Ex Parte Kim

Patent Trial and Appeal Board

Dec 9, 2015

12889383 (P.T.A.B. Dec. 9, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/889,383 09/23/2010
23363 7590 12/11/2015
CHRISTIE, PARKER & HALE, LLP
POBOX29001
Glendale, CA 91209-9001
FIRST NAMED INVENTOR
Tae-Yong Kim
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.
65908/S744 6233
EXAMINER
ZENG, LINGWEN R
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
12/11/2015 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):
pto@cph.com
pair_cph@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAE-YONG KIM
Appeal2014-000985
Application 12/889,383
Technology Center 1700
Before MARK NAGUMO, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-17 of Application 12/889,383
under 35 U.S.C. § 103(a) as obvious. Final Act. (December 5, 2012).
Appellant 1 seeks reversal of the 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 and designate our
affirmance as constituting a NEW GROUND OF REJECTION.
1 Samsung SDI Co., Ltd. and Robert Bosch GMBH are identified as the real
parties in interest. App. Br. 1.
Appeal2014-000985
Application 12/889,383
BACKGROUND
The '383 Application describes a battery module comprising a
plurality of unit batteries connected in series. Spec. i-fi-1 2-3. As Appellant
describes, it was known in the art that connecting the plurality of unit
batteries in series creates a battery module with high-power and large
capacity. Id. at i13. In making these connections, the positive terminal of
one battery is placed adjacent to the negative terminal of the next battery in
the series. Id. at i1 4. Those terminals are then connected by a busbar. Id.
The busbar is then secured to the terminals, for example by using nuts,
which screw onto threads cut into the sides of the terminals. Id.
This arrangement is not without its problems. For example the
exterior size of the unit batteries varies within certain tolerances. Id. at i16.
Furthermore, the size of each of the unit batteries is also changed by the
repetition of charge and discharge cycles. Id. Because the connection
between the terminals, i.e. the busbar and attachment members, cannot be
adapted or are not adapted to accommodate these changes, the unit batteries
in a particular assembly can be deformed. Id.
The arrangement described in the '383 Application is said to address
this problem. Claim 1 is representative of the '383 Application's claims and
is reproduced below from the Claim Appendix to the Appeal Brief:
1. A battery module comprising:
a plurality of unit batteries and
a connection member electrically connecting the plurality
of unit batteries, the connection member comprising:
a plurality of bus bars, each of the plurality of bus
bars having through-holes respectively corresponding to
two electrode terminals protruding from two adjacent
unit batteries of the plurality of unit batteries; and
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Appeal2014-000985
Application 12/889,383
App. Br. 24.
an insulating guide comprising a plurality of
holder units configured to support the plurality of bus
bars, and a plurality of narrow width portions configured
to connect the plurality of holder units along a first
direction, each of the plurality of narrow width portions
being centrally positioned in a direction normal to the
first direction between adjacent ones of the plurality of
holder units.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-5, 8-11, 16, and 17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Ikeda. 2 Final Act. 2.
2. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ikeda and Yoon. 3 Final
Act. 6.
3. Claims 12-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ikeda and Shevock. 4 Final
Act. 7.
DISCUSSION
The Examiner rejected claims 1-17 of the '383 Application as
obvious over Ikeda, either alone or in combination with a secondary
reference. See Final Act. Appellant argues that the obviousness rejections
2 US 6,261,719 Bl, issued July 17, 2001.
3 US 7 ,807 ,288 B2, issued October 5, 2010.
4 US 2009/007 Al, published March 19, 2009.
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Appeal2014-000985
Application 12/889,383
should be reversed for any of four reasons. See App. Br. 6-7. Each of these
arguments relies upon the limitations of claim 1 and the Examiner's finding
that Ikeda did not anticipate the subject matter of claim 1. Id.
An obviousness rejection reflects the Examiner's conclusion that the
differences between the claimed subject matter and the prior art would have
been obvious to a person of ordinary skill in the art at the time of the
invention. See 35 U.S.C. § 103(a).
In this case, however, we are of the opinion that the Examiner erred
by concluding that the subject matter of claim 1 was different from the
subject matter disclosed in Ikeda. We, therefore, affirm the rejection of
claim 1under35 U.S.C. § 102(b). Because our affirmance relies upon
different findings of fact than the Examiner's Final Action, we designate our
affirmance as constituting a new ground of rejection under 37 C.F.R.
§ 41.50(b).
In reviewing the Examiner's rejection of claim 1 as obvious, we
1 • ' 1 •1 • 1 • -1, 1 T 1 oegm-as we must-oy cons10enng crn1m l · s rnnguage. in genera1,
the 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
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, we begin by considering claim 1 's language requiring
"each of the plurality of narrow width portions being centrally positioned in
a direction normal to the first direction between adjacent ones of the
plurality of holder units." Claim 1 (emphasis added). We note that the plain
language of claim 1 only requires that each of the narrow width portions is
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Appeal2014-000985
Application 12/889,383
centrally positioned between adjacent holder units in a single direction that
is perpendicular to the direction defined by the plurality of holder units.
In rejecting claim 1 as obvious, the Examiner found that "Ikeda et al.
does not teach each of the plurality of narrow width portions being centrally
positioned in a direction normal to the first direction between adjacent ones
of the plurality of holder units (busbar-receiving portion)." Final Act. 3. In
view of claim 1 's clear language, which the Specification in particular and
the prior art in general give no reason to interpret in any idiosyncratic way,
this finding is erroneous. As the Examiner found, Ikeda describes an
insulating guide comprising a plurality of holder units 79 connected by a
plurality of hinge-like resilient portions 74. See Ikeda, col. 10, lines 12--47;
Fig. 17. As can be seen in Ikeda's Figure 17 (reproduced below in modified
form), each of the hinge-like resilient portions 74 is centered in one of the
planes perpendicular to the direction defined by the plurality of connected
holder units 79.
F l G. I 7
13 T3 72 ~1
, I ;
'
81
Ikeda's FIG. 17 shows a plan view of the essential portion of the
battery-connecting plate of an embodiment of Ikeda's invention.
Because claim 1 only requires that the plurality of narrow with the
portions be centered in a single direction normal to a first direction defined
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Appeal2014-000985
Application 12/889,383
by the plurality of connected holder units, and not centered in all directions
normal to the first direction, the Examiner erred in finding that the subject
matter of claim 1 was not anticipated by Ikeda. We, therefore, affirm the
rejection of claim 1. We, however, do so because Ikeda anticipates claim 1,
rendering it unpatentable pursuant to 35 U.S.C. § 102(b ).
Appellant has not challenged any of the Examiner's factual findings
regarding claims 2-17. We therefore rely upon those findings and reject
(1) claims 2-5, 8-11, 16, and 17 under 35 U.S.C. § 102(b) as anticipated by
Ikeda, (2) claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Ikeda and Yoon, and (3) claims 12-15 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Ikeda and Shevock. We
also designate the rejection of these claims as new grounds of rejection.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1-17
of the '383 Application. Because we have relied on findings that differ from
those of the examiner in the Final Action, we designate our affirmance as
constituting a new ground of rejection.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b ), which provides that "[a] new ground of rejection pursuant
to this paragraph shall not be considered final judicial review." Section
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
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Appeal2014-000985
Application 12/889,383
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . ..
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . ..
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
kmm
AFFIRMED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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