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 .
Response to Amendment
In response to the amendment received on January 28, 2026:
Claims 1, 3, 5, 7, 8, 10 and 11 are pending. Claims 2, 4, 6 and 9 have been canceled as per Applicant’s request;
The prior art rejections to Choi stand as modified in light of the amendment.
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.
Claims 1, 3, 5 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (U.S. Patent Application Publication No. 2018/0175343).
As to claim 1, Choi discloses a battery module comprising:
a cell stack constituted by comprising stacked battery cells 100; and
a module case 200 configured to receive housing the cell stack therein,
wherein a leaf spring 300d (swelling relief units) is disposed so as to face an outermost battery cell 100 disposed at an outermost side of the cell stack,
the outermost battery cell comprises a pair of end portion on which electrode tabs are located and a center portion between the pair of end portions (see annotated Fig. 1 below),
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wherein the swelling relief unit 300d having comprises a flat peripheral portion 310d facing the long side end portions and a convex portion 320d configured to pressing at least a part of the one or more battery cells only in the center portion (Figs. 15-16 for example and annotated Figure. 16 below).
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The swelling relief unit 300d is located between the outermost battery cell 100 and the module case 200 side cover 230/250 (Figs. 15-16, for example). The convex portion 320d of the swelling relief unit 300d is located at only a predetermined region of a central part of the outermost battery cell 100 (Figs. 15-16, for example).
With respect to the convex portion configured to deform, where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection.
“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990).
In the case of the instant application the basis for expectation of inherency is the leaf spring 300d (swelling relief units), having similar design as noted above and having a limited thickness, are provided in the same place as the instant invention and are elastic in nature. Thus, when a predetermined pressure or higher is applied to the swelling relief units 300d, the elastic units 300d are of sufficient design, material and relative position to be able to deform into a concave shape.
Furthermore, the leaf spring 300d of Choi, disclosed as various forms of leaf springs, are understood to have a design which, upon absorbing a predetermined amount of force, will elastically deform. As the shape of the leaf spring 300d in Fig. 16 of Choi has the same configuration as the claimed swelling relief unit, upon sufficient force the leaf spring will deform such that the convex portion will invert to a concave shape.
The Examiner invites applicant to provide that that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.
Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).
As to claim 3, the battery module comprises a plurality of swelling relief units 300d which are disposed to face both outermost battery cells of the cell stack (Figs. 15-16, for example).
As to claim 5, the convex portion of the swelling relief unit 300d is made of an elastic material (para. [0076], for example).
As to claim 10, the battery module 1 is further implemented in a battery pack (title, para. [0001] for example).
As to claim 11, a vehicle comprising the battery pack of claim 10 is disclosed by Choi (para. [0001], for example).
Choi teaches of the convex portion central to flat ends where the central portion only contacts the center portion of the outermost battery cell.
As to claim 1, Choi does not appear to teach of the flat portions facing the pair of end portions of the outermost battery cell where electrode tabs are located.
While Choi does not teach that the flat portions face the end portions where electrode terminals are located (short sides), such a modification would have been obvious to one of ordinary skill in the art for at least the following reasons.
Choi teaches of a leaf spring provided between the housing and adjacent outermost battery cells. Choi further teaches that in the embodiment of Figs. 15-16, the leaf spring has the same general shape as the swelling relief unit of the claims (identical flat portions and convex portion). In this embodiment the flat portions are located at the long sides of the outermost battery cell rather than the short sides where electrode tabs are located.
Choi further teaches the buffering member is not limited only to those embodiments described but can be in various forms (para. [0101]).
In comparing the buffering member of the embodiment in Figs. 15-16 to the swelling relief unit of the claims, the difference above would be readily achieved from Choi as a matter of rearrangement of parts / design choice. Rearranging the buffering member of Choi in Figs. 15-16 where the flat portions are arranged on long sides of the outermost battery cells (where the electrode tabs do not reside) to the short sides of the outermost battery cells where electrode tabs are located would have been a matter of design choice or rearrangement of the buffering member where either configuration would have provided the same effective benefits and functionality of the buffering member of Choi. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice or mere rearrangement of a part).
In addition, there does not appear to be any change in function or mode of operation of the buffering plate or claimed swelling relief unit based on the orientation of these elements in relation to the outermost battery cell and changing orientation. There is no evidence that this orientation yields unexpected results in the instant claims compared to that of Choi.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the orientation of the buffering plate to any number of suitable alternative arrangements including arranging the buffering plate (claimed swelling relief unit) such that the flat portion faces the pair of end portions on which electrode tabs are located as it appears that there does not appear to be any change in function or mode of operation of the buffering plate or claimed swelling relief unit based on the orientation of these elements in relation to the outermost battery cell and changing orientation. Additionally, there is no evidence that this orientation yields unexpected results in the instant claims compared to that of Choi and legal precedent exists regarding rearrangement of parts or changes in design as a choice In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (U.S. Patent Application Publication No. 2018/0175343) as applied to claim 1 above, and further in view of Kong (U.S. Patent Application Publication No. 2015/0303425).
Choi does not teach of an adhesive interposed between two adjacent battery cells (claim 7) where the adhesive is applied to entire facing surfaces of the two adjacent battery cells (claim 8).
Kong discloses a stack of battery cells 10 wherein an adhesive layer 20 is interposed between each adjacent set of cells and applied to entire facing surfaces of the adjacent cells to effectively enhance adhesion between cells and prevent electrical sparks or short-circuiting (Figs. 1-3).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the battery module of Choi by providing an adhesive interposed between two adjacent battery cells where the adhesive is applied to entire facing surfaces of the two adjacent battery cells as taught by Kong since it would have provided the predictable benefits of enhanced adhesion between cells and prevented electrical sparks or short-circuiting.
Response to Arguments
Applicant's arguments filed January 28, 2026 have been fully considered but they are not persuasive.
As to Choi, Applicant argues that Choi is silent with respect to the claimed swelling relief unit’s ability to deform into a concave shape when a predetermined pressure of higher is applied thereto.
The Examiner respectfully disagrees.
As previously discussed, Choi does teach these features with sufficient specificity as discussed above and as noted herein:
Choi teaches of a swelling relief unit swelling relief unit 300d facing an outermost battery cell of the cell stack, wherein the swelling relief unit comprises a flat portion 310d and a convex portion 320d
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As can be seen above and further in the application of the member above in a battery pack below, the member includes a convex portion 320d located only at a central part of the flat portion.
See annotated Fig. 15 below with respect to the swelling relief unit 300d of Choi.
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In this longitudinal direction it is evident that the swelling relief unit above shows a convex portion 320d only in a central portion along this longitudinal direction with lateral flat portions 310d on both ends of the swelling relief unit of Choi.
Therefore, Choi still appears to teach of the convex portion of the member above located only at a central part of the plat portion in a longitudinal direction of the member with sufficient specificity and the rejection stands.
As shown above member 300d has the following general shape:
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In addition member 300d, is disposed between the side covers 230 and 250 and provides a pressing force between the side covers 230 and 250 of the housing and outermost battery cell 100 of the cell stack.
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The member is provided between a stack of battery cells and an interior surface of the battery pack enclosure to compensate for swelling phenomenon that occurs in batteries (paras. [0006], [0029], [0104], for example).
The member is further described as various forms of a leaf spring (para. [0013], prior art claim 1). A leaf spring of various designs would be understood to function in similar fashion as discussed below.
The member 300d of Choi, disclosed as various forms of leaf springs, are understood to have a design which, upon absorbing a predetermined amount of force, will elastically deform. As the shape of the leaf spring 300d in Fig. 16 of Choi has the same configuration as the claimed swelling relief unit, upon sufficient force the leaf spring will deform such that the convex portion will invert to a concave shape as the leaf spring, which is elastic, would expectedly deform in such manner.
The convex shape leaf spring of Choi has the same design as the instant invention.
Comparing this design above to the swelling relief unit 1500 of the instant invention is as follows:
Choi –
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Instant invention -
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The two units above appear to have the same shape – Choi flat end portions 310d around a center concave portion 320d and the instant invention having flat end portions 1520 around a center concave portion 1510. These elements are further provided in the same place in relation to a stack of battery cells, adjacent to an outermost cell of the stack where the concave portions contact only a center portion of the outermost battery cell and the flat portions reside along edge sides. Given the remarkable similarity in design and placement of both Choi and the instant invention, there is a reasonable expectation that both the buffering element of Choi and the swelling relief unit of the claims will expectedly function in the same manner as each other, absent clear evidence to the contrary.
Both the leaf spring of Choi and swelling relief member of the instant invention have the same bowed/curved/convex middle portion with end flat portions. Therefore, the design of the leaf spring Choi appears to be the same as the claimed swelling relief member.
The leaf spring of Choi is further is oriented in the same manner as the instant invention with the central convex portion contacting the stack of battery cells in the battery pack.
Choi:
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Instant invention annotated portion of Fig. 5
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Given the design similarity of the leaf spring of Choi, one would reasonably expect that the leaf spring 300d of Choi would effectively deform in similar fashion as recited in claim 1, absent clear evidence the to the contrary. Therefore, it is held that the swelling relief unit 300d of Choi, having a convex portion 320d located only at a central part of the flat portion of the leaf spring is of a design that is sufficiently configured to deform into a concave shape when a predetermined pressure or higher is applied to the convex portion 320d (e.g. upon swelling of the battery stack).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection.
“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990)
In the case of the instant application the basis for expectation of inherency is that the leaf spring member 300d having the same flat end portions and convex portion pressing against the outermost battery cells of the stack will, upon sufficient force, effectively deform in the same manner as claim 1, absent clear evidence to the contrary.
Furthermore, the invention is to the battery module having a design which is only configured to deform when sufficient pressure is generated. For instances whereby the battery is functioning properly (e.g., when deformation and swelling do not occur), the battery module of Chen has the same swelling relief unit design as in claim 1.
The Examiner invites applicant to provide that that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.
Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).
In addition, there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). MPEP § 2112.
Applicant’s arguments that Choi does not teach of the flat portion face the pair of end portions and the convex portion pressing only the center portion, this argument is not persuasive for the following reasons.
As discussed above, the difference between the buffering plate of Choi and the swelling relief unit of base claim 1 is the relative orientation of the flat portions to the end portions of the outermost battery cell.
Choi teaches of having flat portions at the long sides of the outermost battery cell with the convex portion pressing only at the center portion. In Choi the electrode tabs are not located at the end portions (long sides) of the outermost battery cell but are located at the relative shorter sides of Choi.
Claim 1 has been amended to recite that the flat portions face the end portions on which electrode tabs reside (equivalent to the short sides of Choi). In either design, the buffering plate of Choi and the swelling relief unit of claim 1 provides for localized and limited contact of a convex portion only at the center of the outermost battery cell.
The fact that the flat portions reside at different sides does not appear to provide for any significant unexpected result and reorienting or rearranging the plate where the flat portions face the long sides (Choi) or the sides where the electrode tabs are located (claim 1) would have been of well within the skill of the ordinary worker in the art to provide sufficient contact between the outermost battery cell and the buffering plate/swelling relief unit.
In conclusion, Choi still appears obviate the claimed invention for at least those reasons above and the rejections to Choi stand.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGG CANTELMO whose telephone number is (571)272-1283. The examiner can normally be reached Mon-Thurs 7am to 5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at (571) 272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGG CANTELMO/Primary Examiner, Art Unit 1725