LEE, Jin Kyu. et al.

Patent Trials and Appeals Board

Nov 7, 2019

12842741 - (D) (P.T.A.B. Nov. 7, 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.
12/842,741 07/23/2010 Jin Kyu LEE 0808-0407PUS1 4675
127226 7590 11/07/2019
BIRCH, STEWART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
MCDERMOTT, HELEN M
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
11/07/2019 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________________
Ex parte JIN KYU LEE,
JAESEONG YEO, YONGSHIK SHIN, HEE SOO YOON,
BUMHYUN LEE, and DAL MO KANG
_________________
Appeal 2018-007901
Application 12/842,741
Technology Center 1700
_________________
Before GEORGE C. BEST, JEFFREY R. SNAY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 5–26 of Application 12/842,741.
Final Act. (September 8, 2017). We have jurisdiction under 35 U.S.C. § 6.
An oral hearing was held in this case on October 31, 2019.2
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies LG Chem, Ltd., as the real party in
interest. Appeal Br. 1.
2 A transcript of the hearing will be made of record in the ’741 Application
when it becomes available.
Appeal 2018-007901
Application 12/842,741
2
I. BACKGROUND
The ’741 Application describes a battery module comprising a
plurality of stacked battery cells. Spec. 1. The heat sink is mounted to the
electrical connection regions between the battery cells and to the outside of
the battery module connection members connected to the electrical
connection regions. Id. The inclusion of the heat sink is said to improve the
safety of the battery module. Id.
Claim 1 is representative of the ’741 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A battery module, comprising:
a plurality of stacked battery cells or unit modules;
electrical connection regions extending from the battery cells or
unit modules, the electrical connection regions electrically
connecting the battery cells or unit modules;
a heat sink mounted to at least one of the electrical connection
regions, wherein the heat sink includes:
a connection part; and
a plurality of bar contact parts extending from the
connection part perpendicular to the connection part,
each bar contact part having a slit formed therein
extending parallel to the connection part; and
bus bars for connecting electrode terminals of the battery cells
or unit modules to external input and output terminals, wherein
portions of outsides of the bus bars are connected to the
electrical connection regions,
wherein, when the heat sink is mounted to the battery module,
the electrical connection regions are inserted into the slits,
wherein the heat sink is formed in a shape so as to not extend
beyond outermost edges of the bus bars, and the heat sink is
mounted to insides or outsides of the bus bars excluding said
portions, and
Appeal 2018-007901
Application 12/842,741
3
wherein an overall length of the heat sink in a first direction is
less than an overall length of the plurality of stacked battery
cells or unit modules in the first direction.
Appeal Br. Claims App. 1 (emphasis added).
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 5, 10–13, 16–19, and 24–26 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Ronning.3 Final Act. 3–7.
2. Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ronning. Final Act. 9.
3. Claims 6–9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Ronning and Yahnker.4 Final Act. 9–10.
4. Claims 20–23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ronning and Yang.5 Final
Act. 10–12.
III. DISCUSSION
A. Rejection of claims 1, 5, 10–13, 16–19, and 24–26 as
anticipated by Ronning.
For reasons which will become apparent, we limit our discussion of
this rejection to claim 1, which is the sole independent claim on appeal.
As the Federal Circuit has explained, “‘anticipation’ requires lack of
novelty of the invention as claimed. The invention must have been known to

3 US 6,423,441 B1, issued July 23, 2002.
4 US 2005/0202310 A1, published September 15, 2005.
5 US 2009/0220853 A1, published September 3, 2009.
Appeal 2018-007901
Application 12/842,741
4
the art in the detail of the claim; that is, all of the elements and limitations of
the claim must be shown in a single prior reference, arranged as in the
claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001) (emphasis added).
After review of the Final Action, Advisory Action, Appeal Brief,
Answer, and Reply Brief, we determine that the rejection must be reversed
because it contains multiple reversible errors. For the sake of brevity, we
shall limit our discussion to four of these errors.
First, in rejecting claim 1, the Examiner found that Ronning’s bus
interfaces 20 correspond to the claimed heat sink. See Final Act. 4; Answer
3.6 The Examiner further found that bus interfaces 20 are made from
thermally conductive material such as copper. Final Act. 4.
The Examiner did not set forth a formal construction of the claim term
“heat sink.” We, however, infer from the findings set forth above that the
Examiner construes the term as encompassing any portion of Ronning’s
apparatus that is made from a thermally conductive material. This claim
interpretation is flawed.
During prosecution, the PTO gives the language of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account any definitions or other enlightenment provided by the written
description contained in the applicant’s specification. In re Morris, 127 F.3d
1048, 1054–55 (Fed. Cir. 1997).

6 We thank the Examiner for the helpful summary table identifying the
correspondence between various claimed elements and Ronning’s described
structure.
Appeal 2018-007901
Application 12/842,741
5
The ’741 Application’s Specification does not set forth any special
definition of the term “heat sink.” Technical dictionaries lead us to conclude
that a person of ordinary skill in the art at the time of the invention would
have understood the term heat sink to mean “a device used to conduct heat
away from an electronic component to prevent damage.” See Dictionary of
Computing, (S.M H. Collin, ed., Bloomsbury, 6th edition, 2010) (retrieved
from https://search.credoreference.com/content/entry/acbcomp/heat_sink/
0?institutionId=743 (accessed 31 Oct. 2019)); M.J. Clugston, Dictionary of
Science (4th ed. London: Penguin 2014) (retrieved from
heat_sink/0?institutionId=743 (accessed October 31, 2019)) (“An object
with a large heat capacity that receives heat by conduction from an electrical
component and dissipates the heat to its surroundings, chiefly by
convection.”).
Although it is true that Ronning bus interfaces 20 will absorb heat by
conduction from the electrical connection regions, this is true of any portion
of the apparatus that is thermally connected to the electrical connection
regions. Ronning, however, does not contain, discuss or suggest using bus
interfaces 20 in this manner. In particular, Ronning does not suggest that bus
interfaces 20 should be sized so they have an appropriately large heat
capacity. In contrast, the ’741 Application’s Specification discusses the
design and construction of a heat sink that has a large heat capacity. See
Spec. 6–10.
In view of the foregoing, we conclude that the Examiner has adopted
an unreasonably broad interpretation of the term heat sink. See In re Smith
Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (“The correct inquiry in
giving a claim term its broadest reasonable interpretation in light of the
specification is not whether the specification proscribes or precludes some
Appeal 2018-007901
Application 12/842,741
6
broad reading of the claim term adopted by the examiner. And it is not
simply an interpretation that is not inconsistent with the specification. It is an
interpretation that corresponds with what and how the inventor describes his
invention in the specification, i.e., an interpretation that is consistent with the
specification.” (internal quotation omitted)).
Second, claim 1 requires the claimed battery module to comprise, in
relevant part, “bus bars for connecting electrode terminals of the battery
cells or unit modules to external input and output terminals.”
In rejecting claim 1, the Examiner found that Ronning’s bus blades 50
correspond to the claimed external input and output terminals. Answer 3.
A review of the ’741 Application’s Specification leads us to conclude
that the claimed external input and output terminals are located on the
battery module’s case and are for connecting the battery module to
components external to the battery module. See, e.g., Spec. 10, 22–23,
Fig. 4. Ronning’s bus blades 50 are located inside Ronning’s battery module
case and cannot be used as external input and output terminals. See, e.g.,
Ronning Fig. 1A.
Third, claim 1 requires the claimed battery module to have, in relevant
part, “portions of outsides of the bus bars . . . connected to the electrical
connection regions.”
In rejecting claim 1, the Examiner found that Ronning’s male blade-
type terminals 40 correspond to the claimed electrical connection regions
and Ronning’s conductor pads 65 correspond to the claimed bus bars.
Answer 3. Ronning’s male blade-type terminals 40 do not directly contact
Appeal 2018-007901
Application 12/842,741
7
conductor pads 65.7 See Ronning Fig. 1A, Fig. 2, Fig. 3. Rather, male blade-
type terminals 40 are indirectly connected to conductor pads 65 via bus
interfaces 20. In particular, bus blades 50—which are a portion of bus
interfaces 20—extend through slits 64 in conductor pads 65. The Examiner
does not explain how insertion of bus blades 50 through slits 64 in conductor
pads 65 is a description of connecting the outside of the bus bars to the
electrical connection regions as required by claim 1.
Fourth, claim 1 requires, in relevant part, a heat sink mounted to
insides or outsides of the bus bars excluding the portions of the bus bars that
are connected to the electrical connection regions. In rejecting claim 1, the
Examiner found that bus interfaces 20 correspond to the claimed heat sink
and conductor pads 65 correspond to the claimed bus bars. Answer 3. As
discussed above, the Examiner found that Ronning’s electrical connection
regions, i.e., male blade-type terminals 40, are connected to the bus bars, i.e.,
conductive pads 65, indirectly via bus blades 50. Bus blades 50 are a portion
of bus interfaces 20. Answer 4–5. According to the Examiner, therefore,
Ronning’s heat sink—i.e., bus interfaces 20—are mounted to the insides or
the outsides of the bus bars using the same portion of the bus bars that
provide the indirect connection between Ronning’s bus bars and electrical
connection regions. Answer 5. In other words, in rejecting claim 1, the
Examiner uses Ronning’s bus blades 50 to connect both the claimed
electrical connection regions and the heat sink to the bus bars. Claim 1
expressly excludes this structure.

7 For the purposes of this opinion, we assume, without deciding, that the
Examiner correctly concluded that claim 1 does not require a direct physical
connection between the electrical connection regions and the bus bars.
Appeal 2018-007901
Application 12/842,741
8
For the reasons set forth above, we reverse the rejection of claim 1 as
anticipated by Ronning. Because the Examiner has not established a prima
facie case of anticipation of the sole independent claim on appeal, we also
reverse the rejection of claims 5, 10–13, 16–19, and 24–26, which depend
from claim 1.
B. Rejection of claims 14 and 15 as unpatentable over Ronning.
As discussed above, we have reversed the rejection of claim 1 as
anticipated by Ronning because the Examiner erred by finding that Ronning
describes each element of claim 1. See § A, supra. In rejecting claims 14 and
15, the Examiner has not explained how Ronning describes or suggests the
missing elements of claim 1. See Final Act. 9. The Examiner, therefore, has
not established a prima facie case of obviousness with respect to claims 14
and 15. Accordingly, we reverse the rejection of claims 14 and 15 as
unpatentable over Ronning.
C. Rejection of claims 6–9 as unpatentable over the combination
of Ronning and Yahnker.
As discussed above, we have reversed the rejection of claim 1 as
anticipated by Ronning. See § A, supra. The Examiner erred by finding that
Ronning describes each element of claim 1. Final Act. 9. In rejecting claims
6–9, the Examiner has not explained how the combination of Ronning and
Yahnker describes or suggests the missing elements of claim 1. See id. at 9–
10. The Examiner, therefore, has not established a prima facie case of
obviousness with respect to claims 6–9. Accordingly, we reverse the
rejection of these claims as unpatentable over the combination of Ronning
and Yahnker.
Appeal 2018-007901
Application 12/842,741
9
D. Rejection of claims 20–23 as unpatentable over the
combination of Ronning and Yang.
As discussed above, we have reversed the rejection of claim 1 as
anticipated by Ronning because the Examiner erred by finding that Ronning
describes each element of claim 1. See § A, supra. In rejecting claims 20–23
as unpatentable over the combination of Ronning and Yang, the Examiner
has not explained how the combination of Ronning and Yang describes or
suggests the missing elements of claim 1. See Final Act. 10–12. The
Examiner, therefore, has not established a prima facie case of obviousness
with respect to claims 20–23. Accordingly, we reverse the rejection of
claims 20–23 as unpatentable over the combination of Ronning and Yang.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 10–13, 16–
19, 24–26 102(b) Ronning
1, 5, 10–13,
16–19, 24–26
14, 15 103(a) Ronning 14, 15
6–9 103(a) Ronning, Yahnker 6–9
20–23 103(a) Ronning, Yang 20–23
Overall Outcome 1, 5–26
REVERSED