2013, effective date of the America Invents Act, we refer to the AIA version of the statute. Appeal 2020-005539 Application 14/260,686 5 steps a person of ordinary skill in the art would have employed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). To resolve the issues before us on appeal, we focus on the Examiner’s findings and determinations that relate to the error Appellant identifies. Because we decide this appeal based on recitations in the sole independent claim (claim 16), we focus our analysis on claim 16. This analysis is equally applicable to all of the dependent claims as well. The Examiner rejects claim 16 as obvious over Kreiner, Okutani, Naito, Yasui, and Oweis. Final Act. 5–10. The Examiner finds that Kreiner teaches most, but not all, of the limitations of claim 16. Id. The Examiner acknowledges that Kreiner does not teach the claimed second projecting collar limitation, but finds that Oweis teaches it. Id. at 12. The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of filing to include Oweis’s web 32 (identified by the Examiner at a second projecting collar) in Kreiner’s apparatus to prevent cell rattling and accommodate different cell heights. Id.; Ans. 14–15. Appellant argues, inter alia, that the Examiner errs in finding motivation to combine Oweis with Kreiner. Reply Br.7–9. We agree. Kreiner Figure 1 is reproduced below: Appeal 2020-005539 Application 14/260,686 6 Kreiner Figure 1 shows a perspective view of battery pack housing member 100 as well as a cross-sectional view of some of the plurality of battery cell mounting wells 101. Kreiner ¶ 15. Housing member 100 is designed such that the end surfaces of cells fit against surface 105 of the exterior structural layer. Id. ¶ 18. Each bonding well (the recessed area shown in Figure 1) includes one or more cutouts 109. Id. During battery pack fabrication, battery cells are inserted into mounting wells 101. Id. ¶ 21. Adhesive is introduced into the bonding wells and, “[d]ue to the fit between the exterior surface of cells 201 and adjacent surface 111 of cell mounting wells 101, little, if any, adhesive seeps through the radial gap between these surfaces.” Id. Appeal 2020-005539 Application 14/260,686 7 One of ordinary skill in the art would have recognized that Oweis’s webs (which the Examiner identified as the second projecting collar) would prevent a battery cell from fitting against Kreiner surface 105, and allow leakage of adhesive through cutout 109. Thus, Kreiner’s teaching that the battery cells fit against the end surface (surface 105) of housing member 100 (Kreiner para. 18) discourages modification of the reference with Oweis. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (Teaching away requires that a reference “criticize, discredit, or otherwise discourage the solution claimed” by Appellant.). When references teach away from the claimed combination, it is improper to combine them in an obviousness rejection. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). We do not sustain the rejection of claim 16 as obvious over Kreiner, Okutani, Naito, Yasui, and Oweis. The rejections of dependent claims 19– 28 fail for the reasons discussed in relation to claim 16. DECISION SUMMARY In summary: Appeal 2020-005539 Application 14/260,686 8 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16, 19–21, 23, 24, 26– 28 103 Kreiner, Okutani, Naito, Yasui, Oweis 16, 19–21, 23, 24, 26– 28 22 103 Kreiner, Okutani, Naito, Yasui, Oweis, Meintschel, 3M 22 25 103 Kreiner, Okutani, Naito, Yasui, Oweis, Takahashi, Straubel 25 Overall Outcome 16, 19–28 REVERSED