FORD GLOBAL TECHNOLOGIES, LLCDownload PDFPatent Trials and Appeals BoardOct 22, 20202020000134 (P.T.A.B. Oct. 22, 2020) 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. 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 2 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 3 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 Appeal 2020-000134 Application 14/602,868 4 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. Appeal 2020-000134 Application 14/602,868 5 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 Appeal 2020-000134 Application 14/602,868 6 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 Appeal 2020-000134 Application 14/602,868 7 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. Appeal 2020-000134 Application 14/602,868 8 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 Appeal 2020-000134 Application 14/602,868 9 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 Appeal 2020-000134 Application 14/602,868 10 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 Appeal 2020-000134 Application 14/602,868 11 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 12 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 Appeal 2020-000134 Application 14/602,868 13 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 Appeal 2020-000134 Application 14/602,868 14 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 Appeal 2020-000134 Application 14/602,868 15 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 Copy with citationCopy as parenthetical citation