Frank Kroll et al.

Patent Trials and Appeals Board

Nov 29, 2019

13968541 - (D) (P.T.A.B. Nov. 29, 2019)

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.
13/968,541 08/16/2013 Frank Kroll AKL0044.US 1011
41863 7590 11/29/2019
TAYLOR IP, P.C.
P.O. Box 560
142. S Main Street
Avilla, IN 46710
EXAMINER
WEI, ZHONGQING
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
11/29/2019 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):
mbrady@taylorip.com
patent@taylorip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK KROLL,
HELMUT HARTL, ANDREAS ROTERS,
HAUKE ESEMANN, DIETER GOEDEKE,
ULF DAHLMANN, SABINE PICHLER-WILHELM,
MARTIN LANDENDINGER, and LINDA JOHANNA BACKNAES
____________

Appeal 2019-001842
Application 13/968,541
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2019-001842
Application 13/968,541

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The Examiner finally rejected claims 1–7, 9, 13–18, 21, 22, 52–54,
58, and 59 of Application 13/968,541 under 35 U.S.C. § 103(a) as obvious.
Final Act. 4, 12 (July 20, 2017).1 Appellant2 seeks reversal of the rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we reverse.
BACKGROUND
The ’541 Application describes lithium-ion batteries having a
multitude of individual battery cells connected in-series. Spec. ¶ 3. The
Specification describes these individual battery cells as having electrodes,
which are led out of a housing of the battery cell by a feed-through
component. Id. at ¶ 2, 5.
Claim 1 is representative of the ’541 Application’s claims and is
reproduced below from the claims listing in the Claims Appendix to the
Appeal Brief:
1. A feed-through for passing through an opening in a part
of a housing, the feed-through comprising:
one of a glass material and a glass ceramic material;
at least one conductor embedded in said one of a glass
material and a glass ceramic material, said at least one
conductor defining a longitudinal axis and including a main

1 Claims 8, 19, 20, 23–43, 55, and 56 are withdrawn from consideration by
the Examiner pursuant to 37 C.F.R. § 1.142(b) as drawn to a non-elected
invention. Final Act. 1, 3. Claims 10–12, 44–51, and 57 have been canceled.
Id. at 3; Adv. Act. 2 (March 8, 2018). The Examiner has withdrawn the
rejection of claim 57 under 35 U.S.C. § 112, ¶ 2, as indefinite. Adv. Act. 2.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Schott AG.
Appeal Br. 3.
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Application 13/968,541

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body embedded in said one of a glass material and a glass
ceramic material and a head part connected to said main body,
said main body having a body width which extends in a
direction perpendicular to said longitudinal axis and said head
part having a head width which extends in a direction
perpendicular to said longitudinal axis and is greater than said
body width, said head part being configured to be joined with
an electrode connecting component to form a mechanically
stable and non-detachable electrical connection having good
conductivity; and
a base body for inserting into said opening in said part of
said housing, said base body being formed from a metal and
having a base body opening through which said at least one
conductor embedded in said one of a glass material and a glass
ceramic material is guided, wherein said base body opening is
sealed by said one of a glass material and a glass ceramic
material.
Appeal Br. (Claims App.) 22 (emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–7, 9, 13, 16–18, 21, 22, 52–54, 58, and 59 are rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination
of Byun,3 Lasater,4 and Taylor.5 Final Act. 4; Ans. 4.
2. Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Byun, Lasater, Taylor,
and Hong.6 Final Act. 12; Ans. 4.

3 US 2011/0294001 A1, published Dec. 1, 2011.
4 US 2003/0134194 A1, published July 17, 2003.
5 US 5,104,755, issued Apr. 14, 1992.
6 US 2004/0137322 A1, published July 15, 2004.
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Application 13/968,541

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DISCUSSION
Appellant argues for the reversal of the rejections of claims 1–7, 9,
13–18, 21, 22, 52–54, 58, and 59 on the basis of limitations recited in
independent claim 1.7 Appeal Br. 12–20. We select claim 1 as
representative. Accordingly, we limit our discussion to claim 1.
Each of the rejections on appeal is based upon the combination of
Byun and Lasater. See Final Act. 4–13. We agree with Appellant that the
Examiner has not provided adequate reasoning to support this combination
in the manner proposed in the rejections. We, therefore, reverse the
rejections of claims 1–7, 9, 13–18, 21, 22, 52–54, 58, and 59 of the ’541
Application.
In rejecting claim 1, the Examiner found that Byun describes or
suggests each limitation of claim 1 except for a glass material or a glass
ceramic material. Id. at 5. The Examiner also found that Lasater describes or
suggests use of a glass material, i.e., “sealing glass 7,” for providing a
hermetic seal with a conductor embedded therein. Id. (citing Lasater ¶¶ 2,
45; Fig. 1) (emphasis added). The Examiner determined that a person of
ordinary skill in the art at the time of the invention would have combined
Byun and Lasater because incorporating Lasater’s sealing glass 7 in Byun’s
feed-through would confer the benefits of: (i) “applying the hermetic glass
seals in severe and harsh environments,” and (ii) “preventing lithium
electrolyte leaking.” Final Act. 5 (citing Lasater ¶¶ 2, 4, 5). In particular, the
Examiner proposed incorporating Lasater’s sealing glass 7 by removing

7 Rejected claims 10–12 and 57 were canceled by an Amendment filed with
the Appeal Brief. Appeal Br. 6.
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Application 13/968,541

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Byun’s “gasket [610] and upper insulator [630] without having to remove
the nut [800] and the flange [210].”8 Answer 10; see Byun Fig. 3.
The Examiner’s annotated Figures illustrate the proposed
modification and are reproduced below:

The Examiner’s annotated Figures illustrate sectional views of Byun’s
Figure 3 and Lasater’s Figure 1 showing the proposed location of Lasater’s
sealing glass 7 in Byun’s feed-through. Answer 5.
Appellant argues that the rejections should be reversed because
Lasater teaches away from using Byun’s gasket sealing components, which
includes nut 800 and flange 210. See Appeal Br. 16–17 (citing Lasater ¶ 3);
Reply Br. 8. In particular, Appellant argues that the Examiner has not
adequately explained why a person of ordinary skill in the art would have
retained Byun’s gasket sealing nut 800 and flange 210 with the hermetically-
sealing glass material described in Lasater. Reply Br. 6.

8 The Examiner found that Byun’s flange 210 discloses or suggests the
claimed “head part” recited in claim 1. Final Act. 6.
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The Examiner, on the other hand, argues that “no teachings in the
prior art[] require that the entire gasket seal system of Byun is removed.”
Answer 9.
We, however, agree with Appellant. For the rejections at issue in this
appeal to be proper, the Examiner must explain why a person of ordinary
skill in the art would have had a reason to selectively retain Byun’s nut 800
and flange 210, while replacing gasket 610 and upper insulator 630 with
Lasater’s glass material. In this case, the Examiner has not provided the
necessary explanation. Rather, the Examiner implicitly assumed that the
person of ordinary skill in the art at the time of the invention might
specifically retain Byun’s nut 800 and flange 210. As Appellant persuasively
argues,
the Examiner’s proposed modification is rooted in how one
skilled in the art could possibly modify Byun in view of Lasater
to arrive at the claimed invention, which is improper, rather
than the proper inquiry of how one skilled in the art would
[have] be[en] motivated to modify Byun in view of Lasater.
Reply Br. 6. The Examiner, moreover, admits that one of ordinary
skill in the art would have realized that Byun’s nut 800 is not a critical
part for the proposed hermetically-sealing glass system. Answer 12.
Likewise, we conclude that one of ordinary skill in the art would have
similarly appreciated that Byun’s flange 210, i.e., the claimed “head
part,” is also not critical.
Thus, Appellant persuasively argues that the ordinarily skilled artisan
would have removed Byun’s entire specific gasket sealing components,
particularly in the absence of any gasket. We agree with Appellant that
doing so would have avoided any unnecessary compression “against
[Lasater’s] incompressible sealing glass material.” Appeal Br. 18.
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Application 13/968,541

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In the absence of a reasoned explanation why the ordinarily skilled
artisan would have retained Byun’s nut 800 and flange 210 to incorporate
Lasater’s glass material, the Examiner has engaged in impermissible
hindsight in concluding that the applied prior art renders claim 1 obvious. In
re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred
when the specific understanding or principal within the knowledge of one of
ordinary skill in the art leading to the modification of the prior art in order to
arrive at appellant’s claimed invention has not been explained); In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art”).
CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9, 13, 16–18,
21, 22, 52–54, 58,
59
103(a) Byun, Lasater, Taylor
1–7, 9, 13,
16–18, 21, 22,
52–54, 58, 59
14, 15 103(a) Byun, Lasater, Taylor, and Hong 14, 15
Overall Outcome
1–7, 9, 13–18,
21, 22, 52–54,
58, 59
REVERSED