Ex parte Cheeseman

Board of Patent Appeals and Interferences

Aug 31, 2001

08744894 (B.P.A.I. Aug. 31, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 32

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PAUL G. CHEESEMAN
__________

Appeal No. 1998-2558
Application No. 08/744,894
___________

ON BRIEF
___________

Before KIMLIN, DELMENDO, and JEFFREY T. SMITH, Administrative
Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1 and 3 through 11,
which are the only claims pending in the subject application.
The subject matter on appeal relates to a battery assembly
comprising: a particular tubular, plastic, sleeve-shaped
housing; at least one particular individual self-contained
electrochemical cell positioned within the housing; and
particular end caps closing the ends of the tubular housing.
Appeal No. 1998-2558
Application No. 08/744,894

2
According to the express language of the appealed claims, the
housing has a uniform wall of cross-section thickness less than
0.7 mm
throughout its length and is formed by a process consisting of

extrusion. Further details of this appealed subject matter are
recited in illustrative claim 1 reproduced below:
1. A battery assembly comprising a tubular,
plastic, sleeve-shaped housing having a uniform wall
of cross-section thickness less than 0.7 millimeters
throughout its length and formed by a process
consisting of extrusion; at least one individual self-
contained electrochemical cell positioned within the
housing; said housing wall closely conforming to the
shape and size of and contacting the cell positioned
within the housing; and end caps closing the ends of
said tubular housing, one of said end caps having
terminals for electrical connection to an external
device, wherein said at least one cell within the
housing provides additional strength to the housing.

The examiner relies on the following prior art references
as evidence of unpatentability:
Stutzbach et al. 4,460,663 Jul. 17, 1984
(Stutzbach)

Machida et al. 4,997,731 Mar. 5, 1991
(Machida)

Claims 1 and 3 through 11 on appeal stand rejected under 35
U.S.C. § 103(a) as unpatentable over Machida in view of
Stutzbach. (Examiner’s answer, pages 4-6.)
Appeal No. 1998-2558
Application No. 08/744,894

3
We reverse the aforementioned rejection.
The examiner characterizes the teachings of Machida as
follows:
Machida et al. disclose the use of a tubular plastic
housing having uniform wall thickness, with endcaps
having terminals for electrical connection to an
external device, and housing openings which allow
cells to be guided along the interior cavity of the
closely conforming walls. Embodiments of this tubular
plastic housing may have either one (Figure 7) or two
(Figure 1) substantially flat wall surfaces. The
Machida et al. reference differs from claims 1, 4, and
7 in that it fails to disclose the use of a plastic
extrusion process. [Examiner's answer, pp. 4-5.]

To account for the limitation in appealed claim 1 that the
tubular, plastic, sleeve-shaped housing is "formed by a process
consisting of extrusion," the examiner relies on the teachings
of Stutzbach. Specifically, the examiner states:
Stutzbach et al., however, disclose the manufacture of
a battery casing wherein they make use of an
"...extruded tubular member of preferable rectangular
cross section having upper and lower ends." See
column 4, lines 25-35. This tubular member is of
uniform wall thickness, serving to "reduce the overall
weight of the casing and to minimize material costs."
[Id. at p. 5.]

The examiner then concludes:
It would have been obvious to one of ordinary skill in
the art at the time the invention was made to utilize
an extrusion method like that of Stutzbach et al. in
order to reduce the weight, cost, and complexity of
fabricating a casing like that of Machida et al.
[Id.]

Appeal No. 1998-2558
Application No. 08/744,894

4
We cannot agree with the examiner's analysis. As pointed
out by the appellant (appeal brief, pages 7 and 10), Machida
does not describe "a tubular, plastic, sleeve-shaped housing
having a uniform wall of cross-section thickness less than 0.7
millimeters throughout its length and formed by a process
consisting of extrusion" as recited in appealed claim 1.
(Emphasis added.) Instead, Machida describes a tubular body
having notches 18, 23, and 24, "a step portion having a bit
increased [sic] inner diameter," and a flange 26. (Column 3,
lines 39-58.) Thus, contrary to the examiner's allegation,
Machida's tubular body does not have a "uniform wall..." as
recited in appealed claim 1 and as defined in the specification
at page 5.
Stutzbach does not make up for the lack of a teaching in
Machida as to a tubular body having a "uniform wall of cross-
section thickness less than 0.7 millimeters throughout its
length." Although Stutzbach teaches an extruded casing wall
member with a "substantially reduced uniform wall thickness"
(column 2, lines 13-18), the examiner has not presented any
evidence to establish that one of ordinary skill in the art
would have found the requisite motivation, teaching or
suggestion in the applied prior art to replace the tubular body
Appeal No. 1998-2558
Application No. 08/744,894

5
of Machida with that of Stutzbach. Along these lines, Machida
teaches that notches 23 and 24 function as air relief vents and
that flange 26 holds the battery cells in position. (Column 3,
lines 48-50 and 55-58.) These functions are necessary in
Machida and would not be possible if the tubular body were to
have a uniform wall thickness, i.e. a tubular body without
notches and a flange. Under these circumstances, it is our
judgment that one of ordinary skill in the art would have had no
incentive to replace Machida's tubular body having non-uniform
wall thickness with the "uniform wall thickness" tubular body of
Stutzbach.
By ignoring the "uniform wall" claim limitation, the
examiner committed reversible error. In re Geerdes, 491 F.2d
1260, 1262-63, 180 USPQ 789, 791 (CCPA 1974) ("[E]very
limitation in the claim must be given effect rather than
considering one in isolation from the others."); In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) ("All words
in a claim must be considered in judging the patentability of
that claim against the prior art.").
For these reasons, we cannot uphold the examiner’s 35
U.S.C. § 103 rejection of appealed claims 1 and 3 through 11 as
unpatentable over Machida in view of Stutzbach.
Appeal No. 1998-2558
Application No. 08/744,894

6
The decision of the examiner is reversed.
REVERSED

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )

RHD/kis
ROBERT J FELTOVIC
DURACELL INC
360 FIRST AVE
Appeal No. 1998-2558
Application No. 08/744,894

7
NEEDHAM MA 02194