FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Oct 6, 2021

2020004485 (P.T.A.B. Oct. 6, 2021)

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.
14/716,092 05/19/2015 Patrick Daniel Maguire 83526542;
67186-176 PUS1
9294
46442 7590 10/06/2021
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
VAN OUDENAREN, MATTHEW W
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
10/06/2021 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 PATRICK DANIEL MAGUIRE and
JOHN PETER BILEZIKJIAN
Appeal 2020-004485
Application 14/716,092
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The Appellant1 has filed a Request for Rehearing (“Req. Reh’g”)
dated September 2, 2021, of the Decision on Appeal (mailed July 2, 2021)
pursuant to 37 C.F.R. § 41.52. We affirmed all of the Examiner’s § 103
rejections.
We have reconsidered our Decision, in light of Appellant’s comments
in the Request for Rehearing, and we find no error in the disposition of the
disputed § 103 rejections.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2019). Appellant identifies the real party in interest as Ford
Global Technologies, LLC. Appeal Br. 1.
Appeal 2020-004485
Application 14/716,092

2
Appellant contends in the Request that we “overlooked the claim term
‘once’” (Req. Reh’g 1) (emphasis omitted) and thus we erred in affirming
the § 103 rejection of claim 12 which recites that the “walls configured to
assert a compressive load . . . once” the first fuel stack is inserted into the
relevant pocket (Claims Appendix 10; similar language is present in
independent claim 16 and dependent 26). Appellant urges that “once”
means “as soon as” or “at the moment when” the cells are inserted (Req.
Reh’g 2), and that the applied prior art does not teach this. This argument is
not persuasive of reversible error.
In construing claims, “the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id.3

2 Appellant only disputes our affirmance with respect to claims that include
the term “once” (i.e., independent claims 1, 16 and claims dependent
thereon, and dependent claim 26 which depends from claim 11).
3 Cf. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (in prosecution
before the PTO “[i]t is the applicants’ burden to precisely define the
invention, not the PTO’s.”). The purpose of this requirement is to provide
the public with adequate notice of the boundaries of protection involved.
The time to do so is during prosecution where an applicant has the ability to
amend the claims to more precisely define the metes and bounds of the
claimed invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1210–12
(BPAI 2008).
Appeal 2020-004485
Application 14/716,092

3
The plain and ordinary meaning of “once” encompasses, for example,
“at some indefinite time in the past”4 and “if or when at any time, if ever”5.
Appellant has not directed us to any limiting definition in the Specification
for the disputed claim language. While Appellant urges that Specification
Figure 4 and the related discussion that a cell stack may be slightly over
compressed before insertion into a pocket (Spec. ¶ 54) means that the walls
apply a compressive force almost immediately (Req. Reh’g 1–2), the claims
are not so limited. Furthermore, the Specification also repeatedly states “the
structural assembly is configured to assert a compressive load . . . after
insertion of the cell stack into the pocket” (Spec. ¶¶ 17, 19) (emphasis
added). Accordingly, we see no error in our determination that “we see
nothing in the claims that limits the timing of the tightening or compression
(i.e., the assertion of the compressive load). Limitations not appearing in the
claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).” (Decision 6).
Thus, Appellant’s argument that we adopted an unreasonable claim
construction for the term “once” (Req. Reh’g 2) is not persuasive for reasons
set out above and in the Decision.
Therefore, we decline to reconsider our decision to affirm the
Examiner’s § 103 rejections of the appealed claims.
This Decision on the Request for Rehearing incorporates our Decision
and is final for the purposes of judicial review. See 37 C.F.R. § 41.52 (a)(1).

4 https://www.merriam-webster.com/dictionary/once
5 https://www.dictionary.com/browse/once
Appeal 2020-004485
Application 14/716,092

4
DECISION
In conclusion, Appellant’s Request is denied with respect to making
changes to the final dispositions of the rejections therein.
Outcome of Decision on Rehearing:
Claim(s) 35 U.S.C. § Reference(s)/Basis Denied Granted
1–3, 21, 22,
24, 25
103 Harada, Cicero, Qi 1–3, 21, 22,
24, 25

8 103 Harada, Cicero, Qi,
Byun
8
9, 10 103 Harada, Cicero, Qi,
Abu-Isa
9, 10
4, 5, 7 103 Harada, Cicero, Qi,
Fister
4, 5, 7
23 103 Harada, Cicero, Qi,
Fister,
Anantharaman
23
11, 13, 15 103 Harada, Fister,
Anantharaman
11, 13, 15
16–18 103 Harada, Cicero, Qi,
Okada
16–18
20 103 Harada, Cicero, Qi,
Okada, Abu-Isa
20
26 103 Harada, Fister,
Anantharaman, Qi
26
Overall
Outcome
1–5, 7–11,
13, 15–18,
20–26

Appeal 2020-004485
Application 14/716,092

5
Final Outcome of Appeal after Rehearing:

Claim(s) 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 21, 22,
24, 25
103 Harada, Cicero, Qi 1–3, 21, 22,
24, 25

8 103 Harada, Cicero, Qi,
Byun
8
9, 10 103 Harada, Cicero, Qi,
Abu-Isa
9, 10
4, 5, 7 103 Harada, Cicero, Qi,
Fister
4, 5, 7
23 103 Harada, Cicero, Qi,
Fister,
Anantharaman
23
11, 13, 15 103 Harada, Fister,
Anantharaman
11, 13, 15
16–18 103 Harada, Cicero, Qi,
Okada
16–18
20 103 Harada, Cicero, Qi,
Okada, Abu-Isa
20
26 103 Harada, Fister,
Anantharaman, Qi
26
Overall
Outcome
1–5, 7–11,
13, 15–18,
20–26

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).
DENIED