Ex Parte MAI et al

Patent Trial and Appeal Board

Jan 22, 2018

13412157 (P.T.A.B. Jan. 22, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/412,157 03/05/2012 Alexander MAI 080437.64278US 9117
23911 7590
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
GRANT, ROBERT J
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
01/24/2018 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):
edocket @ crowell. com
tche @ crowell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER MAI
and JOACHIM FROESCHL
Appeal 2017-004242
Application 13/412,157
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
PER CURIAM.
DECISION ON REHEARING
Appellants request rehearing of a Decision on Appeal mailed
November 27, 20171 reversing the Examiner’s decision to finally reject
claims 1, 2, 8, 9, 11—14, and 16—21, but entering a new ground of rejection
for claims 1, 2, 8, 9, 11—14, 20, and 21 under 35 U.S.C. § 103(a) over
Froeschl in view of Yang and Venzke.
A Request for Rehearing2 must state with particularity the points
1 Hereinafter, “Decision.”
2 Hereinafter, “Request”.
Appeal 2017-004242
Application 13/412,157
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in the Briefs before the Board and evidence not
previously relied upon in the Briefs are not permitted in a Request for
Rehearing except as permitted by 37 C.F.R. §§ 41.52(a)(2) and (a)(3). See
37 C.F.R. § 41.52(a)(1) (2016).
We have reconsidered the Decision in light of Appellants’ comments
in the Request, and we find no error in the disposition of the new ground of
rejection. We remain of the opinion that the subject matter of the claims is
unpatentable in view of the prior art applied in the new ground.
I.
In the Request, Appellants request reconsideration only for claims 2
and 14 under the new ground of rejection set forth in the Decision. Request
1. Appellants argue there would have been a lack of reason to modify
Froeschl in view of Yang and Venzke because one of ordinary skill in the art
would not have had a reason to select a resistor with a positive temperature
coefficient (PTC) characteristic, as recited in claims 2 and 14. Id.
Specifically, Appellants assert that Venzke discloses changes in temperature
cause changes in resistance, which can in turn introduce objectionable
errors. Id. at 3. Appellants contend, therefore, Venzke discloses a resistor
that can be maintained at a constant temperature. Id. Appellants argue, in
view of this consideration, that one of ordinary skill in the art would not
have had a reason to use a PTC discharge resistor, as recited in claims 2 and
14, in an arrangement that includes Venzke’s heat sink because it would
have frustrated the purpose of using the heat sink and because Yang is
unconcerned with temperature and its effects. Id. at 3^4. Appellants also
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Application 13/412,157
argue that “the use of PTC type resistors in the arrangement of Venzke
would be directly inconsistent with the acknowledged function and purpose
of Venzke’s heat sink.” Id. at 2. Appellants further contend that merely
because voltage impedances used in the arrangement of Yang can be
interchangeable does not mean all impedances are interchangeable in any
arrangement. Id. at 1—2.
Appellants’ arguments are unpersuasive. As stated in the Decision,
Froeschl discloses an energy storage device including a cell stack having a
plurality of cells (items la3 in Figures 1 and 2) connected in series and a
plurality of balancing circuits (items 2 in Figures 1 and 2). Froeschl 1:4—5,
4:1—20. Froeschl discloses that a balancing circuit is turned on when an
upper reference voltage is exceeded (i.e., detecting when a defined voltage
value for a respective cell is exceeded, as recited in claim 13), which results
in current flowing through a resistor 2g (i.e., discharge resistor, as recited in
claims 1,13, and 20) until it falls below the upper reference voltage (i.e.,
discharging the respective cell via a discharge resistor, as recited in claims
13 and 21). Id. 5:16—25. The new ground of rejection set forth in the
Decision is a modification of the device of Froeschl in view of Yang and
Venzke. Appellants’ arguments regarding the non-obviousness of using a
PTC resistor in the arrangement of Venzke do not adequately address the
new ground of rejection.
As stated in the Decision, Froeschl does not disclose a discharge
resistor having a PTC characteristic, as recited in claims 2 and 14. However,
Yang demonstrates the equivalence of using a resistor with a standard
3 Throughout this Decision, for clarity, we present labels to elements in
figures in bold font, regardless of their presentation in the original document.
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Application 13/412,157
temperature coefficient characteristic, a positive temperature coefficient, and
a negative temperature coefficient. Yang 3:32—37. In other words, Yang
recognizes resistors having a characteristic (e.g., resistance) that changes
with temperature (either positively or negatively) are interchangeable with a
resistor that lacks such a characteristic and thus does not change
significantly with temperature. Put another way, Yang discloses the
interchangeability of a standard temperature coefficient discharge resistor
and a PTC discharge resistor, regardless of whether there is a temperature
change or not.
In view of Yang’s disclosure of equivalence between a discharge
resistor having a standard temperature coefficient and a PTC discharge
resistor, it would have been obvious to one of ordinary skill in the art to
substitute a PTC discharge resistor, as an art recognized equivalent, for
FroeschTs discharge resistor that has a standard temperature coefficient. An
express teaching need not be present in the art to support the substitution of
one element for another element used for the same purpose. In re Font, 675
F.2d 291, 301 (CCPA 1982). With regard to Appellants’ argument that
voltage impedances might not be interchangeable in any arrangement,
Appellants have not cited any evidence or persuasive technical reasoning
that a PTC resistor would not function in the device of Froeschl.
In addition, “[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” Id.', see also In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of
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Application 13/412,157
the references be physically combinable to render obvious the invention
under review”).
Although Froeschl does not disclose or suggest a common heat sink,
as recited in claims 1, 11, 13, 20, and 21, Venzke discloses such a heat sink.
Venzke 20, 21, and Fig. 2. Venzke discloses that the common heat sink
maintains the resistors at a constant temperature above ambient, which
avoids problems due to changes in resistance of the resistors as their
temperature changes. Id. 2, 10, and 21. It would have been obvious to
one of ordinary skill in the art to modify the device of Froeschl to include a
common heat sink so the discharge resistors of Froeschl are mounted upon
and thermally coupled by the common heat sink, which permits the
temperature of the discharge resistors to be controlled, as disclosed by
Venzke. For instance, temperature changes of the discharge resistors may be
kept the same, as suggested by Venzke. Venzke Tflf 1,2, 17.
Appellants have not cited any evidence or persuasive technical
reasoning that the device of Froeschl, as modified in view of Yang and
Venzke, would not experience temperature changes that could be managed
by the common heat sink of Venzke. In fact, Froeschl discloses that its
device includes a temperature measuring circuit 4 to determine the
temperature of a cell assembly 1. Id. 4:1—8, 5:29-37. Thus, Froeschl
contemplates that its device would experience temperature changes.
Appellants further assert that the use of a PTC resistor, as recited in
claims 2 and 14, “allows the absorption capacity of the heat sink to be
reached, so that its temperature rises, when all of the energy accumulators
are discharged simultaneously,” citing paragraph 8 of the Specification, and
assert that a resistance change due to self-heating is intended and desirable
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Application 13/412,157
for the PTC resistors of the claimed invention. Id. at 2. However, we are
unable to find support in paragraph 8 of the Specification for the absorption
capacity of the heat sink to be reached due to the use of a PTC. Nor do
claims 2 and 14 relate the use of a PTC discharge resistor and the maximum
absorption capacity of the common heat sink being reached. Thus, the
benefit asserted by Appellants does not relate to the claimed invention or
flow from Appellants’ disclosure. Moreover, Appellants have not cited
evidence of unexpected results for the claimed invention, such as any
unexpected results due to the use of a PTC discharge resistor with a common
heat sink, as recited in the claims.
Moreover, to the extent Appellants have identified an advantage for
using a PTC resistor to maximize the use of a common heat sink, as stated in
the Request, we note “[a]s long as some motivation or suggestion to
combine the references is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons
contemplated by the inventor.” In re Beattie, 91A F.2d 1309, 1312 (Fed. Cir.
1992). Here, Yang provides a sufficient rationale for one of ordinary skill in
the art to have used a PTC resistor as a substitute for FroeschFs standard
temperature coefficient discharge resistor by disclosing their equivalence.
There is no requirement that the prior art disclose the advantages asserted by
Appellants or any relationships between a discharge resistor and heat sink
that are not recited in the claims.
Accordingly, Appellants have not persuasively shown that the Board
misapprehended or overlooked any of the arguments raised in the Briefs or
that the Decision should otherwise be modified or reversed.
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II.
Appellants’ Request for Rehearing has been granted to the extent that
the Decision has been reconsidered in light of Appellants’ arguments.
However, the Request is otherwise denied, and the Decision is not modified
in any respect.
This Decision on the Request for Rehearing incorporates our
Decision, mailed November 27, 2017, is final for the purposes of judicial
review. See 37 C.F.R. § 41.52(a)(1).
III.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED
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