UNITED STATES PATENT AND TRADEMARK OFFICE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/848,985 08/31/2007 Dieter Bechtold 069236-4825 4754
75576 7590 10/16/2014
Johnson Controls, Inc.
c/o Fletcher Yoder PC
P.O. Box 692289
Houston, TX 77269
EXAMINER
ENIN-OKUT, EDU E
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
10/16/2014 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 DIETER BECHTOLD,
KAI PELZ, RALF JOSWIG, and MARTIN WIEGMANN
____________
Appeal 2012-012411
Application 11/848,985
Technology Center 1700
____________
Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 10, and 12 of Application
11/848,985 under 35 U.S.C. § 102(b) as anticipated. Final Rejection (“FR”)
3 (Nov. 23, 2011). The Examiner also finally rejected claims 1–20 under
35 U.S.C. § 103(a) as obvious. Id. at 4, 6, and 7. Appellants1 seek reversal
of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM-IN-PART.
1 Varta Automotive Systems, GmbH, is identified as the real party in
interest. (App. Br. 2.)
Appeal 2012-012411
Application 11/848,985
2
BACKGROUND
The ’985 Application describes an electrical storage battery comprised
of an array of storage cells that are held in place by a pair of mounting rails.
See Spec. ¶ 10–11, Figure 1.
Claim 1 is representative of the ’985 Application’s claims and is
reproduced below:
1. An electrical storage battery comprising:
a housing; and
a plurality of rectangular cell assembly modules electrically
coupled together; and
at least one spring damping element coupled to a first mounting
rail provided in a space between the housing and the plurality of
rectangular cell assembly modules, the at least one spring
damping element extending along all of the rectangular cell
assembly modules of the electrical storage battery adjacent a
transition between a lower edge and a side edge of each of the
cell assembly modules.
(App. Br. 20 (Claims App’x).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 10, and 12 are rejected under 35 U.S.C. § 102(b) as
anticipated by Watanabe.2 FR 3.
2. Claims 1–4, 8–15, 19, and 20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Iwatsuki.3 FR 4.
2 WO 2006/090904 A1, published August 31, 2006. The Examiner and
Appellants both cite US Patent Application Publication 2008/0318119 A1,
published December 25, 2008, as the English-language equivalent. We also
will do so.
Appeal 2012-012411
Application 11/848,985
3
3. Claims 5 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Iwatsuki and Guyomard.4
FR 6.
4. Claims 6, 7, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Iwatsuki and Oshima.5 FR 7.
DISCUSSION
Rejection 1. Appellants argue for reversal of this rejection on the
basis of the limitations of independent claim 1 and do not present separate
substantive argument regarding dependent claims 2, 10, and 12. (App. Br.
7–9.) Accordingly, we shall limit our discussion to claim 1. Claims 2, 10,
and 12 will stand or fall with claim 1.
We begin with Appellants’ argument that the Examiner erred in
finding that the battery modules shown in Figures 3 and 4 of Watanabe
correspond to a “rectangular cell assembly module.” (App. Br. 8, Reply Br.
2-4.) Consideration of this argument requires interpretation of claim 1’s
language. In general,
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
3 US Patent No. 5,558,949, issued September 24, 1996.
4 US Patent No. 6,571,898 B2, issued June 3, 2003.
5 JP 09-106832 A, published April 22, 1997. Along with the Figures in the
original document, we have referred to an English translation of the Abstract
that is part of the record.
Appeal 2012-012411
Application 11/848,985
4
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997).
In this case, claim 1 uses the adjectival form of a two-dimensional
shape to describe the cell assembly module, which is a three-dimensional
object. Appellants argue that a “rectangular cell assembly module” is “a
three-dimensional object having a perimeter shaped like a rectangle.”
(Reply Br. 4.) This argument is unhelpful and unpersuasive for two reasons.
First, Appellants do not identify any support for their proposed definition in
the ’985 Application’s Specification. Second, Appellants once again attempt
to define the shape of a three-dimensional object using a term—perimeter—
that pertains to two-dimensional figures.
To construe the phrase “rectangular cell assembly module,” we turn to
Appellants’ Specification, which describes at least three different
embodiments of the claimed electrical storage battery. Appellants’ Figure 1
is reproduced below.
Figure 1 is a perspective view of electrical storage battery 1, which is
comprised of several cell assembly modules 2 secured together by mounting
rails 7a and 7b. Spec. ¶ 11. As shown in Figure 1, a pair of electric
Appeal 2012-012411
Application 11/848,985
5
terminals 4a and 4b along with gas dissipation channel 5, including an
overpressure relief valve 6, extend from the top of each cell assembly
module 2. Id. at ¶ 32. Furthermore, as can be seen in Figures 2, 3, 7, 9, and
10 of Appellants’ Specification, even if the electric terminals and gas
dissipation channel are ignored, the outer surfaces of the cell assembly
modules are not perfect rectangles. For example, a facing pair of each cell
assembly module’s sides has a groove 10 into which a portion of mounting
rails 7a and 7b extend. See id. at ¶¶ 36, 42, 45, and Figures 2, 7, and 10.
Based on our review of Appellants’ Specification, we construe the
term “rectangular cell assembly module” as meaning that the cell assembly
modules generally are right rectangular prisms in shape, but that the
deviations from an ideal right rectangular prism caused by the cell assembly
module’s electric terminals, gas dissipation channels, and structure needed to
secure the cell assembly module in an array of cell assembly modules are not
considered in determining the cell assembly module’s shape.
Having construed the term “rectangular cell assembly module,” we
now turn to the Examiner’s finding that Watanabe describes the claimed
rectangular cell assembly modules. FR 3 (citing Watanabe Abstract; ¶¶ 24,
31–37; Figs. 3 and 4). Appellants argue that the Examiner’s finding is
erroneous because Watanabe’s cell assembly modules 11b include a pair of
projections 11c formed by portions of the cell assembly module that extend
past the sides of the main body of the cell assembly module. (App. Br. 8–9.)
According to Appellants, these projections result in the cell assembly
module not having the claimed rectangular shape. (Id.)
We are not persuaded by this argument. As discussed above, under
the broadest reasonable interpretation of the term “rectangular cell assembly
module,” structure used to secure the cell assembly module into the claimed
Appeal 2012-012411
Application 11/848,985
6
electrical storage battery is not considered in determining the overall shape
of the cell assembly module. In the case of Appellants preferred
embodiments, a pair of grooves secure the cell assembly modules to the
mounting rails are ignored. Watanabe’s cell assembly module uses a pair of
projections for the same purpose. Appellants’ Specification does not support
an interpretation of the term “rectangular cell assembly module” that
justifies ignoring the effect of grooves on the cell assembly module’s shape
but mandates consideration of projections used for the same purpose. We,
therefore, cannot say that the Examiner reversibly erred in finding that
Watanabe describes a rectangular cell assembly module.
Next, we turn to Appellants’ argument that the Examiner reversibly
erred in finding that Watanabe describes the claimed “at least one spring
damping element . . . adjacent a transition between a lower edge and a side
edge of each of the cell assembly modules.” We once again begin by
interpreting claim 1’s language. In particular, we must determine the
broadest reasonable construction of the phrase “adjacent a transition.” We
begin by giving these terms their broadest reasonable meaning in ordinary
usage as they would be understood by a person of ordinary skill in the art,
taking into account whatever enlightenment is provided by Appellants’
Specification. See Morris, 137 F.3d at 1054–55.
For the following reasons, we conclude that the broadest reasonable
definition of the word adjacent is “not distant” or “nearby.” Because the
Specification does not define the term “adjacent,” we begin by giving the
term its broadest reasonable ordinary meaning. One dictionary provides the
following definition: “1 a : not distant: nearby [;] b : having a common endpoint or border [;]
c : immediately preceding or following . . . .” Adjacent, MERRIAM-
Appeal 2012-012411
Application 11/848,985
7
WEBSTER.COM, http://www.merriam-webster.com/dictionary/adjacent. The
following discussion also is provided
ADJACENT, ADJOINING, CONTIGUOUS, JUXTAPOSED mean being
in close proximity. ADJACENT may or may not imply contact
but always implies absence of anything of the same kind in
between
. ADJOINING
definitely implies meeting and touching at some point or line
. CONTIGUOUS implies
having contact on all or most of one side . JUXTAPOSED means placed side by side
especially so as to permit comparison and contrast .
Id.
The embodiments described in Appellants’ Specification are
consistent with the definition provided above. We reproduce Appellants’
Figure 2 below.
Figure 2 is a side view of cell assembly module 2 having grooves 10
and mounting rails 7a and 7b at its lower corners. Spec. ¶ 12; see also
¶¶ 32–37. In this embodiment, spring damping elements 8a and 8b are near,
but do not contact, the lower corners of cell assembly module 2. Because a
claim construction that excludes a patent applicant’s preferred embodiments
is unlikely to be correct, see, e.g., InterDigital Commc’ns, LLC v. U.S. Int’l
Appeal 2012-012411
Application 11/848,985
8
Trade Comm’n, 690 F.3d 1318, 1326 (Fed. Cir. 2012) (citing Pfizer, Inc. v.
Teva Pharm., USA, Inc., 429 F.3d 1364, 1374 (Fed. Cir. 2005); Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)), we
conclude that the term adjacent should be interpreted to require that the
spring damping elements need only be near a transition between the bottom
and side edges of the cell assembly module.
We also conclude that the term “transition between a lower edge and a
side edge” of a cell assembly module refers to “a portion of the cell
assembly module’s exterior where the lower edge changes or evolves into a
side edge.” Because the Specification does not define the term “transition,”
we begin with the broadest reasonable ordinary meaning of the term. One
dictionary defines transition as “1 a : passage from one state, stage, subject,
or place to another : change[;] b : a movement, development, or evolution
from one form, stage, or style to another . . . .” Transition, MERRIAM-
WEBSTER.COM, http://www.merriam-webster.com/dictionary/transition.
Furthermore, the Specification is not inconsistent with a broad
interpretation of the term transition. Although each of the embodiments
depicted in Appellants’ Figures shows an abrupt transition from the lower
edge to the side edge in the form of a sharp corner formed by the intersection
of the bottom and sides of the cell assembly module, e.g., Figure 2, nothing
in the Specification precludes the use of other forms or shapes to accomplish
the transition.
With these interpretations in mind, we turn to the Examiner’s finding
that Watanabe describes a spring damping element in the claimed location.
The Examiner found that Watanabe’s elastic member 43 corresponds to the
claimed spring damping element. FR 3–4 (citing Watanabe ¶ 33, Fig. 3).
Appeal 2012-012411
Application 11/848,985
9
Appellants argue that this finding constitutes reversible error because
elastic member 43 is located on the upper surface of projection 11c and,
therefore, cannot be adjacent to the lower edge of the cell assembly member.
(App. Br. 8–9.) We are not persuaded by this argument. As discussed
above, the broadest reasonable construction of the claim term requires the
spring dampening member to be nearby the transition between the lower and
side edges of the cell assembly module. Actual contact with a lower edge is
not required.
The Examiner did not reversibly err in finding that elastic member 43
is nearby a transition between a lower edge and a side edge of the cell
assembly module. Although each embodiment shown in Appellants’
Figures has a sharp corner that defines a sharp transition between a lower
edge and a side edge of the cell assembly module, see, e.g., Spec. Figs. 2, 7,
10, as discussed above, nothing in the Specification precludes the claimed
transition between the lower and side edges from taking the form of a
projection that is used to secure the cell assembly module into the claimed
electrical battery.
In sum, we affirm the Examiner’s rejection of claims 1, 2, 10, and 12
as anticipated by Watanabe.
Rejection 2. The Examiner rejected claims 1–4, 8–15, 19, and 20 as
obvious over Iwatsuki. FR 4. Appellants argue for reversal of this rejection
based upon limitations common to independent claims 1 and 13 which are
the only independent claims on appeal. (App. Br. 12–16.)
In particular, Appellants argue that the Examiner reversibly erred in
finding that Iwatsuki describes or suggests the claimed “at least one spring
damping element . . . adjacent a transition between a lower edge and a side
edge of each of the cell assembly modules.” (Id.) Because of this error,
Appeal 2012-012411
Application 11/848,985
10
Appellants argue, the Examiner has not established a prima facie case of
obviousness.
The Examiner found that Iwatsuki’s description of elastic strips 66a
and 66b suggests the claimed spring dampening member. FR 4–5 (citing
Iwatsuki col. 7, ll. 37–60; Fig. 12). Elastic strips 66a and 66b are located on
left and right holder bars 64 and 80. Iwatsuki col. 7, ll. 37–60; Fig. 12. In
Iwatsuki’s electrical storage battery, the left and right holder bars are located
at the upper corners of the cell assembly modules. See id. Fig. 14. The
Examiner found that moving elastic strips 66a and 66b from locations close
to the cell assembly module’s upper corner to the claimed location did not
constitute an unobvious change. FR 5 (citing In re Japikse, 181 F.2d 1019
(CCPA 1950)); Ans. 5–6.
The Examiner, however, has not provided any reason for a person of
ordinary skill in the art to modify Iwatsuki in the suggested manner.
Although the Examiner argues that the relocated elastic strips 66a and 66b
will still serve as vibration dampening elements, the mere fact that a change
might be made does not render the change obvious. As Appellants point out,
the Examiner’s proposed relocation of Iwatsuki’s elastic strips would
necessitate substantial redesign lest the heat management properties of
Iwatsuki’s apparatus be adversely affected. A person of ordinary skill in the
art, therefore, would not make the modification proposed by the Examiner
without an adequate reason.
For the foregoing reasons, we reverse the Examiner’s rejection of
claims 1–4, 8–15, 19, and 20 as obvious over Iwatsuki.
Rejections 3 and 4. The Examiner rejected claims 5–7 and 16–18 as
obvious over a combination of Iwatsuki and either Guyomard or Oshima.
Because the Examiner does not rely on either of these references to cure the
Appeal 2012-012411
Application 11/848,985
11
above-identified deficiency in Iwatsuki’s disclosure, we reverse these
rejections.6
CONCLUSION
For the foregoing reasons, we reverse the rejection of claims 1–20 of
the ’985 Application as obvious. We, however, affirm the rejection of
claims 1, 2, 10, and 12 as anticipated by Watanabe.
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-IN-PART
cdc
6 We have not considered Appellants’ argument that Guyomard is not
analogous art and, thus, is not available for use in a § 103 rejection. (Reply
Br. 7–9.) Appellants present this argument for the first time in their Reply
Brief. Because Appellants have not demonstrated good cause for waiting
until their Reply Brief to raise this argument, the argument is waived and
will not be considered. 37 C.F.R. § 41.37(c)(1)(iv), § 41.41(b)(2) (2013).
Notice of References Cited
Application/Control No.
11/848,985
Applicant(s)/Patent Under
Reexamination
Dieter Bechtold et al.
Examiner
Edu Enin-Okut
Art Unit
1700
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Adjacent, MERRIAM-WEBSTER.COM, http://www.merriam-
webster.com/dictionary/adjacent.
V
Transition, MERRIAM-WEBSTER.COM, http://www.merriam-
webster.com/dictionary/transition.
W
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*A copy of this reference is not being furnished with this Office action. (See Manual of Patent Examining Procedure, Section 707.05(a).)
**APS encompasses any electronic search i.e. text, image, and Commercial Databases.
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PTO-892 (Rev. 03-98Notice of References Cited Part of Paper No. 16
