Tsutomu Aoyama et al.

Patent Trials and Appeals BoardMar 2, 2021

2020000874 (P.T.A.B. Mar. 2, 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. 11/695,419 04/02/2007 Tsutomu Aoyama 3724795-00014 2628 29175 7590 03/02/2021 K&L Gates LLP-Sony P. O. BOX 1135 CHICAGO, IL 60690 EXAMINER YANCHUK, STEPHEN J ART UNIT PAPER NUMBER 1723 NOTIFICATION DATE DELIVERY MODE 03/02/2021 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TSUTOMU AOYAMA, HIROMASA IGUCHI, HIROYUKI YAMADA, and TAKANORI TAKEI Appeal 2020-000874 Application 11/695,419 Technology Center 1700 Before JOSEPH L. DIXON, BEVERLY A. FRANKLIN, and DONNA M. PRAISS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 6, 8, 10, and 12–14. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Murata Manufacturing Co., Ltd. Appeal Br. 2. Appeal 2020-000874 Application 11/695,419 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A battery pack comprising: at least a first, a second, and a third battery assembly connected in series; and a circuit board connected to the battery assemblies, wherein each battery assembly consists of discrete first and second battery cells each having (1) a predetermined surface overlaid on each other, and (2) side faces folded perpendicular to the predetermined surface so that each side face of the second battery assembly directly abuts the side faces of the first or third battery assembly, the first and second battery cells each have battery elements accommodated in a container thereof, cathode terminals and anode terminals of which are provided at a same height as the predetermined surface at a same side, the cathode terminal and anode terminal of the first battery cell are adjacent respectively to the cathode terminal and anode terminal of the second battery cell, the cathode terminal of the first battery cell has two opposite cathode faces, one of the cathode faces being directly welded to the cathode terminal of the second battery cell, the other cathode face being exposed, and the anode terminal of the first battery cell has two opposite anode faces, one of the anode faces being directly welded to the anode terminal of the second battery cell, the other anode face being exposed, at least in the first battery cell, the cathode terminal and the anode terminal are partially covered with a resin piece respectively, the circuit board defines two opposing faces, and the cathode terminals and the anode terminals are connected to the circuit board on only one of the faces, the other circuit board face being free of the cathode terminals and the anode terminals, and Appeal 2020-000874 Application 11/695,419 3 the cathode terminals and the anode terminals in each battery assembly are connected straightly to the circuit board without being folded. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hwang US 7,875,383 B2 Jan. 25, 2011 Tanjou US 2003/0215702 A1 Nov. 20, 2003 Lee US 2004/0119442 A1 June 24, 2004 Suzuki US 2005/0181242 A1 Aug. 18, 2005 Kim US 2006/0269831 A1 Nov. 30, 2006 THE REJECTIONS 1. Claims 1–4, 6, 8, 10, and 12–14 are rejected under 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. 2. Claims 1–4, 6, 8, 10, 13, and 14 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Lee in view of Kim, Hwang, and Tanjou.2 3. Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Lee in view of Kim, Hwang, and Tanjou, and further in view of Suzuki. 2 We did not include claim 11 in this rejection because this claim was cancelled by Appellant in the Amendment filed on October 25, 20018. Appeal 2020-000874 Application 11/695,419 4 OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence in the record supports Appellant’s position. Accordingly, we reverse each of the Examiner’s rejections on appeal for the reasons discussed below. Rejection 1 We refer to the Examiner’s position set forth on pages 2–3 of the Final Office Action. We refer to pages 7–9 of the Appeal Brief regarding Appellant’s position regarding Rejection 1. We are persuaded by Appellant’s argument for the reasons stated therein. We agree with Appellant that Figure 12 of the Specification evidences an embodiment where each battery assembly consists of discrete first and second battery cells (2a and 2b in Figure 12). Appeal Br. 8. We note that the test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the Appeal 2020-000874 Application 11/695,419 5 claim language. The content of the drawings may also be considered in determining compliance with the written description requirement. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). We thus reverse Rejection 1. Rejections 2–3 We refer to the Examiner’s position set forth on pages 3–10 of the Final Office Action regarding Rejection 2. We refer to pages 9– 13 of the Appeal Brief regarding Appellant’s position regarding Rejection 2. We are persuaded of error in the rejection in view of Appellant’s discussion of Lee’s Figure 63 and ¶ 43. Appeal Br. 11. Lee’s ¶ 43 indicates that battery bodies (not illustrated) with exposed terminals are disposed with respective spaces 73 of Figure 6. Because the battery bodies are not shown, it is not known how the battery bodies with exposed terminals are accommodated within spaces 73. Hence, the rejection involves speculation as to how Figure 6 meets the recited features in claim 1. Some of these features are: the first and second battery cells each have battery elements accommodated in a container thereof, cathode terminals and anode terminals of which are provided at a same height as the predetermined surface at a same side, the cathode terminal and anode terminal of the first battery cell are adjacent respectively to the cathode terminal and anode terminal of the second battery cell, the cathode terminal of the first battery cell has two opposite cathode faces, one of the cathode faces being directly 3 Lee’s Figure 6 is the embodiment upon which the Examiner relies in making the rejection. Final Act. 4. Appeal 2020-000874 Application 11/695,419 6 welded to the cathode terminal of the second battery cell, the other cathode face being exposed, and the anode terminal of the first battery cell has two opposite anode faces, one of the anode faces being directly welded to the anode terminal of the second battery cell, the other anode face being exposed, and at least in the first battery cell, the cathode terminal and the anode terminal are partially covered with a resin piece respectively. The Examiner relies upon the battery body shown in Lee’s Figures 1 and 2 as the battery elements within first and second cells. Final Act. 4. Again, however, because Lee’s Figure 6 does not provide details of how the battery bodies are accommodated within spaces 73, the rejection lacks factual findings in support of a prima facie case. For example, nowhere does the Examiner makes findings that in Lee’s first battery cell, the cathode terminal and the anode terminal are partially covered with a resin piece respectively, as recited in Appellant’s claim 1. It is noted that speculation is not a sufficient basis for a prima facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967); In re Sporck, 301 F.2d 686, 690 (CCPA 1962). Also, “the prior art reference (or references when combined) must teach or suggest all the claim limitations.” In re Royka, 490 F.2d 981, 985 (C.C.P.A. 1970). The secondary references as relied upon by the Examiner do not cure the stated deficiencies of the primary reference of Lee. In view of the above, we reverse Rejections 2 and 3 (claim 12 is rejected in Rejection 3 and claim 12 depends upon claim 1). Appeal 2020-000874 Application 11/695,419 7 CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6, 8, 10, 12–14 112 Written Description 1–4, 6, 8, 10, 12–14 1–4, 6, 8, 10, 13, 14 103 Lee, Kim, Hwang, Tanjou 1–4, 6, 8, 10, 13, 14 12 103 Lee, Kim, Hwang, Tanjou, Suzuki 12 Overall Outcome 1–4, 6, 8, 10, 12–14 REVERSED