PATENT OWNER
`
`PATENT OWNER
`EXHIBIT 2025
`
`EXHIBIT 2025
`
`

`
`UNITED STA (cid:9)1ES PA (cid:9)PENT 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. eov
`
`APPLICATION NO. (cid:9)
`
`12/872,350
`
`FILING DATE
`
`08/31/2010
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO. I CONFIRMATION NO.
`
`Peter Kritzer
`
`8470G-000088/US/COA
`
`3401
`
`27572 (cid:9)
`7590 (cid:9)
`06/04/2015
`HARNESS, DICKEY & PIERCE, P.L.C.
`P.O. BOX 828
`BLOOMFIELD HILLS, MI 48303
`
`EXAMINER
`
`EGGERDING, ALIX ECHELMEYER
`
`ART UNIT
`
`PAPER NUMBER
`
`1729
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/04/2015
`
`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 th e attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`troydocketing@hdp.com
`
`PTOL-90A (Rev. 04/07)
`
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Ex parte PETER KRITZER
`
`Appeal 2013-007728
`Application 12/872,350
`Technology Center 1700
`
`Before PETER F. KRATZ, MARK NAGUMO, and GEORGE C. BEST,
`Administrative Patent Judges.
`
`BEST, Administrative Patent Judge.
`
`DECISION ON APPEAL
`
`The Examiner finally rejected claims 1-4 and 6-26 of Application
`
`12/872,350 under 35 U.S.C. § 103(a) as obvious. Final Act. (October 4,
`
`2012). Appellant' seeks reversal of these 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. We, however, newly
`
`reject claim 4 as indefinite. See 37 C.F.R. § 41.50(b) (2012).
`
`1 Carl Freudenberg KG is identified as the real party in interest. App. Br. 2.
`
`

`
`Appeal 2013-007728
`Application 12/872,350
`
`BACKGROUND
`The '350 Application describes a sealing frame for use in a battery or
`battery stack. Spec. ¶ 2. Claim 1 is the '350 Application's only independent
`claim and is reproduced below:
`1. (cid:9)
`A sealing frame (1) for utilization in a battery having a
`plurality of cells, comprising:
`a base body (2) having an opening (3), whereby the base
`body (2) includes a first sealing surface (4) and a facing second
`sealing surface (5) and wherein at least one of the first sealing
`surface (4) and the second sealing surface (5) are elastically
`compressible,
`wherein cooling means (22) are integrated in the base
`body (2) and which penetrate the base body (2) at least partially
`along the lengthwise expansion of the sealing surfaces (4, 5);
`and
`
`a porous and compressible element disposed in the
`opening in said base body and external to the plurality of cells
`and between adjacent ones of the plurality of cells.
`App. Br. 11 (Claims App. 11).
`
`REJECTIONS
`On appeal, the Examiner maintains the following rejections:
`1. Claims 1-4, 6-15, and 21-252 are rejected under 35 U.S.C.
`§ 103(a) as unpatentable over the combination of Weber,3
`Watanabe,4 and Gehring.5 Final Act. 2.
`
`2 Although claim 26 is listed in the summary statement of this rejection,
`claim 26 is not discussed in the body of the rejection. Final Act. 2-6. We,
`therefore, assume that the inclusion of claim 26 in the summary statement is
`an inadvertent error, which we have corrected.
`3 US 2009/0258288 Al, published October 15, 2009.
`
`2
`
`

`
`Appeal 2013-007728
`Application 12/872,350
`
`2. Claims 12 and 26 are rejected under 35 U.S.C. § 103(a) as
`unpatentable over the combination of Weber, Watanabe, Gehring,
`and During.6 Final Act. 6.
`3. Claims 15-20 are rejected under 35 U.S.C. § 103(a) as
`unpatentable over the combination of Weber, Watanabe, Gehring,
`and Choi.7 Final Act. 7.
`
`DISCUSSION
`Rejection 1. The Examiner rejected claims 1-4, 6-15, and 21-25 as
`obvious over the combination of Weber, Watanabe, and Gehring. Final Act.
`2; Ans. 5. For reasons that will become apparent, we will discuss the claims
`subject to this rejection in three groups: (1) claims 1, 6-15, and 21-25;
`(2) claims 2 and 3; and (3) claim 4.
`Claims 1,6-15, and 21-25. A determination that a claim is obvious
`requires a comparison of the properly construed claim with the prior art.
`2r1 1221 1220 tE'rl r1 , lnirn
`'7 21 (cid:9)
`V. L114.1t61113.3 11141 lItt t y —I 111 1 ..J1.1 1.J.J 1, 1.J.JJ 1‘1%./1.1. (cid:9)
`Lavv,).
`
`Thus, we must begin by interpreting claim l's language.
`We note that claim 1 states that the claimed sealing frame includes
`"cooling means" that are integrated into the frame's base body. See claim 1.
`As the Federal Circuit has explained:
`Use of the word "means" in claim language creates a
`presumption that § 112 ¶ 6 applies. See Greenberg v. Ethicon
`
`4 US 2007/0269714 Al, published November 22, 2007.
`5 US 2008/0118821 Al, published May 22, 2008.
`6 US 2003/0031925 Al, published February 13, 2003.
`US 2006/0063066 Al, published March 23, 2006.
`
`3
`
`

`
`Appeal 2013-007728
`Application 12/872,350
`
`Endo—Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996). If, in
`addition to the word "means" and the functional language, the
`claim recites sufficient structure for performing the described
`functions in their entirety, the presumption of § 112 ¶ 6 is
`overcome (cid:9)
`the limitation is not a means-plus-function
`limitation. See Lighting World, Inc. v. Birchwood Lighting,
`Inc., 382 F.3d 1354, 1360 (Fed.Cir.2004) ("[T]he fact that a
`particular mechanism . . . is defined in functional terms is not
`sufficient to convert a claim element containing that term into a
``means for performing a specified function' within the meaning
`of section 112(6)."); Sage Prods., Inc. v. Devon Indus., Inc.,
`126 F.3d 1420, 1427-28 (Fed. Cir. 1997). Sufficient structure
`exists when the claim language specifies the exact structure that
`performs the functions in question without need to resort to
`other portions of the specification or extrinsic evidence for an
`adequate understanding of the structure. See Altiris, Inc. v.
`Symantec Corp., 318 F.3d 1363, 1376 (Fed. Cir. 2003); see also
`Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1365
`(Fed. Cir. 2000) (finding that "baffle means" defeated the § 112
`¶ 6 presumption because "the term 'baffle' itself imparts
`structure").
`
`TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259-60 (Fed. Cir. 2008).
`
`In this case, although claim 1 describes the location of the cooling
`
`means, claim 1 does not describe sufficient structure to perform the function
`
`of cooling the sealing frame or the battery assembly. We, therefore,
`
`conclude that the term "cooling means" must be construed according to 35
`
`U.S.C. § 112 ¶ 6.
`
`To properly construe a means-plus-function limitation, the Examiner
`
`must identify the function recited in the limitation and then identify the
`
`structure described in the specification that corresponds to the function. In
`
`re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). The
`
`record before us does not demonstrate that the Examiner undertook this
`
`analysis. Thus, it appears that the Examiner has not properly construed
`
`4
`
`

`
`Appeal 2013-007728
`Application 12/872,350
`
`claim 1. Moreover, although Appellant urges that the Examiner erred in
`finding that the combination of Weber, Watanabe, and Gehring describes or
`suggests the claimed cooling means, Appellant's arguments are not based
`upon a properly construed claim. Thus, the record does not contain any
`factual findings or explanation concerning whether the cited prior art
`describes or suggests either the structure described in the '350 Application's
`Specification or an equivalent thereof
`Because the record is devoid of the necessary factual findings
`underpinning the necessary claim construction, we have not been placed in a
`position to review the merits of the rejection of claim 1. We decline to
`conduct this analysis and make these findings in the first instance. Thus, we
`reverse the rejection of claim 1. We emphasize that this reversal is
`procedural in nature and is not a commentary on the substantive merits of
`the rejection. After properly construing claim 1, the Examiner should
`determine anew whether claim 1 is patentable over the combination of
`Weber, Watanabe, and Gehring.
`Claims 6-15 and 21-25 depend, directly or indirectly, from claim 1.
`We, therefore, are not able to review the merits of the rejection of these
`claims for the reasons discussed with respect to claim 1. Thus, we also
`reverse the rejection of claims 6-15 and 21-25.
`Claims 2 and 3. Claims 2 and 3 also depend from claim 1 and were
`not argued separately. Thus, we reverse the rejection of these claims due to
`the Examiner's failure to properly construe claim 1. We, however, note that
`these claims further limit the cooling means recited in claim 1. In construing
`these claims, therefore, the Examiner should consider whether § 112 ¶ 6
`controls the construction of the term "cooling means" in the context of these
`claims.
`
`5
`
`

`
`Appeal 2013-007728
`Application 12/872,350
`
`Claim 4. For the reasons set forth in the New Ground of Rejection,
`
`below, we conclude that claim 4 is indefinite. Because we are not able to
`
`ascertain the scope of claim 4, we are not able to review the merits of this
`
`rejection with respect to claim 4. See In re Aoyama, 656 F.3d 1293, 1298-
`
`99 (Fed. Cir. 2011) (explaining that a claim cannot be both indefinite and
`
`anticipated and refusing to review an anticipation rejection); In re Steele,
`
`305 F.2d 859, 862 (CCPA 1962) ("[W]e do not think a rejection under 35
`
`U.S.C. § 103 should be based on such speculations and assumptions."). We
`
`emphasize that this reversal is procedural in nature and is not a commentary
`
`of the merits, or lack thereof, of the rejection of claim 4 as obvious over the
`
`combination of Weber, Watanabe, and Gehring.
`
`Rejection 2. The Examiner rejected claims 12 and 26 as obvious over
`
`the combination of Weber, Watanabe, Gehring, and During. Final Act. 6,
`
`Ans. 8. These claims depend from claim 1. Thus, we are not able to review
`
`the merits of this rejection due to the Examiner's failure to construe claim 1
`
`properly.
`
`We emphasize that this reversal is procedural in nature and is not a
`
`commentary on the merits of the rejection. After properly construing claim
`
`1, the Examiner should determine anew whether claims 12 and 26 are
`
`patentable over the combination of Weber, Watanabe, and Gehring.
`
`Rejection 3. The Examiner rejected claims 15-20 as obvious over the
`
`combination of Weber, Watanabe, Gehring, and Choi. Final Act. 7, Ans. 9.
`
`Claims 15-20. Claims 15— 20 depend, directly or indirectly, from
`
`claim 1. Thus, we are not able to review the merits of this rejection due to
`
`the Examiner's failure to construe claim 1 properly.
`
`We emphasize that this reversal is procedural in nature and is not a
`
`commentary on the merits of the rejection. After properly construing claim
`
`6
`
`

`
`Appeal 2013-007728
`Application 12/872,350
`
`1, the Examiner should determine anew whether claims 15-20 are patentable
`over the combination of Weber, Watanabe, Gehring, and Choi.8
`
`NEW GROUNDS OF REJECTION
`Claim 4 is reproduced below:
`4. (cid:9)
`The sealing frame according to claim 33, wherein the
`heating means (23) is implemented as at least one of heating
`wires and heating foils.
`App. Br. 12 (Claims App. 12) (emphasis added).
`
`We are unable to determine the scope of this claim for two reasons.
`First, the claim purports to depend from claim 33, but the '350 Application
`
`has never included a claim 33. Second, even if we were to assume that
`claim 4 was intended to depend from claim 1, the term "the heating means"
`
`lacks an antecedent basis.
`Claim 4, therefore, does not comply with 35 U.S.C. § 112, ¶ 2. Thus,
`we reject this claim as indefinite.
`
`CONCLUSION
`We reverse the rejection of claims 1-3 and 6-26 of the '350
`Application because the record does not demonstrate that the Examiner
`properly construed the "cooling means" limitation recited in claim 1. Our
`
`reversal of these rejections is procedural in nature and is not based upon the
`
`8 We wish to point out that claim 19 includes a "heating means." For
`reasons similar to those set forth in our discussion of claim l's cooling
`means, supra, the Examiner should consider whether § 112 ¶ 6 governs
`interpretation of claim 19's heating means.
`
`7
`
`

`
`Appeal 2013-007728
`Application 12/872,350
`
`substantive merits or lack thereof, of the rejection of these claims as
`
`obvious.
`
`We also reverse the rejection of claim 4 pursuant to § 103(a) because
`
`we are not able to determine the scope of this claim without engaging in
`
`unwarranted speculation. The reversal of this rejection is procedural in
`
`nature and is not based upon the substantive merits or lack thereof, of the
`
`rejection of claim 4 as obvious.
`
`Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
`
`with respect to claim 4 under 35 U.S.C. § 112, ¶ 2.
`
`This decision contains a new ground of rejection pursuant to 37
`
`C.F.R. § 41.50(b), which provides that "[a] new ground of rejection pursuant
`
`to this paragraph shall not be considered final for judicial review." Section
`
`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. . . .
`
`No time period for taking any subsequent action in connection with
`
`this appeal may be extended under 37 C.F.R. § 1.136(a).
`
`REVERSED, NEW GROUND OF REJECTION
`PURSUANT TO 37 C.F.R. § 41.50(b)
`
`KRH
`
`8