Prosecution Insights
Last updated: April 19, 2026
Application No. 17/736,477

ENERGY STORAGE SYSTEM

Final Rejection §103§112
Filed
May 04, 2022
Examiner
WALLS, CYNTHIA KYUNG SOO
Art Unit
1751
Tech Center
1700 — Chemical & Materials Engineering
Assignee
SK On Co. Ltd.
OA Round
4 (Final)
72%
Grant Probability
Favorable
5-6
OA Rounds
3y 3m
To Grant
72%
With Interview

Examiner Intelligence

Grants 72% — above average
72%
Career Allow Rate
649 granted / 904 resolved
+6.8% vs TC avg
Minimal -0% lift
Without
With
+-0.3%
Interview Lift
resolved cases with interview
Typical timeline
3y 3m
Avg Prosecution
55 currently pending
Career history
959
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
53.3%
+13.3% vs TC avg
§102
18.9%
-21.1% vs TC avg
§112
22.9%
-17.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 904 resolved cases

Office Action

§103 §112
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 . Response to Amendment This Office Action is responsive to the amendment filed on 12/23/2025. Claims 12-14 are canceled. Claims 1-11 are pending. Applicant’s arguments have been considered. Claims 1-11 are finally rejected. 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. Claims 7-10 are 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. Claim 1 recites wherein a rack includes a sidewall comprising a fire-resistant member that tightly fills a space between the external plate and the battery modules, which is referred to as being part of figure 5. See the Specification [0065]. Claim 7 recites the sidewall further includes a double-walled structure, the double-walled structure includes an air layer therein, which is referred to as being part of figure 8. See the Specification [0075]. The Specification is silent that a sidewall comprises a fire-resistant member that tightly fills a space between the external plate and the battery modules, and a double-walled structure, the double-walled structure includes an air layer therein. Claims 8-10 depend from claim 7. Applicant is required to cancel the new matter in reply to this Office Action. 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. Claims 1, 3-5, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2013/0313953) in view of Zhu (CN 112787020, using US 2022/0294048 as translation), Carignan (US 2022/0109210), and Choi (EP 3182482). Regarding claim 1, Lee discloses an energy storage system comprising: stacked battery modules; and a rack accommodating the battery modules 1, wherein the rack 110 includes a sidewall 113 disposed on one side of the battery modules 1; wherein the sidewall includes: a plurality of first frames 111, and a second frame intersecting the plurality of first frames 120. Regarding claim 5, the second frame 120 extending in a direction, perpendicular to the plurality of first frames 111, and the battery modules are loaded in the second frame 120. Regarding claim 11, a portion or an entirety of the battery modules has a vent hole 230 opposing the sidewall 113. Regarding claim 1, Lee does not disclose the sidewall includes a fire-resistant member opposing the battery modules. Lee discloses a plurality of first frames, but does not disclose a plurality of first frames disposed on opposite sides of the fire-resistant member. Lee discloses a plurality of first frames disposed on opposite sides of panels. Zhu teaches with the increase of battery energy density, safety risks of traction batteries show a rising trend, and most of these safety risks are caused by thermal runaway of cells. When thermal runaway occurs to a single cell, the temperature rise caused by exothermic chain reaction leads to thermal diffusion, thereby causing the temperature of other cells to be uncontrollable. In addition, a high-temperature gas emitted during thermal runaway of the cell will heat surrounding cells, thereby accelerating the process of thermal diffusion. At present, in the latest safety regulations for batteries for electric vehicles, requirements for thermal diffusion of traction batteries have been added, but a thermal runaway protection structure in the existing battery pack can hardly meet the requirements [0004]. The top assembly 115 may be made of a heat-insulating and fireproof material [0037]. The use of the heat-insulating top cover made of a heat-insulating and fireproof material makes it possible to, when a cell in a module sub-compartment is subjected to thermal runaway, effectively prevent a high-temperature mixture and flame sprayed from the cell from penetrating through the heat-insulating top cover allowing oxygen to enter a diffusion process, while preventing the high-temperature gas from spreading to other modules from above [0037]. Regarding claim 4, the fire-resistant member 115 is fixedly coupled to the first frame. It would have been obvious to one of ordinary skilled in the art at the time the invention was made to add a fireproofing material to the panels of Lee, as taught by Zhu, for the benefit of preventing thermal runaway in the battery modules of Lee. Regarding claim 3, the fire-resistant member has a thickness of 20 mm or more, it would have been obvious to one of ordinary skilled in the art at the time the invention was made to adjust the thickness of the fire-resistance member depending on the desired amount of fire-resistance. Zhu clearly teaches that the fireproof material in the top surface is a result effective variable. It has been held by the courts that discovering an optimum value or workable ranges of a result-effective variable involves only routine skill in the art, and thus not novel. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Regarding claim 1, at least one of the plurality of first frames is provided in a form of a C-shaped beam, and wherein the fire-resistant member is coupled to the plurality of first frames and one side edge of the fire-resistant member is fitted to the C shaped beam, Lee discloses panels 113 fitted to the first frames 111 and second frames 120. The first frames and the second frames are not C-shaped. Carignan teaches a supporting plate 151 and a lateral thermal insulation panel 142 mounted to a frame 250 via a C-shaped beam. See Carignan figure 4 reproduced below: [AltContent: arrow] PNG media_image1.png 706 697 media_image1.png Greyscale C-shaped beam It would have been obvious to one of ordinary skilled in the art at the time the invention was made to use the C-shaped beams of Carignan on Lee’s rack assembly for the benefit of tightly fastening Lee’s panels to the rack assembly. Regarding claim 1, Lee discloses wherein the rack includes a sidewall disposed on one side of the battery modules, but does not disclose an external plate surrounding a periphery of the battery modules. Regarding claim 1, Cho modified by Zhu discloses a fire-resistant member, but does not disclose the fire-resistant member tightly fills a space between the external plate and the battery modules. Choi teaches a battery casing having an inner sidewall 12a coming in contact with the side surface of the unit battery cell 1 [0034]. The inner sidewall 12a is made from metal and absorbs heat or blocks flames and radiates the heat, thereby preventing the sidewall part 12 of the cartridge frame from easily melting or combusting [0035]. The inner sidewall 12a is in direct contact with the unit battery cell 1 and the outer sidewall 12b (figure 2b). It would have been obvious to one of ordinary skilled in the art at the time the invention was made to place the fire-resistant member of Lee modified by Zhu to be in direct contact with the unit battery cells, as taught by Choi, for the benefit of blocking potential flames. It would have been obvious to one of ordinary skilled in the art at the time the invention was made to add an external plate to the battery module of Lee modified by Zhu, and place the fire-resistant member of Lee modified by Zhu to be in direct contact with the external plate for the benefit of protecting the fire-resistant member. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2013/0313953) in view of Zhu (CN 112787020, using US 2022/0294048 as translation), Carignan (US 2022/0109210), and Choi (EP 3182482) as applied to claim 1, further in view of Abu-Isa (US 2005/0170238). Regarding claim 2, Lee modified by Zhu does not teach the fire-resistant member includes a thermosetting polymer member, a gypsum board, or a super-absorbent polymer. Abu-Isa teaches a battery case is provided that is made of an intumescent flame retardant polymeric composition that provides fire shielding, thermal shielding and a low heat release rate. To that end, a fire resistant additive is blended with a base polymer, which may include many types of thermoplastic and thermoset polymers, to produce a flame retardant polymeric material that is molded into a base portion and a cover portion to form the battery case of the present invention with good physical properties in addition to good flammability performance [0009]. It would have been obvious to one of ordinary skilled in the art at the time the invention was made to use a thermosetting polymer as Zhu’s fire-resistant member, as taught by Abu-Isa, for the benefit of preventing thermal runaway in the battery modules of Lee modified by Zhu. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2013/0313953) in view of Zhu (CN 112787020, using US 2022/0294048 as translation), Carignan (US 2022/0109210), and Choi (EP 3182482) as applied to claim 1, further in view of Keith (US 6130381). Regarding claim 6, Lee modified by Zhu does not teach fire-resistant paint is applied to at least a portion of an external surface of the sidewall. Keith teaches an electronic enclosure coated with a fire retardant paint to prevent the spread of flame through the enclosure. See Abstract. It would have been obvious to one of ordinary skilled in the art at the time the invention was made to add a fire retardant paint to the panels of Lee, as taught by Keith, for the benefit of further preventing thermal runaway in the battery modules of Lee. Claims 7, 8, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2013/0313953) in view of Zhu (CN 112787020, using US 2022/0294048 as translation), Carignan (US 2022/0109210), and Choi (EP 3182482) as applied to claim 1, further in view of Shibata (US 5212025). Regarding claim 7, Lee modified by Zhu does not teach the sidewall further includes a double-walled structure surrounding a portion or an entirety of the battery modules, and the double-walled structure includes an air layer therein. Shibata teaches a battery container with a battery cover having side walls so that a gap is formed between the side walls of the container and the side walls of the cover. The upper end portion of a bottomed heat-shielding case is inserted into this gap so that the heat-shielding case is detachably attached to the battery container and covers the container and forms a space between the container and the case. The space between the container and case is closed to air outside the case and air convection between the outside air and the air inside the space can be prevented thereby increasing the heat-shielding effect for protecting the storage battery from high temperatures. See Abstract. Regarding claim 8, Shibata teaches the double-walled structure includes a pair of opposing plates spaced apart from each other with the air layer interposed therebetween. Shibata recognizes that a layer of air space is a heat insulator. It would have been obvious to one of ordinary skilled in the art at the time the invention was made to add a layer of air space to the panels of Lee, as taught by Shibata, for the benefit of further preventing thermal runaway in the battery modules of Lee. Regarding claim 10, a gap between the plates is 10 mm or more, it would have been obvious to one of ordinary skilled in the art at the time the invention was made to adjust the thickness of the air layer depending on the desired amount of insulation. Shibata clearly teaches that the air layer is a result effective variable. It has been held by the courts that discovering an optimum value or workable ranges of a result-effective variable involves only routine skill in the art, and thus not novel. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2013/0313953) in view of Zhu (CN 112787020, using US 2022/0294048 as translation),, Carignan (US 2022/0109210), Choi (EP 3182482) and Shibata (US 5212025) as applied to claim 8, further in view of Keith (US 6130381). Regarding claim 19, Lee modified by Zhu does not teach fire-resistant paint is applied to at least a portion of an external surface of the double-walled structure. Keith teaches an electronic enclosure coated with a fire retardant paint to prevent the spread of flame through the enclosure. See Abstract. It would have been obvious to one of ordinary skilled in the art at the time the invention was made to add a fire retardant paint to the sidewalls of Shibata, as taught by Keith, for the benefit of further preventing thermal runaway in the battery modules of Lee. Response to Arguments Arguments dated 12/23/2025 are moot in view of the new grounds of rejections. Conclusion Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA KYUNG SOO WALLS whose telephone number is (571)272-8699. The examiner can normally be reached on M-F until 5pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Leong can be reached at 571-270-1292. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /CYNTHIA K WALLS/ Primary Examiner, Art Unit 1751
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Prosecution Timeline

May 04, 2022
Application Filed
Oct 31, 2024
Non-Final Rejection — §103, §112
Feb 03, 2025
Response Filed
Apr 08, 2025
Final Rejection — §103, §112
Jun 13, 2025
Request for Continued Examination
Jun 16, 2025
Response after Non-Final Action
Nov 03, 2025
Non-Final Rejection — §103, §112
Dec 23, 2025
Response Filed
Feb 09, 2026
Final Rejection — §103, §112
Apr 10, 2026
Applicant Interview (Telephonic)
Apr 10, 2026
Examiner Interview Summary

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

5-6
Expected OA Rounds
72%
Grant Probability
72%
With Interview (-0.3%)
3y 3m
Median Time to Grant
High
PTA Risk
Based on 904 resolved cases by this examiner. Grant probability derived from career allow rate.

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