Ex Parte Quinn et al

Patent Trial and Appeal Board

Feb 29, 2016

12608154 (P.T.A.B. Feb. 29, 2016)

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.
12/608,154 10/29/2009 Shawn G. Quinn P008682-NAPD-LCH 5945
81466 7590 02/29/2016
MacMillan, Sobanski & Todd, LLC - GM
One Maritime Plaza
720 Water Street
5th Floor
Toledo, OH 43604
EXAMINER
CHMIELECKI, SCOTT J
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
02/29/2016 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 SHAWN G. QUINN, GREGORY J. FADLER,
BRIAN J. SCHACHERMEYER, DAVID B. DECLERCK, and
MILIND S. GANDHI
____________

Appeal 2014-009308
Application 12/608,154
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 through 10. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The subject matter on appeal is directed to an apparatus for supporting
a battery (Spec. ¶ 4), and details of the appealed subject matter are recited in

1 Appellants identify the Real Party in Interest as GM Global Technology
Operations LLC (Appeal Brief filed February 11, 2014 (“App. Br.”) at 1.)
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illustrative claim 1 reproduced below from the Claims Appendix to the
Appeal Brief.
1. An apparatus for supporting a battery, comprising:
a tray including a support surface, a recess having an
elevation that is lower than an elevation of the support surface,
ribs located in the recess and extending to the elevation of a top
of the support surface;
thermal insulation in direct contact with and supported on
top of the ribs and in direct contact with and supported on the
support surface; and
a battery contacting the insulation and supported on the
ribs and the support surface.

(App. Br. 13, Claims App’x.)

Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer entered on June 19, 2014
(“Ans.”):
1. Claims 1 through 10 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of U.S. Patent 5,378,555 issued in the name of Waters on
January 3, 1995 (hereinafter referred to as “Waters”) in view of U.S. Patent
Application Publication 2006/0068278 A1 published in the name of Bloom
on March 30, 2006 (hereinafter referred to as “Bloom”);
2. Claims 1, 3, and 4 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of U.S. Patent 6,102,356 issued in the name of Huntley
on August 15, 2000 (hereinafter referred to as “Huntley”) in view of U.S.
Patent 5,278,002 issued in the name of Hiers on January 11, 1994
(hereinafter referred to as “Hiers”);
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3. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Huntley in view Hiers and U.S. Patent Application Publication
2003/0039575 A1 published in the name of Uchida on February 27, 2003
(hereinafter referred to as “Uchida”); and
4. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Huntley in view Hiers and U.S. Patent 6,510,833 B1 issued in
the name of Anthon on January 28, 2003 (hereinafter referred to as
“Anthon”).
DISCUSSION
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we determine that Appellants have identified
reversible error only in the Examiner’s rejection of claims 3, 4, 8, and 9
under 35 U.S.C. § 103(a) as unpatentable over Waters and Bloom.
Accordingly, we reverse this § 103(a) rejection of claims 3, 4, 8, and 9 for
the reasons set forth in the Appeal Brief, but affirm the Examiner’s § 103(a)
rejections of claims 1, 2, 5–7, and 10 as unpatentable over Waters and
Bloom, claims 1, 3, and 4 as unpatentable over Huntley and Hiers, claim 2
as unpatentable over Huntley, Hiers, and Uchida, and claim 5 as
unpatentable over Huntley, Hiers, and Anthon for the reasons set forth in the
Final Action entered September 11, 2013 (“Final Act.”) and the Answer.
We add the discussion below primarily for emphasis and completeness.
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Rejection of Claims 1, 2, 5–7, and 10 as unpatentable over Waters and
Bloom
Appellants argue claims 1, 2, 5–7, and 10 as a group. (See generally
App. Br. 6–7.) Therefore, we select claim 1 as representative, and decide
the propriety of the rejection of this groups of claims based on claim 1 alone.
(37 C.F.R. § 41.37(c)(1)(iv).)
To prevail in an appeal to this Board, Appellants must adequately
explain or identify reversible error in the Examiner’s § 103(a) rejection. See
37 C.F.R. § 41.37(c)(1)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining that even if the examiner had failed to
make a prima facie case, it has long been the Board’s practice to require an
appellant to identify the alleged error in the examiner’s rejections); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010), quoting Shinseki v.
Sanders, 556 U.S. 396, 409 (2009) (“the burden of showing that the error is
harmful normally falls upon the party attacking the agency’s
determination.”).
The Examiner finds that Waters discloses an apparatus comprising a
supporting tray 82; a pocket 20 formed by walls 16 and partitions 18 and
having a floor 22; ribs 24 located in the pocket 20 that extend upward from
the floor 22; and a battery 6 seated within the pocket 20 and resting upon the
top surface of the ribs 24. (Ans. 2.) The Examiner finds that the top surface
of at least some of ribs 24 disclosed in Waters corresponds to the support

2 The numerals provided in this paragraph refer to the reference numbers
indicated in Figure 2 of Waters.
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surface for the battery recited in claim 1; the floor 22 of the pocket 20
disclosed in Waters corresponds to the recess recited in claim 1 having an
elevation that is lower than an elevation of the support surface; some ribs
located in pocket 20 disclosed in Waters correspond to the ribs located in the
recess and extending to the elevation of a top of the support surface recited
in claim 1; and battery 6 disclosed in Waters corresponds to the battery
supported on the ribs and the support surface recited in claim 1. (Ans. 2,
14.)
The Examiner concedes that Waters does not disclose that the battery
contacts thermal insulation that is in direct contact with, and supported on
top of, ribs and the support surface. To remedy this deficiency in Waters,
the Examiner relies on Bloom’s disclosure of a battery positioned within a
tray 403 on which an insulating sheet 45 is mounted. (Ans. 2–3.) The
Examiner finds that Bloom discloses that the insulation protects the battery
from extreme operating temperatures. (Ans. 3.) The Examiner concludes in
essence that placing insulation between the battery 6 and the top surface
(support surface) of ribs 24 disclosed in Waters would have been obvious to
one of ordinary skill in the art at the time of the invention to protect the
battery from extreme operating temperatures as disclosed in Bloom, thus
improving the battery’s performance. (Id.)

3 The numerals provided in this sentence refer to the reference numbers
indicated in Figures 5 and 6 of Bloom.
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Appellants appear to misapprehend the Examiner’s rejection, and
argue that the floor 22 of Waters does not correspond to the support surface
recited in claim 1, as supposedly indicated by the Examiner. (App. Br. 6.)
Appellants also argue that ribs 24 disclosed in Waters do not correspond to
the ribs recited in claim 1 because ribs 24 disclosed in Waters do not extend
to the top of the walls 16 or partitions 18. (App. Br. 6–7.) However, as
discussed above, the Examiner does not indicate that the floor 22 disclosed
in Waters corresponds to the support surface recited in claim 1. Rather, the
Examiner indicates that the top of at least some of ribs 24 disclosed in
Waters corresponds to the recited support surface. (Ans. 2, 14.) In addition,
the Examiner finds that some of ribs 24 disclosed in Waters extend to the top
of the support surface because the top of ribs 24 correspond to the support
surface. (Id.) Appellants’ arguments therefore lack persuasive merit
because they are not responsive to the rejection as set forth by the Examiner.
Appellants also argue that “Bloom teaches away from putting the
insulation in each pocket as it specifically teaches the need for an air
circulation passage (25) below the battery pack (10) and above the insulation
(20) [shown in the battery pack assembly of Figure 1].” (App. Br. 7.)
However, Bloom indicates that the battery pack assembly shown is Figure 1
is exemplary, and further states that “air may be circulated through passages
25”. (Bloom ¶¶ 23, 24.) Thus, Bloom does not disclose that an air
circulation passage is a necessary feature of the invention. Rather, Bloom
teaches that the air circulation passage is optional. Moreover, Bloom does
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not criticize, discredit, or otherwise discourage placing thermal insulation in
contact with a battery, and in direct contact with and supported on a support
surface for the battery. Contrary to Appellants’ arguments (App. Br. 7),
Bloom actually appears to disclose such an arrangement in Figures 5 and 6,
and ¶ 55. Therefore, we find that Bloom does not teach away from thermal
insulation as recited in claim 1. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004); In re Gurley, 27 F.3d 551, 552–53 (Fed. Cir. 1994).
Appellants also argue that the Examiner’s statement that placing
insulation between the battery and support surface would “facilitate
improved battery performance” is mere speculation. (App. Br. 7.)
However, Bloom’s disclosure of thermal insulating elements that protect
batteries from extreme temperatures—characterized as undesirable—
reasonably would have suggested to one of ordinary skill in the art that such
insulation could improve the performance of the battery. (Bloom ¶¶ 12, 29,
39, 58, 61); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for [an examiner] can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (it is
well established that in evaluating references it is proper to take into account
not only the specific teachings of the references but also the inferences
which one skilled in the art would reasonably be expected to draw
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therefrom). We therefore find Appellants’ arguments lacking in persuasive
merit.
Thus, on this record, Appellants have not identified reversible error in
the Examiner’s determination that one of ordinary skill in the art, armed with
the disclosures of Waters and Bloom, would have been led to the subject
matter of claims 1, 2, 5–7, and 10 within the meaning 35 U.S.C. § 103(a).
We accordingly sustain the Examiner’s § 103(a) rejection of these claims as
unpatentable over Waters and Bloom.
Rejection of Claims 3, 4, 8, and 9 as unpatentable over Waters and Bloom
Appellants argue claims 3 and 8 as a group, and argue claims 4 and 9
as a group. (App. Br. 8–10.) Therefore, we select claim 3 as representative
of the first group, and select claim 4 as representative of the second group,
and decide the propriety of the rejection of claims 3, 4, 8, and 9 based on
these claims alone. (37 C.F.R. § 41.37(c)(1)(iv).)
Claim 3 requires the tray to further comprise a horizontal plane
surrounding at least a portion of the recess and located outboard of the
support surface, and requires the battery to be affixed on top of the
horizontal plane. Claim 4 requires the tray to comprise the horizontal plane
recited in claim 3, and further requires the tray to comprise a fastening
device that secures the battery on top of the horizontal plane.
With respect to claim 3, the Examiner finds that Waters discloses that
the tray 8 comprises perimetrical flange 26, which the Examiner finds
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corresponds to the horizontal plane recited in claims 3 and 4. (Ans. 3.) The
Examiner concedes that “Waters does not teach that the battery is affixed
atop the horizontal plane,” but the Examiner concludes that “it would have
been obvious for one with ordinary skill in the art to have arranged the
horizontal plane to be placed so [] the battery could be affixed to its top,
thereby facilitating improved battery stability and operation.” (Ans. 4 citing
In re Japikse, 181 F.2d 1019 (CCPA 1950)).
However, we agree with Appellants that the Examiner has not
demonstrated that there would have been an apparent reason or suggestion to
modify Waters’ apparatus in such a way as to arrive at the subject matter of
claim 3. (App. Br. 8–9.) Specifically, the Examiner has not identified any
teaching in Waters or Blooms or proffered any adequate explanation or
evidence to show that one of ordinary skill in the art would have had an
apparent reason or suggestion to rearrange the features of Waters’ apparatus
in such a way that would have resulted in the battery 6 being affixed on top
of the perimetrical flange 26. As discussed above, the batteries 6 disclosed
in Waters are seated within a pocket 20 formed by walls 16 and partitions 18
and rest upon the top surface of ribs 24. (Waters col. 4, ll. 39–47; Fig. 2.)
The perimetrical flange 26 disclosed in Waters is located outside of the walls
16 and extends around the perimeter of the tray 8. (Id.) Yet, on this record,
the Examiner has not adequately explained, or provided any evidence to
show, why one of ordinary skill in the art reasonably would have had any
reason to remove the walls and rearrange the perimetrical flange 26 of
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Waters’ apparatus to affix the battery on top of the perimetrical flange 26
contrary to the teachings of Waters.
With respect to claim 4, the Examiner finds that the walls 16 and
partitions 18 of Waters’ apparatus correspond to the fastening device recited
in claim 4 that secures the battery on top of a horizontal plane. (Ans. 4.) As
discussed above, the Examiner finds that the perimetrical flange 26 of
Waters’ apparatus corresponds to the horizontal plane recited in claim 4.
(Id.) The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to rearrange Waters’ apparatus such that the battery
could be fastened to the top of a horizontal plane, which would improve the
stability and operation of the battery. (Ans. 4–5 citing In re Japikse, 181
F.2d 1019 (CCPA 1950)). However, we agree with Appellants that the walls
16 and partitions 18 of Waters’ apparatus do not correspond to a fastening
device as recited in claim 4 that secures the battery to the perimetrical flange
26. (App. Br. 9.) The Examiner has not articulated an apparent reason or
suggestion that would have prompted one of ordinary skill in the art to
rearrange the features of Waters’ apparatus in such a way as to utilize walls
16 and partitions 18 as a fastening device to secure the battery on top of the
perimetrical flange 26. The Examiner has not adequately explained, or
provided any evidence to show, why one of ordinary skill in the art
reasonably would have led to t such rearrangement contrary to the teaching
of Waters.
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Accordingly, on this record, we concur with Appellants that the
Examiner’s evidence and explanation are not sufficient to establish a prima
facie case of obviousness of the subject matter recited in claims 3, 4, 8, and
9 in view of the disclosures of Waters and Bloom within the meaning of 35
U.S.C. § 103(a). We therefore do not sustain this rejection of these claims.
Rejection of Claims 1, 3, and 4 as unpatentable over Huntley and Hiers
Appellants argue claims 1, 3, and 4 as a group. (See generally App.
Br. 10–11.) Therefore, we select claim 1 as representative and decide the
propriety of this rejection based on claim 1 alone. (37 C.F.R. §
41.37(c)(1)(iv).)
The Examiner finds that Huntley discloses a tray 104 having a base 12
and a top surface 14, and including slots 36, and upwardly extending support
bars 50. (Ans. 10.) The Examiner finds that Huntley discloses that a battery
is supported by upwardly extending support bars 50. (Id.)
The Examiner finds that the top surface of at least some support bars
505 disclosed in Huntley corresponds to the support surface for the battery
recited in claim 1; the top surface 14 of the tray base 12 disclosed in Huntley
corresponds to the recess recited in claim 1 having an elevation that is lower
than an elevation of the support surface; at least some support bars 50

4 The numerals provided in this paragraph refer to the reference numbers
indicated in Figure 1 of Huntley.
5 The numerals provided in this paragraph refer to the reference numbers
indicated in Figure 4 of Huntley.
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disclosed in Huntley correspond to ribs located in the recess and extending
to the elevation of a top of the support surface recited in claim 1; and the
battery disclosed in Huntley corresponds to the battery supported on the ribs
and the support surface recited in claim 1. (Ans. 10–11.)
The Examiner concedes that Huntley does not disclose that the battery
contacts thermal insulation that is in direct contact with, and supported on
top of, ribs and the support surface. (Ans. 10.) To remedy this deficiency in
Huntley, the Examiner relies on Hiers’ disclosure of an envelope 306
enclosing insulation 31 that is strategically placed in a battery cover 1 in
order to interrupt the flow of heat between the battery and the cover. (Id.)
The Examiner finds that Hiers discloses that the insulation protects the
battery from excessive temperatures. (Id.) The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to provide
insulation between the battery disclosed in Huntley and the top surface of
support bars 50 in order to protect the battery from excessive temperatures.
(Ans. 10–11.)
Appellants argue that Huntley does not disclose a recess having an
elevation that is lower than the elevation of the support surface, and ribs
located in the recess and extending to the elevation of a top of the support
surface. (App. Br. 10.) Appellants also argue that Huntley does not disclose
a battery supported by ribs. (Id.) However, Figure 4 of Huntley illustrates

6 The numerals provided in this paragraph refer to the reference numbers
indicated in Figures 1 and 2 of Hiers.
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that the top surface 14 of the tray base 12 has an elevation lower than the
elevation of the upwardly extending support bars 50, and Huntley discloses
that support bars 50 support the battery. (Huntley col. 5, l. 65–col. 6, l. 4.)
We therefore agree with the Examiner that the top surface of at least some
support bars 50 disclosed in Huntley corresponds to the support surface for
the battery recited in claim 1, the top surface 14 of Huntley’s tray base 12,
which has an elevation lower than the elevation of support bars 50,
corresponds to the recess recited in claim 1 having an elevation that is lower
than the elevation of the support surface, and at least some support bars 50
correspond to the ribs recited in claim 1 that extend to the top of the support
surface and support the battery. (Ans. 10–11.)
Appellants also appear to argue that Hiers does not disclose that the
insulation is in direct contact with, and supported on, the support surface,
and does not disclose that the battery contacts the insulation, as recited in
claim 1. (App. Br. 11.) However, Appellants’ arguments are improperly
based only on Hiers, and do not take into account the combined disclosures
of Huntley and Hiers. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
We agree with the Examiner that Hiers’ disclosure of a heat insulating
material that protects batteries from excessive temperatures reasonably
would have suggested to one of ordinary skill in the art that adding
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insulation between the battery and the support bars 50 of Huntley’s
apparatus could improve the performance of the battery. (Ans. 10–11; Hiers
col. 3, ll. 7–17.)
Therefore, on this record, Appellants have not identified reversible
error in the Examiner’s determination that one of ordinary skill in the art,
armed with the disclosures of Huntley and Hiers, would have been led to the
subject matter of claims 1, 3, and 4 within the meaning 35 U.S.C. § 103(a).
We accordingly sustain the Examiner’s § 103(a) rejection of these claims as
unpatentable over Huntley and Hiers.
Rejection of Claim 2 as unpatentable over Huntley, Hiers, and Uchida
Appellants rely on the same arguments advanced in connection with
the Examiner’s rejection based on Huntley in view of Hiers, and further
assert that Uchida fails to remedy the deficiencies of these references. (App.
Br. 11.) Because we are unpersuaded of reversible error in the Examiner’s
rejection based on Huntley and Hiers as discussed supra, Appellants’
position as to this ground of rejection is equally without merit. Accordingly,
we sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable
over Huntley, Hiers, and Uchida.
Rejection of Claim 5 as unpatentable over Huntley, Hiers, and Anthon
Appellants rely on the same arguments advanced in connection with
the Examiner’s rejection based on Huntley in view of Hiers, and further
assert that Anthon fails to remedy the deficiencies of these references. (App.
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Br. 12.) Because we are unpersuaded of reversible error in the Examiner’s
rejection based on Huntley and Hiers as discussed supra, Appellants’
position as to this ground of rejection is equally without merit. Accordingly,
we sustain the rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable
over Huntley, Hiers, and Anthon.

CONCLUSION
In view of the reasons set forth above, we reverse the Examiner’s
decision rejecting claims 8 and 9 under § 103(a), but affirm the decision
rejecting claims 1–7, and 10 under § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART