CHORIAN, Steven F. et al.

Patent Trials and Appeals Board

Oct 1, 2019

14476045 - (D) (P.T.A.B. Oct. 1, 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.
14/476,045 09/03/2014 Steven F. CHORIAN 83430852 9901
28395 7590 10/01/2019
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
CARLSON, KOURTNEY SALZMAN
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN F. CHORIAN, GEORGE ALBERT GARFINKEL,
DHANUNJAY VEJALLA, SAI K. PERUMALLA, and
STEVEN DROSTE
____________

Appeal 2019-000906
Application 14/476,045
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, MONTÉ T. SQUIRE, and
MICHAEL G. McMANUS, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–3, 5–15, 17, and 18, which are all of the

1 In this Decision, we refer to the Specification filed Sept. 3, 2014 (“Spec.”);
Final Office Action dated June 2, 2017 (“Final Act.”); Advisory Action
dated Oct. 17, 2017 (“1st Adv. Act.”); Advisory Action dated Nov. 16, 2017
(“2nd Adv. Act.”); Supplemental Appeal Brief filed Apr. 26, 2018 (“Appeal
Br.”); Examiner’s Answer dated Sept. 10, 2018 (“Ans.”); and Reply Brief
filed Nov. 13, 2018 (“Reply Brief”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Ford Global Technologies, LLC as the
real party in interest. Appeal Br. 1.
Appeal 2019-000906
Application 14/476,045
2
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
The Claimed Subject Matter
Appellant’s disclosure relates to thermal management of vehicle
traction batteries used to operate hybrid and electric vehicles. Spec. ¶ 1. In
one embodiment, the Specification describes a vehicle traction battery heat
sink that includes a first fin having a cell contact portion in thermal contact
with a plurality of battery cells. Id. ¶ 3; Abstract. According to the
Specification, the heat sink allows heat to be exchanged between the
plurality of battery cells and the thermal plate through the first fin. Spec.
¶ 3.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A vehicle traction battery heat sink comprising:
a first fin having a cell portion with a series of
curved portions, each curved portion in thermal contact
with one of a plurality of battery cells and a connector
portion being generally planar and extending transversely
from the cell portion; and
a thermal plate in thermal contact with the
connector portion and having a thermal agent circulated
within the thermal plate but not within the fin.
Claims Appendix 1 (key disputed claim language italicized and bolded).
Appeal 2019-000906
Application 14/476,045
3
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Okada et al.
(“Okada”)
US 2008/0160395 A1 July 3, 2008
Houchin-Miller et al.
(“Houchin-Miller”)
US 2011/0269008 A1 Nov. 3, 2011
Yoon US 2012/0009455 A1 Jan. 12, 2012
Fujii et al.
(“Fujii”)
US 2014/0220391 A1 Aug. 7, 2014
The Rejections
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 2, 6, and 15 are rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
inventor or joint inventor, or for pre-AIA, the applicant, regards as the
invention (“Rejection 1”). Final Act. 3; Ans. 3.
2. Claims 1, 3, 5, and 6 are rejected under U.S.C. § 103(a) as
being unpatentable over Yoon in view of Houchin-Miller (“Rejection 2”).
Final Act. 6; Ans. 3.
3. Claim 2 is rejected under U.S.C. § 103(a) as being unpatentable
over Yoon in view of Houchin-Miller as applied to claim 1 above, and
further in view of Fujii (“Rejection 3”). Final Act. 8; Ans. 5–6.
4. Claim 7 is rejected under U.S.C. § 103(a) as being unpatentable
over Yoon in view of Houchin-Miller as applied to claim 1 above, and
further in view of Okada (“Rejection 4”). Final Act. 9; Ans. 6.
Appeal 2019-000906
Application 14/476,045
4
5. Claims 8 and 13 are rejected under U.S.C. § 103(a) as being
unpatentable over Yoon in view of Okada (“Rejection 5”). Final Act. 10;
Ans. 7.
6. Claim 9 is rejected under U.S.C. § 103(a) as being unpatentable
over Yoon in view of Okada as applied to claim 8 above, and further in view
of Fujii (“Rejection 6”). Final Act. 12; Ans. 9.
7. Claims 10–12 are rejected under U.S.C. § 103(a) as being
unpatentable over Yoon in view of Okada as applied to claim 8 above, and
further in view of Houchin-Miller (“Rejection 7”). Final Act. 13; Ans. 9–10.
8. Claims 14, 17, and 18 are rejected under U.S.C. § 103(a) as
being unpatentable over Yoon as applied to claim 1 above, in further view of
Houchin-Miller and Okada (“Rejection 8”). Final Act. 15; Ans. 11.
9. Claim 15 is rejected under U.S.C. § 103(a) as being
unpatentable over Yoon, Houchin-Miller and Okada as applied to claim 14
above, and further in view of Fujii (“Rejection 9”). Final Act. 18–19; Ans.
14.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer,
Advisory Actions, and Final Office Action, which we adopt as our own. We
add the following primarily for emphasis.
Appeal 2019-000906
Application 14/476,045
5
Rejection 1
Appellant does not dispute the Examiner’s § 112 rejection of claims 2,
6, and 15 for indefiniteness (Rejection 1, stated above). See Appeal Br. 4–8;
Reply Br. 1–3.
Accordingly, because the Examiner’s Rejection 1 has not been
withdrawn and is not disputed by Appellant, we summarily affirm this
rejection. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008); Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an
appellant fails to present arguments on a particular issue -- or, more broadly,
on a particular rejection -- the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection”) (cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)).
Rejection 2
In response to Rejection 2, Appellant argues the patentability of
independent claim 1, but does not separately argue the patentability of the
remaining dependent claims 3, 5, and 6. See Appeal Br. 4–6. We select
claim 1 as representative and claims 3, 5, and 6 will stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Yoon and
Houchin-Miller suggests a battery structure satisfying all of the limitations
of claim 1 and concludes the combination would have rendered the claim
obvious. Ans. 3–4 (citing Yoon, Figs. 1–3A, ¶¶ 49, 50, 55–57, 69, 70, 92;
Houchin-Miller, Figs. 6, 15A–E, ¶¶ 116, 117, 128).
Appellant argues the Examiner’s rejection of claim 1 should be
reversed because the Examiner does not provide a rationale for modifying
the Yoon and Houchin-Miller references to arrive at the claimed invention.
Appeal 2019-000906
Application 14/476,045
6
Appeal Br. 4, 5–6; Reply Br. 1. Appellant further argues that, even if Yoon
were modified by the Houchin-Miller reference as set forth in the
Examiner’s rejection, the combination does not disclose all of the limitations
of the claim. Appeal Br. 4. In particular, Appellant contends Yoon does not
disclose “a first fin having a cell portion with a series of curved portions,
each curved portion in thermal contact with one of a plurality of battery
cells,” as recited in the claim. Id. at 5 (arguing “the heat conductive sheets
in [Yoon] do not have a series of curved portions that each contact one
battery cell, as . . . required by claim 1”).
Appellant further contends that
[e]ven if the battery cells in [Yoon] were modified to be
cylindrical shaped, the sheets 123, which are positioned
between two adjacent cells, would only have a single
curved portion, and would not have a series of curved
portions, as required by claim 1.
Id. at 5.
Appellant argues also the Examiner’s rejection should be reversed
because Yoon teaches away from the claimed invention. Reply Br. 2–3. In
particular, Appellant contends Yoon “repeatedly discloses the benefits of
positioning the conductive sheets between the cells and teaches away from
positioning the conductive sheets along the perimeter of the cells,” as the
Examiner finds. Id. at 3
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. On the record before us, we determine a
preponderance of the evidence and sound technical reasoning support the
Examiner’s analysis and determination that the combination of Yoon and
Houchin-Miller suggests a battery structure satisfying all of the limitations
of claim 1, and conclusion that the combination would have rendered the
Appeal 2019-000906
Application 14/476,045
7
claim obvious. Yoon, Figs. 1–3A, ¶¶ 49, 50, 55–57, 69, 70, 92;
Houchin-Miller, Figs. 6, 15A–E, ¶¶ 116, 117, 128.
Contrary to what Appellant argues (Appeal Br. 4; Reply Br. 1), the
Examiner provides a reasonable basis, which is supported by a
preponderance of the evidence in the record, to evince why one of ordinary
skill would have combined the teachings of Yoon and Houchin-Miller to
arrive at Appellant’s claimed invention. Ans. 4 (explaining it would have
been obvious to one of ordinary skill to modify Yoon’s battery cells to be
cylindrical and to further modify Yoon’s heat conductive fins 123 in close
and thermal contact with the cylindrical battery cells to take a corrugated
shape as shown by Houchin-Miller in order to be closely disposed around
the cells) (citing Yoon ¶ 50; Houchin-Miller, Figs. 6, 15A–E, ¶¶ 117, 128).
See also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining
that any need or problem known in the art can provide a reason for
combining the elements in the manner claimed).
Appellant fails to direct us to persuasive evidence or provide an
adequate technical explanation to establish why the Examiner’s articulated
reasoning lacks a rational underpinning or is otherwise based on some other
reversible error. Appellant’s assertions that “the Office does not provide a
rationale for modifying the references” (Appeal Br. 4) and “there is no
motivation to combine the flat sheets in ’455 with ’008” (Reply Br. 1) are
not persuasive because they are conclusory. Attorney argument is not
evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Moreover, Appellant’s mere disagreement as to the Examiner’s
factual findings and reasoning for combining the references, without more,
is insufficient to establish reversible error. Cf. SmithKline Beecham Corp. v.
Appeal 2019-000906
Application 14/476,045
8
Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of
disagreement . . . as to the existence of factual disputes do not amount to a
developed argument.”).
We do not find Appellant’s contentions that Yoon does not disclose a
first fin having “a series of curved portions that each contact one battery
cell” (Appeal Br. 5) and the modified structure “would only have a single
curved portion” (id. at 5) persuasive of reversible error based on the
fact-finding and reasoning provided by the Examiner at pages 3–4 and
15–16 of the Answer. In particular, as the Examiner finds (Ans. 3), Yoon
discloses a battery system with a first heat-conductive sheet 123 (fin) in
thermal contact with a plurality of battery cells 110. Yoon, Figs. 2–3A, ¶¶
55–57. As the Examiner further finds (Ans. 15), Yoon teaches the use of
cylindrical batteries (Yoon ¶ 50) and Houchin-Miller teaches the use of the
system with an array of battery shapes (Houchin-Miller ¶ 110).
As the Examiner also finds (Ans. 15–16), Houchin-Miller teaches the
use of fins that mimic the shape of the battery cells by wrapping around the
cells and the wrapping of the fins along the length of the cylindrical cells, as
shown in Figure 5D of the reference, which, as the Examiner explains,
would have reasonably suggested to one of ordinary skill in the art a fin
having a cell portion with “a series of curved portions, each curved portion
in thermal contact with one of a plurality of battery cells,” as recited in the
claim.
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings and analysis in this regard.
We do not find Appellant’s teaching away argument (Reply Br. 2–3)
persuasive of reversible error in the Examiner’s rejection because Appellant
Appeal 2019-000906
Application 14/476,045
9
does not identify sufficient evidence to support it, and we will not read into
the references a teaching away where no such language exists. Cf. DyStar
Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir.
2006). Rather, as Appellant acknowledges (Reply Br. 2), Yoon merely
teaches that the “heat-conductive sheets 123 may be between the battery
cells 110” (Yoon ¶ 53) (emphasis added), which, in contrast to Appellant’s
argument, would reasonably suggest to one of ordinary skill that the sheets
do not need to be necessarily placed between the battery cells. See In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (explaining that a prior art
reference’s disclosure must be considered for all that it teaches, including
“the inferences which one skilled in the art would reasonably be expected to
draw therefrom”).
Moreover, the fact that Yoon discloses the benefits of positioning the
conductive sheets between the cells (Reply Br. 3), without more, does not
constitute a teaching away. See In re Susi, 440 F.2d 442, 445-46 (CCPA
1971) (explaining that disclosure of a particular preferred embodiment does
not teach away from a prior art reference’s broader disclosure).
Accordingly, we affirm the Examiner’s rejection of claims 1, 3, 5, and
6 under 35 U.S.C. § 103(a) as obvious over the combination of Yoon and
Houchin-Miller.
Rejections 3, 4, 5, 6, 7, 8, and 9
Appellant does not present any new or additional substantive
arguments in response to the Examiner’s Rejections 3, 4, 5, 6, 7, 8, and 9.
See Appeal Br. 6–8; Reply Br. 1–3. See also Appeal Br. 7 (“For the same
reasons as discussed above with regard to claim 1, the combination of ‘455
Appeal 2019-000906
Application 14/476,045
10
and ‘008 does not disclose all of the limitations of the claim[.]”); id. at 8
(same).
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for principally the same reasons discussed above for
affirming the Examiner’s rejection of claims 1, 3, 5, and 6 based on the
combination of Yoon and Houchin-Miller (Rejection 2), we affirm
Rejections 3, 4, 5, 6, 7, 8, and 9.
Appeal 2019-000906
Application 14/476,045
11
CONCLUSION
In summary:
Claim(s)
Rejected
Basis Affirmed Reversed
2, 6, 15 § 112

2, 6, 15
1, 3, 5, 6 § 103(a)
Yoon, Houchin-Miller
1, 3, 5, 6
2 § 103(a)
Yoon, Houchin-Miller,
Fujii
2
7 § 103(a)
Yoon, Houchin-Miller,
Okada
7
8, 13 § 103(a)
Yoon, Okada
8, 13
9 § 103(a)
Yoon, Okada,
Fujii
9
10–12 § 103(a)
Yoon, Okada,
Houchin-Miller
10–12
14, 17, 18 § 103(a)
Yoon, Houchin-Miller,
Okada
14, 17, 18
15 § 103(a)
Yoon, Houchin-Miller,
Okada, Fujii
15
Overall
Outcome
1–3, 5–15,
17, 18

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1)(iv).
AFFIRMED