Chorian, Steve F. et al.

Patent Trials and Appeals Board

Oct 18, 2019

14509430 - (D) (P.T.A.B. Oct. 18, 2019)

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.
14/509,430 10/08/2014 Steve F. Chorian 67186-131PUS1; 83476434 5516
46442 7590 10/18/2019
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
ROE, CLAIRE LOUISE
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
10/18/2019 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVE F. CHORIAN, STEVE DROSTE,
and JESUS CARDOSO

Appeal 2019-000572
Application 14/509,430
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Primary Examiner’s final decision to reject claims 1, 3–7, 10, 11, and 21–
23.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 and as listed in the Application Data Sheet filed October 8,
2014—namely, Ford Global Technologies, LLC, which is also identified as
the real party in interest (Appeal Brief filed July 9, 2018 (“Appeal Br.”) at
1).
2 See Appeal Br. 3–8; Reply Brief filed October 29, 2018 (“Reply Br.”) at
1–4; Final Office Action entered May 1, 2018 (“Final Act.”) at 2–10.
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I. BACKGROUND
The subject matter on appeal relates to a battery module which may be
used in electric vehicles such as hybrid electric vehicles (HEVs)
(Specification filed October 8, 2014 (“Spec.”) ¶¶ 1–2). Representative claim
1 is reproduced from the Claims Appendix to the Appeal Brief, as follows:
1. A battery module, comprising:
a housing having first and second vertical end walls
extending vertically upward from a base, wherein the first and
second end walls are connected together by first and second
side walls extending upward from the base, wherein the base,
end walls, and side walls are integrally formed as a single
structural piece, and wherein each of the first and second end
walls includes electrical connections.
(Appeal Br. 9 (emphasis added)).
II. REJECTIONS ON APPEAL
Claims 1, 3–7, 10, 11, and 21–23 stand rejected under 35 U.S.C. § 103
as unpatentable over Asai et al.3 (“Asai”) in view of Tudron.4
III. DISCUSSION
Except for claim 3 and claims 4 and 23 as a group, the Appellant’s
arguments focus only on independent claim 1 (Appeal Br. 4–8).5
Accordingly, we confine our discussion to representative claims 1, 3, and 4,

3 US 2011/0206948 A1, published August 25, 2011.
4 US 2002/0076580 A1, published June 20, 2002.
5 The Appellant points out an additional limitation in dependent claim 3
relative to claim 1 (id. at 6). As stated in 37 C.F.R. § 41.37(c)(1)(iv),
however, merely pointing out what a claim recites does not constitute an
argument in support of separate patentability. Therefore, we decline to
consider claim 3 separately.
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with all other claims on appeal standing or falling with claim 1, 3, or 4. See
37 C.F.R. § 41.37(c)(1)(iv).
1. Claim 1
As the Appellant points out (Appeal Br. 3), a central issue in this
appeal is whether the Examiner’s finding that Asai discloses the “base”
limitations highlighted above in reproduced claim 1 is based on a strained
claim interpretation beyond the broadest reasonable interpretation consistent
with the Specification. According to the Appellant, Asai does not disclose
the “base” limitations recited in claim 1, as properly construed, because a
person having ordinary skill in the art would not have considered Asai’s top
cover to be a “base” (id. at 4–5). The Appellant urges that the Examiner’s
position is inconsistent with Asai’s teachings, which describe a
configuration that is inverted or opposite to what is recited in claim 1 (id. at
5).
For the reasons stated in the Examiner’s Answer, Final Office Action,
and below, the Appellant’s arguments fail to identify reversible error in the
Examiner’s finding underlying the rejection. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011).
Asai describes a power source apparatus for a motor that drives an
automobile, such as a hybrid car or electric vehicle, wherein the apparatus is
provided with battery blocks made up of a plurality of battery cells and an
outer case that holds the battery blocks (Asai ¶¶ 2, 8). An embodiment of
such an apparatus is illustrated in an annotated, inverted version of Asai’s
Figure 6, which we reproduce from the Final Office Action (Final Act. 8), as
follows:
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Asai’s Figure 6 above (annotated and inverted) depicts an exploded view of
a box-shaped battery block case 75 having flanges 76 (labeled by the
Examiner as “lip[s]”) formed on the edges of the case opening to attach the
case 75 to a cooling plate 7 (labeled by the Examiner as “cover”) that closes
off the opening in the case 75, which houses a battery stack 10 (Asai ¶¶ 21,
51). As may be understood from the oblique view in Asai’s Figure 6, the
case 75 has two opposing relatively long walls (labeled by the Examiner as
“side wall[s]”) and two opposing relatively short walls (labeled by the
Examiner as “end wall[s]”), wherein the end walls are provided with
connectors 51 (id. ¶ 50). Integrally joined to the walls to form a single
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structural piece constituting the case 75 is a plate labeled by the Examiner as
“base” (id. at Fig. 6).
Thus, we find no structural difference between the “housing”
including a “base” as defined in claim 1 and Asai’s box-shaped battery block
case 75 as shown in Figure 6 above.6 Although Asai’s power source
apparatus as shown in Figure 6 is oriented with cooling plate 7 situated at
the bottom of the apparatus relative to the ground, the Appellant does not
direct us to persuasive evidence or technical reasoning establishing that
Asai’s power source apparatus, in use, could not be disposed in an inverted
orientation, if desired. Indeed, Asai does not place any such limitation as to
possible configuration or orientation relative to the ground (id. ¶ 45 (“The
car power source apparatus of the present invention is used as a power
source installed on-board a vehicle.”). In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997) (“Schreiber’s contention that his structure will be used to
dispense popcorn does not have patentable weight if the structure is already
known, regardless of whether it has ever been used in any way in connection
with popcorn.”); In re Pearson, 494 F.2d 1399, 1403 (CCPA 1974) (“We do
not mean to imply that terms which recite the intended use or a property of a
composition can never be used to distinguish a new from an old
composition. However . . . such terms must define, indirectly at least, some
characteristic not found in the old composition.”).
The Appellant argues that if flipped upside down, (i) Asai’s cooling
plate 7 would be tasked with suspending a “relatively heavy” battery stack
10, (ii) the cooling plate 7’s ability to take advantage of gravity would be

6 In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (anticipation is the
epitome of obviousness).
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removed when supporting the battery stack 10, and (iii) the load on the
cooling plate 7 would be increased (Appeal Br. 6). According to the
Appellant, Asai states that the case 75 is not even required and that it does
not bear any load (id.). These arguments, however, are not based on any
facts but, rather, mere conjecture. Even if the battery stack 10 were assumed
to be “relatively heavy” as argued, the Appellant does not provide any facts
or reasoning establishing that cooling plate 7, in concert with the case 75,
could not bear the load imparted by the battery stack 10 and gravity. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems
to follow from common experience is just attorney argument and not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness.”).
The Appellant argues that “[the] Examiner admits that Asai lacks the
claimed electrical connections” (Appeal Br. 6). To the extent this argument
applies to claim 1, it is incorrect because the Examiner finds that Asai
teaches such electrical connections (Ans. 4; Final Act. 3).
For these reasons, we uphold the Examiner’s rejection as maintained
against claim 1.
2. Claim 3
Claim 3, which depends from claim 1, recites: “wherein each of the
first and second end walls includes a positive electrical terminal and a
negative electrical terminal” (Appeal Br. 9 (Claims App.)).
The Examiner finds that Asai teaches connecting a plurality of battery
modules to each other (Ans. 5). That finding has not been shown to be
erroneous. Indeed, Asai teaches that “[b]attery blocks 50 are daisy-chained
together in series connection via cables connected to the connectors 51”
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(Asai ¶ 50). A person having ordinary skill in the art would have drawn a
reasonable inference from this disclosure that the one connection at an end
wall of Asai’s case 75 would be a positive terminal and the other connection
at the other end wall would be a negative terminal. In re Preda, 401 F.2d
825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”).
Moreover, as the Examiner finds, “Tudron teaches the concept of a
battery having both positive and negative electrical connections of the two
opposing end walls of the battery (paragraphs 17-21) in order to easily have
a design choice to daisy-chain multiple batteries in series or parallel without
having to flip the battery” (Ans. 5). That Tudron’s batteries lack a housing
does not negate the concept that a positive terminal on the rear face of each
battery must be electrically connected with a negative terminal on the front
face of an adjacent battery to facilitate a stack or daisy-chain arrangement of
plural batteries (Tudron ¶ 17).
For these reasons, we uphold the rejection as maintained against claim
3.
3. Claim 4
Claim 4, which depends from claim 3, recites: “further comprising a
plurality of battery cells provided within the module” (Appeal Br. 9 (Claims
App.)). The Examiner finds that Asai teaches the additional limitations
recited in claim 4 (Ans. 5). The Appellant argues that “cells” as recited in
claim 4 are distinguished from “housing” recited in claim 1 (Appeal Br. 7).
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We agree with the Examiner. Asai teaches the further limitations
recited in claim 4 (see Asai ¶ 52 (“the battery stack 10 is made by stacking a
plurality of rectangular battery cells 1”)).
For these reasons, we also uphold the Examiner’s rejection as
maintained against claim 4.
IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Evidentiary Basis Affirmed Reversed
1, 3–7, 10, 11,
and 21–23
103 Asai and Tudron 1, 3–7, 10, 11,
and 21–23

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED