Ex Parte Duernegger

Patent Trials and Appeals Board

Mar 21, 2019

14364088 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/364,088 06/10/2014
10800 7590 03/21/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Wolfgang Duernegger
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2178-1145 8523
EXAMINER
WANG, EUGENIA
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
03/21/2019 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 WOLFGANG DUERNEGGER
Appeal2018-004607
Application 14/364,088
Technology Center 1700
Before BEYERL YA. FRANKLIN, BRIAND. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1--4 and 6-10. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 In our Decision, we refer to the Specification filed June 10, 2014
("Spec."); the Final Office Action dated October 11, 2017 ("Final Act."); the
Appeal Brief filed January 5, 2018 ("App. Br."); the Examiner's Answer
dated January 25, 2018 ("Ans."); and the Reply Brief filed March 22, 2018
("Reply Br.").
2 Appellants are the Applicants, identified as Robert Bosch GmbH and
Samsung SDI Co., Ltd. as the real party in interest. App. Br. 2.
Appeal2018-004607
Application 14/364,088
BACKGROUND
The claims are directed to batteries, battery cells, and battery cell
housings wherein the housings comprise a varnish coating for electrical
insulation, the varnish containing adhesive-containing particles, and a basic
insulation layer that does not include adhesive-containing particles.
According to the Specification, Figure 3 depicts a detailed view of a
housing according to the disclosure for a battery cell with non-activated,
adhesive-containing particles. Spec. 7, 11. 13-15. An annotated version of
Figure 3 is reproduced below:
100 housing _,
/
-112 basic insulation
111 varnish coating
----113. external varnish layer
~114 adhesive-containing
particles
Fig. 3
Applicants describe Figure 3 as follows:
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Appeal2018-004607
Application 14/364,088
Figure 3 depicts a detail of a housing 1003 for a battery cell. A
varnish coating 111 for electrical insulation is present on the
outside of the wall 110 of the housing 100. The varnish coating
111 consists of at least two layers, there being provided directly
on the wall 110 a basic insulation 112, which is provided with
an external varnish layer 113. Distributed in the outer varnish
layer 113 are adhesive-containing particles 114, or which the
adhesive is capable of being activated or released through
defined conditions.
Spec. 7, 11. 26-35.
Claim 1, reproduced below from the Claims Appendix with the key
limitation italicized, illustrates the claimed subject matter:
1. A housing for a battery cell, the housing comprising:
a varnish coating for electrical insulation, the varnish
coating including:
a basic insulation arranged directly on the
housing; and
at least one layer of varnish arranged directly on
the basic insulation, wherein:
the at least one layer of varnish contains adhesive-
containing particles, the adhesive-containing particles
containing adhesive therein,
the adhesive-containing particles are configured to
release the adhesive under defined conditions, and
the basic insulation layer does not include adhesive-
containing particles.
3 Labels to elements are presented in bold font, regardless of their
presentation in the original document.
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Appeal2018-004607
Application 14/364,088
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Hong et al.
("Hong")
Schwantes et al.
("Schwantes")
Seo
Kobayashi
US 2005/0069763 Al
US 2006/0073334 Al
US 2006/0127756 Al
US 2010/0104836 Al
REJECTIONS
Mar. 31, 2005
Apr. 6, 2006
June 15, 2006
Apr. 29, 2010
The Examiner maintains and Appellants seek review of the following
rejections under 35 U.S.C. § I03(a): (1) claims 1--4 and 6-9 over Hong in
view of Schwantes and Seo; and (2) claim 10 over Hong in view of
Schwantes and Seo, and as evidenced by Kobayashi. Final Act. 3-13; App.
Br. 6-15.
OPINION
Appellants' substantive arguments are directed to claim 1. App. Br.
6-12. Appellants contend that claims 2--4 and 6-10 are patentable "for at
least the reasons discussed[] with respect to claim 1." Id. at 12-15. We,
therefore, limit our discussion to claim 1. Claims 2--4 and 6-10 stand or fall
with claim 1. 37 C.F.R. § 4I.37(v)(l)(iv).
The Examiner finds that Hong teaches a housing (Hong package 20)
for a battery cell, the housing comprising a varnish coating that includes at
least one layer of varnish (Hong adhesive layer 30) for electrical insulation,
wherein the varnish has an adhesive that is cured under defined conditions.
Final Act. 3 (citing Hong ,r,r 43, 44, 46, and Figs. 5---6c). The Examiner
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Application 14/364,088
finds that Hong does not teach adhesive in the varnish in the form of
adhesive-containing particles wherein the adhesive is configured to be
released under defined conditions but finds that Schwantes teaches
encapsulated adhesives that are released under defined conditions. Id. at 3-
4. The Examiner finds that Hong also does not teach a basic insulation
arranged directly between the housing and the varnish but finds that Seo
teaches this limitation. Id. at 4--5. The Examiner finds that Seo teaches an
insulation layer (Seo hard cover 300) arranged directly on a housing (Seo
pouch 200).
Appellants argue that Seo does not disclose a basic insulation
arranged directly on the housing. App. Br. 7-8. During prosecution, an
application's claims are given their broadest reasonable scope consistent
with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The words used in a claim must be read in light of
the specification, as it would have been interpreted by one of ordinary skill
in the art at the time of the invention. Id. The only instance of use of "basic
insulation arranged directly on the housing" in the Specification is in
originally filed claim 5. The Specification describes a basic insulation
"being provided directly on the wall." Spec. 7, 11.30-31. The Specification
also describes "contact of the battery with a cooling element, [] on which the
battery is conventionally arranged." Spec. 4, 11. 5-7. The broadest
reasonable interpretation of "a basic insulation arranged directly on the
housing" in the claim is that at least some, but not necessarily all, of the
basic insulation is in physical contact with a wall of the housing. We must,
therefore, answer the question of whether the combination of Hong and Seo
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Appeal2018-004607
Application 14/364,088
disclose ( and not merely Seo alone) disclose a basic insulation in physical
contact with a wall of the housing.
Appellants contend that the Examiner must show that Seo explicitly
teaches hard cover plate 300 is directly connected to the battery cell
(arranged directly on the housing). Reply Br. 2. Appellants argue that,
because Seo does not teach explicitly that cover 300 is arranged directly on
the pouch, the Examiner is relying on the principle of inherency. App. Br. 8.
We disagree.
No explicit teaching in a single prior art reference is required when
the rejection is over combined references. "[T]he question under 35 U.S.C.
§ 103 is not merely what the references expressly teach but what they would
have suggested to one of ordinary skill in the art at the time the invention
was made." In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). For purposes
of§ 103, a reference is prior art for all that it discloses. Symbol Techs., Inc.
v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991); see also Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[I]n a
section 103 inquiry, the fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered."); Beckman Instruments Inc.
v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) (a reference is
prior art for all that it teaches); EFVP Corp. v. Reliance Universal Inc., 755
F.2d 898, 907 (Fed. Cir. 1985) ("A reference must be considered for
everything it teaches by way of technofogy and is not limited to the
particular invention it is describing and attempting to protect On the issue
of obviousness, the combined teachings of the prior art as a whole must be
considered."). As the Examiner accurately points out in the Answer, the
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Application 14/364,088
rejection relies on a combination of prior mi references rather than on
inherency. Ans. 17.
Appellants argue that the Examiner mischaracterizes Seo in finding
that the reference embodies a direct arrangement between the pouch and the
hard cover. Reply Br. 2. The Examiner identifies, inter alia, paragraphs 18,
24, and 44--57, in addition to Figs. 4 and 9 as supporting that one of ordinary
skill in the art at the time of the invention would have understood from Seo
that use of adhesive between the pouch and the hard cover is one possible
option. Ans. 15.
Paragraph 18 of Seo states: "an object of the present [invention] is to
provide a lithium secondary battery, in which ... an adhesive can be applied
in a pouch type lithium secondary battery as minimum as possible enough to
ensure safe engagement between the pouch and the cover." Seo ,r 18. The
Examiner points to "can" ( as opposed to "must") as making use of adhesive
optional (Ans. 15); Appellants argue that the paragraph requires use of
adhesive (Reply Br. 2). Seo paragraph 18 indicates that an object of the
invention is use of "as minimum as possible" adhesive, which would include
no adhesive in some circumstances, or, alternatively, such a small amount of
adhesive that there would still be direct physical contact between the pouch
and hard cover.
Seo teaches that the hard cover may have a pair of cover components
that cover both wide surfaces and part of the sides of the bare cell, as well as
molded portions that enclose the side cover portions of the cover
components. Seo ,r,r 22-24. "The molded portion may serve as a portion of
an exterior of the cover as well as an adhesive for fixing the bare cell." Id.
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Application 14/364,088
,r 24. Thus, the bare cell can be fixed in place without any adhesive between
the hard cover components and the pouch.
Appellants identify paragraph 41 of Seo as indicating that there is an
adhesive hot-melt layer on the core layer of the pouch. Reply Br. 12.
However, paragraph 41 states that Seo 's pouch (not Hong's) may have a
multi-layered structure that includes a hot-melt layer on one side of an
aluminum core layer, an insulation layer on the other side of the aluminum
core layer, and the hot-melt layer may be formed of a polymer that can
function as an adhesive layer. Seo ,r 41. Appellants acknowledge that it is
unclear from Seo paragraph 41 which side of the pouch the adhesive layer is
on. Reply Br. 4. One of ordinary skill in the art reading Seo would not have
understood paragraph 41 to require use of an adhesive layer between Seo' s
pouch and hard cover. See In re Lamberti, 545 F.2d at 750 (For 35 U.S.C.
§ 103, we consider what the references would have suggested to one of
ordinary skill in the art at the time the invention was made.); Symbol Techs.,
Inc., 935 F.2d at 1578 (a reference is prior art for all that it discloses for
purposes of 35 U.S.C. § 103).
Appellants argue that it would not have been obvious to modify the
device of Hong to include the hard cover of Seo because Seo' s hard cover is
designed for a different purpose than Hong's adhesive layer. App. Br. 10;
Reply Br. 5. Appellants contend that the hard cover of Seo protects against
damage caused by external forces, but the adhesive layer of Hong protects
against internal forces. Reply Br. 5---6.
We find nothing illogical in the skilled artisan combining Seo' s hard
cover with the pouch and adhesive layer of Hong in order to improve the
protection of the battery cell from damage. The Examiner's explanation of
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Application 14/364,088
the reasons a person of ordinary skill in the art would have had to combine
the prior art teachings is sufficient when an allowance is made for "the
inferences and creative steps that a person of ordinary skill in the art would
employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007); see also
Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293,
1323 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the
identical problem addressed in a prior art reference to be motivated to apply
its teachings.").
Appellants have not shown reversible error by the Examiner in
rejecting claim 1 as obvious of Hong in view of Schwantes and Seo. We
sustain the rejection. As Appellants rely on the same arguments as made for
patentability of claim 1 for patentability of claims 2--4 and 6-10, we sustain
the rejection of these claims, as well.
DECISION
For the above reasons, the Examiner's rejection of claims 1--4 and 6-
10 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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