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 .
Claim Objections
Amended claim 1 is objected to because of the following informalities: claim 1 reads “the pressure reciving part of the second member of the first end plate” (emphasis added), but should read as “the pressure receiving part of the second member of the first end plate”. Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore “a first fixing portion”, “a second fixing portion”, “a first pressing part”, “a second pressing part”, “a first base part”, and “a second base part” as recited by amended claims 1 and 5-6 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1 and 3-6 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.
Amended claims 1 and 5-6 each recites “a first fixing portion” and “a second fixing portion”. There is no support in the Specification for a general recitation of a first or second “fixing portion”. Claims 3 and 4 are also rejected as depending on claim 1.
Amended claims 1 and 5-6 each recites the limitation "the second binging member". There is no support in the Specification for a "binging member". Claims 3 and 4 are also rejected as depending on claim 1.
Amended claims 1 and 5-6 each recites “a first pressing part” and “a second pressing part”. There is no support in the Specification for two distinct structures of ‘first and second pressing parts’. Claims 3 and 4 are also rejected as depending on claim 1.
Amended claims 1 and 5-6 each recites “a first base part” and “a second base part”. There is no support in the Specification for two distinct structures of ‘first and second base parts’. Claims 3 and 4 are also rejected as depending on claim 1.
Amended claim 1 recites “the second surface is not in contact with the pressure reciving part of the second member of the first end plate” (emphasis added). There is no support for this negative requirement in the Specification in view of reasoning that a negative claim requirement introduces new concepts since an express exclusion of certain elements implies permissible inclusion of all other elements not so expressly excluded. Ex parte Grasselli, 231 USPQ 393, 394 (BD. App. 1983; aff’dmem., 738 F.2d 453 (Fed. Cir, 1984). Claims 3 and 4 are also rejected as depending on claim 1.
Amended claim 5 recites “no portion of the pressure receiving part is disposed in a region between the first and second fixing parts of the first member of the first end plate as viewed in the first direction” (emphasis added). There is no support for this negative requirement in the Specification in view of reasoning that a negative claim requirement introduces new concepts since an express exclusion of certain elements implies permissible inclusion of all other elements not so expressly excluded. Ex parte Grasselli, 231 USPQ 393, 394 (BD. App. 1983; aff’dmem., 738 F.2d 453 (Fed. Cir, 1984).
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 3-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Amended claims 1 and 5-6 each recites “a first fixing portion” and “a second fixing portion”, rendering each of the claims unclear as to what structure is intended as each respective “fixing portion”. Claims 3 and 4 are also rejected as depending on claim 1.
Amended claims 1 and 5-6 each recites the limitation "the second binging member". There is insufficient antecedent basis for this limitation in each of the claims. Claims 3 and 4 are also rejected as depending on claim 1.
Amended claims 1 and 5-6 each recites the limitation "the second binging member", rendering each claim unclear as to whether the “the second binging member” is intended to refer to the claimed “the second binding member”, or a distinct structure thereof. Claims 3 and 4 are also rejected as depending on claim 1.
Amended claims 1 and 5-6 each recites “the first coupling arm having a first fixing portion coupled to the first end plate […]; the first member includes a first fixing part disposed on a first side […], the first fixing part being coupled to the first fixing portion of the first coupling arm; […] the first base part being located closer to the body part of the first binding member than the first fixing part of the first coupling arm” (emphasis added). It is unclear from the claim as to whether: “the first fixing part of the first coupling arm” is intended to refer to “the first fixing part” being structurally-integrated with the “first coupling arm” (as the claim reads, but does not appear to have support in the Specification and drawings), or is “the first fixing part” instead intended to be the “first fixing portion” of the “first coupling arm”. Claims 3 and 4 also rejected as depending on claim 1.
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 1 and 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Omura (WO 2018/159275), equivalent to Omura (US 11,784,365) cited below.
With respect to claim 1, Omura discloses a battery module (i.e. claimed “power storage module”) [1] (Abstract), wherein figs. 1-2 depicts the power storage module [1] comprising: batteries (i.e. claimed ”power storage devices”) [12] arranged in a first direction [X-axis] (col. 2, lines 55-65); first and second end plates [4] disposed at respective first and second ends of the power storage devices [12] in the first direction [X-axis] (col. 2, lines 55-65); and “a pair of restraint members” (i.e. claimed “a first binding member and a second binding member”) [6] each including “plane” (i.e. claimed “body part”) [6a] that extends in the first direction [X-axis] and “eaves” (i.e. claimed “a first coupling arm and a second coupling arm”) [6b] that extend from the body part [6a] in a second direction [Y-axis] that intersects the first direction [X-axis] and are respectively coupled to the first and second end plates [4] via respective first and second fixing portions, wherein each of the first and second binding members [6] “sandwich” (e.g. restrains or binds) the power storage devices [12] (col. 3, lines 51-65). Fig. 6 shows an alternative embodiment of the first and second end plates [204] as the first and second end plates [4] in fig. 1 (col. 2, lines 23-25; col. 8, lines 35-42), wherein fig. 6 depicts each of the first and second end plates [204] includes a first portion (i.e. claimed “first member”) [204a] and a second portion (i.e. claimed “second member”) [204b] at least partially separated from each via “depression” [204c] and “heat-transfer restrictor” [204d] (col. 8, lines 41-60). Fig. 6 further depicts: the first member [204a] includes first and second fixing parts on opposite first and second sides in the second direction [Y-axis], wherein the first fixing part is coupled to the first fixing portion of the first coupling arm [6b] of the first binding member [4] and the second fixing part is coupled to the first fixing portion of the first coupling arm [6b] of the second binding member [6] (col. 8, lines 41-52); and the second member [204b] includes a pressure receiving part that is interposed between the first member [204a] of the first end plate [204] and a power storage device [12] at the first end of the power storage devices [12] in the first direction [X-axis] and is in indirect contact with the power storage device [12], and a first pressing part in direct contact with a first base part of the first coupling arm [6b] of the first binding member [6], and a second pressing part that is in direct contact with a second base part of the first coupling arm [6b] of the second binding member [6], wherein the first base part is located closer to the body part [6a] of the first binding member [6] than the first fixing part of the first coupling arm [6b] of the first binding member [6], the second base part is located closer to the body part [6a] of the second binding member [6] than the first fixing part of the first coupling arm [6b] of the second binding member [6] (col. 8, lines 39-65). Fig. 6 also shows the first member [204a] of the first end plate [204] has a first surface facing the first coupling arm [6b] of each of the first and second binding members [6] and a second surface facing the pressure receiving part of the second member [204b] of the first end plate [204], wherein at least one portion of the second surface is not in contact with the pressure receiving part of the second member [204b] of the first end plate [204].
With respect to claim 3, Omura depicts in fig. 3 each of the power storage devices [12] includes an “exterior can” (i.e. claimed “housing”) [18] and an electrode body that includes a positive-electrode terminal [22a] and a negative-electrode terminal [22b] arranged in the first direction [X-axis] and accommodated in the housing [18] (col. 3, lines 9-30; col. 4, lines 33-38). Figs. 1-3 depict the pressure receiving part (from fig. 6) in each of the first and second end plates [4] (e.g. end plates [204] of fig. 6) overlaps the electrode assembly as viewed in the first direction [X-axis] (col. 2, lines 55-67; col. 4, lines 32-38).
With respect to claim 4, Omura further depicts in fig. 6 the pressure receiving part is disposed between the first and second fixing parts of the first member [204a] of the first end plate [204] as viewed in the first direction [X-axis].
With respect to claim 5, Omura discloses a battery module (i.e. claimed “power storage module”) [1] (Abstract), wherein figs. 1-2 depicts the power storage module [1] comprising: batteries (i.e. claimed ”power storage devices”) [12] arranged in a first direction [X-axis] (col. 2, lines 55-65); first and second end plates [4] disposed at respective first and second ends of the power storage devices [12] in the first direction [X-axis] (col. 2, lines 55-65); and “a pair of restraint members” (i.e. claimed “a first binding member and a second binding member”) [6] each including “plane” (i.e. claimed “body part”) [6a] that extends in the first direction [X-axis] and “eaves” (i.e. claimed “a first coupling arm and a second coupling arm”) [6b] that extend from the body part [6a] in a second direction [Y-axis] that intersects the first direction [X-axis] and are respectively coupled to the first and second end plates [4] via respective first and second fixing portions, wherein each of the first and second binding members [6] “sandwich” (e.g. restrains or binds) the power storage devices [12] (col. 3, lines 51-65). Fig. 6 shows an alternative embodiment of the first and second end plates [204] as the first and second end plates [4] in fig. 1 (col. 2, lines 23-25; col. 8, lines 35-42), wherein fig. 6 depicts each of the first and second end plates [204] includes a first portion (i.e. claimed “first member”) [204a] and a second portion (i.e. claimed “second member”) [204b] at least partially separated from each via “depression” [204c] and “heat-transfer restrictor” [204d] (col. 8, lines 41-60). Fig. 6 further depicts: the first member [204a] includes first and second fixing parts on opposite first and second sides in the second direction [Y-axis], wherein the first fixing part is coupled to the first fixing portion of the first coupling arm [6b] of the first binding member [4] and the second fixing part is coupled to the first fixing portion of the first coupling arm [6b] of the second binding member [6] (col. 8, lines 41-52); and the second member [204b] includes a pressure receiving part that is interposed between the first member [204a] of the first end plate [204] and a power storage device [12] at the first end of the power storage devices [12] in the first direction [X-axis] and is in indirect contact with the power storage device [12], and a first pressing part in direct contact with a first base part of the first coupling arm [6b] of the first binding member [6], and a second pressing part that is in direct contact with a second base part of the first coupling arm [6b] of the second binding member [6], wherein the first base part is located closer to the body part [6a] of the first binding member [6] than the first fixing part of the first coupling arm [6b] of the first binding member [6], the second base part is located closer to the body part [6a] of the second binding member [6] than the first fixing part of the first coupling arm [6b] of the second binding member [6] (col. 8, lines 39-65). Fig. 6 also shows that no portion of outer peripheral surfaces of the pressure receiving part of the second member [204b] is disposed in a region between the first and second fixing parts of the first member [204a] of the first end plate [204] as viewed in the first direction [X-axis].
With respect to claim 6, Omura discloses a battery module (i.e. claimed “power storage module”) [1] (Abstract), wherein figs. 1-2 depicts the power storage module [1] comprising: batteries (i.e. claimed ”power storage devices”) [12] arranged in a first direction [X-axis] (col. 2, lines 55-65); first and second end plates [4] disposed at respective first and second ends of the power storage devices [12] in the first direction [X-axis] (col. 2, lines 55-65); and “a pair of restraint members” (i.e. claimed “a first binding member and a second binding member”) [6] each including “plane” (i.e. claimed “body part”) [6a] that extends in the first direction [X-axis] and “eaves” (i.e. claimed “a first coupling arm and a second coupling arm”) [6b] that extend from the body part [6a] in a second direction [Y-axis] that intersects the first direction [X-axis] and are respectively coupled to the first and second end plates [4] via respective first and second fixing portions, wherein each of the first and second binding members [6] “sandwich” (e.g. restrains or binds) the power storage devices [12] (col. 3, lines 51-65). Fig. 6 shows an alternative embodiment of the first and second end plates [204] as the first and second end plates [4] in fig. 1 (col. 2, lines 23-25; col. 8, lines 35-42), wherein fig. 6 depicts each of the first and second end plates [204] includes a first portion (i.e. claimed “first part”) [204a] integrated with a second portion (i.e. claimed “second part”) [204b] to form one piece, and a hollow part (represented by “depression” [204c] and “heat-transfer restrictor” [204d]) (col. 8, lines 41-60). Fig. 6 further depicts: the first part [204a] of the first end plate [204] is located farther from the power storage devices [12] than the hollow part [204c],[204d] and includes first and second fixing parts on opposite first and second sides in the second direction [Y-axis], wherein the first fixing part is coupled to the first fixing portion of the first coupling arm [6b] of the first binding member [4] and the second fixing part is coupled to the first fixing portion of the first coupling arm [6b] of the second binding member [6] (col. 8, lines 41-52);
and the second member [204b] of the first end plate [204] includes: a pressure receiving part that is located closer to a power storage unit at the first end of the power storage devices [12] than the hollow part [204c],[204d] and is in indirect contact with the power storage device [12], a first pressing part connecting a first end portion of the pressure receiving part and a first end portion of the first part [204a] of the first end plate [204] and is in direct or indirect contact with a first base part of the first coupling arm [6b] of the first binding member [6]; and a second pressing part that connects a second end portion of the pressure receiving part and a second end portion of the first part [204a] of the first end plate [204] and is in direct or indirect contact with a second base part of the first coupling arm [6b] of the second binding member [6]; wherein the first base part is located closer to the body part [6a] of the first binding member [6] than the first fixing part of the first coupling arm [6b] of the first binding member [6], and the second base part is located closer to the body part [6a] of the second binding member [6] than the first fixing part of the first coupling arm of the second binding member [6].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,171,380. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the US Patent are narrower in scope than the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-6 of the US Patent would also meet the requirements set forth in claims 1 and 3-6 of the current invention.
Claims 1 and 3-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,171,355. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the US Patent are narrower in scope than the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-9 of the US Patent would also meet the requirements set forth in claims 1 and 3--6 of the current invention.
Response to Arguments
Applicant’s Remarks on p. 7-8 filed 9/11/2025 are addressed below.
112 Rejections
Claims 1 and 6 have each been amended to clarify “a pair of end plates” as “a first end plate” and “a second end plate”; the previous 112(b) rejections have been withdrawn.
Claims 1 and 6 have each been amended to clarify “fixing parts on both sides” as “a first fixing part” and “a second fixing part”; the previous 112(b) rejections have been withdrawn.
Double Patenting Rejections
On p. 7-8, Applicant argues that the amendments to claims 1 and 5-6 distinguish over US Patent Nos. 11,171,355 and 11,171,380.
The Examiner respectfully disagrees since the present claims also requires the “plurality of pressing parts” (e.g. first and second pressing parts) of the US Patent Nos., in addition to at least the new 112(a) and 112(b) rejections as discussed above.
102 Rejections
Applicant’s arguments on p. 8 with respect to claims 1, 5, and 6 have been considered but are moot in view of the new grounds of rejection due to the amended claims requiring new limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2014/0014419 is relevant for teaching similar binding members for plural batteries arranged in a linear direction.
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 MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794