Ex Parte Streuer

Board of Patent Appeals and Interferences

Dec 30, 2011

10706726 (B.P.A.I. Dec. 30, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/706,726 11/12/2003 Peter Streuer JCI-473 7254
20455 7590 12/30/2011
LATHROP & CLARK LLP
740 REGENT STREET SUITE 400
P.O. BOX 1507
MADISON, WI 537011507
EXAMINER
LEWIS, BEN
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
12/30/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte PETER STREUER
______________

Appeal 2010-005523
Application 10/706,726
Technology Center 1700
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner rejecting for at least the second time claims 13-36 in the Office
Action mailed October 6, 2008. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2008).
We affirm-in-part the decision of the Primary Examiner.
Claim 13 illustrates Appellant’s invention of a rechargeable battery,
and is representative of the claims on appeal:
13. A rechargeable battery having a housing comprising at least two
cells that can be filled with an electrolyte, the rechargeable battery
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comprising:
a degassing system having openings provided therein, the cover and
the degassing system arranged such that the openings are located above the
cells of the rechargeable battery;
a sealing plug provided in each of the openings, the sealing plug
having an upper part and a lower part, the lower part comprising a splash
basket that has an inner cavity that decreases in size from an upper end of
the splash basket to a terminal end of the splash basket;
wherein the splash basket comprises a plurality of plates that extend
from the upper end of the splash basket to the terminal end of the splash
basket, the plates separated from each other by slots that extend to the
terminal end of the splash basket such that the plates are not coupled
together at the terminal end of the splash basket to allow free movement of
the plates at the terminal end of the splash basket.
Appellant requests review of the grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 13-17, 21-26, 30, 32,
and 35 over Krabatsch (EP 33 30 823 A1);1 claims 18-20, 27-29, 33, and 34
over Krabatsch in view of Spaziante (US 4,201,647); and claims 31 and 36
over Krabatsch in view of Richter (US 6,733,921 B2). App. Br. 5-6; Ans. 4,
6, and 10.2
Appellant argues the first ground of rejection on claims 13, 23, and
32, claims 15 and 24, claims 16 and 25, claims 17 and 26, claims 18 and 27,
and claim 22; the second ground of rejection on claims 19 and 20, claims 28
and 29, and claim 33; and the third ground on claim 31 and claim 36. The
Examiner points out that claims 18 and 27 are in the second ground of
rejection. Ans. 18. Thus, we decide this appeal based on claims 13, 15-19,
22, 28, 31, 33, and 36. 37 C.F.R. § 41.37(c)(1)(vii) (2008).

1 We refer to the EPO automated translation of Krabatsch of record.
2 We considered the Examiner’s Answer mailed October 16, 2008, and the
Reply Briefs filed July 10, 2009, and December 16, 2009.
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Opinion
Claim 13: Krabatsch
Appellant contends that the Examiner erred in determining that the
claimed degassing system 2 and sealing plug 5 illustrated in Specification
Figure 1a and claimed in claim 13, is an obvious variant over Krabatsch’s
sealing plug and degassing system 11 shown in Krabatsch’s Figure, because
one of ordinary skill in the art would have removed support ring 24 from the
bottom of acid cage or “splash basket” 7 in the lower section of plug 11 thus
loosening the ribs or plates, separated by slots, forming acid cage 7 in order
to save material costs, and resulting in Appellant’s splash basket 13 having
unsupported ribs or plates 15 separated by slots 14. App. Br. 11-13; Ans.
4-5 and 14; Reply Br. 2-7. The Examiner contends that Appellant has not
established that unexpected results or criticality obtain with the removal of
Krabatsch’s support ring 24 which results in Appellant’s sealing plug 5.
Ans. 5 and 14. The Examiner finds that Krabatsch’s ring 24 is made of
flexible material which would allow acid cage 7 to flex upon insertion of
sealing plug and degassing system 11 into an accumulator battery. Ans. 4-5.
Appellant contends that the problem associated with inserting
inflexible or stiff plugs into the cover of a battery is alleviated by the
claimed splash basket 13 comprising plates or ribs 15, separated by slots 14,
that are not coupled together and thus “allow free movement of the plates at
the terminal end of the splash basket” as specified in claim 13. App. Br.
11-13, citing Spec. ¶¶ 0006 and 0014-0016; Reply Br. 3-6. Appellant
contends that Krabatsch would not have disclosed the advantages of the
claimed configuration. App. Br. 13; Reply Br. 5.
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We cannot agree with Appellant’s position. Appellant acknowledges
that several plugs for sealing batteries known in the art, including
Krabatsch’s plug 11, are difficult to insert into a battery because the splash
basket is “stiff.” Spec. ¶¶ 0004-0006. It seems to us that such a problem
would be readily apparent from routine observation to one of ordinary skill
in the art, see In re Ludwig, 353 F.2d 241, 242-43 (CCPA 1965) (if only
simple observation is required to ascertain a problem, the recognition of
such problem is well within the ordinary skill in the art); In re Goodman,
339 F.2d 228, 232-33 (CCPA 1964) (“The problem solved by appellants, if
not specifically pointed out by the prior art, was at least an obvious one. The
means of solving the problem were clearly suggested by the prior art.”), and
there is no evidence that recognition of this problem is part of Appellant’s
claimed invention. See, e.g., Ludwig, 353 F.2d at 243; In re Sponnoble,
405 F.2d 578, 585 (CCPA 1969). Thus, once observed, one of ordinary skill
in this art would have been motivated to solve the problem by modifying the
sealing plug including the splash basket to make the plug more readily
insertable into the battery cover. See, e.g., KSR Int’l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1742 (2007) (“When there is a design need or market
pressure to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp.”); In re Nomiya, 509
F.2d 566, 572 (CCPA 1975) (“The significance of evidence that a problem
was known in the prior art is, of course, that knowledge of a problem
provides a reason or motivation for workers in the art to apply their skill to
its solution.”); Ludwig, 353 F.2d at 243; Goodman, 339 F.2d at 232-33.
Accordingly, on this record, we find that one of ordinary skill in the
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art would have reasonably modified Krabatsch’s acid cage 7 by removing
support ring 24 therefrom with the consequent loss of its support function in
order to save material costs, thus allowing flexibility, as the Examiner
contends, even though this reason to so modify Krabatsch’s plug by
removable of the stiffening support is not the same as Appellant’s reason for
doing so. Indeed, Appellant has not established that the claimed plug
provides an unexpected or critical result with respect to easy of insertion in a
battery cover even though Krabatsch does not suggest the “free movement of
the plates at the terminal end of the splash basket” advantage claimed by
Appellant.
Claim 15: Krabatsch
Claim 15 modifies claim 13 by requiring that slots 14 of splash basket
13 have a specified broadening shape. According to Appellant, the slots in
Krabatsch’s acid cage 7 appear to have the same shape along their length.
App. Br. 14. The Examiner contends the claimed slots 14 of splash basket
13 and those of Krabatsch appear to be similar, and that Appellant has not
shown critically in the claimed shape. Ans. 15-16. Appellant contends that
the claimed shape allows flexibility. App, Br. 14; Reply Br. 7-8.
We agree with the Examiner. Appellant’s unsupported allegation of
unexpected flexibility is not persuasive. Indeed, Appellant has not
distinguished the claimed shape of the slots in the splash basket over the
slots in Krabatsch’s acid cage.
Claim 16: Krabatsch
Claim 16 modifies claim 13 by requiring that sealing plug 5 has an
opening 10 adjacent to the openings of the degassing system 2, and that the
degassing system 2 is connected to the splash basket via the opening for the
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return of electrolyte to the battery from the degassing system. See Reply Br.
8-9. Appellant contends that Krabatsch’s sealing plug 11 does not have
openings adjacent to the openings in the degasing system. App. Br. 15-16.
The Examiner points out that Krabatsch’s plug 11 has openings 9, 17, and 18
which meet claim 16. Ans. 17. Appellant contends that Krabatsch’s
openings are not adjacent to the openings in the degassing system, but does
not explain why this is so. Reply Br. 8-9.
We find that in Krabatsch’s Figure, at least opening 17 is “adjacent”
to degassing system opening 18 with any liquid electrolyte returned to the
battery via the acid cage as well as through opening 19. See EPO automated
translation of Krabatsch at 2. Thus, a preponderance of the evidence in
Krabatsch supports the Examiner’s position.
Claim 17: Krabatsch
Claim 17 modified claim 13 by requiring that sealing plug 5 is
integrally formed as part of degassing system 2. According to Appellant,
Krabatsch’s plug 11 is “a separate and distinct part of an ‘accumulator.’”
App. Br. 17; Reply Br. 17. The Examiner contends that Krabatsch’s plug 11
and the battery are “integral” in use. Ans. 17.
We find that Appellant discloses that “the sealing plug is integral” and
inserted into degassing system 2. Spec. ¶¶ 0016-0017. We further find that,
as the Examiner points out, the parts of Krabatsch’s plug 11 are joined
together in use, thus forming an “integral,” that is, a complete structure
including a sealing plug and a degassing system as claimed.
Claim 22: Krabatsch
Claim 22 modifies claim 13 by requiring that sealing plug 5 has a seal
7 fitted to the upper part for sealing cover 1. Appellant contends that
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Krabatsch’s o-rings 5 in grooves 4, 6 are located on lower section 15 of plug
11. App. Br. 18-19; Reply Br. 12-13. The Examiner contends that
Krabatsch’s o-rings 5 seal plug 11 to battery cover 1. Ans. 18.
We interpret claim 22 as requiring that sealing washer 7 is in an
“upper” part of sealing plug 5. We find that while Krabatsch’s o-rings 5 in
grooves 4, 6 are located on part 15 of plug 11 which is identified as a lower
section in the EPO automated translation of Krabatsch, Krabatsch’s Figure
would have disclosed to one of ordinary skill in the art that o-rings 5 are
situated in an upper part of plug 11.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in Krabatsch
with Appellant’s countervailing evidence of and argument for
nonobviousness and conclude, by a preponderance of the evidence and
weight of argument, that the claimed invention encompassed by appealed
claims 13-17, 21-26, 30, 32, and 35 would have been obvious as a matter of
law under 35 U.S.C. § 103(a).
Claims 18 and 19: Krabatsch and Spaziante
Claims 18 and 19 modify claim 13 by requiring that the splash basket
as well as an indicator positioned in the splash basket that extends into
battery acid have “a roughened surface.” See Spec. Fig. 2. We agree with
Appellant that the Examiner erred in concluding that the combination of
Krabatsch and Spaziante would have led one of ordinary skill in the art to
use materials for the splash basket and any indicator positioned therein
which would result in a roughened surface on these components. App. Br.
17-18 and 19-22; Reply Br. 12 and 13-15; Ans. 19.
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Accordingly, the absence of a prima facie case of obviousness, we
reverse the grounds of rejection of claims 18-20, 27 and 34 under 35 U.S.C.
§ 103(a)over Krabatsch and Spaziante.
Claims 28 and 33: Krabatsch and Spaziante
Claims 31 and 36: Krabatsch and Richter
Appellant contends with respect to these claims that the Examiner
erred in concluding that the combination of Krabatsch and Spaziante and of
Krabatsch and Richter would have led one of ordinary skill in the art to the
subject matter of claims 28 and 33 and of claims 31 and 36, respectively,
because acid cage 7 of Krabatsch’s plug 11 includes support ring 24 which is
not encompassed by these claims, and neither Spaziante nor Richter would
have led this person to modify Krabatsch’s plug 11 by removing support
ring 24 in order to arrive at the claimed subject matter. App. Br. 22-26;
Reply Br. 15-20. The Examiner again contends that one of ordinary skill in
the art would have removed Krabatsch’s support ring 24 to save material
costs which would result in a flexible acid cage and thus an obvious variant
of the claimed articles in the absence of unexpected results. Ans. 6-11 and
20-21.
We addressed the same and similar contentions of the Examiner and
Appellant above with respect to Krabatsch alone, and we note that neither
Spaziante nor Richter are relied on with respect to the issues raised by
Appellant with respect to Krabatsch’s acid cage 7 and support ring 24.
Accordingly, upon further consideration of Appellant’s contentions here we
are no more persuaded now than before and remain of the opinion we
expressed above. See above pp. 3-5.
Accordingly, based on our consideration of the totality of the record
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before us, we have weighed the evidence of obviousness found in the
combined teachings of Krabatsch and Spaziante, with respect to claims 28,
29, and 33, and of Krabatsch and Richter, with respect to claims 31 and 36,
with Appellant’s countervailing evidence of and argument for
nonobviousness and conclude, by a preponderance of the evidence and
weight of argument, that the claimed invention encompassed by appealed
claims 28, 29, 31, 33, and 36 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed-in-part.
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)(v).

AFFIRMED-IN-PART

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