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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/02/2026 has been entered.
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.
Claim 1, 3, and 6 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 4, and 5 of U.S. Patent No. 11557787B2 (hereafter ‘787). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1 and 6, ‘787 claims 1 and 5 recites a secondary battery module comprising: at least one non-aqueous electrolyte secondary battery; and an elastic body that is disposed (“arranged”) together with the non-aqueous electrolyte secondary battery and receives a load from the non-aqueous electrolyte secondary battery in the arrangement direction, wherein the non-aqueous electrolyte secondary battery includes an electrode assembly in which a positive electrode, a negative electrode, and a separator disposed between the positive electrode and the negative electrode are laminated (“stacked”), and enclosed (“housed”) that accommodates the electrode assembly, a compressive modulus of elasticity of the elastic body is 5 MPa to 120 MPa (overlaps with instants claim of 60-120 MPa), the elastic body is disposed together with the housing and adjacent to the housing, the positive electrode includes a positive electrode current collector containing Al and an element other than AI, a thermal conductivity of the positive electrode current collector is 65 W/(m-K) to 150 W/(m-K) (overlaps with claimed range of 65-117 W/(m-K)),
‘787 does not claim a compressive modulus of elasticity of the separator is smaller than that of a negative electrode active material layer constituting the negative electrode, and the compressive modulus of elasticity of the elastic body is smaller than that of the separator.
However, ‘787 does teach that it is preferably, the compressive elastic modulus of the separator 38 d is lower than that of the negative electrode active material layer, and that of the elastic body is lower than that of the separator [0086].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to have the above feature as the negative electrode active material layer is least readily deformable, while the elastic body is most readily deformable [0086].
Regarding claim 3, ‘787 claim 4 recites wherein the element other than Al includes Mg, and the positive electrode collector has an Mg content of 1.5 wt % or greater.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 3 of co-pending US application #17/796,065 (hereafter ‘065) cited as PG-Pub US2023061490A1 in form PTO-892. For the purposes of this double patenting rejection the examiner is using the most recent claim set filed (11/07/2025) with the co-pending application ‘065. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1 and 5, claims 1 and 3 of ‘065 recites a secondary battery module comprising: at least one non-aqueous electrolyte secondary battery; and an elastic body that is arranged together with the non-aqueous electrolyte secondary battery and receives a load from the non-aqueous electrolyte secondary battery in the arrangement direction, wherein the non-aqueous electrolyte secondary battery includes an electrode assembly in which a positive electrode, a negative electrode, and a separator disposed between the positive electrode and the negative electrode are stacked, and a housing that accommodates the electrode assembly, a compressive modulus of elasticity of the elastic body is 5 MPa to 120 MPa (overlaps with the claim 60-120 MPa), the elastic body is arranged together with the battery in an arrangement direction (“disposed outside the housing and adjacent to the housing”), a compressive modulus of elasticity of the separator is smaller than that of a negative electrode active material layer constituting the negative electrode, and the compressive modulus of elasticity of the elastic body is smaller than that of the separator.
‘065 does not claim the positive electrode includes a positive electrode current collector containing Al and an element other than AI, a thermal conductivity of the positive electrode current collector is 65 W/(m-K) to 117 W/(m-K).
However, US11557787B2 (cited above as ‘787) discloses the positive electrode collector in this embodiment is a low thermal conductive Al-containing positive electrode collector that contains Al and an element other than Al and whose thermal conductive rate is 65 W/(m·K) to 150 W/(m·K) [0044].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to have the above features as the above-mentioned thermal conductive rate shortens the period of time after occurrence of internal short-circuiting until fusing of the positive electrode collector in a nailing test, and thus reduces the amount of heat generation in a nailing test [0045].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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(s) 1, 3-4, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwasa (JP2015138753A) and in view of Kitaura (US20180294510A1), Tsutsumi (US 20160043353 A1), Torita (US 20180090763 A1) and as evidence by PDF “Conductivity and Resistivity Values for Aluminum & Alloys” and PDF “Aluminum and aluminum alloy thermal conductivity”.
Regarding claim 1 and 6, Iwasa discloses a secondary battery module comprising: at least one non-aqueous electrolyte secondary battery [0001, Iwasa]: and an elastic body (230, 232a-d) ([0049]) that is arranged together with the non-aqueous electrolyte secondary battery [0003, 0046, fig. 1-3, 6-12, Iwasa] and receives a load from the non-aqueous electrolyte secondary battery in the arrangement direction [0048, Iwasa], wherein the non-aqueous electrolyte secondary battery includes an electrode assembly in which a positive electrode (41), a negative electrode (42), and a separator (43, 44) disposed between the positive electrode and the negative electrode are stacked [0034, fig. 5, Iwasa], and a housing that accommodates the electrode assembly [0015, Iwasa], the elastic body (230, 232a-d ) is disposed outside the housing and adjacent to the housing [fig. 1-3, 6-12, Iwasa].
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Annotated figure 2 and 10, Iwasa
Iwasa discusses the elastic coefficient of the various parts of the elastic body [0050-0054, Iwasa] but is silent to a specific numerical value for the compressive modulus of elasticity of the elastic body in MPa.
Kitaura however, discloses a compressive modulus of elasticity of the elastic member (“elastic member) that varies based off of the ambient temperature [0057, Kitaura]. Disclosed ranges (that do not negate the broader teachings) discloses a modulus of elasticity at 80oC being greater than 25 MPa, or greater than 50 MPa, or greater than 75 MPa, or greater than 100 MPa [0057, Kitaura]. But less than 200 MPa, or less than 180 MPa, or less than 150 MPa [0058, Kitaura].
This teaching overlaps with the applicant’s claimed range of 60-120 MPa.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim (see MPEP 2144.05).
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Iwasa such that the compressive modulus of elasticity of the elastic body was between the ranges disclosed by Kitaura as this range allows for one to meet a minimum requirement to restraining the load of the battery within overlay increasing the size of the battery module [0057, Kitaura].
Iwasa as currently modified discuss that the positive electrode may include a positive metal foil (“current collector”) made of aluminum foil [0035, Iwasa] but is silent to the positive electrode current collector being comprised of Al and an element other than Al.
Tsutsumi however, discloses the positive electrode includes a positive electrode current collector containing Al and an element other than Al (“aluminum alloy”) [0110, Tsutsumi].
In a preferred embodiment, Tsutsumi discloses using an aluminum alloy (A5052-H34) [0061, Tsutsumi] which is with low thermal conductivity of 138 W/mK) (see prior Office Actions for detail).
Prior to the effective filing date, one of ordinary skill within the arts would appreciate that a wide variety of electrically conductive aluminum alloys exists, as evidenced by Conductivity and Resistivity Values for Aluminum & Alloys. As such, it would be obvious to substitute alloy A5052-H34 for another alloy that has similar properties, such as alloy A5083. Both A5052 (138 W/(mK)) and A5083 (117W/(mK)) are Al-Mg alloys with low thermal conductivity when compared to pure aluminum (237 W/(mK)). Given the similarities in physical, chemical, and electrical properties, one of ordinary skill would find it obvious to use aluminum alloy A5083 as a current collector as a matter of mere substituting equivalents known for the same purpose, see MPEPE 2144.06.II.
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Iwasa such that the aluminum foil current collector was replaced with an aluminum alloy such as A5083. Doing so would provide an aluminum current collector with good electrical conductivity and low electrical resistivity, as evidenced by Conductivity and Resistivity Values for Aluminum & Alloys.
Finally, Iwasa is silent to a compressive modulus of elasticity of the separator in comparison to the negative electrode layer and elastic body.
However, Torita discloses the secondary battery module wherein a compressive modulus of elasticity of the separator is smaller than that of a negative electrode active material layer constituting the negative electrode [0006, 0058, Torita]
Torita discloses in their summary of the invention that Japanese Patent No. 2000-285966 teaches the negative electrode should have a higher compressive modulus of elasticity than that of the positive electrode and separator [0006, Torita]. The examiner notes that Torita does not teach against this.
Torita additionally teaches that the spring constant of the elastic body is smaller than that of the separator [0012-0013, 0024, 0058-0059, Torita]
Torita discloses that the elastic body (40, “low spring constant film”) has a second spring constant lower than the first spring constant of the electrodes and separator. The examiner is interpreting spring constant and compressive modulus of elasticity to be comparable as both measure the force applied to an object and the displacement or deformation of that object over an linear region. As such, Torita discloses that the elastic body (40) is softer and easier to compress than the separator.
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Kim such that 1) the modulus of elasticity of the elastic body is smaller than that of the separator and 2) the modulus of elasticity of the separator is smaller than that of the negative electrode active material layer. Doing so would suppress the electrolyte solution from being pushed out of the negative electrode layer [0006, 0014, Torita].
Regarding claim 3, Iwasa as modified above discloses the secondary battery module, wherein the element other than Al contains Mg, and a content of Mg in the positive electrode current collector is 1.5% by mass or more (Aluminum alloy 5052 has a Mg wt% of 4.0-4.9%, see attached Aluminum and aluminum alloy thermal conductivity, page 1).
Regarding claim 4, Iwasa as modified above discloses the secondary battery module, wherein a liquidus temperature of the positive electrode current collector is 6500C or lower (Aluminum alloy 5083 has a liquidus temperature of 638oC, see attached Aluminum and aluminum alloy thermal conductivity, page 1).
Claim 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Iwasa as applied to claim 1 above, and as evidenced by Al5083_Youngs modulus.
Regarding claim 2, Iwasa as modified above discloses the secondary battery module, wherein a Young's modulus of the positive electrode current collector is 45 kN/mm2 to 73.5 kN/mm2 (Aluminum alloy 5083 has a Youngs modulus of 70,000 MPa (equivalent to 70 kN/mm2), see attached document Al5083_Youngs modulus).
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive. See below for further details.
Applicant’s arguments with respect to claim(s) 1 and 6 have been considered but are presently not persuasive.
Additionally, Kashiwagi is no longer relied upon and has been replaced by Kitaura which teaches a narrower range of modulus of elasticity and better overlaps with the applicant’s claimed invention. As such, any arguments related towards Kashiwagi are moot.
Pages 1 – 2 of applicants response summaries the claimed invention. The bottom half of page 2 – page 3 summaries primary reference Iwasa and note the deficiencies already noted by the examiner in past and present office actions.
Pages 4 and 5 discuss Kashiwagi which is no longer relied upon and as such moot.
Page 6 summaries the teachings of Torita in relation to Kashiwagi which is no longer relied upon and as such these arguments are moot.
Page7 summarizes the applicants invention covering the thermal conductivity of the positive current collector. Applicant argues that their data consisting of only thermal conductivity points at 65 and 117 W/mK show a range. To which the examiner still respectfully disagrees as this does not show that a curve other than a parabolic curve exists. For instance, a cubic curve (or other curves such as cos or sin) may still be present but not observed. For clarity a representation of a cubic curve is reproduced below.
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Cubic curve showing that points in a data set may go up, then down, then up again.
While positive effects may exist between 65 and 117 W/mK they have yet to be demonstrated.
As such the examiner maintains their rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US20120160233A1 discloses the use of aluminum alloys as current collectors for a solar energy absorber, including alloy A5083.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUINTIN DALE ELLIOTT whose telephone number is (703)756-5423. The examiner can normally be reached M-F 8:30-6pm (MST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached on 5712705256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QUINTIN D. ELLIOTT/Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724