Ex Parte Sekizaki et al

Patent Trial and Appeal Board

Feb 8, 2017

12656349 (P.T.A.B. Feb. 8, 2017)

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.
12/656,349 01/27/2010 Masashi Sekizaki 1451562.241US2 2488
21874 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
MCDANIEL, TYNESE V
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASASHI SEKIZAKI
and KIMIHIRO MATSUURA
Appeal 2015-005916
Application 12/656,349
Technology Center 2800
Before PETER F. KRATZ, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 3 and 4 of Application 12/656,349
under 35 U.S.C. § 103(a) as obvious. Non-Final Act. (January 8, 2014).
Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
Because at least one of the claims on appeal has been at least twice rejected,
we have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE and enter a NEW
GROUND OF REJECTION. We emphasize that our reversal is procedural
1 Yazaki Corp. is identified as the real party in interest. Br. 3.
Appeal 2015-005916
Application 12/656,349
in nature and that we do not express any opinion regarding the patentability
of the claimed subject matter over the combination of Botker2 and
Muranaka.3
BACKGROUND
The ’349 Application describes a voltage-detection apparatus and a
substrate incorporating the apparatus. Spec. 1. The voltage-detection
apparatus is used to detect the voltage of a battery pack. Id. The battery
pack is comprised of a plurality of battery blocks, which are, in turn,
comprised of unit cells. Id. The voltage-detection apparatus is comprised of
a plurality of voltage-detection components; each component being
configured to detect on a per block basis voltage between the terminals of a
unit cell. Id. The voltage-detection apparatus can be used to monitor the
voltage remaining in the high-voltage battery used in a hybrid electric
vehicle. Id. at 1 — 2.
Claim 3 is representative of the ’349 Application’s claims and is
reproduced below from the Claims Appendix to the Brief:
3. A substrate comprising a plurality of the voltage-
detection components, each voltage detection component of the
plurality of voltage detection components configured to detect
voltage for each of battery blocks of a battery pack, configured
to detect a voltage between both terminals of a unit cell that
belongs to the battery block, the battery block including at least
one of unit cells, the unit cells being connected in series with
each other to constitute the battery pack, the unit cells being
secondary cells, the voltage-detection component allowing a
plurality of the voltage detection components to be series-
2 Botker et al., US 8,130,000 B2, issued March 06, 2012.
3 Muranaka, US 7,665,049 B2, issued Feb. 16, 2010.
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Application 12/656,349
connected via short connection lines, the voltage detection
component including an analog-to-digital converter converting
the voltage between both the terminals of the unit cell to a
digital data, and a sub-microcomputer to which an output from
the analog-to-digital converter is internally connected provided
with a transmitting line and a receiving line for communication,
and each voltage-detection component comprising:
(a) a body having a first, second, third, and fourth side, wherein
the first and third sides are planar opposites of each other on the
body and the second and fourth sides are planar opposites of
each other on the body;
(b) an upper connecting terminal protrudes from the first side
and connected to a voltage-detection component of an adjacent
higher-ordered battery block of the battery pack;
(c) a lower connecting terminal protrudes from the third side
and connected to a voltage-detection component of an adjacent
lower-ordered battery block of the battery pack;
(d) a cell-connecting terminal protruding from the fourth side of
the voltage detection component and connecting the voltage-
detection component to a connector to which voltages between
both ends of the unit cells are input; and
(e) a peripheral-component-connecting terminal protruding
from the second side of the voltage detection component and
connecting the voltage-detection component to a peripheral
component,
wherein the plurality of voltage-detection components are
aligned in a direction orthogonal to pairs of the first sides of the
bodies, and
wherein the upper connecting terminals and the lower
connecting terminals are each internally connected to at least
both the transmitting line and the receiving line of the
submicrocomputer to communicate at least the digital data
associated with the voltage between both the terminals of the
unit cell.
Br. 16 (Claims App.).
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Appeal 2015-005916
Application 12/656,349
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Botker4 and Muranaka.5
Non-Final Act. 3.
DISCUSSION
Appellants argue that the rejection of claims 3 and 4 should be
reversed because the Examiner “at no time has provided any voltage
detection component that is mechanically configured or laid out as is
claimed by the Applicants. As such, the cited combination [Botker and
Muranaka] cannot render the Applicants’ claimed invention obvious.” Br. 9
— 10. In particular, Appellants argue (1) that the Examiner erred by finding
that Botker’s monitor modules 32 correspond to the claimed voltage
detection components, id. at 10—12, and (2) that the Examiner erred by
finding that Muranaka describes the claimed mechanical configuration of
each of the voltage detection components, id. at 12 — 14.
We are unable to address Appellants’ arguments because claims 3 and
4 are indefinite. See NEW GROUNDS OF REJECTION, infra. Therefore,
discerning the claims’ proper scope would require undue and improper
speculation. See In reAoyama, 656 F.3d 1293, 1298-99 (Fed. Cir. 2011)
(explaining that a claim cannot be both indefinite and anticipated and
refusing to review an anticipation rejection); In re Steele, 305 F.2d 859, 862
4 US 8,130,000 B2, issued March 6, 2012.
5 US 7,665,049 B2, issued February 16, 2010.
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Application 12/656,349
(CCPA 1962) (“[W]e do not think a rejection under 35 U.S.C. § 103 should
be based on such speculations and assumptions.”).
We do not express any opinion regarding the patentability of claims 3
and 4 over the combination of Botker and Muranaka. Our reversal of the
Examiner’s rejection is purely procedural. If prosecution of the ’349
Application continues before the Examiner, the Examiner should enter any
prior art rejection using Botker and Muranaka—singly, in combination with
each other, or in combination with additional references—that he or she
deems appropriate.
NEW GROUNDS OF REJECTION
“The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention.” 35 U.S.C. § 112, 2.
During prosecution, a claim is examined for compliance with 35
U.S.C. § 112, ]f 2 by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (quoting MPEP § 2173.02). A claim is not indefinite
merely because more suitable language or modes of expression are available.
Id. In determining whether a particular claim is definite, the claim’s
language must be analyzed in light of the content of the particular
application, the prior art’s teaching, and the interpretation that would be
given to the claim’s language by a person of ordinary skill in the art at the
time the invention was made. Id.
As currently written, claims 3 and 4 do not satisfy the definiteness
requirement imposed by the patent laws. These claims are unclear in
numerous respects.
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Application 12/656,349
First, we note that Appellants have not complied with the rules
governing claim drafting. In relevant part, these rules provide: “Where a
claim sets forth a plurality of elements or steps, each element or step of the
claim should be separated by a line indentation.” 37 C.F.R. § 1.75(i) (2013).
Had Appellants followed this provision, some of the difficulty presented by
claims 3 and 4 might have been avoided.
Second, claims 3 and 4 include a number of grammatical errors. For
example, both of these claims include the phrase “the battery block
including at least one of unit cells.” Each of the claims also includes the
phrase “converting the voltage ... to a digital data.” It is unclear whether
this phrase should be construed as “converting the voltages ... to digital
data” or “converting the voltage ... to a digital data point.” Similarly,
claims 3 and 4 sporadically use a hyphen in the term “voltage detection
components.” It is unclear whether “voltage-detection components” are the
same as or different from “voltage detection components.” Viewed in
isolation, each of these grammatical and typographical issues seems minor.
Cumulatively, however, these errors, together with the lack of claim
language clarity discussed below, manifest uncertainty sufficient to render
the scope of claims 3 and 4 unclear.
Third, both claims 3 and 4 recite “each voltage detection component
of the plurality of voltage detection components configured to detect voltage
for each of battery blocks of a battery pack, configured to detect a voltage
between both terminals of a unit cell that belongs to the battery block,. . . .”
As written, is not clear whether the phrase “configured to detect voltage for
each of battery blocks of a battery pack” modifies the plurality of voltage
detection components or each detection component.
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Application 12/656,349
Fourth, the phrase “the voltage detection component including an
analog-to-digital converter converting the voltage between both the
terminals of the unit cell to a digital data, and a sub-microcomputer to which
an output from the analog-to digital converter is internally connected ...” is
unclear in several different ways. It is unclear whether this phrase requires
each voltage detection component of the plurality of voltage detection
components to include an analog-to-digital converter or whether this claim
limitation can be satisfied if a single voltage detection component includes
an analog-to-digital converter.6 If Appellants intended this phrase to have
the former meaning, as suggested by the Specification, then claims 3 and 4
do not specifically point out “what the applicant regards as his invention.”
See 35 U.S.C. § 112,12. It also is unclear whether this portion of the claim
requires the voltage detection component to include both an analog-to-digital
converter and a sub-microcomputer or — as suggested by the comma
following the word data — the sub-microcomputer is separate from the
voltage detection component.
For the reasons set forth above, we conclude that claims 3 and 4 of the
’349 Application do not meet minimum thresholds for clarity and precision.
Accordingly we reject these claims for failure to comply with § 112, 2.
CONCLUSION
For the reasons set forth above, we reject claims 3 and 4 as indefinite
under 35 U.S.C. § 112,12. This is a new ground of rejection. We also
6 We note that the Examiner apparently misconstrued the use of the term
“including” in claims 3 and 4. See Answer 3. The transitional phrase
“including” is synonymous with the transitional phrase “comprising.”
MPEP § 2111.03.
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Application 12/656,349
reverse the rejection of claims 3 and 4 as unpatentable over the combination
of Botker and Muranaka. We emphasize that this is a procedural reversal
only. We do not express any opinion regarding the patentability of the
claimed subject matter over the combination of Botker and Muranaka.
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 for 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:
(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).
REVERSED: NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R, $ 41.50(b)
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