Ex Parte Sonta

Patent Trial and Appeal Board

May 25, 2016

12910174 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/910,174 10/22/2010
65798 7590 05/25/2016
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD A VENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
FIRST NAMED INVENTOR
Kestutis A. Sonta
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.
POll 735-BAT-CHE 7489
EXAMINER
PARSONS, THOMAS H
ART UNIT PAPER NUMBER
1729
MAILDATE DELIVERY MODE
05/25/2016 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 KESTUTIS A. SONT A
Appeal2014-009556
Application 12/910, 174
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1--4 and 8-13. We have jurisdiction under 35 U.S.C. § 6.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
Appeal2014-009556
Application 12/910, 174
1. A protective cover for a battery comprising:
a single piece housing including a top plate and side
plates forming an enclosure, said housing being formed from a
molded non-conductive thermoset plastic composite; and
an electromagnetic interference and radio frequency
interference (EMl/RFI) shield formed on or in the housing,
where the EMl/RFI shield is encapsulated within the thermoset
plastic composite or applied to exterior surfaces of the housing,
such that all interior surfaces of the housing are non-conductive
and the EMl/RFI shield is not in electrical contact with the
battery.
Appellant (App. Br. 6) requests review of the following rejections
from the Examiner's Final Action:
I. Claims 1, 4, 9, and 10 rejected under 35 U.S.C. § 103(a) as
unpatentable over Gitto (US 2002/0155348 Al, published October 24, 2002)
and Hill et al. (US 2010/0309631 Al, published December 9, 2010) ("Hill").
II. Claims 2, 3, 11, and 12 rejected under 35 U.S.C. § 103(a) as
unpatentable over Gitto, Hill, and Tanabe (JP 62-045635 A, published
February 27, 1987, and relying on a translation of the Abstract copyrighted
in 1987).
III. Claims 8 and 13 rejected under 35 U.S.C. § 103(a) as
unpatentable over Gitto, Hill, and Dubilier (US 2,043,532, issued June 9,
1936).
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Appeal2014-009556
Application 12/910, 174
We AFFIRM.
OPINION
Prior Art Rejections
Rejection I (claims 1and4)1
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's prior art rejection of claims 1, 4, 9,
and 10 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner
and add the following for emphasis.
Independent claim 1 is directed to a protective cover for a battery
comprising an electromagnetic interference and radio frequency interference
(EMI/RFI) shield encapsulated within the thermoset plastic composite or
applied to exterior surfaces of the cover's housing.
The Examiner found Gitto discloses a protective cover for a battery
that differs from the claimed invention in that Gitto does not teach an
electromagnetic interference and radio frequency interference (E~v1I/RFI)
shield formed as required by the subject matter of independent claim 1.
Final Act. 3--4; Gitto Figures 5-8, i-fi-123, 27, 31, 50-53. The Examiner
found Hill discloses an electromagnetic interference and radio frequency
interference (EMI/RFI) shield (e.g., 110, in Figure 1) formed on a battery
area 130 configured to receive a battery or other power sources. Final Act.
4; Hill Figures 1-8, i-fi-135--46. The Examiner found Hill discloses
1 Appellant relies on the same line of argument in addressing the rejection of
independent claims 1 and 10. See Appeal Brief generally. Appellant also
presents separate arguments only for dependent claim 4. Accordingly, we
select independent claim 1 as representative of the subject matter before us
on appeal and claims 9 and 10 will stand or fall with independent claim 1.
Claim 4 will be addressed separately.
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Appeal2014-009556
Application 12/910, 174
embodiments where the EMI shielding is integrally formed or injection
molded into the casing. Final Act. 5; Hill i-f 30. In light of this teaching, the
Examiner determined it would have been obvious to one of ordinary skill in
the art to have modified the protective cover of Gitto by incorporating the
shield of Hill and to encapsulate the EMI/RFI shielding of Hill within the
thermoset plastic composite of Hill. Final Act. 4--5.
Appellant argues Hill's EMI/RFI shield is not encapsulated within the
thermoset plastic composite or applied to exterior surfaces of the housing as
claimed because Hill's EMI/RFI shield is placed inside of the housing,
surrounding the battery or other electronic component. App. Br. 10-11.
Appellant further argues Hill teaches away from the claimed invention
because Hill's designs all include thermal contact between the heat source
and the EMI/RFI shield. App. Br. 9.
We are unpersuaded by Appellant's arguments and agree with the
Examiner's determination of obviousness for the reasons provided by the
Examiner. Ans. 2-3. As noted by the Examiner, Hill discloses wrapping the
EMI shield about a battery in a battery casing. Final Act. 4; Hill i-fi-130, 32.
Hill specifically discloses "the EMI shielding/thermal interface combination
may be attached to or wrapped about a battery (e.g., by the battery
manufacturer, etc.) before the battery is inserted or positioned within the
battery area of the casing. Hill i-f 32. Hill also discloses the EMI shielding
may be integrally formed by injection molding and disposed generally about
the battery area of the casing. Hill i-f 32. Thus, the Examiner has provided a
reasonable basis for one skilled in the art to understand that Hill would have
suggested encapsulation of an EMI shield in the thermoplastic material of an
external casing that can enclose a battery. Moreover, claim 1 is written in
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Appeal2014-009556
Application 12/910, 174
open language and, thus, would not exclude the use of additional casings
(covers) about the battery to ensure adequate dissipation of heat.
Appellant's argument that Hill teaches away from encapsulating the
EMI shield because it would interfere with thermal contact is also
unavailing. It is well settled that a reference may be relied upon for all that
it would have reasonably suggested to one having ordinary skill in the art,
including non-preferred embodiments. Merck & Co. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) ("all disclosures of the prior art,
including unpreferred embodiments, must be considered") (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). As previously discussed
above, Hill discloses the use of a battery cover having an EMI shield placed
in the battery area where the cover receives the battery. Final Act. 4; Hill i-f
30.
With respect to claim 4, Appellant argues the references do not teach
the claimed Faraday cage. App. Br. 13.
We are unpersuaded by this argument as well. The Examiner found
Hill's disclosure of thermally-conductive compliant materials or thermally-
conductive interface materials formed from ferrite EMI/RFI absorbing
particles, metal or fiberglass meshes in a base of rubber would have
suggested the use of a Faraday cage. Final Act. 6; Ans. 4; Hill i-f 67.
Appellant has not adequately explained error in the Examiner's finding.
App. Br. 13-14. Moreover, Appellant acknowledges a Faraday cage is a
known electromagnetic interference (EMI) and radio frequency interference
(RPI) shielding device. Spec. i-f 1.
Accordingly, we affirm the Examiner's prior art rejection of claims 1,
4, 9, and 10 for the reasons presented by the Examiner and given above.
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Appeal2014-009556
Application 12/910, 174
Rejections II and III
In addition, the Examiner separately rejected the dependent claims 2,
3, 11, and 12 rejected under 35 U.S.C. § 103(a) as unpatentable over Gitto,
Hill, and Tanabe (Rejection II) and claims 8 and 13 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gitto, Hill, and Dubilier (Rejection III). Final
Act. 10-11. In addressing these separate rejections, Appellant relies
primarily on the arguments presented when discussing Rejection I. App. Br.
14--16. Appellant did not substantially address or further distinguish the
respectively cited secondary references based on the additional limitations of
the dependent claims. Id.
Accordingly, we sustain the Examiner's Rejections II and III for the
reasons presented by the Examiner and given above.
ORDER
The Examiner's prior art rejections of claims 1--4 and 8-13 are
affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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