Ex Parte Kotik

Patent Trial and Appeal Board

Apr 17, 2018

14021156 (P.T.A.B. Apr. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/021,156 09/09/2013
10800 7590 04/18/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Mark M. Kotik
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.
1576-1432 7170
EXAMINER
USYATINSKY, ALEXANDER
ART UNIT PAPER NUMBER
1727
MAILDATE DELIVERY MODE
04/18/2018 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 MARK M. KOTIK
Appeal2017-006783
Application 14/021, 156 1
Technology Center 1700
Before TERRY J. OWENS, BRIAND. RANGE, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant seeks our review of the
Examiner's rejections of claims 1-3, 5-10, and 12-20 under 35 U.S.C.
§ 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We reverse.
1 Appellant is the Applicant, Robert Bosch Battery Systems, LLC, which is
also identified as the real party in interest. App. Br. 2.
Appeal2017-006783
Application 14/021, 156
SUBJECT MATTER
The subject matter on appeal relates to a pressure relief device
attached to an outer surface of an electric vehicle battery pack. Spec. i-fi-1 2,
6.
Independent claim 1 is illustrative of the claimed subject matter and is
copied below from the Claims Appendix2 with key limitations at issue in this
appeal italicized:
1. A pressure relief device [200] attached to an outer surface of a
battery pack [204], the pressure relief device comprising:
an adhesive [216] arranged around an opening [208] in the
outer surface of the battery pack, the outer surface defining a
plane; and
a hat portion [212] arranged over the opening, the hat
portion comprising:
an outer ring portion [220] attached to the outer
surface of the battery pack via the adhesive; and
an inner portion [224] that is spaced apart from the
plane so as to form a gap between the outer surface and
the inner portion [228],
wherein a diameter of the inner portion along the plane is greater
than a diameter of the opening.
Claims App 'x. 2 (emphasis added).
Appellant's Figures 2B and 3 are illustrative of the claimed subject
matter and are depicted below:
2 Claims Appendix submitted with Response to Notice of Non-Compliant
Appeal Brief dated August 19, 2016.
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Appeal2017-006783
Application 14/021, 156
FIG. 28
216
208
FIG. 3
3
212
200~
-220
212
228
l200
Appeal2017-006783
Application 14/021, 156
Figures 2B and 3 illustrate a pressure relief device attached to the
outer surface of a battery pack.
REJECTIONS
The following claims are rejected under 35 U.S.C. § 103(a): claims 1-
3, 5-10, 12-16, 18, and 19 as unpatentable over Takashi (JP 01311558,
published Dec. 15, 1989, Abstract) in view of Anzai (US 2011/0045325 Al,
published Feb. 24, 2011), as evidenced by Anglin (US 2007/0148533 Al,
published June 28, 2007), and claims 17 and 20 as unpatentable over
Takashi in view of Anzai, as evidenced by Anglin and further evidenced by
Nemoto (US 2010/0032039 Al, published Feb. 11, 2010).
OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
We need only address independent claims 1 and 8 which each require
"an inner portion [of a hat portion arranged over an opening] that is spaced
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Appeal2017-006783
Application 14/021, 156
apart from the [plane defined by the outer surface of a battery pack] so as to
form a gap between the outer surface and the inner portion."
Relevant to this appeal, the Examiner acknowledges that Takashi fails
to teach or suggest this limitation. Final Act. 4, 8. To remedy this
deficiency of Takashi, the Examiner relies on Anzai for its teaching of a gap
18 formed within gas exhaust unit 12 "between the bottom wall [15] of a
periphery of the opening and the covering body [16]." Final Act. 4--5, 8-9
(citing Anzai, Abstract; Figs. 2 and 3). Anzai's Figure 2 is depicted below:
FIG. 2
12 __ A __
19 14 13 15 10
Anzai' s Figure 2 illustrates "an enlarged view showing a cross section
of a principal part of [a] lead storage battery." Anzai i-f 21. According to
Anzai' s description of Figure 2, gap 18 is formed when "first protrusions 20
are discretely provided on covering body 16 on the side that faces bottom
wall 15 in at least a part between bottom wall 15 in the periphery of opening
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Appeal2017-006783
Application 14/021, 156
13a and covering body 16." Anzai i-f 69. The Examiner states that Anzai
teaches that "it is preferable that a gas exhaust path is formed such that it is
bent by gap" 18 because bending the exhaust flow with such gap 18 results
in the suppression of exhausting electrolytic solution mist and water vapor to
the exterior of the battery. Final Act. 5, 9 (citing Anzai i-f 73).
Appellant contends that the Examiner's reliance of Anzai's gap 18
between covering body 16 and bottom wall 15, contained in gas exhaust unit
12, is erroneous because it is "located entirely within the battery housing
(1 O)," thus, Anzai "fails to teach a gap formed between the outer surface of
the housing and a hat portion of a pressure relief device" as required by
independent claims 1 and 8. App. Br. 7-8, 17.
The Examiner responds to this argument by stating it appears "that
Anzai teaches such gap" and provides an annotated Figure 2 of Anzai (Ans.
19), illustrated below.
The Examiner's annotated Figure 2 of Anzai depicts a gas-exhaust
unit 12 contained within a battery housing. Importantly, however, the
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Appeal2017-006783
Application 14/021, 156
Examiner changes the mapping of Anzai' s gap from element 18 (Final Act.
4, 9 (citing Anzai, Fig. 2), See also Anzai i-f 69) to an un-numbered open
section appearing between an un-numbered outer surface and drop-off
prevention member 19. Ans. 19. Rather than provide a rationale for how
the skilled artisan would have been motivated to modify the prior art with
this newly identified "gap" of Anzai, the Examiner instead continues to rely
(Ans. 21) on the rationale as set forth in the Final Rejection (Final Act. 5
(citing Anzai i-f 73)), which is directed to gap 18.
Thus, Appellant is correct (Reply Br. 5) that the Examiner "provides a
completely different interpretation of the Anzai reference compared to the
interpretation provided in the [Final] Office Action." On this record, the
Examiner has not explained how Anzai' s gap 18 meets the claimed
requirement that the gap be "between the outer surface [of the battery pack]
and the inner portion" of the hat portion, or would have otherwise been
obvious to the skilled artisan. Furthermore, the Examiner has failed to
provide a rationale that supports modifying the pressure relief device of
Takashi with the newly identified "gap" in the Answer.
It follows that we reverse the rejections.
DECISION
REVERSED
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