Ex Parte Han

Board of Patent Appeals and Interferences

Jul 28, 2009

10923749 (B.P.A.I. Jul. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KYU-NAM HAN
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Appeal 2009-004671
Application 10/923,749
Technology Center 1700
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Decided:1 July 29, 2009
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Before PETER F. KRATZ, MICHAEL P. COLAIANNI,
and JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-004671
Application 10/923,749

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of pending claims 1-13. (Appeal Brief filed June 8, 2007,
hereinafter “App. Br.,” 3, 7). We have jurisdiction pursuant to 35 U.S.C.
§ 6(b).2
We REVERSE.
THE INVENTION
Appellant describes a battery pack including a case, a plurality of
battery cells, and at least one spacer. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A battery pack comprising:

a case having an inner space;

a plurality of battery cells disposed inside the case; and

at least one spacer disposed between the battery cells;

wherein a space is formed around a supporting portion of said
at least one spacer to allow heat generated by the battery cells to
flow out of the case.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sim 5,744,260 Apr. 28, 1998

2 Oral arguments were heard in this Appeal on July 21, 2009.
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The Examiner rejected claims 1-13 under 35 U.S.C. § 102(b) as being
anticipated by Sim.
The Examiner found that Sim discloses a battery pack with spacers
that would allow heat generated by the battery to flow out of the case.
(Examiner’s Answer entered November 15, 2007, hereinafter “Ans.,” 3-5).
Appellant contends that there is no spacer in Sim, and that Sim’s
battery cells are in close proximity or in contact with one another. (App. Br.
11-12). Appellant argues that the elements of Sim relied on by the Examiner
as spacers correspond to the “case” recited in Appellant’s claims, and that
the “case” in Sim is responsible for holding the battery cells. (App. Br. 12-
13). Appellant argues that Sim’s Figures provide insufficient detail to
support the Examiner’s findings that there is any space between the battery
cells in the battery pack disclosed in Sim, and that Sim’s Figures show that
the battery cells will be in close proximity or touching. (Reply Brief filed
January 15, 2008, hereinafter “Rep. Br.,” 3-4 and 7). Appellants contend
that Sim is completely silent as to any spacing between battery cells. (Rep.
Br. 5).

ISSUE
Has Appellant shown that the Examiner reversibly erred in finding
that Sim discloses a battery pack including a spacer disposed between
battery cells?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
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Application 10/923,749

1. Sim’s Figure 5 is reproduced below:

Figure 5 depicts a battery pack 100 including battery cells (110 and 112),
including a first case 130, a first connecting portion 136, a second case
140, a second connecting portion 146, a first cell receiving portion 132,
and a second cell receiving portion 142. (Col. 3, l. 50 – col. 4, l. 43).
2. Sim is silent as to the presence of a spacer between battery cells. (See
generally Sim,).

PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

ANALYSIS
We are persuaded by Appellant’s argument that Sim does not disclose
a spacer between battery cells as recited in the claims on appeal.
Specifically, the Examiner found that Sim discloses a spacer in the first
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connecting portion 136, which separates the two battery cells 110 and 112.
(Ans. 4-5; FF 1). However, the portion of Sim’s battery pack the Examiner
represented as spacer (3) in the annotated version of Sim’s Figure 5 is part of
the first case 130, and corresponds to Appellant’s “case” recited in the claim,
not the recited spacer. (See Ans. 4). Therefore, the Examiner has failed to
present a sufficient factual basis that Sim possesses all of the elements
required in Appellant’s claims, namely a case and at least one spacer.
Moreover, there is insufficient evidence on the record that Figure 5
depicts a space between battery cells 110 and 112. The view of the battery
pack presented in Sim’s Figure 5 fails to definitively show the recited space.
(See FF 1; Rep. Br. 3-5). Indeed, Sim is silent on the presence of any space
between the two battery cells. (FF 2). Thus, the Examiner has provided
insufficient factual basis to support the finding that there is a space between
Sim’s battery cells. Accordingly, Appellant’s arguments are persuasive of
reversible error.

CONCLUSION
Appellant has demonstrated that the Examiner reversibly erred in
finding that Sim discloses a battery pack including a spacer disposed
between battery cells.

ORDER
We reverse the Examiner’s decision rejecting claims 1-13 under 35
U.S.C. §102(b) as being anticipated by Sim.
REVERSED

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Application 10/923,749

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