FUHR, Jason D. et al.

Patent Trials and Appeals Board

Feb 27, 2020

14065172 - (D) (P.T.A.B. Feb. 27, 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.
14/065,172 10/28/2013 Jason D. FUHR 069236-1006
CIP-2053-2CIP
4817
165345 7590 02/27/2020
Clarios c/o Christopher & Weisberg, P.A.
1232 N. University Drive
Plantation, FL 33322
EXAMINER
ZHANG, HAIXIA
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
02/27/2020 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):
PTOmail@cwiplaw.com
cwdocketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JASON D. FUHR, STEVEN J. WOOD,
DALE B. TRESTER, and GARY P. HOUCHIN-MILLER

Appeal 2019-000836
Application 14/065,172
Technology Center 1700
____________

Before DONNA M. PRAISS, BRIAN D. RANGE, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–3, 5, 6, 9–12, and 30–36. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Oct. 28, 2013 (“Spec.”),
the Final Office Action dated Dec. 13, 2017 (“Final Act.”), the Appeal Brief
filed May 16, 2018 (“Appeal Br.”), the Examiner’s Answer dated Sept. 4,
2018 (“Ans.”), and the Reply Brief filed Nov. 5, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Johnson Controls Advanced Power Solutions LLC is
identified as the real party in interest. Appeal Br. 2.
Appeal 2019-000836
Application 14/065,172

2
STATEMENT OF THE CASE
The subject matter on appeal relates to lithium-ion batteries and, more
particularly, a battery that includes one or more terminals that are integrally
formed with the body or cover of the battery. Spec. ¶¶ 2, 6. According to the
Specification, an arrangement of twelve cylindrical battery cells or other
numbers of cells may be utilized in different embodiments with different
chemistries of the cells for different voltages. Id. ¶ 107. The Specification
describes Figure 29’s embodiment having three rows of thirteen total battery
cells. Id. ¶ 108. Appellant’s Figure 29 is reproduced below.

Figure 29 above is a top view of battery cells arranged in a battery
module. Spec. ¶ 42. According to the Specification, Figure 29 depicts end
cells 1310A and 1310B coupled to a number of intermediate cells 1310 that
help to increase the voltage difference available through the terminal
connections of battery module 1300. Id. ¶¶ 109, 110. The cells in the second
row are described as “staggered” relative to the cells in both the first row
and the third row for tighter packing of the cells within the battery module.
Id. ¶ 108.
Claim 1 is illustrative and reproduced from the Claims Appendix to
the Appeal Brief (disputed limitations italicized).
Appeal 2019-000836
Application 14/065,172

3
1. A lithium-ion battery module, comprising:
a plurality of lithium-ion battery cells electrically coupled
between a first terminal connection and a second terminal
connection of the lithium-ion battery module and disposed in a
first row, a second row, and a third row, wherein the second
row is disposed between and adjacent to the first and third
rows, and wherein the lithium-ion battery cells in the second
row are offset relative to the lithium-ion battery cells in the first
and third rows;
wherein the plurality of lithium-ion battery cells comprises a
first end lithium-ion battery cell electrically coupled to the first
terminal connection, a second end lithium-ion battery cell
electrically coupled to the second terminal connection, and
intermediate lithium-ion battery cells electrically coupled to
each other between the first and second end lithium-ion battery
cells, wherein the first end lithium-ion battery cell is disposed
in the second row, and wherein the second end lithium-ion
battery cell is disposed in the third row; and
wherein each intermediate lithium-ion battery cell in the first
row is electrically coupled to an adjacent lithium-ion battery
cell in the first row and to a lithium-ion battery cell in the
second row, wherein each intermediate lithium-ion battery cell
in the second row is electrically coupled to a lithium-ion battery
cell in the first row and to a lithium-ion battery cell in the third
row, wherein the plurality of lithium-ion battery cells is
positioned within the lithium-ion battery module in a hexagonal
arrangement having at least one line of reflection symmetry,
and wherein the plurality of lithium-ion battery cells comprises
only thirteen lithium-ion battery cells.
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
Appeal 2019-000836
Application 14/065,172

4
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and Appellant’s arguments, we are not persuaded of reversible
error in the appealed rejections.
The Examiner rejects claims 1–3, 5, 6, 9–12, and 30–36 as follows.
Final Act. 2–23.
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–3, 5, 12, 31, 33, 34,
36 103(a) Hasenauer,
3 Seman4
6 103(a) Hasenauer, Seman, Asaka5
9, 10 103(a) Hasenauer, Seman, Nishiyama6
11 103(a) Hasenauer, Seman, Ripoll Anton7
30, 32, 35 103(a) Hasenauer, Seman, Song8
We address each of the rejections below.
Rejection 1
Appellant argues the rejection of claims 1–3, 5, 12, 31, 33, 34, and 36
as a group. Appeal Br. 8–20. We select claim 1 as representative of the
group. Accordingly, claims 2, 3, 5, 12, 31, 33, 34, and 36 will stand or fall

3 EP 0 320 831 A2, published Dec. 10, 1988. Citations herein to the written
disclosure are from a machine-generated translation in the record.
4 US 2006/0026822 A1, published Feb. 9, 2006.
5 US 2002/0006544 A1, published Jan. 17, 2002.
6 US 6,174,618 B1, issued Jan. 16, 2001.
7 US 2002/0021107 A1, published Feb. 21, 2002.
8 US 2014/0002942 A1, published Jan. 2, 2014.
Appeal 2019-000836
Application 14/065,172

5
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant contends the
Examiner erred in rejecting claim 1 because neither Hasenauer nor Seman
discloses a battery module having only thirteen electrically connected
battery cells disposed in a hexagonal arrangement, having a line of
symmetry, and having the claimed end cell locations. Appeal Br. 13–14.
According to Appellant, Hasenauer’s annotated Figure 1 does not include a
hexagonal shape if one of the end cells is moved to the central row. Appeal
Br. 17. Appellant contends that the Examiner’s annotated cells include cells
which are not even electrically connected together. Id. Annotated
Hasenauer’s Figure 1 is shown below.

According to Hasenauer, Figure 1 above shows memory cells of each
module arranged offset to one another so that there is a total of a hexagonal
arrangement of the entire memory cells within the high temperature storage
battery. Hasenauer 3–4. Appellant asserts that it would not have been
obvious to a person having ordinary skill in the art to reduce Hasenauer’s
360–500 sodium-sulfur cells to only thirteen lithium-ion battery cells absent
hindsight from Appellant’s disclosure. Appeal Br. 18. Similarly, Appellant
argues that the Examiner improperly relies on tighter packing taught by
Appellant’s disclosure to rearrange Hasenauer’s storage battery, truncate the
number of cells, and change the type of cells. Id. at 19.
Appeal 2019-000836
Application 14/065,172

6
The Examiner responds that Hasenauer’s Figures 1–7 disclose a
plurality of battery cells in a tight, compact packing arrangement and
adjusting the number of cells to reach an optimum voltage for a device’s
need would have been within the level of skill of a person of ordinary skill in
the art, routine experimentation, and would not produce any new or
unexpected results. Ans. 24 (citing Hasenauer Title, Figs. 1–7). The
Examiner additionally cites Maleki9 as evidence that it was known to tightly
pack battery cells. Id. at 25. The Examiner determines that modifying
Hasenauer with Seman’s lithium-ion battery cells would have been obvious
for providing large energy density. Id. at 26–27 (citing Seman Title,
Abstract, Figs. 1–16, ¶¶ 7, 28–35). Regarding reducing Hasenauer’s number
of cells, the Examiner responds that it is within the ambit of a person of
ordinary skill in the art to adjust the number of cells to reach an optimum
voltage needed for a device. Id. at 28, 33. The Examiner provides an
annotated figure that numbers 13 consecutive cells in Hasenauer’s battery
module and indicates with an arrow how the thirteenth cell would be
positioned within the battery module to form a hexagonal arrangement
having at least one line of reflection symmetry and have compact packing.
Id. at 29–30. The Examiner’s annotated figure is shown below.

9 US 6,797,427 B2, issued Sept. 28, 2004.
Appeal 2019-000836
Application 14/065,172

7
The Examiner’s annotated figure above shows that cell numbered 13
is connected to cell numbered 12 and the figure’s arrow indicates that cell
numbered 13 is moved into the second row when truncated at 13 cells in the
battery pack. The Examiner determines that it would have been obvious to a
person having ordinary skill in the art to modify Hasenauer’s battery cells
with Seman’s lithium-ion battery cells because Seman discloses it was
known to have a battery module of lithium-ion battery cells for the purpose
of providing large energy density. Id. at 36. The Examiner cites Song for the
nominal voltage of a lithium-ion battery cell. Id. (citing Song, Title,
Abstract, ¶¶ 11, 14, 32).
In the Reply Brief, Appellant asserts that the specific arrangement and
quantity of battery cells claimed “is patentable because it provides distinct
benefits for particular types of batteries.” Reply Br. 5. Appellant directs us to
the Specification’s paragraph 107 for disclosing energy density advantages
for particular battery contexts. Id. (quoting paragraph 107 “it may be
desirable for the battery module 1300 to include thirteen cells 1310 instead
of twelve, as shown in FIG. 29, to reach a desired power output of the
battery module 1300”). Appellant maintains that the chemistry and number
of battery cells claimed are not within the range taught by Hasenauer. Id. at
5–6. Regarding the Examiner’s annotated Hasenauer figure, Appellant
maintains the Examiner relies on hindsight bias, that the number of cells
exceeds thirteen, and that cell “13” located in a hexagonal position is
electrically connected to cell 12 via a fourteenth cell. Id. at 6–8. Appellant
argues that Maleki does not remedy the deficiencies of the cited art because
it does not teach only thirteen electrochemical cells. Id. at 9.
Appeal 2019-000836
Application 14/065,172

8
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting the claims as obvious over the modified
combination of Hasenauer and Seman. Appellant does not adequately rebut
the Examiner’s finding (Ans. 24) that it was known to a person having
ordinary skill in the art to tightly pack battery cells in a battery module. The
Examiner’s finding is supported by the teachings of Hasenauer, and this
tightly packed battery cell module configuration is further evidenced by
Maleki. Hasenauer Figs. 1–7; Maleki Figs. 4, 6. Moreover, the Hasenauer
translation describes the cells being arranged “offset to one another, so that
there is a total of a hexagonal arrangement of the entire memory cells 2
within the high-temperature storage battery.” Hasenauer 3:1–3. Thus, the
arrangement of battery cells in a tightly packed pattern, which Hasenauer
describes as “offset to one another,” to form an overall hexagonal
arrangement of all the cells, as required by claim 1, is not a patentable
distinction over the cited prior art. Nor is the Examiner’s rejection over a
tightly packed battery cell arrangement that forms a hexagonal battery cell
module based on improper hindsight because such characteristics are
disclosed by Hasenauer.
Similarly, Appellant’s argument (Reply Br. 5) that the quantity of
battery cells in the claimed battery module is patentable “because it provides
distinct benefits” is not persuasive of error in the rejection of claim 1. The
Specification’s paragraph 107 discloses that the number of cells may be 12
or 13 or “other numbers of cells.” Spec. ¶ 107. Paragraph 107 does not
describe a specific benefit to the thirteen battery cells claimed other than that
expected, which is “to reach a desired power output for the battery module.”
Id. Thus, the Specification supports the Examiner’s finding (Ans. 24, 28)
Appeal 2019-000836
Application 14/065,172

9
that it would have been within the level of skill of a person having ordinary
skill in the art to select the number of battery cells based on the desired
output. Hasenauer also teaches that the number of cells is an adjustable
component of a battery module. Hasenauer 3:4–5 (“It is also possible high-
temperature storage batteries 1 are constructed with more or less memory
cells.”). Similarly, Seman teaches that the number of lithium-ion cells
specifically in a battery module is selected “to provide the desired voltage
and power” of a battery pack. Seman ¶ 41.
We note that Hasenauer discloses embodiments containing many
more cells than the number claimed, however, in a determination of
obviousness, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. Merck & Co. v.
Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art]
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious.”). Moreover, “a reference is not limited
to the disclosure of specific working examples.” In re Mills, 470 F.2d 649,
651 (CCPA 1972). Nevertheless, the number of battery cells depicted in
Seman’s battery pack examples (25) is close to claim 1’s recited 13
compared to the number of battery cells depicted in Hasenauer’s
embodiments. Therefore, Appellant’s argument that the number of battery
cells claimed is a patentable distinction over the cited prior art is not
supported by the Appeal record.
Appellant’s argument (Appeal Br. 16; Reply Br. 7) that the
Examiner’s annotated Hasenauer figure fails to show a hexagonal shape
when the number of cells is truncated to 13 because the twelfth and
thirteenth cells are connected through a fourteenth cell is not persuasive of
Appeal 2019-000836
Application 14/065,172

10
error. The Examiner adequately explains with the use of an arrow that the
thirteenth cell, which Appellant calls the fourteenth cell, is connected to the
twelfth cell and moved into the offset position relative to the other cells as
taught by Hasenauer. Moreover, as discussed above, the Examiner’s finding
that truncating the number of cells in Hasenauer’s battery module would
result in a hexagonal battery module is supported by Hasenauer’s disclosure
that the battery module has a hexagonal shape. Hasenauer 3:1–3.
The preponderance of the evidence in this appeal record, therefore,
supports the Examiner’s conclusion that the claimed subject matter would
have been obvious in view of Hasenauer and Seman. Accordingly, we
sustain the Examiner’s rejection of claim 1 for the above reasons and those
expressed in the Answer, including the Response to Argument section.
Because we recognize our decision is based on reasoning which differs from
that advanced by the Examiner, we denominate the affirmed rejection as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
Rejections 2–5
Appellant contends that the Examiner erred in rejecting claims 6, 9–
11, 30, 32, and 35 because the additional prior art references do not cure the
deficiencies of Hasenauer and Seman discussed above in connection with
claim 1. Appeal Br. 20–22. Because we do not find reversible error in the
Examiner’s rejection of claim 1, we likewise affirm the Examiner’s
rejections of claims 6, 9–11, 30, 32, and 35 under 35 U.S.C. § 103(a) for the
same reasons provided above with respect to claim 1.

Appeal 2019-000836
Application 14/065,172

11
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed New Ground
1–3, 5, 12,
31, 33, 34,
36
103(a) Hasenauer, Seman
1–3, 5,
12, 31,
33, 34, 36
1–3, 5, 12, 31, 33, 34, 36
6 103(a) Hasenauer, Seman, Asaka 6 6
9, 10 103(a)
Hasenauer,
Seman,
Nishiyama
9, 10 9, 10
Appeal 2019-000836
Application 14/065,172

12
Claim(s)
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed New Ground
11 103(a)
Hasenauer,
Seman, Ripoll
Anton
11 11
30, 32, 35 103(a) Hasenauer, Seman, Song 30, 32, 35 30, 32, 35
Overall
Outcome
1–3, 5, 6,
9–12, 30–
36
1–3, 5, 6, 9–
12, 30–36

AFFIRMED; 37 C.F.R. § 41.50(b)