Ex Parte Osborne et al

Patent Trials and Appeals Board

May 31, 2019

13974504 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/974,504 08/23/2013 Nathan Osborne
76237 7590 06/04/2019
Harness Dickey (Stanley B&D)
P.O. Box 828
Bloomfield Hills, MI 48303
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.
0275-001652/US 1055
EXAMINER
DUDA,RINAI
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
06/04/2019 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):
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN OSBORNE, ROBERT J. MARCINKOWSKI,
CHRISTOPHER HELD, RALPHY A. LOUIS, DANIEL J. WHITE,
MICHAEL FORSTER, BHANU V. GORTI, GEOFFREY S. HOWARD,
TONY J. AGRO, and MICHAEL VARIPATIS
Appeal2017-010421
Application 13/974,504
Technology Center 2800
Before JEREMY J. CURCURI, JUSTIN BUSCH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 8-14 and 24--26, which constitute all
the claims pending in this Application. Claims 1-7 and 15-23 were
canceled previously. Oral arguments were heard on May 14, 2019. A
transcript of the hearing will be added to the record in due course. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We reverse.
Appeal2017-010421
Application 13/974,504
CLAIMED SUBJECT MATTER
Appellants' invention "relates generally to a battery pack and more
particularly to a technique for diverting inductive energy from the cells of
the battery pack away from components connecting the battery pack to a
load." Spec. ,r 1. Appellants' claimed battery pack includes a container,
electrochemical cells, and at least two capacitors in a housing. Appeal
Br. 14, 16. The claimed capacitors and cells are each connected across first
and second terminals of the housing. Appeal Br. 14, 16. The capacitors are
"contained in the container" and the container has "a shape equivalent to"
and "dimensions equal to the given shape of' the electrochemical cells.
Appeal Br. 14, 16. Claims 8 and 25 are independent claims. Claim 8 is
reproduced below:
8. A battery pack for supplying power to a power tool, the
battery pack comprising:
a housing having a first terminal and a second terminal and
configured to detachable couple to the power tool;
at least one electrochemical cell contained in the housing,
the at least one electrochemical cell having a given shape and
connected across the first terminal and the second terminal of the
housing;
a container contained in the housing, the container having
a shape equivalent to the at least one electrochemical cell with
dimensions equal to the given shape of the at least one
electrochemical cell; and
two or more capacitors electrically coupled together and
contained in the container, where the two or more capacitors are
connected across the first terminal and the second terminal of the
housing.
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Appeal2017-010421
Application 13/974,504
REJECTIONS
Claims 8-11, 14, and 24--26 stand rejected under 35 U.S.C. § 103 as
obvious in view of Patel (US 5,821,006; Oct. 13, 1998). Final Act. 2--4.
Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as obvious in
view of Patel and Harshe (US 5,821,007; Oct. 13, 1998). Final Act. 4--5.
ANALYSIS
THE OBVIOUSNESS REJECTION OF CLAIMS 8-11, 14, AND 24--26
Appellants argue the claims as a group. Therefore, we select claim 8
as representative of claims 8-11, 14, and 24--26. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner finds Patel teaches or suggests every limitation recited
in claims 8-11, 14, and 24--26. Final Act. 2--4. The Examiner finds that,
although Patel does not describe "a container in the shape of an
electrochemical cell for enclosing the capacitors," Patel discloses that the
capacitors may form the can or label of the cell in order to decrease the size
of Patel's hybrid battery cells (i.e., a combination of cells and capacitors).
Final Act. 3.
Of particular relevance to Appellants' arguments, the Examiner finds
Patel's housing 605 (or the combined housing 605 and cover 610), which
contain Patel's cell arrangement 500 to form battery pack 600, teaches or
suggests the recited housing. Final Act. 2 ("Patel et al teaches a battery pack
... comprising a housing 605/610."); Ans. 6 "("Patel ... describes in figure
6 ... a battery pack comprising a housing 605 with a cover 610."); see Patel
4: 14--25. The Examiner finds Appellants' claims do not recite a container
for capacitors that is different than a container formed by the housing of the
battery pack. Ans. 5-7. The Examiner further finds, under the broadest
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Application 13/974,504
reasonable interpretation of a "container," Patel's "interior portion of box
605 forms a 'container' which contains the capacitors 200 which are
wrapped around battery cells 100." Ans. 6. The Examiner finds Appellants'
disclosure does not indicate the recited container must be different than the
recited housing. Ans. 6.
Appellants argue the claims separately and distinctly recite both a
container and a housing, which requires two different physical structures.
Appeal Br. 10-11; Reply Br. 2-3 (citing www.merriam-webster.com;
www.thesaurus.com). Appellants contend the plain and ordinary meaning of
a "container" is a physical structure, whereas the Examiner's construction of
a container as a space is unreasonably broad. Reply Br. 2--4. Appellants
also argue the Specification and the claims support construing the container
as a physical structure. Reply Br. 2-3. Specifically, Appellants argue
Figures 7 A through 7F depict the housing and container as separate and
distinct physical structures and claim 25 recites that the container is "affixed
to [a] support structure," indicating the recited container must be a physical
structure as opposed to a space inside a physical structure. Reply Br. 2--4.
Appellants argue Patel discloses a housing that contains cells and capacitors,
but does not disclose a separate "container contained in the housing," which
further contains the capacitors, as recited in claim 8. Appeal Br. 10-11.
Patel describes a wrapped "three-cell capacitor ... fabricated to fit the
form factor of a standard AA cell" that may be "rolled around the cell."
Patel 3:38--43, 4:35--44. Patel explains that the wrapped capacitor may
require little, if any, extra space "by modifying a battery cell so that the
wrapped capacitor is used as the battery label or the battery can, thereby
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Appeal2017-010421
Application 13/974,504
substituting the capacitor for a component that would otherwise itself require
space accommodations within a battery pack." Patel 3 :59---63, 4:35--44.
Appellants' arguments persuade us the Examiner erred because
Patel's cited disclosures do not teach or suggest "a container contained in the
housing," as recited in claim 8. To the extent the Examiner's rejection is
based on a construction of claim 8 that does not require a container that is
separate and distinct from a housing, we determine such a construction is
inconsistent with the plain words of claim 8. Specifically, claim 8 separately
recites a housing and "a container contained in the housing." Claim 8's
recitation of the container being "contained in the housing" demonstrates
that the housing and container are different elements. To the extent the
Examiner finds the interior walls of the housing teach or suggest the recited
container and the exterior walls of the housing teach or suggest the recited
housing, we disagree. The interior and exterior portions of every wall of
Patel's housing 605 are part of the housing and necessary to contain the cells
and capacitors-i.e., Patel's housing cannot serve to house the battery pack
without all of its walls and each wall necessarily has an interior and exterior
portion.
We also disagree with the Examiner's construction of the recited
container as encompassing a space formed by the interior of the housing.
See Ans. 6 (finding that the "interior portion of box 605 forms a 'container'
which contains the capacitors"). We agree that the plain and ordinary
meaning of a container requires a physical structure. We also agree that
Appellants' claim language and Specification support such a construction.
See Spec. Figs. 7A-7F; Appeal Br. 14--16.
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Application 13/974,504
The Examiner fails to identify any physical structure separate and
distinct from Patel's housing that teaches or suggests the recited container.
Instead, the Examiner states the claims do not require the container to be
"different than the container formed by the housing." Ans. 5. Regardless of
whether the Examiner finds Patel's housing itself or the space formed by the
interior of Patel's housing teaches or suggests both the recited housing and
the recited container, we disagree for the reasons explained above. 1
Accordingly, we do not sustain the Examiner's rejection of claim 8 as
obvious in view of Patel. Nor do we sustain the Examiner's rejection of
independent claim 25, 2 which also recites "a container contained in the
housing," or claims 9-11, 14, 24, and 26, which ultimately depend from one
of claims 8 and 25, as obvious in view of Patel.
1 As explained above, Patel discloses a "three-cell capacitor ... fabricated to
fit the form factor of a standard AA cell." Patel 3:38-39. It is possible such
a three-cell capacitor may inherently require, or otherwise suggest, a
"container" similar to the container recited in claim 8. However, the
pending rejection is not based on such a finding and we do not have the
benefit of any evidence or arguments in support of or against such findings
and will not speculate here in the first instance. The Patent Trial and Appeal
Board is a review body rather than a place of initial examination. We leave
it to the Examiner to ascertain the appropriateness of any further rejections
based on these or other references. Our decision not to enter a new ground
of rejection should not be considered as an indication regarding the
appropriateness of further rejection or allowance of the claims.
2 Claim 25 recites "a container contained in the housing ... where the
compartment has [the] same solid geometry" as the cells. Appeal Br. 16
(emphasis added). For purposes of this Decision, we understand "the
compartment" to refer back to the "container."
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Appeal2017-010421
Application 13/974,504
THE OBVIOUSNESS REJECTION OF CLAIMS 12 AND 13
The Examiner finds the combination of Patel and Harshe teaches or
suggests every limitation recited in claims 12 and 13, which directly depend
from claim 8. Final Act. 4--5. The Examiner relies on Harshe to teach or
suggest the fuses, switches, and controller recited in claims 12 and 13, but
the Examiner does not rely on Harshe to cure the deficiencies of Patel noted
above. Therefore, for the reasons discussed above, we do not sustain the
Examiner's rejection of claims 12 and 13 as obvious, which incorporate the
limitations of claim 8, from which they depend.
DECISION
We reverse the Examiner's decision to reject claims 8-14 and 24--26
under 35 U.S.C. § 103 as obvious.
REVERSED
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