13819689 - (D) (P.T.A.B. Nov. 26, 2019)

Michael Gless et al.

Patent Trials and Appeals BoardNov 26, 2019

13819689 - (D) (P.T.A.B. Nov. 26, 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. 13/819,689 05/12/2013 Michael Gless 2178-0586 3331 10800 7590 11/26/2019 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 EXAMINER AMPONSAH, OSEI K ART UNIT PAPER NUMBER 1729 MAIL DATE DELIVERY MODE 11/26/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL GLESS and RALF ANGERBAUER Appeal 2019-001905 Application 13/819,689 Technology Center 1700 BEFORE ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and SHELDON M. MCGEE, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 7, and 10–13. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real parties in interest as Robert Bosch GmbH and Samsung SDI Co., Ltd. Appeal Br. 2. Appeal 2019-001905 Application 13/819,689 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A battery cell comprising: a cell housing including (i) a base area on which the battery cell is placed, (ii) at least one side face configured as an elastically deformable element, and (iii) two terminals, a first terminal of the two terminals is electrically conductively connected to a cathode of the battery cell and a second terminal of the two terminals is electrically conductively connected to an anode of the battery cell, and the two terminals are arranged on at least one side face of the cell housing, wherein one terminal of the two terminals is fixedly arranged on the at least one side face configured as an elastically deformable element, such that the at least one side face configured as an elastically deformable element is configured to realize an elastically displaceable position of a contact area of the one terminal. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Marukawa US 2003/0017387 Al Jan. 23, 2003 Li US 2003/0031918 Al Feb. 13, 2003 Rejman US 7,397,218 B2 July 8, 2008 Appeal 2019-001905 Application 13/819,689 3 REJECTIONS 1. Claim 11 is rejected under 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. 2. Claims 1, 2, 7, and 10 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Marukawa in view of Rejman. 3. Claims 11–13 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Marukawa in view of Li and Rejman. OPINION Upon consideration of the evidence and each of the respective positions set forth in this appeal, we find that the preponderance of evidence supports Appellant’s position. We thus reverse the Examiner’s decision to reject the appealed claims for the reasons provided by Appellant, and add the following for emphasis. Rejection 1 It is the Examiner’s position that there is no written descriptive support for the recitation found in claim 11 of “wherein the side face of the cell housing is further configured as an elastically deformable element that is elastically displaceable relative to the base area” [emphasis added]. Ans. 3–4. We agree with Appellant that the Specification reasonably conveys that the side face is displaceable, and one of ordinary skill in the art would understand that the side face is displaceable relative to some other part of the cell housing, such as the base area of the cell housing. The Appeal 2019-001905 Application 13/819,689 4 claimed “base area” is merely being used a reference point. Appeal Br. 6–7. We thus reverse Rejection 1. Rejections 2 and 3 Appellant argues that claim 1 requires that the elastic deformation of the at least one side face results in displacement of the terminal arranged on the at least one side face. Appellant submits that the applied art does not disclose displacing a terminal of a battery with an elastically deformable side face of a cell housing. Appeal Br. 8–9. The Examiner recognizes that Marukawa does not teach this aspect of the claims. Ans. 15. The Examiner relies upon Rejman for curing this deficiency. Ans. 4–6 and 15–16. However, we agree with Appellant that Rejman also does not teach a battery pack arrangement whereby the elastic deformation of at least one side face results in displacement of the terminal arranged on the at least one side face for the reasons stated in the briefs. Appeal Br. 7–11. Reply Br. 3–4. In view of the above, we reverse Rejection 2. We also reverse Rejection 3 because the Examiner does not rely upon the additionally applied reference to cure the stated deficiency discussed, supra. CONCLUSION We reverse the Examiner’s decision. Appeal 2019-001905 Application 13/819,689 5 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11 112 written description 11 1, 2, 7, 10 103(a) Marukawa, Rejman 1, 2, 7, 10 11–13 103(a) Marukawa, Li, Rejman 11–13 Overall Outcome 1, 2, 7, 10– 13 REVERSED