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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 13, 2026 has been entered.
Response to Amendment
In response to Applicant’s reply dated March 13, 2026, Claims 10, 14, 16, 18, 20, and 22 are amended. Claims 11, 13, 15, 17, 19, 21, and 21 are withdrawn as being drawn to a nonelected invention per Applicant’s previous response on July 3, 2025.
Applicant’s amendments are persuasive in overcoming the 35 U.S.C. 112(b) rejections in the Office Action dated November 10, 2025; thus, the previous rejections are withdrawn.
Status of Application
In response to Applicant’s amendments, the rejections are modified below as necessitated by Applicant’s amendments.
Claim Interpretation
Claims 10 and 18 recite a “P assembly” and the previous interpretation of “P assembly” in the Office Action dated August 8, 2025 is maintained. Further, Claims 10 and 18 recite “encases” or “encased”. The Examiner’s interpretation of “encases” and “encased” as provided in the Office Action dated November 10, 2025 is maintained.
Claim 22 recites “a high-voltage store” in line 1 and the previous interpretation of “a high-voltage store” in the Office Action dated August 8, 2025 is maintained.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yeh US20190140233A1 [as provided on the IDS dated 10/4/2022].
Regarding Claim 10, Yeh discloses a holding device for battery cells [Yeh 0023, embodiment shown in Fig. 7 with battery cells 20] comprising:
a thermal insulating layer that encases each of the battery cells [Yeh 0023, abstract, Fig. 7 embodiment; Fig. 7 shows a thin thermal insulating layer unit 20 surrounding each battery cell 12 circumferentially in Yeh’s “multi-tubular” unit 20, which reads on “encases each of the battery cells” (see claim interpretation above).],
the holding device is associated with an electrical energy storage module [Yeh abstract and throughout, battery module],
the battery cells are brought into direct thermal-contact arrangement through the thermal insulating layer [Yeh 0023, abstract, Fig. 7 embodiment; Fig. 7 shows a thin thermal insulating layer unit 20 surrounding each battery cell 12 circumferentially, where the battery cells 12 are in direct contact through the thermal sleeves 20. This direct contact would inherently require “direct thermal-contact arrangement through the insulating layer”. Per MPEP 2112, there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference.], and
at a location at which the adjacent battery cells are closest to one another, a clearance between adjacent battery cells is defined solely by the thermal insulating layer [Yeh 0023, abstract, Fig. 7 embodiment; In Fig. 7, the broadest reasonable interpretation of Yeh is a clearance between Yeh’s adjacent battery cells 12 would inherently be the closest spacing between battery cells where the thermal insulating layer sleeves are tangentially connected cylinders. Since the battery cells 12 are tangentially adjacently through the insulating layer sleeves 20, the insulating layers of sleeves 20 inherently define a “clearance between adjacent battery cells”. In other words, the thermal insulating layer of the sleeves 20 defines the clearance between adjacent battery cells 12 since the adjacent battery cells 12 cannot get closer or further than the spacing of the thermal insulating layers of sleeves 20 surrounding each adjacent battery cell 12. Per MPEP 2112, there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference.] For clarity, examples of the clearance between adjacent battery cells is indicated for holder 20 in annotated Fig. 7 below.].
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Yeh Figure 7 annotated
The claim limitation “of electrically operated motor vehicles” is a recitation of the intended usage of the holding device. Yeh teaches an electrical energy storage module [Yeh abstract and throughout, battery module] but does not teach the application of the battery module and therefore does not explicitly teach electrically-operated motor vehicles; however, usage of Yeh’s holding device in electrically-operated motor vehicles as claimed would be within the ambit of the skilled artisan. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date to apply Yeh’s holding device to a battery module for an electrical energy storage module of electrically operated motor vehicles with the predictable result of a battery module with good thermal dissipation and thermal runaway prevention [Yeh 0002 and throughout].
Yeh does not explicitly disclose “the thermal insulating layer has a thickness between 0.05 mm to 0.4 mm”; however, it would have been obvious to one of ordinary skill in the art before the effective filing date that determining the workable range of thickness for the thermal insulating layer is a result effective variable dependent on the design of the cells such as type of battery chemistry and size/weight in combination with the material used for the insulating layer. For example, for a battery cell that generates significant heat due to power/voltage, chemistry, etc., the insulating layer would need to be thicker than a battery cell with lower power/voltage requirements or a chemistry that does not produce significant heat, for which a thinner insulating layer would be expected to be sufficient to provide thermal insulation. Further, the skilled artisan would know to minimize the thickness of the insulating layer to use space efficiently. Further yet, the skilled artisan would know that the amount of thickness of the thermal layer required to insulate a battery cell would depend on the thermal conductivity and strength of the material used for the thermally insulating layer. Specifically, a sufficiently strong material would provide the support needed for Yeh’s battery holder to secure the battery cells within the holder with less thickness than a weaker material. Further, a thermal insulator material with low thermal conductivity would provide sufficient insulative effects with less thickness than a thermal insulator with higher thermal conductivity. It would have been obvious to one of ordinary skill in the art before the effective filing date to determine the workable range of thickness of the thermal insulating layer for the specified battery cell design and specified thermal insulating material for Yeh’s battery holder throughout routine experimentation in consideration of the factors discussed above to reduce thermal runaway and provide sufficient structural support of the battery cells. See MPEP 2144.05II, routine optimization.
Yeh does not explicitly disclose wherein the battery cells in the embodiment of Fig. 7 are in a P assembly; however, the terminology “P assembly” has no known standard meaning in the art. Therefore, battery cells interconnected in parallel are interpreted as a P assembly (see claim interpretation section above). Yeh discloses that adjacent battery cells are connected in parallel through a conductor to for sub-battery 14, and then the sub-batteries are connected in series to form a battery module 10. [Yeh 0014]. Further, for the embodiment shown in Fig. 7, the nearby battery cells are arranged in groupings of 10, all oriented with the same polarity, which facilitates connecting the batteries in parallel. Further, the batteries would have to be arranged for either parallel connections or series connections (see MPEP 2143E, Obvious to try also); therefore, arranging the cells in parallel connection would be obvious since methods for arranging cells in parallel connection would be well known by those skilled in the art. Also, the skilled artisan would know that connections in parallel increase the storage capacity as compared to connections in series. Therefore, it would be within the ambit of the skilled artisan to connect the groupings of 10 nearby battery cells 12 for the embodiment in Fig. 7 in parallel using conductor 30 [Yeh 0013, 0023], which reads on the claimed “battery cells are in a P assembly”. It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Yeh’s electrical connection in parallel with conductor 30 embodiment [Yeh 0013] with Yeh’s embodiment in Fig. 7 [Yeh 0023] where the battery cells are arranged with an insulating layer 20 holding each of the individual cells together as a unit for a battery with good thermal dissipation and thermal runaway prevention [Yeh 0002, 0024] that can be used in a parallel configuration [Yeh 0014] for a battery module with high storage capacity.
Claim(s) 12, 14, 16, 18, 20 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yeh US20190140233A1, as applied to Claim 10, in view of Newman [US20180261813A1, as provided on the IDS dated 10/4/2022].
Regarding Claim 12, modified Yeh discloses the holding device according to claim 10 but is silent to wherein interspaces between the battery cells are filled with a thermal conductive potting compound and therefore does not disclose the claimed thermal conductivity.
Newman discloses a battery module retainer [Newman abstract and throughout] with a thermally conductive potting compound between battery cells for thermal management [Newman abstract, 0037, Figs. 6-9, and throughout]. Further, Newman discloses the potting compound also bonds the battery cells and a cooling plate [Newman 0039-0041, Fig. 6, cells 405A-E, cooling plate 420, potting material 605]. Though Newman’s battery cells shown in Figs. 4-9 are rectangular shaped, it would be within the ambit of the skilled artisan to apply Newman’s teachings about potting compounds between the battery cells with the cylindrical batteries disclosed by modified Yeh. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify modified Yeh to include Newman’s usage of the thermally conductive potting compound between the battery cells and between the battery cells and cooling plate for the predictable result of improved thermal mitigation and to improve the retainment of the battery cells [Newman 0039-0041] to prevent movement of the batteries in the event of impact.].
Newman does not disclose the thermal conductivity of the potting material 605; and therefore, does not disclose the claimed thermal conductivity range. It would have been obvious to one of ordinary skill in the art before the effective filing date that determining the thermal conductivity required for a potting material is a result effective variable. If the thermal conductivity is too low, the thermal potting material will not have sufficient conductivity to manage the heat load provided by the battery cells. The thermal conductivity requirement further depends on the design of the battery cells (size, chemistry, etc.) and the application it is used in (environmental heat load, number of battery cells, type of cooling plate, etc.). Determining the workable range of thermal conductivity in consideration of the above factors for the specified battery cell design/application merely requires routine experimentation. It would have been obvious to one of ordinary skill in the art before the effective filing date to determine the workable range of thermal conductivity for a potting compound for modified Yeh’s battery holder throughout routine experimentation in consideration of the factors discussed above to reduce thermal runaway. See MPEP 2144.05II, routine optimization.
Regarding Claim 14, modified Yeh discloses the holding device according to claim 12, wherein the potting compound is configured as an adhesive bond between the battery cells and a cooling plate to enhance thermal dissipation and structure stability [Newman 0039-0041, Fig. 6, cells 405A-E, cooling plate 420, potting material 605, Newman discloses the liquid potting material is cured and can act as a structural member holding the bottom of the cells, which, as shown in Fig. 3, reads on “configured as an adhesive bond between the battery cells and a cooling plate” and enhancing “structure stability”. Though Newman’s battery cells shown in Figs. 4-9 are rectangular shaped, it would be within the ambit of the skilled artisan to apply Newman’s teachings about potting compounds securing the battery cells to a cooling plate with the cylindrical batteries disclosed by modified Yeh. Further, Newman discloses the thermal potting compound provides a thermal layer between the battery cells and the cooling plate [Newman 0039], which reads on “enhance thermal dissipation”. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify modified Yeh to include Newman’s usage of the thermally conductive potting compound to secure the battery cells to the cooling plate for improved thermal mitigation and to improve the retainment of the battery cells [Newman 0039-0041] to prevent movement of the batteries in the event of impact.
Regarding Claim 16, modified Yeh discloses the holding device of claim 12, wherein the potting compound has a thermal conductivity of at least 1 W/mK and up to a thermal conductivity of a metal battery housing [Newman 0037-0041, Figs. 4-9, Newman’s thermally conductive potting compound is used between the battery cells and between the cells and the cooling plate. As described in Claim 12, Newman does not explicitly disclose the range of thermal conductivity for the potting compound. The skilled artisan would expect Newman’s thermally conductive potting compound to conduct heat away from the battery cells 405A-405E to the cooling plate 420. As shown in Figs. 4-9, each battery cell has an individual housing. Therefore, the skilled artisan would expect Newman’s thermal conductive of the potting compound to inherently be sufficiently high enough to conduct heat from the housing of the individual battery cells 405A-405E to the cooling plate 420. As described in claim 12 above and as incorporated in the rejection of Claim 16 by reference, the thermal conductivity of the potting compound is a result effective variable. If the thermal conductivity is not high enough, the potting compound cannot support thermal management of the battery cells and the battery cells may overheat, which affects battery performance. At some level, increasing the thermal conductivity of the potting compound does not provide additional benefit. For example, a skilled artisan would know that a thermal conductivity greater than the conductivity of a metal battery casing would not be expected to provide additional benefit. Further, the amount of thermal conductivity required would depend on the design of the battery module, such as the capacity/size of the individual battery cells, the number of battery cells, the environment around of the battery module, etc. It would have been obvious to one of ordinary skill in the art before the effective filing date to determine the workable range of sufficient thermal conductivity as described above through routine experimentation, which is obvious per MPEP 2144.05II, routine optimization.
Regarding Claim 18, modified Yeh discloses the holding device according to claim 12, wherein the thermally conductive potting compound has an electrical conductivity sufficient for contact-connection of anodes of the P assembly and, additionally to heat transfer, is also configured for contact-connection to anodes in the P assembly, wherein the anodes are also encased in the potting compound [Newman 0042, Fig. 7, Newman discloses the potting material in addition to the heat conductivity as described above can also be electrically conductive. Fig. 7 shows terminals 705A-705E embedded in electrically conductive potting compound 605, which would inherently provide electrical connection between the battery cell terminals. See MPEP 2112, inherency. It would be within the ambit of the skilled artisan to combine Newman’s embodiment shown in Fig. 7 with the battery holder of Yeh Fig. 7 by using a battery holder with a grouping of 10 cells where the anodes are facing downward and embedding the anodes in Newman’s potting compound. Such combination reads on “electrical conductivity sufficient for contact-connection of anodes of the P assembly and, additionally to heat transfer” and “ is also configured for contact-connection of anodes in the P assembly” since Newman’s potting compound provides both thermal conductivity as described in claim 12 and electrical conductivity. Further, Newman discloses the terminals of the cells 405A-405E are embedded in the potting compound, which reads on “wherein the anodes are also encased in the potting compound”.]. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify modified Yeh to include Newman’s embodiment with a thermally and electrically conductive potting compound to secure the battery cells and anodes to the cooling plate for improved thermal mitigation, to improve the retainment of the battery cells [Newman 0039-0041] to prevent movement of the batteries in the event of impact, and to provide a secured electrical contact for the anode [Newman 0042].
Regarding Claim 20 modified Yeh disclose the holding device according to claim 12, wherein by way of the insulating layer and/or the potting compound, a spacing between adjacent battery cells is reduced to between 0.05 and 0.4 mm, so that the insulating layer defines the clearance and a self-holding arrangement [See modified Yeh as described in Claim 10 above, where a spacing between adjacent battery cells is the thickness of the insulating layer and the thickness of the insulating layer is a result effective variable, which reads on “by way of the insulating layer, a spacing between adjacent battery cells is reduced to between 0.05 and 0.4 mm”. Further, as described above, modified Yeh reads on the claimed “so that the insulating layer defines the clearance and a self-holding arrangement” since the broadest reasonable interpretation of Yeh is the sleeves of the multi-tubular unit are connected and the spacing between battery cells is the thickness of the sleeve is the clearance between battery cells. Further, since Yeh discloses a multi-tubular holder with individual sleeves for each cell [Yeh 0023, Fig. 7], the broadest reasonable interpretation of Yeh is the insulating layer 20 defines the clearance and defines a self-holding arrangement as described in claim 10 above. Further, Newman discloses a clearance of 0.1 to 2 mm between battery cells, which is filled with potting compound [Newman 00037], which overlaps and obviates the claimed range for “by way of the potting compound, a spacing between adjacent battery cells is reduced to between 0.05 and 0.4 mm”. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Newman’s spacing between adjacent battery cells since the spacing disclosed by Newman provides spacing for insertion of Newman’s thermally conductive potting compound to secure the battery cells to the cooling plate for improved thermal mitigation and to improve the retainment of the battery cells [Newman 0039-0041] to prevent movement of the batteries in the event of impact.
Further, the skilled artisan would know that the distance between battery cells would be a result effective variable. If the battery cell spacing is too close, it would not be possible to supply a sufficient amount of thermally conductive potting compound between the battery cells to conduct the heat from the cells to the cooling plate. If the battery cell spacing is too large, the space cannot be used efficiently, which results in a lower power density or higher volume required for the battery module. Determining the workable spacing through balancing the need for efficient use of space and good thermal management merely requires routine experimentation, which is obvious per MPEP 2144.05II,A. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 22, modified Yeh discloses the holding device according to claim 10 but does not explicitly disclose a high-voltage store [See claim interpretation section], which comprises the claimed holding device. However, the skilled artisan would expect that modified Yeh’s battery holder could be used in an electric vehicle. Newman discloses a battery module where a plurality of battery cells are retained by a thermally conductive potting compound for use in an electric vehicle [Newman 0001 and throughout] and discloses wherein a potting compound provides thermal coupling of the battery cells to the cooling plate [Newman 0039]. It would be within the ambit of the skilled artisan to combine Yeh’s battery holding device in Newman’s battery module for an electric vehicle by pouring Newman’s thermal potting compound into the cooling plate, placing Yeh’s battery holder into the liquid thermal potting compound, and then allowing the potting compound to cure to securely hold the battery holder onto the cooling plate [Newman 0039-0041]. It would have been obvious to one of ordinary skill in the art before the effective filing date to apply Yeh’s battery holder to an electric vehicle by modifying modified Yeh to include Newman’s usage of the thermally conductive potting compound between the battery cells and between the battery cells and cooling plate for an electric vehicle with improved thermal mitigation and retainment of the battery cells [Newman 0039-0041] to prevent movement of the batteries in the event of impact.
For purpose of compact prosecution, alternative rejections are provided below to address the thickness of the thermal insulating layer (claims 10 and 20) and the conductivity of the potting compound (claims 12 and 16).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yeh US20190140233A1 [as provided on the IDS dated 10/4/2022], and in further view of Yokoyama et al. [US20110195291A1, previously provided as pertinent art], hereinafter Yokoyama.
Regarding Claim 10, Yeh discloses a holding device for battery cells [Yeh 0023, embodiment shown in Fig. 7 with battery cells 20] comprising:
a thermal insulating layer that encases each of the battery cells [Yeh 0023, abstract, Fig. 7 embodiment; Fig. 7 shows a thin thermal insulating layer unit 20 surrounding each battery cell 12 circumferentially in Yeh’s “multi-tubular” unit 20, which reads on “encases each of the battery cells” (see claim interpretation above).],
the holding device is associated with an electrical energy storage module [Yeh abstract and throughout, battery module],
the battery cells are brought into direct thermal-contact arrangement through the thermal insulating layer [Yeh 0023, abstract, Fig. 7 embodiment; Fig. 7 shows a thin thermal insulating layer unit 20 surrounding each battery cell 12 circumferentially, where the battery cells 12 are in direct contact through the thermal sleeves 20. This direct contact would inherently require “direct thermal-contact arrangement through the insulating layer”. Per MPEP 2112, there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference.], and
at a location at which the adjacent battery cells are closest to one another, a clearance between adjacent battery cells is defined solely by the thermal insulating layer [Yeh 0023, abstract, Fig. 7 embodiment; In Fig. 7, the broadest reasonable interpretation of a clearance between Yeh’s adjacent battery cells 12 would inherently be the closest spacing between battery cells where the thermal insulating layer are tangential cylinders. Since the battery cells 12 are tangentially adjacently through the insulating layer 20, the insulating layers of sleeves 20 inherently define a “clearance between adjacent battery cells”. In other words, the thermal insulating layer of the sleeves 20 defines the clearance between adjacent battery cells 12 since the adjacent battery cells 12 cannot get closer or further than the spacing of the thermal insulating layers of sleeves 20 surrounding each adjacent battery cell 12. Per MPEP 2112, there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference.] For clarity, examples of the clearance between adjacent battery cells is indicated for holder 20 in annotated Fig. 7 below.].
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The claim limitation “of electrically operated motor vehicles” is a recitation of the intended usage of the holding device. Yeh teaches an electrical energy storage module [Yeh abstract and throughout, battery module] but does not teach the application of the battery module and therefore does not explicitly teach electrically-operated motor vehicles; however, usage of Yeh’s holding device in electrically-operated motor vehicles as claimed would be within the ambit of the skilled artisan. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date to apply Yeh’s holding device to a battery module for an electrical energy storage module of electrically operated motor vehicles with the predictable result of a battery module with good thermal dissipation and thermal runaway prevention [Yeh 0002 and throughout].
Yeh does not explicitly disclose wherein the battery cells in the embodiment of Fig. 7 are in a P assembly; however, the terminology “P assembly” has no known standard meaning in the art. Therefore, battery cells interconnected in parallel are interpreted as a P assembly (see claim interpretation section above). Yeh discloses that adjacent battery cells are connected in parallel through a conductor to for sub-battery 14, and then the sub-batteries are connected in series to form a battery module 10. [Yeh 0014]. Further, for the embodiment shown in Fig. 7, the nearby battery cells are arranged in groupings of 10, all oriented with the same polarity, which facilitates connecting the batteries in parallel. Further, the batteries would have to be arranged for either parallel connections or series connections (see MPEP 2143E, Obvious to try also); therefore, arranging the cells in parallel connection would be obvious since methods for arranging cells in parallel connection would be well known by those skilled in the art. Also, the skilled artisan would know that connections in parallel increase the storage capacity as compared to connections in series. Therefore, it would be within the ambit of the skilled artisan to connect the groupings of 10 nearby battery cells 12 for the embodiment in Fig. 7 in parallel using conductor 30 [Yeh 0013, 0023], which reads on the claimed “battery cells are in a P assembly”. It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Yeh’s electrical connection in parallel with conductor 30 embodiment [Yeh 0013] with Yeh’s embodiment in Fig. 7 [Yeh 0023] where the battery cells are arranged with an insulating layer 20 holding each of the individual cells together as a unit for a battery with good thermal dissipation and thermal runaway prevention [Yeh 0002, 0024] that can be used in a parallel configuration [Yeh 0014] for a battery module with high storage capacity.
Yeh does not explicitly disclose “the thermal insulating layer has a thickness between 0.05 mm to 0.4 mm”; however, it would have been obvious to one of ordinary skill in the art before the effective filing date that determining the workable range of thickness for the thermal insulating layer is a result effective variable dependent on the design of the cells such as type of battery chemistry and size/weight in combination with the material used for the insulating layer. For example, for a battery cell that generates significant heat due to power/voltage, chemistry, etc., the insulating layer would need to be thicker than a battery cell with lower power/voltage requirements or a chemistry that does not produce significant heat, for which a thinner insulating layer would be expected to be sufficient to provide thermal insulation. Further, the skilled artisan would know to minimize the thickness of the insulating layer to use space efficiently. Further yet, the skilled artisan would know that the amount of thickness of the thermal layer required to insulate a battery cell would depend on the thermal conductivity and strength of the material used for the thermally insulating layer. Specifically, a sufficiently strong material would provide the support needed for Yeh’s battery holder to secure the battery cells within the holder with less thickness than a weaker material. Further, a thermal insulator material with low thermal conductivity would provide sufficient insulative effects with less thickness than a thermal insulator with higher thermal conductivity. It would have been obvious to one of ordinary skill in the art before the effective filing date to determine the workable range of thickness of the thermal insulating layer for the specified battery cell design and specified thermal insulating material for Yeh’s battery holder throughout routine experimentation in consideration of the factors discussed above to reduce thermal runaway and provide sufficient structural support of the battery cells. See MPEP 2144.05II, routine optimization.
For purpose of compact prosecution regarding the claimed thickness, Yokoyama teaches a thermal insulating layer 5, 6 for cylindrical battery cells 3, 4 [Yokoyama 0027 and throughout, Figs. 1-2] where the thickness of the thermal insulating layer is 0.1 mm to 3 mm and preferably 1 mm or less, which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. It would be within the ambit of the skilled artisan to combine Yokoyomo’s teachings about the thickness of a thermal insulation layer for a battery cell with Yeh’s battery holder. It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Yokoyama’s teaching about the thickness of a thermal insulating layer with Yeh’s holding device for the predictable result of a battery holder with sufficient thickness for excellent safety and heat insulation [Yokoyama abstract, 0012, and throughout].
Claim(s) 12, 14, 16, 18, 20 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yeh and Yokoyama, as applied to Claim 10, in view of Newman [US20180261813A1, as provided on the IDS dated 10/4/2022] and further in view of Staubel et al. [US2011091760A1, previously provided as pertinent art], hereinafter Staubel, and as evidenced by Stycast 2850 23LV technical data sheet, previously provided as pertinent art], hereinafter Stycast.
Regarding Claim 12, modified Yeh discloses the holding device according to claim 10 but is silent to wherein interspaces between the battery cells are filled with a thermal conductive potting compound and therefore does not disclose the claimed thermal conductivity.
Newman discloses a battery module retainer [Newman abstract and throughout] with a thermally conductive potting compound between battery cells for thermal management [Newman abstract, 0037, Figs. 6-9, and throughout]. Further, Newman discloses the potting compound also bonds the battery cells and a cooling plate [Newman 0039-0041, Fig. 6, cells 405A-E, cooling plate 420, potting material 605]. Though Newman’s battery cells shown in Figs. 4-9 are rectangular shaped, it would be within the ambit of the skilled artisan to apply Newman’s teachings about potting compounds between the battery cells with the cylindrical batteries disclosed by modified Yeh. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify modified Yeh to include Newman’s usage of the thermally conductive potting compound between the battery cells and between the battery cells and cooling plate for the predictable result of improved thermal mitigation and to improve the retainment of the battery cells [Newman 0039-0041] to prevent movement of the batteries in the event of impact.].
Newman does not disclose the thermal conductivity of the potting material 605; and therefore, does not disclose the claimed thermal conductivity range. It would have been obvious to one of ordinary skill in the art before the effective filing date that determining the thermal conductivity required for a potting material is a result effective variable. If the thermal conductivity is too low, the thermal potting material will not have sufficient conductivity to manage the heat load provided by the battery cells. The thermal conductivity requirement further depends on the design of the battery cells (size, chemistry, etc.) and the application it is used in (environmental heat load, number of battery cells, type of cooling plate, etc.). Determining the workable range of thermal conductivity in consideration of the above factors for the specified battery cell design/application merely requires routine experimentation. It would have been obvious to one of ordinary skill in the art before the effective filing date to determine the workable range of thermal conductivity for a potting compound for modified Yeh’s battery holder throughout routine experimentation in consideration of the factors discussed above to reduce thermal runaway. See MPEP 2144.05II, routine optimization.
For purpose of compact prosecution regarding the claimed conductivity, Staubel teaches a thermal potting compound with sufficient thermal conductivity for use in a battery module [Staubel 0021-0029, Stycast 2850FT, catalyst 23LV]. Per the Hysol Stycast technical data sheet, the thermal conductivity is 1.1 W/mk, which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Staubel’s teaching of a thermal potting compound with a conductivity greater than 1 W/mk in the holding device of Yeh modified by Newman for the predictable result of a potting compound with sufficient thermal conductivity for a battery module [Staubel 0021-0024 and throughout].
Regarding Claim 14, modified Yeh discloses the holding device according to claim 12, wherein the potting compound is configured as an adhesive bond between the battery cells and a cooling plate to enhance thermal dissipation and structure stability [Newman 0039-0041, Fig. 6, cells 405A-E, cooling plate 420, potting material 605, Newman discloses the liquid potting material is cured and can act as a structural member holding the bottom of the cells, which, as shown in Fig. 3, reads on “configured as an adhesive bond between the battery cells and a cooling plate” and enhancing “structure stability”. Though Newman’s battery cells shown in Figs. 4-9 are rectangular shaped, it would be within the ambit of the skilled artisan to apply Newman’s teachings about potting compounds securing the battery cells to a cooling plate with the cylindrical batteries disclosed by modified Yeh. Further, Newman discloses the thermal potting compound provides a thermal layer between the battery cells and the cooling plate [Newman 0039], which reads on “enhance thermal dissipation”. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify modified Yeh to include Newman’s usage of the thermally conductive potting compound to secure the battery cells to the cooling plate for improved thermal mitigation and to improve the retainment of the battery cells [Newman 0039-0041] to prevent movement of the batteries in the event of impact.
Regarding Claim 16, modified Yeh discloses the holding device of claim 12, wherein the potting compound has a thermal conductivity of at least 1 W/mK and up to a thermal conductivity of a metal battery housing [Newman 0037-0041, Figs. 4-9, Newman’s thermally conductive potting compound is used between the battery cells and between the cells and the cooling plate. As described in Claim 12, Newman does not explicitly disclose the range of thermal conductivity for the potting compound. The skilled artisan would expect Newman’s thermally conductive potting compound to conduct heat away from the battery cells 405A-405E to the cooling plate 420. As shown in Figs. 4-9, each battery cell has an individual housing. Therefore, the skilled artisan would expect Newman’s thermal conductive of the potting compound to inherently be sufficiently high enough to conduct heat from the housing of the individual battery cells 405A-405E to the cooling plate 420. As described in claim 12 above and as incorporated in the rejection of Claim 16 by reference, the thermal conductivity of the potting compound is a result effective variable. If the thermal conductivity is not high enough, the potting compound cannot support thermal management of the battery cells and the battery cells may overheat, which affects battery performance. At some level, increasing the thermal conductivity of the potting compound does not provide additional benefit. For example, a skilled artisan would know that a thermal conductivity greater than the conductivity of a metal battery casing would not be expected to provide additional benefit. Further, the amount of thermal conductivity required would depend on the design of the battery module, such as the capacity/size of the individual battery cells, the number of battery cells, the environment around of the battery module, etc. It would have been obvious to one of ordinary skill in the art before the effective filing date to determine the workable range of sufficient thermal conductivity as described above through routine experimentation, which is obvious per MPEP 2144.05II, routine optimization. Further, Staubel teaches a potting compound [Staubel 0022-0023, Stycast 2850FT, catalyst 23LV] as provided in claim 12 above which has a thermal conductivity of 1.1 W/km [Stycast technical data sheet], which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. It would be obvious to combine the prior art of Staubel for the same reasons as provided in claim 12 above.].
Regarding Claim 18, modified Yeh discloses the holding device according to claim 12, wherein the thermally conductive potting compound has an electrical conductivity sufficient for contact-connection of anodes of the P assembly and, additionally to heat transfer, is also configured for contact-connection to anodes in the P assembly, wherein the anodes are also encased in the potting compound [Newman 0042, Fig. 7, Newman discloses the potting material in addition to the heat conductivity as described above can also be electrically conductive. Fig. 7 shows terminals 705A-705E embedded in electrically conductive potting compound 605, which would inherently provide electrical connection between the battery cell terminals. See MPEP 2112, inherency. It would be within the ambit of the skilled artisan to combine Newman’s embodiment shown in Fig. 7 with the battery holder of Yeh Fig. 7 by using a battery holder with a grouping of 10 cells where the anodes are facing downward and embedding the anodes in Newman’s potting compound. Such combination reads on “electrical conductivity sufficient for contact-connection of anodes of the P assembly and, additionally to heat transfer” and “ is also configured for contact-connection of anodes in the P assembly” since Newman’s potting compound provides both thermal conductivity as described in claim 12 and electrical conductivity. Further, Newman discloses the terminals of the cells 405A-405E are embedded in the potting compound, which reads on “wherein the anodes are also encased in the potting compound”.]. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify modified Yeh to include Newman’s embodiment with a thermally and electrically conductive potting compound to secure the battery cells and anodes to the cooling plate for improved thermal mitigation, to improve the retainment of the battery cells [Newman 0039-0041] to prevent movement of the batteries in the event of impact, and to provide a secured electrical contact for the anode [Newman 0042].
Regarding Claim 20 modified Yeh disclose the holding device according to claim 12, wherein by way of the insulating layer and/or the potting compound, a spacing between adjacent battery cells is reduced to between 0.05 and 0.4 mm, so that the insulating layer defines the clearance and a self-holding arrangement [See modified Yeh as described in Claim 10 above, where a spacing between adjacent battery cells is the thickness of the insulating layer and the thickness of the insulating layer is a result effective variable, which reads on “by way of the insulating layer, a spacing between adjacent battery cells is reduced to between 0.05 and 0.4 mm”. Further, the prior art of Yokoyama overlaps and obviates the claimed range as described in claim 10 above. Further, as described above, modified Yeh reads on the claimed “so that the insulating layer defines the clearance and a self-holding arrangement” since the broadest reasonable interpretation of Yeh is the sleeves of the multi-tubular unit are connected and the spacing between battery cells is the thickness of the sleeve is the clearance between battery cells. Further, since Yeh discloses a multi-tubular holder with individual sleeves for each cell [Yeh 0023, Fig. 7], the broadest reasonable interpretation of Yeh is the insulating layer 20 defines the clearance and defines a self-holding arrangement as described in claim 10 above. Further, Newman discloses a clearance of 0.1 to 2 mm between battery cells, which is filled with potting compound [Newman 00037], which overlaps and obviates the claimed range for “by way of the potting compound, a spacing between adjacent battery cells is reduced to between 0.05 and 0.4 mm”. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Newman’s spacing between adjacent battery cells since the spacing disclosed by Newman provides spacing for insertion of Newman’s thermally conductive potting compound to secure the battery cells to the cooling plate for improved thermal mitigation and to improve the retainment of the battery cells [Newman 0039-0041] to prevent movement of the batteries in the event of impact.
Further, the skilled artisan would know that the distance between battery cells would be a result effective variable. If the battery cell spacing is too close, it would not be possible to supply a sufficient amount of thermally conductive potting compound between the battery cells to conduct the heat from the cells to the cooling plate. If the battery cell spacing is too large, the space cannot be used efficiently, which results in a lower power density or higher volume required for the battery module. Determining the workable spacing through balancing the need for efficient use of space and good thermal management merely requires routine experimentation, which is obvious per MPEP 2144.05II,A. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 22, modified Yeh discloses the holding device according to claim 10 but does not explicitly disclose a high-voltage store [See claim interpretation section], which comprises the claimed holding device. However, the skilled artisan would expect that modified Yeh’s battery holder could be used in an electric vehicle. Newman discloses a battery module where a plurality of battery cells are retained by a thermally conductive potting compound for use in an electric vehicle [Newman 0001 and throughout] and discloses wherein a potting compound provides thermal coupling of the battery cells to the cooling plate [Newman 0039]. It would be within the ambit of the skilled artisan to combine Yeh’s battery holding device in Newman’s battery module for an electric vehicle by pouring Newman’s thermal potting compound into the cooling plate, placing Yeh’s battery holder into the liquid thermal potting compound, and then allowing the potting compound to cure to securely hold the battery holder onto the cooling plate [Newman 0039-0041]. It would have been obvious to one of ordinary skill in the art before the effective filing date to apply Yeh’s battery holder to an electric vehicle by modifying modified Yeh to include Newman’s usage of the thermally conductive potting compound between the battery cells and between the battery cells and cooling plate for an electric vehicle with improved thermal mitigation and retainment of the battery cells [Newman 0039-0041] to prevent movement of the batteries in the event of impact.
Response to Arguments
Regarding Applicant arguments on pg. 6, the Examiner agrees that Applicant’s amendments are sufficient to overcome the indefiniteness rejections applied in the Office Action dates November 10, 2025. Thus, those rejections are withdrawn.
Regarding Applicant arguments on pgs. 6-10, the Examiner agrees that the amendments to claim 10 are supported by the instant specification.
Regarding Applicant arguments on pg. 6 and 10-13 that the instant invention is distinct of Yeh due to the new limitation “at a location at which the adjacent battery cells are closest to one another, the clearance between the adjacent battery cells is defined solely by the thermal insulating layer”, the Examiner respectfully disagrees. As described more fully above, Yeh’s battery holder of Fig. 7 provides the claimed structure. Regarding Applicant’s arguments describing Yeh’s invention on pgs. 11-13, the Applicant’s arguments are not reflective of the rejection provided in the Office Action dated November 10, 2025. Specifically, the Fig. 1 embodiment of Yeh described by the Applicant is not the embodiment provided in the rejection. For clarity, the Examiner has annotated Fig. 7 in the rejections above and copied it below to show the clearance of Yeh that is solely provided by the thermal insulating layer of the sleeves in Yeh’s multi-tubular holder 20. This embodiment of Yeh, which is the embodiment described in the Examiner’s rejections, is entirely different from the embodiment described in the Applicant’s arguments, including the configuration of the noted air holes 24. In Yeh’s holder of Fig. 7, the battery cells are confined by the holder 20 where the sleeves are attached tangentially with the battery cells in rows and columns. As configured, the battery cells cannot move closer or further than the thickness of the thermal insulating layer of each of the sleeves and the clearance is defined by the thickness of the thermal insulating layer of each of the sleeves.
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No additional specific arguments are provided; thus, for the reasons provided above, evidence of obviousness over the prior art outweighs evidence of nonobviousness.
For purpose of compact prosecution, additional rejections are provided above.
Conclusion
The prior art made of record in the Office Actions dated August 8, 2025 and November 2, 2025 and not relied upon is still considered pertinent to applicant's disclosure.
Contact Information
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/M. T. LEONARD/Examiner, Art Unit 1724
/STEWART A FRASER/Primary Examiner, Art Unit 1724
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