FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Oct 22, 2020

2020000134 (P.T.A.B. Oct. 22, 2020)

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.
14/602,868 01/22/2015 Hyung Min Baek 83494261;
67186-153 PUS1
8852
46442 7590 10/22/2020
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
MCDERMOTT, HELEN M
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
10/22/2020 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 HYUNG MIN BAEK
Appeal 2020-000134
Application 14/602,868
Technology Center 1700
Before JEFFREY T. SMITH, JEFFREY B. ROBERTSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1

1 This Decision includes citations to the following documents:
Specification filed January 22, 2015 (“Spec.”); Final Office Action mailed
February 7, 2019 (“Final Act.”); Appeal Brief filed May 17, 2019 (“Appeal
Br.”); Examiner’s Answer mailed September 19, 2019 (“Ans.”); and Reply
Brief filed October 4, 2019 (“Reply Br.”).
Appeal 2020-000134
Application 14/602,868

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–7, 9, 10, 13, 15–17, 19, and 21–26.
Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to shielding a battery pack of an
electrified vehicle, and to a cover that shields from both electromagnetic
interference and thermal energy. Spec. ¶ 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter (Appeal Br., Claims Appendix 12):
1. A battery pack, comprising:
a polymer layer of a cover;
a metallic layer of the cover, the metallic layer grounded to a
chassis of an electric vehicle;
and
a tray secured to the cover to provide a housing having an
interior, the metallic layer disposed on an outermost surface of
the polymer layer, the outermost surface facing outwardly
relative to the interior, the cover disposed between the tray and
the chassis.

Independent claims 9 and 16, directed to an assembly and a method
respectively, recite similar limitations. Id. at 13.

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Ford Global Technologies, LLC as
the real party in interest. Appeal Br. 1.
Appeal 2020-000134
Application 14/602,868

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Berger et al.
hereinafter “Berger”
US 2012/0251863 A1 Oct. 4, 2012
Miyanaga et al.
hereinafter “Miyanaga”
US 2014/0329125 A1 Nov. 6, 2014
Andre US 2016/0021797 A1 Jan. 21, 2016
REJECTIONS
1. The Examiner rejected claims 1–4, 7, 9, 13, 15–17, 19, 22, 25,
and 26 under 35 U.S.C. § 103 as unpatentable over Andre and
Miyanaga. Final Act. 3–5.
2. The Examiner rejected claims 5, 6, 10, 21, 23, and 24 under
35 U.S.C. § 103 as unpatentable over Andre, Miyanaga, and
Berger. Final Act. 5–7.

OPINION
Appellant presents separate arguments with respect to claims 1, 2, 9,
22, 25, and 26, subject to this rejection. See Appeal Br. 3–9. We select
claims 1, 2, 25, and 26 as representative for disposition of this rejection.
37 C.F.R. § 41.37(c)(1)(iv).

Claim 1
The Examiner’s Rejection
In rejecting claim 1 as unpatentable over Andre and Miyanaga, the
Examiner found Andre discloses an electromagnetic screening and heat
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Application 14/602,868

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insulating box for receiving batteries in a vehicle formed from two half-
shells assembled together (cover and tray), including a first layer that is
plastic, a second conducting layer such as iron, and third layer that is a
conducting base layer such as aluminum foil. Final Act. 3. The Examiner
found the first layer of the top half-shell is equivalent to the claimed polymer
of the cover and the second and/or third conductive layers of the top half-
shell is equivalent to the claimed metallic layer of the cover. Id. at 4. The
Examiner found Andre is silent as to the specific arrangement of the battery
pack including the cover and tray within the vehicle, and does not disclose
that the metallic layer is grounded to a chassis of the electric vehicle. Id.
The Examiner found Miyanaga discloses mounting a battery unit to
the frame body of a car body, such that the cover member of a battery case is
disposed between a tray member of the battery case and the chassis. Id. The
Examiner determined it would have been obvious to have mounted the
battery pack of Andre such that the cover is disposed between the tray and
the chassis of the vehicle as a known arrangement suitable for effectively
mounting a battery pack to a vehicle. Id.
The Examiner found Miyanaga disclose fixing an electromagnetic
shield member to side members of the chassis via bolts in contact with a
conductive fabric of the electromagnetic shield member such that conductive
fabric is grounded through the car body, because it improves the
electromagnetic shield effect of the conductive fabric. Id. at 5. The
Examiner determined it would have been obvious to ground the metallic
layer of the cover and tray of Andre to the chassis of the vehicle through the
plurality of mechanical fasteners with the reasonable expectation of
improving the electromagnetic shield effect of the metallic layer. Id.
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Appellant’s contentions
Appellant contends one of ordinary skill in the art would not have
repositioned the half-shells of Andre such that one of the half-shells is
disposed between a tray and the chassis. Appeal Br. 4. Appellant argues
that Miyanaga is directed to an undercover and floor panel that provide an
electromagnetic shield effect so that the battery case does not need to
provide an electromagnetic shield effect. Id. at 4–5. Appellant contends
Miyanaga discloses battery cases that includes an electromagnetic shield
effect lacks versatility, and as a result Miyanaga teaches away from the half-
shells disclosed in Andre. Id. at 4. Thus, Appellant argues the rejection
does not identify sufficient reason to position the half shells of Andre
between the tray and the chassis. Id. at 5.
Appellant argues Andre does not disclose mechanical fasteners and
Miyanaga does not disclose grounding any portion of the battery case to a
chassis through mechanical fasteners. Id. Appellant contends the
electromagnetic shield member is part of the undercover, which is a
structure that is separate and distinct from the battery case. Id. at 5–6. As a
result, Appellant argues there is insufficient basis for introducing bolts into
the Andre structure, in order to improve the electromagnetic shield effect.
Id. at 6.

Issue
Did the Examiner err in determining that mounting the battery pack of
Andre such that the cover is disposed between the tray and the chassis and
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the metallic layer is grounded to a chassis of an electric vehicle would have
been obvious in view of Miyanaga?

Discussion
We are not persuaded by Appellant’s arguments. As discussed above,
the Examiner’s rejection relies on Andre for the particular structure of the
cover/tray recited in claim 1 and Miyanaga for the positioning of the cover
between the tray and the chassis. That is, Andre discloses the particular
polymer and metallic layers of the cover recited in claim 1, but does not
particularly disclose the location of the battery pack in relation to the
chassis. Although Appellant emphasizes Miyanaga discloses an undercover
for electromagnetic shield effect, the Examiner’s rejection does not rely on
Miyanaga for such teachings. Rather, the Examiner’s rejection relies on
Miyanaga for the proposition that the battery pack may be attached to the
chassis of an automobile such that the cover of the battery pack is disposed
between the tray and the chassis, which is sufficiently supported by
Miyanaga. See Miyanaga Fig. 1.
Appellant argues that because Miyanaga discloses battery cases
including electromagnetic shield measures lack versatility, Miyanaga’s
disclosure in this regard constitutes a “teaching away” from the Examiner’s
combination. Yet, such teachings in Miyanaga do not address the heart of
the Examiner’s reasoning, which is that mounting a battery pack to the frame
body of a car in a configuration as recited in claim 1, is nothing more than a
known arrangement for mounting a battery pack to a vehicle. Final Act. 4.
Indeed, even Miyanaga does not emphasize anything novel about the battery
pack of vehicle being mounted underneath the vehicle such that the cover of
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the battery is located between the tray and the chassis. See generally
Miyanaga.
We are also not persuaded by Appellant’s additional arguments that
Miyanaga does not disclose mechanical fasteners to secure either of the half-
shells to any other structure, but rather only discloses fastening the
undercover to the chassis with bolts. It is true Miyanaga discloses metallic
bolts are provided to penetrate the undercover and the conductive fabric
where the undercover is fixed to the metallic frame member and the
conductive fabric is grounded by the bolts. Miyanaga ¶¶ 12, 50. However,
the Examiner’s position is that just as Miyanaga discloses the bolts provide
grounding for the conductive fabric of the undercover, one of ordinary skill
in the art would have understood that mounting the half-shells of Andre to
the chassis with bolts would also provide grounding of the metallic layers
therein. Final Act. 5; Ans. 10–11. We agree with this reasoning. As the
Supreme Court explained in KSR, “[w]hen a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars its patentability.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” Id. at 421.
Accordingly, we affirm the Examiner’s rejection of claim 1.
For similar reasons we are not persuaded by Appellant’s argument
that the combination of Andre and Miyanaga would not have rendered the
ground path recited in claim 22 obvious. Appeal Br. 8; see Ans. 12.

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Claim 2
Claim 2 depends from claim 1, and recites “wherein the metallic layer
is a foil layer that is exposed.”
Appellant contends Andre does not want metallic layers 20 or 30 to be
arranged on the outside and not covered because of exposure to corrosion or
scratches. Appeal Br. 7, citing Andre ¶ 48.
We agree with the Examiner (Ans. 11–12), however, that Andre
discloses an insulating layer or varnish “may be required” for protection of
the last (outside) metal layer from corrosion or scratches. Andre ¶ 48. Thus,
Andre does not require such a coating to be present, but rather Andre
discloses the protective coating is optional.
Accordingly, we affirm the Examiner’s rejection of claim 2.
For similar reasons, we are not persuaded by Appellant’s arguments
with respect to claim 9. See Appeal Br. 7.

Claim 25
Claim 25 depends from claim 1 and recites “wherein the polymer
layer comprises a reinforcement material.”
The Examiner found Andre discloses a first layer 10, which may be a
composite material with a plastic matrix and is a polymer comprising a
reinforcement material. Final Act. 3; Andre ¶ 29.
Appellant contends Andre’s disclosure of a composite material with a
plastic matrix is not a teaching of a polymer layer that comprises a
reinforcement material. Appeal Br. 8.
We are not persuaded by Appellant’s argument, because as the
Examiner explains, a composite material includes a second material, which
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is equivalent to the claimed reinforcement material. Ans. 13. Appellant
does not sufficiently explain why the composite material with a plastic
matrix does not satisfy the general recitation in claim 25 of a “reinforcement
material” present in the polymer layer. The Specification discloses only that
the polymer layer may include reinforcement material “to, among other
things, enhance stiffness of the cover.” Spec. ¶ 52.
Accordingly, we affirm the Examiner’s rejection of claim 25.

Claim 26
Claim 26 depends from claim 9, and recites an assembly, “wherein the
tray is comprised entirely of a metallic material.”
The Examiner found layers 20 and/or 30 of the bottom half-shell
disclosed in Andre is equivalent to the claimed metallic tray. Final Act. 4
citing Andre Fig. 1.
Appellant contends the broadest reasonable interpretation of claim 26
does not allow for the “tray” to be interpreted as only the metallic layers 20
and/or 30 disclosed in Andre, but rather would also include the plastic shell
10, such that the tray recited in claim 26 is not comprised “entirely of a
metallic material” as recited in claim 26. Appeal Br. 8–9.
We agree with Appellant. Although the term “comprising” is
presumptively open-ended, claim 26 recites that the “tray” is comprised
“entirely” of a metallic material. See Spec. ¶ 49. Andre discloses “half-
shells,” where the bottom half-shell, in our view and in contrast to the
Examiner’s position, corresponds to the “tray” recited in claim 26. Andre
¶ 29; Fig. 2. Thus, in addition to metallic layers 20 and 30, the half-shells
include a plastic or organic support layer 10. Andre ¶ 29; Fig. 1. As a
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result, Andre does not disclose a tray comprised “entirely” of metallic
material as recited in claim 26.
Accordingly, we reverse the Examiner’s rejection of claim 26, as well
as claim 6 subject to Rejection 2, which recites similar language.

Rejection 2
Appellant presents separate arguments with respect to claims 5, 10,
21, 23, and 24, subject to this rejection. See Appeal Br. 9–11. We select
claims 5, 10, and 24 as representative for disposition of this rejection.
37 C.F.R. § 41.37(c)(1)(iv).

Claim 5
The Examiner’s Rejection
Claim 5 depends from claim 1, and recites the battery pack “further
comprising a plurality of mechanical fasteners that secure the polymer layer
and the metallic layer to the tray, the metallic layer grounded to the chassis
through the plurality of mechanical fasteners.”
The Examiner found the combination of Andre and Miyanaga
discloses the battery pack of claim 1, but is silent as to how the cover and
tray are assembled together. Final Act. 5. The Examiner found Berger
discloses mechanical fasteners to assemble a cover and a support of a battery
pack. Id. The Examiner determined it would have been obvious to secure
the polymer layer and the metallic layer to the metallic tray of the
combination with a plurality of mechanical fasteners “whereby a ground
path would pass through the metallic layer, the fasteners, the tray and the
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chassis, as a known means effective for assembling a cover and tray
together.” Id. at 5–6.

Appellant’s Contentions
Appellant contends the bolts and nuts in Berger are not grounded to
any chassis, and just because the bolts and nuts are used to secure a cover to
a support, does not mean that a ground path would necessarily extend
through those nuts and bolts. Appeal Br. 9.

Discussion
We agree with the Examiner that Appellant does not consider the
Examiner’s rejection as a whole. Ans. 12. As the Examiner explains, “the
combination of references teaches electrically connecting the claimed
components to each other” such that “the ground path in the combination
would extend through all the components as claimed.” Id. Appellant does
not provide sufficient argument to demonstrate reversible error on the part of
the Examiner. As discussed above, we are of the view the Examiner’s
reasoning is supported by the evidence of record. Miyanaga provides
evidence that metallic bolts may be used to provide a grounding function
when penetrating metal. Miyanaga, ¶¶ 12, 50. When combination of
references are applied as explained by the Examiner, a ground path would
extend through the nuts and bolts as recited in claim 5.
Accordingly, we affirm the Examiner’s rejection of claim 5.

Appeal 2020-000134
Application 14/602,868

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Claim 10
Claim 10 depends from claim 9, and recites, in pertinent part, “at least
one strap secured to the chassis with a plurality of second fasteners, the at
least one strap extending beneath the tray relative to the chassis.” Claims 21
and 23 contain similar limitations.

The Examiner’s Rejection
The Examiner found Andre and Berger do not disclose at least one
strap extending beneath the tray and secured to the chassis as recited in
claim 10. Final Act. 6. The Examiner found Miyanaga discloses beam
members (51–54), which the Examiner equates to the recited straps, and
which are fixed to the side members 31, 32, of the chassis 30, by bolts 57, in
order to support the battery unit 14 on the chassis 30. Id., citing Miyanaga
¶¶ 33, 34. The Examiner found Miyanaga also discloses bolts 71 for
grounding the electromagnetic shield member 86 to the chassis may also be
fixed to the strap 53. Id., citing Miyanaga ¶ 50. The Examiner determined it
would have been obvious to have provided straps and fasteners as in
Miyanaga for mounting the battery pack of the combination, because such is
a known arrangement suitable for effectively supporting the load of the
battery pack on the vehicle chassis. Id.

Appellant’s Contentions
Appellant contends the broadest interpretation of “strap extending
beneath the tray relative to the chassis” does not include the beam members
disclosed in Miyanaga. Appeal Br. 10, FN1, citing Merriam Webster
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definition of strap as “a band, plate, or loop of metal for binding objects
together or for clamping an object in position.”

Discussion
We are persuaded by Appellant’s arguments. That is, the Examiner
position that Miyanaga’s beam members constitute “straps” as defined in the
Oxford English Dictionary as “[a] narrow band of iron of other metal used in
the form of a plate, loop, or ring for fastening a thing in position…” (Ans.
14), does not address the recitation in claim 10, which requires “at least one
strap extending beneath the tray relative to the chassis.” Miyanaga discloses
only that “beam members 51, 52, 53, and 54 are provided at a lower surface
side of the battery case 40” and “extend in the width direction of the car
body 11.” Miyanaga ¶ 32, Figs. 2, 3. We do not see, and the Examiner does
not sufficiently explain, how the beam members “extend beneath the tray
relative to the chassis” (emphasis added) as recited in claim 10.
Accordingly, we reverse the Examiner’s rejection of claim 10, as well
as claims 21 and 23.

Claim 24
Claim 24 depends from claim 1 and recites “wherein the polymer
layer and the metallic layer are mechanically attached to each other with
mechanical fasteners.”
Appellant contends Andre does not disclose that layers 10, 20, and 30
are not mechanically attached to each other, and even if the half-shells
disclosed in Andre were taught as being secured to another structure with a
mechanical fastener, this would not mean that the layers 10, 20, and 30 in
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Andre are mechanically secured together. Appeal Br. 11. Appellant
contends Berger does not address this deficiency because Berger teaches
bolts and nuts to secure a cover to a support, not to join a polymer layer and
a metallic layer of a cover. Id. Appellant contends that the rejection fails to
articulate a rationally based reason for joining the layers 10, 20, and 30 using
mechanical fasteners. Id.
We agree with the Examiner, however, that in view of Berger’s
disclosure of mechanically fastening a tray and cover to each other, applying
such a technique to Andre would result in all layers of the tray and cover
being fastened to each other, including the polymer layer and metallic layer
of the tray to each other. Ans. 14. In this regard, Andre does not limit how
the layers of the half-shell are fastened together. Andre ¶¶ 50–52.
Accordingly, we affirm the Examiner’s rejection of claim 24.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 7, 9,
33, 15–17,
19, 22, 25,
26
103 Andre, Miyanaga 1–4, 7, 9,
33, 15–17,
19, 22, 25
26
5, 6, 10, 21,
23, 24
103 Andre, Miyanaga,
Berger
5, 24 6, 10, 21, 23
Overall
Outcome
1–5, 7, 9,
33, 15–17,
19, 22, 24,
25
6, 10, 21,
23, 26
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART