DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/17/2025 has been entered.
Status of the Claims
The amendment/remarks submitted 12/17/2025 have been entered and fully considered. Claims 15-31 are pending. Claims 1-14 are cancelled. Claim 31 is new. Claims 18-20 and 26 are amended. Claims 15-31 are examined herein.
Claim Objections
Applicant is advised that should claim 16 be found allowable, claim 29 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a pressure element in claim 15, a further pressure element in claim 16, cooling elements in claim 22, and a positioning element and a further positioning element in claim 23.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application includes one or more claim limitations that use the word “means” or “step” or a generic placeholder but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: pressure element in claim 17.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 31 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 31, the claim recites “said further cooling plate…not supporting a weight of said opposing cooling walls of said module.” The specification is absent of any indication of the further cooling plate supporting or not supporting a weight of said opposing cooling walls of said module. See MPEP 2173.05(i). Applicant is invited to recite particular spatial relationships between the at least one further module and the module and their means of connecting.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 15-16, 18-19, 21-23, 25, 27, and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 10 2012 224 330 A9 (“Schiemann” – machine translation of DE 10 2012 224 330 A1 cited herein).
Regarding claim 15, Schiemann discloses an accumulator device 400 (“energy storage device”) comprising a housing 430 having two opposing side walls (Fig. 4).
The accumulator device further comprises a module having two opposing cooling fins 110, 212, 314, 610, 710 (“two opposing cooling walls”) (Figs. 1-3, 6-7) disposed between the two opposing side walls, a cooling plate 122 on which the two opposing cooling fins are disposed (Fig. 1), at least two accumulator cells 102, 202, 302, 502, 602, 702 (“energy storage units”) (Figs. 1-3, 5-7), and an elastic element 104, 204, 304, 504, 604, 704 (“pressure element”) disposed between the at least two accumulator cells (Figs. 1-3, 5-7). The elastic element is inherently capable of pressing the at least two accumulator cells against a respectively adjacent one of the two opposing cooling fins (Figs. 6-7; [0010]-[0011], [0017]-[0021], [0025], [0027]).
Regarding claim 16, Schiemann discloses the energy storage device of claim 15. As shown in, for example, Fig. 1, Schiemann discloses a further module comprising two further opposing cooling fins 110 (“further opposing cooling walls”), a heat-conducting foil 120 (“further cooling plate”) on which the two further cooling fins 110 are disposed, at least two further accumulator cells 102 (“two further energy storage units”) disposed between the two further opposing cooling fins 110, and a further elastic element 104 (“further pressure element”) disposed between the at least two accumulator cells. The elastic element is inherently capable of pressing the at least two accumulator cells against a respectively adjacent one of the two opposing cooling fins (Figs. 6-7; [0010]-[0011], [0017]-[0021], [0025], [0027]). The further module is connected to the module in a mechanically stable manner by said two opposing side walls (Fig. 4; [0054]-[0055]).
Regarding claims 18-19, Schiemann discloses the energy storage device of claim 15. Schiemann further discloses a potting 106, 206, 306, 406, 506 (Figs. 1-5; [0021], [0032]-[0034], [0051]-[0055]) and an insulating adhesive film 108 (Fig. 1; [0051]) (either of which corresponds to the “electrically-insulating insulating material”). The electrically-insulating insulating material at least partially surrounds the accumulator cells (Figs. 1-5; [0033], [0051], [0059]).
Regarding claim 21, Schiemann discloses the energy storage device of claim 15. Schiemann further discloses a potting 106, 206, 306, 406, 506 (Figs. 1-5; [0021], [0032]-[0034], [0051]-[0055]) and an insulating adhesive film 108 (Fig. 1; [0051]). The potting is disposed on an inner surface of the two opposing side walls (Figs. 1-5; [0033], [0059]) and the insulating adhesive film is disposedon an inner surface of the two opposing cooling fins (Fig. 1; [0051]).
Regarding claim 22, Schiemann discloses the energy storage device of claim 15. Schiemann further discloses the cooling plate comprises a coolant guide 124, 224 (Figs. 1, 2; [0051]-[0052]).
Regarding claim 23, Schiemann discloses the energy storage device of claim 15. Schiemann further discloses the two opposing cooling fins each have a positioning element (e.g. bent ends bent ends of the cooling fins 314) and a receptacle for a further positioning element (e.g. the space formed by the bent ends) (Fig. 3).
Regarding claim 25, Schiemann discloses the energy storage device of claim 15. Schiemann further discloses the accumulator cells are electrically interconnected as a traction battery ([0012], [0028]).
Regarding claim 27, Schiemann discloses the energy storage device of claim 15. Schiemann further discloses a vehicle comprising the accumulator device ([0012], [0028]).
Regarding claim 29, Schiemann discloses an accumulator device 400 (“energy storage device”) comprising a housing 430 having two opposing side walls (Fig. 4).
The accumulator device further comprises a module having two opposing cooling fins 110, 212, 314, 610, 710 (“two opposing cooling walls”) (Figs. 1-3, 6-7) disposed between the two opposing side walls, a cooling plate 122 on which the two opposing cooling fins are disposed (Fig. 1), at least two accumulator cells 102, 202, 302, 502, 602, 702 (“energy storage units”) (Figs. 1-3, 5-7), and an elastic element 104, 204, 304, 504, 604, 704 (“pressure element”) disposed between the at least two accumulator cells (Figs. 1-3, 5-7). The elastic element is inherently capable of pressing the at least two accumulator cells against a respectively adjacent one of the two opposing cooling fins (Figs. 6-7; [0010]-[0011], [0017]-[0021], [0025], [0027]).
As shown in, for example, Fig. 1, Schiemann discloses a further module comprising two further opposing cooling fins 110 (“further opposing cooling walls”), a heat-conducting foil 120 (“further cooling plate”) on which the two further cooling fins 110 are disposed, at least two further accumulator cells 102 (“two further energy storage units”) disposed between the two further opposing cooling fins 110, and a further elastic element 104 (“further pressure element”) disposed between the at least two accumulator cells. The elastic element is inherently capable of pressing the at least two accumulator cells against a respectively adjacent one of the two opposing cooling fins (Figs. 6-7; [0010]-[0011], [0017]-[0021], [0025], [0027]). The further module is connected to the module in a mechanically stable manner by said two opposing side walls (Fig. 4; [0054]-[0055]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over DE 10 2012 224 330 A9 (“Schiemann” – machine translation of DE 10 2012 224 330 A1 cited herein) in view of US 2016/0164061 A1 (“Han”).
Regarding claim 17, Schiemann discloses the energy storage device of claim 15. Schiemann does not expressly disclose said pressure element is, at least in places, wedge-shaped and/or, at least in places, tube-shaped.
Han discloses a battery module including battery cells arranged in a first direction; a spacer disposed between neighboring battery cells and a center pin extending in a second direction that is different from the first direction and inserted through the spacer to cross the spacer (Abstract; Figs. 3, 4). The center pin can have a hollow cylindrical shape having a ring-shaped cross-section (i.e. tube-shaped) (Fig. 6; [0067]-[0068]). This allows for the formation of cooling passages C, and thus a cooling medium such as ambient air may pass through the cooling passages C to cool the battery cells 10 ([0068]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the spacer of Han as the elastic element of Schiemann because Han discloses it effectively absorbs external pressure or internal pressure caused by swelling and thus has a sufficient degree of stiffness against internal or external pressure ([0075]) and effectively dissipates heat generated during charging and discharging operations ([0076]).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over DE 10 2012 224 330 A9 (“Schiemann” – machine translation of DE 10 2012 224 330 A1 cited herein) in view of US 2014/0199880 A1 (“Schuelke”).
Regarding claim 20, Schiemann discloses the energy storage device of claim 18. Schiemann does not expressly disclose said electrically-insulating insulating material contains an electrically insulating foam.
Schuelke discloses an energy store module comprising a plurality of energy stores (Abstract) and teaches that a suitable foam can be introduced between the energy stores to dampen vibration which improves the stability and durability of the module. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the potting or the insulating adhesive film of Schiemann from a foam because Schuelke teaches it can improve the stability and durability of the module.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over DE 10 2012 224 330 A9 (“Schiemann” – machine translation of DE 10 2012 224 330 A1 cited herein).
Regarding claim 24, Schiemann discloses the energy storage device of claim 15. As shown in Figs. 1-5, the two opposing side walls, the two opposing cooling fins, and the cooling plate define an interior space of the module. While Schiemann is silent regarding the at least two energy storage units of said module filling at least 90% of said interior space, as one having ordinary kill in the art would readily appreciate, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to increase the amount of space occupied by the accumulator cells to increase the volumetric energy density.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over DE 10 2012 224 330 A9 (“Schiemann” – machine translation of DE 10 2012 224 330 A1 cited herein) in view of US 2013/0183571 A1 (“Miyazaki”).
Regarding claim 26, Schiemann discloses the energy storage device of claim 15. Schiemann does not expressly disclose the first, second, or third connecting elements as claimed.
Miyazaki discloses a battery pack (Abstract) and teaches various means of connecting parts of the battery pack. For example, portions of the case are connected by bolts and nuts ([0053]); positioning mechanisms 23, engagement structure 7, and engagement protrusion 6A cooperate to connect bind bar 4 and end plate 3 (Figs 4, 6, 7-8; [0062], [0068]); and the upper and lower edge parts of the separators 2 are coupled to the upper and lower plate portions 17 and 18 (Figs. 5, 7; [0060]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form connecting elements as claimed in view of the teachings of Miyazaki to stably hold parts together.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over DE 10 2012 224 330 A9 (“Schiemann” – machine translation of DE 10 2012 224 330 A1 cited herein) in view of US 2013/0136963 A1 (“Chiba”).
Regarding claim 28, Schiemann discloses the energy storage device of claim 27. As discussed above, Schiemann discloses a vehicle comprising the accumulator device ([0012], [0028]), but does not expressly disclose the vehicle is a rail vehicle.
Chiba discloses a battery system comprising a battery module (Abstract) and teaches examples of the battery system include moving objects such as electric trains or electric vehicles ([0061]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide a train comprising the accumulator device because Chiba discloses an electric train is a known use for battery systems.
Claims 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over DE 10 2012 224 330 A9 (“Schiemann” – machine translation of DE 10 2012 224 330 A1 cited herein) in view of US 2018/0175466 A1 (“Seo”).
Regarding claims 30-31, Schiemann discloses the energy storage device of claim 29. Schiemann does not expressly disclose said at least one further module is stacked on top of said module in a vertical direction [claim 30] or said further cooling plate is separate and distinct from said cooling plate of said module and not supporting a weight of said opposing cooling walls of said module; and said at least one further module is connected to said module by said two further opposing cooling walls and by said opposing cooling walls being connected to said two opposing side walls of said housing [claim 31]
Seo discloses a battery module having a cooling structure (Abstract). Seo teaches the number of battery cells of a battery module varies according to the required energy capacity ([0003]) and discloses an arrangement wherein a number of battery packs is stacked in the vertical direction to form a battery module (Fig. 5; [0044]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to stack the further battery module in a vertical direction as it is a configuration known in the art from which one would expect predictable results and would allow one to provide the energy capacity required of the battery pack.
In the combination, when stacked vertically, the further cooling plate (cooling plate 122 of Schiemann) does not support the weight of the opposing cooling walls of the module. See the configuration shown in Fig. 5 of Seo where the cooling plate 122 of Schiemann would be positioned (in the combination of Schiemann and Seo) where heat transfer material 30 of Seo is shown. When stacked vertically as in Seo (e.g. as in Fig. 5 of Seo as applied to Schiemann), the two modules are connected by the two further opposing cooling walls and by said opposing cooling walls being connected to said two opposing side walls of said housing.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention (pp. 9-11), it is noted that the features upon which applicant relies (i.e., a single pressure element disposed between the at least two energy stores) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It is further noted that the claim uses the transitional phrase “comprising” which is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I).
An annotated copy of Fig. 1 is provided below illustrating the presence of the claimed elements.
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However, even if only a single pressure element were required between the at least two energy stores, Schiemann shows in Fig. 5 a single elastic element between two accumulator cells. See also [0055].
Applicant argues that Schiemann does not disclose a further cooling plate, on which said two further opposing cooling walls are disposed (pg. 11-12). The Office equates heat conducting foil 120 to the further cooling plate. This element is distinct from cooling plate 122 ([0051]). The Office is not relying on a single element to teach two recited elements. Claims 16 and 29 do not recite features that exclude the interpretation presented above.
New claim 31 is rejected over the combination of Schiemann and Seo (of record). It is the position of the Office that when modified by Seo in the vertical stacked configuration, the claimed features are present in the combination for the reasons expressed in the above rejection.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Scott Carrico whose telephone number is (571)270-5504. The examiner can normally be reached Monday-Friday 9:15AM-5:45PM Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at 571-272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Robert Scott Carrico
Primary Examiner
Art Unit 1727
/Robert S Carrico/Primary Examiner, Art Unit 1727