Ex Parte Wyatt et alDownload PDFPatent Trial and Appeal BoardJan 25, 201813954919 (P.T.A.B. Jan. 25, 2018) Copy Citation 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. 13/954,919 07/30/2013 Perry M. Wyatt 13PS069-US (JOCP:0134) 6544 75576 7590 Johnson Controls, Inc. c/o Fletcher Yoder PC P.O. Box 692289 Houston, TX 77269 01/25/2018 EXAMINER OHARA, BRIAN R ART UNIT PAPER NUMBER 1724 MAIL DATE DELIVERY MODE 01/25/2018 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 PERRY M. WYATT and THANH T. NGUYEN Appeal 2017-001978 Application 13/954,9191 Technology Center 1700 Before JEFFREY T. SMITH, MICHELLE N. ANKENBRAND, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant timely requests rehearing2 of our Decision3 affirming the rejection of appealed claims 1—18, 20-27, and 29-33. We have jurisdiction under 35U.S.C. §6. We have reconsidered Appellant’s arguments but we decline to grant the relief requested. 1 Appellant is applicant Johnson Controls Technology Company, the real party in interest. Appeal Brief filed March 28, 2016 (“Appeal Br.”) 2. 2 Request for Rehearing under 37 C.F.R. § 41.50(b)(2), filed December 20, 2017 (“Request,” cited as “Req.”). 3 Decision on Appeal mailed October 20, 2017 (“Opinion,” cited as “Op.”). Appeal 2017-001978 Application 13/954,919 OPINION Appellant urges that we misapprehended Appellant’s arguments, Specification, and claims in sustaining the rejections of claims 1—18, 20-27, 29, 30, 32, and 33 under 35 U.S.C. § 112(b) as indefinite and claims 1—18, 20-27, and 29—33 under 35 U.S.C. § 103(a) as obvious.4 (Req. 2). We sustained the rejection of claims as indefinite for reciting the term “standard lead acid battery.” Op. 3—5. Appellant argues that a person having ordinary skill in the art at the time of the invention would have understood the term to “refer[] to a standard lead acid battery for vehicles and not other devices.” Req. 3 (emphasis added). Appellant invites us to import limitations from the Specification into the claims, a move that precedent prohibits. See In re Van Guens, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the specification”). Nothing in the Specification limits the term “standard lead acid battery” to a battery for vehicles. The Specification states, “certain industry standards have been developed for use in configuring the physical packaging of lead acid batteries for many applications.'1'’ Spec. 1142 (emphasis added). The Specification does not limit the “many applications” of lead acid batteries the claims encompass to only those for use in vehicles. The Specification identifies the Battery Council International (BCI) as “a trade association that sets certain standards for vehicle batteries.” Id. However, BCI indicates that lead acid batteries “are used for a vast number of purposes,” and are not limited to use in vehicles. Battery Council International, http://aboutbatteries.batterycouncil.org/What-is-a-lead-battery (last visited Jan. 22, 2018). The Specification contemplates that the batteries of the 4 Appellant states its Request is “primarily directed to independent claims 1,17, and 24.” To be clear, we reconsider the rejections of all claims in this Decision. 2 Appeal 2017-001978 Application 13/954,919 invention “may be used in vehicular contexts, as well as other energy storage/expending applications,” including electrical grid power storage systems. Spec. 1, 14, 140. Therefore, we cannot agree with Appellant’s contention that “standard lead acid battery” as used in the Specification is limited to batteries used in vehicles. A claim is indefinite when its metes and bounds are unclear because the claim contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (during prosecution a claim is indefinite when it contains words or phrases whose meaning is unclear); Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (explaining that the USPTO considers a claim indefinite “when it contains words or phrases whose meaning is unclear”). Appellant argues that the Specification describes a “standard lead acid battery” as a lead acid battery having dimensions that comply with “a standard.” Req. 4. However, there is no clarity in the Specification as to what standards are or are not encompassed by the term. The Specification provides a single example of a standard, but the independent claims are not limited to the exemplary standard. Therefore, the metes and bounds of the claims are unclear. See United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942) (“The statutory requirement of particularity and distinctness in claims is met only when [the claims] clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise.”). In spite of holding the claims to be indefinite, like the Examiner, for purposes of the appeal, we interpreted “standard lead acid battery” as referring to a vehicle battery for the purpose of considering the prior art rejections. Op. 5. Although we normally do not assess the propriety of rejections under 35 U.S.C. § 103 when we hold the claims indefinite (see In re Wilson, 424 F.2d 1382, 1385 3 Appeal 2017-001978 Application 13/954,919 (CCPA 1970)), in this case we exercised our discretion to address the obviousness rejection based on our conditional interpretation in the interest of administrative and judicial economy. See Ex parte Tanksley, 26 USPQ2d 1384, 1387 (BPAI 1991) (exercising discretion to reach art rejections despite indefmiteness where nature of case permitted). Appellant argues we overlooked the fact that “a lithium ion battery module (or pack) being used in a vehicle does not necessarily mean that the battery module complies with a lead acid [battery] standard.” Req. 8. Thus, Appellant argues, we misapprehended its argument that the Examiner failed to establish that Buck’s and Kawai’s batteries “have the dimensions of a standard lead acid battery.” Id. at 9. The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Furthermore, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. One of ordinary skill in the art at the time of the invention seeking to replace a lead acid battery in a vehicle with a lithium ion battery reasonably would have selected the form factor of a standard sized lead acid battery, such as those 4 Appeal 2017-001978 Application 13/954,919 disclosed in Kawai and Buck, because this size would have eliminated or minimized other changes that would have needed to be made in the engine compartment. We are not persuaded by Appellant’s arguments. Appellant has not established that our Opinion misapprehended or overlooked any point of law or fact that would require a different outcome. CONCLUSION Based on the foregoing, Appellant’s Request is granted to the extent that we have reconsidered our Opinion, but is denied with respect to making changes to the final disposition of the rejections therein. This Decision on Request for Rehearing incorporates our Opinion and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED 5 Copy with citationCopy as parenthetical citation