Black & Decker Inc.

Patent Trials and Appeals Board

May 28, 2020

2019004815 (P.T.A.B. May. 28, 2020)

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.
15/299,952 10/21/2016 Matthew J. Velderman US-TN-15410-1A 3292
28268 7590 05/28/2020
Stanley Black & Decker, Inc.
6201 Greenleigh Avenue, MR045
Middle River, MD 21220
EXAMINER
D'ANIELLO, NICHOLAS P
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
05/28/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW J. VELDERMAN, DANIEL J. WHITE,
DANIEL FITZGERALD, and RYAN KLEE
Appeal 2019-004815
Application 15/299,952
Technology Center 1700
Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.
HOUSEL, 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 11–17 and 25 under 35 U.S.C. § 102(a)(1 or 2) as
anticipated by Phillips (US 2006/0071636 A1, pub. Apr. 06, 2006). We have
jurisdiction under 35 U.S.C. § 6(b).2

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 Black & Decker
Inc. Appeal Brief (“Appeal Br.”) filed January 28, 2019, at 3.
2 This Decision also refers to the Specification (“Spec.”) filed October 21,
2016, and the Examiner’s Answer (“Ans.”) dated February 21, 2019.
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Application 15/299,952

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We REVERSE.3
CLAIMED SUBJECT MATTER
The invention relates to transport systems for rechargeable battery
packs. Spec. ¶ 2. Appellant discloses that these battery packs include a
plurality of switches (i.e., a switching network) that may be mechanical,
electronic, and/or electromechanical, for electrically connecting the battery
cells in a low rated voltage state in which the cells are connected in parallel
and a medium rated voltage state in which the cells are connected in series.
Id. ¶¶ 95, 99, 100. Appellant further discloses that additional battery cells
may be provided which may be electrically connected in a variety of series
and parallel configurations providing a number of voltage states using the
switching network. Id. ¶ 98. In addition, a transport coupler mates with the
battery pack to place the pack in a transport configuration in which the
battery cells are disconnected such that the battery pack presents zero
voltage. Id. ¶¶ 92, 110, 112. Further, Appellant discloses that the switching
network may be configured so as to present only a single rated voltage (and
a zero or disconnected voltage) for the battery pack. Id. ¶ 115.
Claim 11, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter. The limitations at issue
are italicized.

3 Although Appellant requests an oral hearing for this appeal (originally
scheduled for May 21, 2020, but postponed at Appellant’s request), pursuant
to 37 C.F.R. 41.47(f), we have determined that a hearing is not necessary.
See MPEP 1209 (“Examples as to when it would be appropriate for the
Board to decide that an oral hearing is not necessary include those where the
Board has become convinced, prior to hearing, that the examiner’s position
cannot be sustained . . . .”).
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11. A removable battery pack for providing electrical power
to an electrical device, the battery pack comprising:
a housing configured to mechanically mate with an
electrical device;
a plurality of sets of electrically connected battery cells
housed within the housing;
a switching network housed within the housing and
configured to electrically connect the sets of battery cells to
each other in a first state and electrically disconnect the sets of
battery cells from each other in a second state; and
wherein, the battery pack being unmated to the electrical
device, a mechanical coupler for causing the switching network
to convert from the first state to the second state and to
maintain the switching network in the second state during
transportation of the battery pack.
Independent claim 25 similarly recites a removable battery pack
comprising, among other things, a switching network having a first
state in which the sets of battery cells are electrically coupled and a
second state in which the sets of battery cells are not electrically
coupled, and a mechanical coupler for causing the switching network
to convert from the first state to the second state.
OPINION
Anticipation is established when a single prior art reference discloses
all features of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990). “Because the hallmark of anticipation is prior invention, the prior
art reference—in order to anticipate under 35 U.S.C. § 102—must not only
disclose all elements of the claim within the four corners of the document,
but must also disclose those elements ‘arranged as in the claim.’” Net
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Moneyin, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
(citation omitted). “[I]n an ex parte proceeding to obtain a patent, is that the
Patent Office has the initial burden of coming forward with some sort of
evidence tending to disprove novelty.” In re Wilder, 429 F.2d 447, 450
(CCPA 1970).
The Examiner finds that Phillips teaches a removable battery pack
comprising a switching network (controllers 50) within housing 14
configured to electrically connect and disconnect a plurality of sets of
battery cells (batteries 12) to each other, and a mechanical coupler (separator
60) for causing the switching network to convert from a first state in which
the sets of battery cells are electrically connected to a second state in which
the sets of battery cells are electrically disconnected. Ans. 3. The Examiner
further determines that the limitation “causing the switching network to
convert from the first state to the second state and to maintain the switching
network in the second state during transportation of the battery pack” relates
to a function of the claimed apparatus which does not distinguish the
claimed apparatus from Phillips. Id., citing MPEP 2114.
Appellant argues, inter alia, that Phillips fails to teach a mechanical
coupler for causing the switching network to convert from the first state to
the second state. Appeal Br. 12. Appellant contends that Phillips’ separator
60 does not cause controllers 50 (or switches or contacts) to do anything. Id.
In this regard, Appellant urges that Phillips’ separator is merely a wall or
barrier between the sets of battery cells such that they are not connected
when the separator is present. Id.
We agree. The Examiner determines under the broadest reasonable
interpretation that the separator causes electrical disconnection of the battery
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cells because the separator prevents electrical connection between the
circuits of the separate batteries disposed in the housing. However, the
Examiner’s interpretation is not reasonable in light of the Specification
because it is inconsistent both with the plain meaning of the term “causing”
and how one of ordinary skill in the art would have understood this claim
term in light of the Specification.
The correct inquiry in giving a claim term its broadest reasonable
interpretation in light of the specification is not whether the
specification proscribes or precludes some broad reading of the
claim term adopted by the examiner. And it is not simply an
interpretation that is not inconsistent with the specification. It is
an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e. an
interpretation that is consistent with the specification.
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (internal
quotation omitted).
We find the plain meaning of “causing” as a transitive verb is “to
make something happen.” See, for example,
https://www.lexico.com/en/definition/cause, last visited May 26, 2020. This
plain meaning is consistent with how Appellant describes the mechanical
coupler in the Specification. Specifically, mechanical coupler 100 causes or
makes the switching network convert from the first state to the second state
by moving converter element 50 to an intermediate or second position
presenting a zero voltage. Spec. ¶¶ 110–113. Thus, unlike Phillips’ separator
which is a passive barrier merely preventing connection between the two
batteries, Appellant’s mechanical coupler is an active mechanical structure
which makes the switching network convert from a first state in which the
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batteries are electrically connected or coupled to a second state in which the
batteries are electrically disconnected or not coupled.
With regard to the Examiner’s finding that the function of the
mechanical coupler fails to distinguish the claims over Phillips because it
relates to the function of the apparatus, we note the Examiner fails to explain
how Phillips’ separator inherently possesses the functionally defined
limitation of the claimed coupler. See In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997); MPEP 2114(I) (the burden shifts to Appellant only where
the Office establishes a reason to believe that a functional limitation asserted
to be critical for establishing novelty may, in fact, be an inherent
characteristic of the prior art). To the contrary, Phillips’ separator does not
cause or make the switching network convert from a first electrically
connected state to a second electrically disconnected state. Instead, separator
60 merely separates the batteries within housing 14 thereby preventing
electrical connection or coupling between the batteries. When the housing
halves are separated to permit the separator to be placed between the
batteries, the batteries and switching network must already be in the second
electrically disconnected state. Thus, it is act of separating the housing
halves, rather than separator 60, that causes any conversion of the batteries
from an electrically connected state to an electrically disconnected state.
Thus, we are persuaded that the Examiner erred in the finding of
anticipation of the claims by Phillips, at least because the Examiner fails to
establish that Phillips inherently possesses the functional capability of the
mechanical coupler recited in the claims. Accordingly, we cannot sustain the
Examiner’s anticipation rejection of claims 11–17 and 25.
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CONCLUSION
The Examiner’s decision to reject claims 11–17 and 25 under 35
U.S.C. § 102(a)(1 or 2) as anticipated by Phillips is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–17, 25 102(a)(1 or 2) Phillips 11–17, 25

REVERSED