Obasih, Kem M. et al.

Patent Trials and Appeals Board

Oct 24, 2019

14502723 - (D) (P.T.A.B. Oct. 24, 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.
14/502,723 09/30/2014 Kem M. Obasih 57501-1063 9648
15602 7590 10/24/2019
Boardman & Clark LLP
CPS Technology Holdings LLC
1 South Pinckney St.
P.O. Box 927
Madison, WI 53701-0927
EXAMINER
SHEIKH, HAROON S
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
10/24/2019 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):
docket_patents@boardmanclark.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEM M. OBASIH and RICHARD M. DEKEUSTER
Appeal 2019-000773
Application 14/502,723
Technology Center 1700
Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1

1 This Decision includes citations to the following documents: Specification
filed Sept. 30, 2014 (“Spec.”); Final Office Action dated Nov. 29, 2017
(“Final”); Appeal Brief filed May 18, 2018 (“Appeal Br.”); Examiner’s
Answer dated Sept. 5, 2018 (“Ans.”); and Reply Brief filed Nov. 5, 2018
(“Reply Br.”).
Appeal 2019-000773
Application 14/502,723

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The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 2, 5–16, and 20–28.3
We REVERSE.
CLAIMED SUBJECT MATTER
The invention relates to battery systems for use, e.g., in providing
power to electric vehicles (xEVs) and other high voltage energy
storage/expending applications (e.g., electrical grid power storage systems).
Spec. ¶ 24. The battery systems may include one or more battery module. Id.
A battery module in accordance with the invention is illustrated in Figure 4,
reproduced below.

2 We use the word “Appellant” to refer to the “Applicant” as defined in
37 C.F.R. § 1.42(a). The Appellant is Kem M. Obasih, Richard M.
Dekeuster, and Johnson Controls Technology Company. The Appellant
identifies Johnson Controls Technology Company as the real party in
interest. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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Application 14/502,723

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Figure 4, above, is a partially-exploded, back, perspective view of
lithium-ion battery module 20. Spec. ¶ 45. Heat sinks 41 are disposed in
(e.g., in-molded with) back side 40 of housing 31. Id. Heat sinks 41 are
thermally conductive (e.g., metal) plates. Id. Heat sinks 41 may include
cooling fins 69, as illustrated in the Figure 4 embodiment. Id. Central portion
70 of back side 40 separates heat sinks 41 from each other. Id. Hood 54 may
be disposed over top cover 52 of housing 31. Id. ¶ 42. Fan 62 is configured
to blow air within the airspace underneath hood 54. Id. ¶ 43. Hood 54 may
include features to block airflow proximate to central portion 70, such that
the airflow (e.g., from fan 62) is diverted primarily over heat sinks 41 and
generally avoids less efficient heat transfer with central portion 70. Id. ¶ 46.
In the embodiment illustrated in Figure 4, airflow is diverted away from
Appeal 2019-000773
Application 14/502,723

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central portion 70 and proximate to heat sinks 41 only by central ridge 72 in
second portion 58 of hood 54. Id.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1 A battery system, comprising:
a battery module;
a housing of the battery module, wherein the housing
comprises a top side, a lateral side, and an edge extending along
and between the top side and the lateral side;
a plurality of electrochemical cells disposed in the
housing;
a heat sink disposed on the lateral side of the housing;
a fan disposed over the top side of the housing; and
a hood comprising a first hood portion disposed over the
top side of the housing and the fan and a second hood portion
coupled to the first hood portion and disposed over the lateral
side of the housing, wherein the hood defines an airspace
between the hood and the housing and the hood is configured to
guide an airflow through the airspace from the fan on the top
side of the housing, over the edge between the top side and the
lateral side of the housing, and over the heat sink disposed on
the lateral side of the housing;
wherein the heat sink comprises two thermally
conductive plates in-molded with the lateral side of the housing
and the two thermally conductive plates are separated by a
central portion of the lateral side of the housing, and wherein
the second portion of the hood comprises a central ridge
disposed proximate to the central portion of the lateral side of
the housing and the central ridge is configured to guide the
airflow away from the central portion of the lateral side of the
housing to the two thermally conductive plates on either side of
the central portion.
Appeal Br. 17 (Appendix of Claims on Appeal).
Appeal 2019-000773
Application 14/502,723

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REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
INUI US 6,448,741 B1 Sept. 10, 2002
AOKI US 2012/0028099 A1 Feb. 2, 2012
YOUNGS US 2012/0282510 A1 Nov. 8, 2012

REJECTIONS
1. Claims 1, 2, 5–10, 12–16, 20–25, 27, and 28 are rejected under
35 U.S.C. § 103 as unpatentable over Youngs in view of lnui. Final Act. 4–
9.
2. Claims 11 and 26 are rejected under 35 U.S.C. § 103 as
unpatentable over Youngs in view of Inui and Aoki. Final Act. 9–10.
OPINION
The Appellant’s arguments in support of patentability of all rejected
claims are based on limitations common to independent claims 1, 16, and 22.
In particular, the Appellant contends the Examiner reversibly erred in
determining that the following modifications to Youngs’s battery module
would have been obvious (see Final 7): (1) using “two thermally conductive
plates” (claims 1, 16, 22) instead of a single plate as the heat sink; (2)
“separat[ing]” the two thermally conductive plates “by a central portion of
the lateral side of the housing” (id.); and (3) providing “the hood,” rather
than the heat sink with “a central ridge” (id.). See generally Appeal Br. 8–
15. For the reasons discussed below, we are persuaded of reversible error in
the Examiner’s conclusion of obviousness.
Appeal 2019-000773
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The Examiner cited Youngs paragraph 130 and Youngs Figure 27,
reproduced below, as evidence of unpatentability. See, e.g., Final 5.

Youngs Figure 27 is a bottom perspective view of the heat sink arrangement.
Youngs ¶ 130. Heat sink 2418 includes a plurality of fins 2419. Id. When
cooling is required, fan 2706 directs air through central cavity 2708 in the
direction indicated by arrows 2702. Id. The air is then directed between fins
2719 in an angularly outward direction on each side of energy storage
module 2402. Id.
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As to the independent claims’ requirement that the heat sink comprise
two thermally conductive plates separated by a central portion, the Examiner
found that the air flow in Youngs “is not only passed to the two regions via
the central cavity, but it is also directly passed to the two regions
individually.” Final 7. The Examiner thus determined that providing the heat
sink as two plates separated by a central portion of the lateral side of the
housing, instead of as a single plate, would have been “a matter of design
choice that, absent persuasive evidence that the particular configuration
significantly achieves a better cooling effect of the battery module, is an
obvious modification that [would have been] well-within the purview of an
ordinary skilled artisan.” Id.
As to the requirement that the hood comprise “a central ridge disposed
proximate to the central portion of the lateral side of the housing” (claims 1,
16, 22), the Examiner found that “a central ridge” reads on Youngs’s fins
2419 in central cavity 2708 that are configured to guide the airflow away
from the central portion of the lateral side of the housing toward the
thermally conductive plates on either side of the central portion. Final 7
(citing Youngs ¶ 128, Fig. 25). The Examiner determined that providing
central cavity fins 2419 on Youngs’s hood, rather than on the housing,
would have been an obvious rearrangement of parts that would not have
affected the manner in which the airflow is guided away from the central
portion of the lateral side of the housing to the thermally conductive plates
on either side of the central portion. Id. at 7–8.
The Appellant argues that the Examiner’s determination that it would
have been obvious to relocate central cavity fins 2419 (the alleged “central
ridge”) to Youngs’s hood “conflicts with long-standing legal precedent
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regarding ‘rearrangement of parts’ rejections, in addition to the teachings in
the present Application. Indeed, the Appellant respectfully directs the Board
to Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (Bd. Pat. App.
& Inter. 1984).” Appeal Br. 11. The Appellant argues that Youngs’s “‘fan
2706 directs air through central cavity 2708,’ which differs from the claims
requiring a central ridge disposed proximate to the central portion of the
lateral side of the housing as a means to divert air away from the central
portion of the lateral side of the housing. (Emphasis added.)” Appeal Br. 12
(quoting Youngs ¶ 130). The Appellant also argues that “fins 2419 are a
part of the heat sink 2418 and, thus, the air extracts heat from the fins 2419,
whereas the claimed central ridge is not a part of the claimed heat sink, but
instead is a part of the claimed hood.” Id. (citing Youngs ¶ 130).
The Appellant has argued persuasively that the Examiner failed to
identify the requisite teaching or suggestion in the prior art to make the
proposed rearrangement of Youngs’s central cavity fins. As explained by the
predecessor to our reviewing court,
it is permissible to modify the disclosure of a reference unless
such modification is prompted solely by appellant’s disclosure,
rather than by a reasoned analysis of the prior art and by
suggestions provided therein . . . . This is true regardless of
whether the modification requires a reversal of parts or any
other arrangement of . . . features.
In re Leslie, 547 F.2d 116, 120 (CCPA 1977). The Examiner has not
identified a reason why the ordinary artisan would have made the proposed
rearrangement of Youngs’s central cavity fins (see Ans. 11–12) and,
therefore, appears to rely on improper hindsight reasoning. Accordingly, we
do not sustain the rejection of independent claims 1, 16, and 22, or the
rejections of dependent claims 2, 5–15, 20, 21, and 23–28.
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Application 14/502,723

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CONCLUSION
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 5–10,
12–16, 20–
25, 27, 28
103 Youngs, Inui 1, 2, 5–10,
12–16,
20–25, 27,
28
11, 26 103 Youngs, Inui, Aoki 11, 26
Overall
Outcome
1, 2, 5–16,
20–28

REVERSED