Ex Parte Utley et al

Patent Trial and Appeal Board

Aug 30, 2018

14058522 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/058,522 10/21/2013
46442 7590 09/04/2018
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Brian Utley
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.
83390975;67186-040
PUSl
CONFIRMATION NO.
1005
EXAMINER
Y ANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN UTLEY, DEBBI CALLICOAT,
and KEITH KEARNEY
Appeal2017-010436
Application 14/058,522
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY R. SNAY, and JANEE.
INGLESE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In explaining our Decision, we cite to the Specification of October 21,
2013 (Spec.), the Final Office Action of April 22, 2016 (Final Act.), the
Appeal Brief of October 20, 2016 (Appeal Br.), the Examiner's Answer of
July 12, 2017 (Ans.), and the Reply Brief of July 31, 2017 (Reply Br.).
Appeal2017-010436
Application 14/058,522
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-8 and 19-30. 3 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM and designate the affirmance as involving a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 4I.50(b).
The claims are directed to an electric vehicle battery current
communication device. See, e.g., claims 1 and 29. This current
communication device communicates current from battery cells (battery
cells 60 shown in Figure 2) via a bus bar to a vehicle motor. Spec. ,r,r 4, 36.
Appellant's current communication device includes a terminal landing
and a transition from the terminal landing. Spec. ,r 5. Figure 3, reproduced
below, depicts an embodiment of the terminal landing and transition.
2 Appellant is the applicant, Ford Global Technologies, LLC. Under the
Real Party in Interest heading of the Appeal Brief, it is stated that Ford
Global Technologies, LLC, is the assignee of the entire right in the
application and, ultimately, Ford Global Technologies, LLC, is owned by
Ford Motor Company, LLC. Appeal Br. 1.
3 Claim 9 was canceled and claim 30 added after the final rejection. Arndt.
of October 20, 2016 (entered per the Advisory Action of June 9, 2017).
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Application 14/058,522
Figure 3 is a perspective view of a portion of an example current
communication device used with the battery pack of Figure 2.
As shown in Figure 3, the transition 82 connects terminal landing 70
to current collector 78. Spec. ,r 40. Current collector 78 extends into battery
cell 60 and receives current from coils within the battery cell 60. Spec. ,r 40.
To accommodate the different orientations of the terminal landing 70 and the
portion 80 of the current collector 78, transition 82 is both bent and tapered
as shown in Figure 3. Spec. ,r 46.
Claim 1 further illustrates the subject matter in its broadest form:
1. An electric vehicle battery current communication
device, comprising:
a terminal landing; and
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Application 14/058,522
a transition from the terminal landing having an area that
is both bent and tapered, the transition configured to bend
toward an interior of a battery cell such that a portion of the
transition is closer to the interior than each portion of the
terminal landing.
Appeal Br. 11 (Claims Appendix).
The Examiner maintains the following rejections:
A. The rejection of claims 1--4, 6-8, and 304 under 35 U.S.C.
§ I02(a)(l) as anticipated by Kim5;
B. The rejection of claims 1--4, 6-8, and 19--306 under 35 U.S.C.
§ I02(a)(l) as anticipated by Kameda7; and
C. The rejection of claims 5 and 27 under 35 U.S.C. § 103 as
obvious over Kameda in view of Kim.
OPINION
Rejection A
Turning first to the rejection of claims 1--4, 6-8, and 30 under 35
U.S.C. § I02(a)(l) as anticipated by Kim, we agree with Appellant (Appeal
Br. 3--4; Reply Br. 1-2) that the Examiner reversibly erred in finding Kim
describes a transition from the terminal landing "configured to bend toward
an interior of a battery cell .... " as required by claim 1. Kim teaches a
4 Although the Examiner lists claim 9 and omits claim 30, the Examiner
acknowledges that claim 9 was canceled and replaced with claim 30. Ans.
2. Appellant recognizes that claims 1--4, 6-8, and 30 are the claims rejected
and subject to appeal. Appeal Br. 3. Thus, the Examiner's incorrect listing
of rejected claims is not harmful error.
5 Kim et al., US 2010/0151312 Al, published June 17, 2010.
6 As in the above rejection, we correct the Examiner's listing of claims in the
rejection by replacing canceled claim 9 with claim 30.
7 Kameda et al., US 2011/0076553 Al, published Mar. 31, 2011.
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Application 14/058,522
transition that is both bent and tapered at 11 c and another transition that is
both bent and tapered at 12c. But I le and 12c bend to the left and right
sides of the battery cell 14 (compare Kim's Figure 1, with Kim's Figure 2),
they do not bend toward the interior of battery cell 14, which is below
terminals 11 and 12.
Thus, we do not sustain the rejection of claims 1--4, 6-8, and 30 as
anticipated by Kim.
Rejection B
Turning to the rejection of claims 1--4, 6-8, and 19-30 under 35
U.S.C. § I02(a)(l) as anticipated by Kameda, we agree with Appellant that
in some respects the rejection as presented in the Final Office Action was
not clear. Appeal Br. 5---6. Although we sustain the rejection, we
denominate our affirmance as involving a new ground of rejection to give
Appellant an opportunity to respond to what we hope is a clearer basis for
rejection.
Appellant focuses the arguments on the rejection of claims 1, 4, 29,
and 30. Thus, we select those claims as representative.
Claim 1
The Examiner finds that Kameda discloses an electric vehicle battery
current communication device having the required terminal landing and
transition of claim 1. Final Act. 5.
Kameda's Figure 5A depicts an electrode terminal having the features
the Examiner relies on and is reproduced below:
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Application 14/058,522
FIG. 5A
Kameda's Figure 5A is an oblique perspective view of
negative electrode terminal 40a.
Initially, in the Final Office Action, the Examiner cites to "terminal
landing (40,44; Figs. 1-8) and a transition (43,40,42,44) from the terminal
landing having an area that is both bent and tapered (43,40,42,44) .... "
Final Act. 5. As pointed out by Appellant (Appeal Br. 6), the Examiner
failed to specifically point out which portions of the electrode terminal 40
(portions 44, 43, 42) were being relied on as the area of the transition that is
both bent and tapered. In the Answer, the Examiner identifies the terminal
landing as 40a, 44, 44a and the element 43 ( 43a--43d) as a transition
comprising a region that is both bent and tapered. Ans. 4.
In the Reply Brief, Appellant maintains that Kameda shows no single
region that is both bent and tapered. Reply Br. 4. Thus, the issue is: Has
Appellant identified a reversible error in the Examiner's finding that
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Kameda's element 43 is a transition "having an area that is both bent and
tapered" as required by claim 1?
The issue resolves when one considers the breadth of "both bent and
tapered" as those words are used in claim 1. "During examination, 'claims
... are to be given their broadest reasonable interpretation consistent with
the specification, and ... claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art."'
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(quoting In re Bond, 910 F.2d 831,833 (Fed. Cir. 1990)). Interpreting claim
1 consistently with the Specification, we determine that Kameda's joint 43
has "an area that is both bent and tapered" and, thus, Appellant has not
identified a reversible error in the Examiner's rejection of claim 1.
It appears that Appellant is interpreting "an area that is both bent and
tapered" as requiring that the bend and taper be concurrent and coincide.
But the Specification does not support such a narrow reading of the claim.
According to the Specification, "[t]he taper is a change in width along
a length Lw. The bend is curved along a length Le." Spec. ,r 46. Figure 4,
reproduced below, depicts the taper and bend:
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Figure 4 shows a side view of the terminal device of Figure 3.
Although Appellant's Figure 4 depicts the change in width of the
taper Lw and curve of the bend Le as concurrent, the Specification explains
that, "[i]n other examples, the length Lw is greater or less than the Le. Even
in these examples, some of the length Lw overlaps some of the length Le
such that some of the transition 82 is tapered and bent along the same area."
Spec. ,r 4 7. This portion of the Specification describes tapers and bends that
overlap, but these different embodiments are described only as examples.
Claim 1 is not limited to tapers and bends that overlap. Claim 1
encompasses any transition that has any "area that is both bent and tapered."
Claim 1 does not define the extent of the area. Kameda's joint 43 in its
entirety is "an area" within the meaning of claim 1. This area has first,
second, and third bends 43a, 43b, and 43c and a bend and taper in the rise
portion 43d. Kameda ,r 30.
Although we determine that the language "an area that is both bent
and tapered" is broad enough to encompass joint 43 of Kameda, which
bends at 43a, 43b, 43c, and at the top of 43d as well as tapers at 43d, even if
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we were to interpret the phrase "an area that is both bent and tapered" more
narrowly to require an area with a bend and a taper that overlap, we find
Kameda teaches such an area in rise portion 43d.
Turning to Kameda, it is reasonable to conclude that the portion
Appellant identifies in the annotated figure presented in the Appeal Brief at
page 7 as having an "[a]lleged bend, but no taper," has some taper in the
area that transitions to the portion said to have an "[ a ]lleged taper, but no
bend." Appellant's annotated figure is reproduced below:
Appellant's annotated figure shows Kameda's Figure 5A with labels in the
region of reference numeral 43d.
Kameda discloses a rise portion 43d "that upwardly extends from an
end of the third bend 43c and that is continual to the external terminal 44."
Kameda ,r 30 (bolding omitted). Kameda describes external terminal 44 as
the substantially disc-shaped member shown at the top of the terminal 40a.
Kameda ,r 29.
Although Appellant labels one part of the rise portion 43d as having
an alleged bend, but no taper, and another part of the rise portion 43d just
below as having an alleged taper, but no bend (Appeal Br. 7), Kameda's
disclosure is, in fact, silent about the extent of the bend and taper. Kameda's
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Figure 5A depicts a line between the two labeled portions, but Kameda's
disclosure indicates that the transition from the external terminal 44 to the
rise portion is more continuous and less disjointed than Appellant's
interpretation of Figure 5A. Kameda teaches manufacturing the electrode
terminal 40a by flattening out areas of rod member 40' (shown in Fig. 5C)
corresponding to the collector terminal 42, external terminal 44, and rise
portion 43d of joint 43 and bending the areas corresponding to the first,
second, and third bends 43a, 43b, and 43c. Kameda ,r 35. To orient the
external terminal 44 in the horizontal plane shown in Figure 5A, one would
have to also bend the top portion of the rise 43d. It is reasonable to conclude
that the portion of the rise transitioning to the external terminal 44 would
have both a bend and a taper due to the nature of the process used to form
the electrode terminal from rod 40.'
Thus, under either the broader interpretation or narrower
interpretation of "an area that is both bent and tapered" discussed above, the
electrode terminal of Kameda is encompassed by the claim language. Under
the circumstances, to prevail, Appellant must show why the broader
construction is unreasonable or amend the claim to expressly state the scope
intended. In re Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997).
Claim 4
Claim 4 depends from claim 1 and requires a current collector. The
Examiner finds that Kameda' s collector terminal 4 2 and joint 4 3 make up
the required current collector. Final Act. 6.
Appellant points out that the Examiner also finds the joint 43 and the
flat collector terminal 42 form the "transition" of claim 1. Appellant
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contends "[i]t is unclear how the joint 43 and flat collector terminal 42 can
extend 'from a terminal landing' to themselves." Appeal Br. 6.
In the Answer (Ans. 5), the Examiner further clarifies the rejection
with the following annotated figure, reproduced below:
The Examiner's annotated Figure reproduces Kameda's Figure 5A with
labels denoting a terminal landing region, a transition region, and a current
collection region.
According to the annotated figure, Kameda's external terminal 44 is
the landing terminal (labeled "Terminal Landing Region" in the annotated
figure). Kameda ,r 30, Fig. 5A. Kameda's "rise portion 43d that upwardly
extends from an end of the third bend 43c and that is continual to the
external terminal 44" is the transition. Id. (bolding omitted). Flat collector
terminal 42 is the current collector of claim 4. Id.
Appellant has not identified a reversible error in the Examiner's
rejection as clarified in the Answer. The Reply Brief does not address the
matter.
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Claim 30
Claim 30 depends from claim 7, which depends from claim 1.
First, we note that "the current collector" as recited in claim 7 lacks
antecedent basis. Because it is unclear what "the" is referring back to, claim
7 is indefinite. Thus, we reject claim 7 under 35 U.S.C. § 112(b) as
indefinite.
The rejection for indefiniteness does not prevent us from deciding the
issue before us with regard to claim 30. The issue for claim 30 is: Has
Appellant identified a reversible error in the Examiner's finding that
Kameda teaches the transition portion as further limited by claim 30?
Appellant has not identified such a reversible error.
The further limitation of claim 30 reads, "wherein the entire transition
portion is both bent and tapered." Claim 30 ( emphasis added).
To properly consider this limitation, we must determine what "the
portion" is referencing. Claim 1 recites, "a transition from the terminal
landing having an area that is both bent and tapered, the transition
configured to bend toward an interior of a battery cell such that a portion of
the transition is closer to the interior than each portion of the terminal
landing." Claim 1 ( emphasis added).
Thus, "the transition portion" recited in claim 30 must be taken to
refer back to "a portion of the transition [that] is closer to the interior [of the
battery cell] than each portion of the terminal landing." Claim 1. It does not
refer back to the area that is both bent and tapered. As a consequence, claim
30 requires only an entire transition portion be both bent and tapered and
this portion need not extend over the entire transition.
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Appellant reproduces an annotated version of Kameda's Figure 5A
and contends that "Kameda does not teach an 'entire transition both bent
and tapered.'" Appeal Br. 7. But claim 30 does not require the entire
transition to be both bent and tapered, it only requires an entire transition
portion to be both bent and tapered.
As we explained above, it is reasonable to conclude that Kameda's
rise portion 43d has a portion with both a bend and a taper based on the
method used to make the electrode terminal.
Thus, we sustain the Examiner's rejection of claim 30 as anticipated
by Kameda.
Claim 29
Claim 29 is an independent claim. This claim requires the transition
to have "an area that is both bent toward ... [a] surface and tapered."
Appellant contends that Kameda does not have such an area. Appeal Br. 8.
As explained above, we determine that the claim language is broad enough
to encompass the joint 43 described by Kameda. Joint 43 includes area 43d
that bends from external terminal 44 toward the surface and includes a taper.
Thus, we sustain the Examiner's rejection of claim 29.
Rejection C
The Examiner rejects claims 5 and 27 under 35 U.S.C. § 103 as
obvious over Kameda in view of Kim.
Claim 5
Claim 5 depends from claim 4 and further reads: "wherein the
transition at the terminal has a first width and the transition at the current
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collector has a second width, and a ratio of the first width to the second
width is from 2 .19 to 3 .23."
There can be no dispute that rise portion 43d of Kameda has a first
width at the terminal that is greater than the second width at the current
collector due to the taper of the rise portion. Thus, Kameda's rise portion,
because it is tapered, has a ratio of the first width to the second width.
The Examiner determines that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to have optimized
the widths of the transition to arrive at a design with superior sealing and
one that is susceptible to less stress. Final Act. 10. According to the
Examiner, "[a] ratio which is too low or too high results in designs which
may not adhere properly and are susceptible to stress." Id.
The Examiner provides a second rationale aimed at the teachings of
Kim and what would have been obvious from those teachings. Final Act.
10-11.
Appellant does not address the Examiner's rationale based on
Kameda, but instead focuses on the alternative rationale based on Kim.
Appeal Br. 8-10. Thus, Appellant has not identified a reversible error in the
Examiner's rationale based on Kameda.
To the extent that Appellant's argument against the Kim rationale
applies to the Examiner's rationale based on Kameda, we do not find it
persuasive of reversible error in the rejection. Kameda includes a taper with
a width at the top and a width at the bottom that would result in a ratio of
widths. Kameda does not limit the extent of the widths and, thus, Kameda
teaches the general conditions that result in a ratio of widths. By selecting
the rod and the extent of external terminal 44 flattening desired, Kameda
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controls the ratio of widths and would have selected the rod and extent of
flattening to obtain tapers of a ratio that would result in a useful electrode
terminal. There is no convincing evidence that doing so would result in
ratios outside the range of the claim or that Appellant's range is critical.
We sustain the Examiner's rejection of claim 5.
Claim 27
Claim 2 7 does not require the ratio of widths recited in claim 5 and
Appellant makes no arguments over those made against the rejection of
claim 1. Appeal Br. 8. Appellant does not identify a reversible error in the
Examiner's rejection of claim 2 7.
CONCLUSION
In summary:
1--4, 6-8, § 102(a)(l) Kim 1--4, 6-8,
and 30 and 30
1--4, 6-8, § 102(a)(l) Kameda 1--4, 6-8, and
and 19-30 19-30
( denominated
as involving
anew ground
of rejection)
5 and 27 § 103 Kameda and 5 and 27
Kim
7 § 112(b)
new round
Summary 1-8 and
19-30
DECISION
The Examiner's decision is affirmed and new grounds entered.
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 4I.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 maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED; 37 C.F.R. § 4I.50(b)
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