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 .
Election/Restrictions
1. Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/4/2025.
Information Disclosure Statement
2. Multiple of the information disclosure statements fail to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. The documents not considered are struck-through in the corresponding IDS’s. If there is a corresponding US counterpart also cited, then the IDS should reference which document is considered a copy of the foreign patent document.
Moreover, if a document is to be considered, it must actually be cited in the IDS with a corresponding copy if a non-US document. For example, in the IDS filed 8/29/2025, the following is noted (page 2):
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No such JP Office Action is cited in the actual IDS filed 8/29/2025, nor is there any copy of said document provided on 8/29/2025.
Duty of Disclosure, Candor, and Good Faith
3. MPEP 2001 Duty of Disclosure, Candor, and Good Faith
37 C.F.R. 1.56 Duty to disclose information material to patentability
(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b) -(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.
(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the application; and
(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.
(d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
(e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.
MPEP 2001.06(b) Information Relating to or From Copending United States Patent Applications
The individuals covered by 37 CFR 1.56 have a duty to bring to the attention of the examiner, or other Office official involved with the examination of a particular application, information within their knowledge as to other copending United States applications which are "material to patentability" of the application in question. This may include providing the identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee as the current application that disclose similar subject matter that are not otherwise identified in the current application. As set forth by the court in Armour & Co. v. Swift & Co., 466 F.2d 767, 779, 175 USPQ 70, 79 (7th Cir. 1972):
[W]e think that it is unfair to the busy examiner, no matter how diligent and well informed he may be, to assume that he retains details of every pending file in his mind when he is reviewing a particular application . . . [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
See also MPEP § 2004, paragraph 9.
Accordingly, the individuals covered by 37 CFR 1.56 cannot assume that the examiner of a particular application is necessarily aware of other applications which are "material to patentability" of the application in question, but must instead bring such other applications to the attention of the examiner. See Regeneron Pharm., Inc. v. Merus B.V., 144 F. Supp. 3d 530, 560 (S.D.N.Y. 2015), and Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003). For example, if a particular inventor has different applications pending which disclose similar subject matter but claim patentably indistinct inventions, the existence of other applications must be disclosed to the examiner of each of the involved applications. Similarly, the prior art references from one application must be made of record in another subsequent application if such prior art references are "material to patentability" of the subsequent application. See Dayco Prod., 329 F.3d at 1369, 66 USPQ2d at 1808.
4. The following US applications disclose and sometimes claim identical subject matter to the instant application were found during a search by the instant examiner:
18/712,521 (=US 2025/0316785)
18/579,165 (=US 2024/0347810)
18/835,921 (=US 2025/0385391)
The copending applications (two family members) and two others that were cited by way of an issued Office Action in the IDS’s of the instant application include:
17/944,452 =(US 2023/0111495)
17/944,431 (=US 2023/0113945)
17/944,768 (=US 2023/0113884)
17/944,846 (=US 2023/0113374)
All of these applications should be disclosed to the Examiner of each of the involved applications. Similarly, the prior art references from one application must be made of record in another subsequent application if such prior art references are "material to patentability" of the subsequent application.
Claim Interpretation
5. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
6. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are (claim 1):
“a side structure unit configured to accommodate the cooling unit and the plurality of battery cells, where opposite ends of the cooling unit are fixed to the side structure unit.”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
7. 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.
8. Claim 2, and thus dependent claims 3-10; claim 3; claim 5, and thus dependent claim 7, claim 10; claim 16; and claim 17 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.
Claim 2 recites “a cooling fluid inlet/outlet portion..” It is not clear whether this entity is required to simultaneously be both of an inlet and outlet portion, or just one of an inlet or outlet portion given the meaning of “inlet/outlet” is not clear.
Claim 3 recites “an outer surface of the plurality of battery cells...” which is not clear given there is not one outer surface of the plurality of battery cells. It appears this should be corrected to “a respective outer surface of each of the plurality of battery cells…”
Claim 5 utilized the relative term of “near” which renders the claim indefinite given it is term of degree with no defined meaning within the instant application or a standard definition in the prior art. It is thus not clear at what distance something is considered “near” versus not to meet the claim. Claim 5 also utilizes future tense language such as “to be provided” and “to be spaced” which brings into question as to whether the construct is required or is a future configuration also rendering the claim indefinite.
Claim 10 recites in part, “one surface of the plurality of battery cells” which is not clear given there is not one surface of the plurality of battery cells. It appears a similar correction as claim 3 is needed in terms of using “respective” and clearly identifying that this is for each of the plurality of battery cells.
Claim 16 recites “approximately perpendicular” with the use of “approximately” rendering the claim indefinite given it is term of degree with no defined meaning within the instant application or a standard definition in the prior art. Accordingly, it is not clear at what angle something is considered “approximately perpendicular” versus when it is not considered “approximately perpendicular.”
Claim 17 recites:
“…wherein the plurality of battery cells are in compression in a height direction of a cylindrical can of each of the plurality of battery cells...”
This is ambiguous functional language as there is not a clear cut indication of the scope of the subject matter covered by the claim, the boundaries are not well-defined as the claim language only states a problem solved or result obtained, and one or ordinary skill in the art would not know from the claim terms what structure(s) is/are encompassed by the claim.
As detailed in MPEP 2173.05(g), Examiners should consider three factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim, (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained, and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim.
The language of the battery cells are in compression in the direction defined is simply a result obtained, wherein one of ordinary skill in the art would now know from the claim terms what structure(s) and/or structural requirements are encompassed by the claim such that there is not a clear cut indication of the scope of the subject matter covered by the claim.
During prosecution, applicant may resolve the ambiguities of a functional limitation in a number of ways including the following (MPEP 2173.05(g)):
(1) "the ambiguity might be resolved by using a quantitative metric (e.g., numeric limitation as to a physical property) rather than a qualitative functional feature" (see Halliburton Energy Servs., 514 F.3d at 1255-56, 85 USPQ2d at 1663);
(2) applicant could demonstrate that the "specification provide[s] a formula for calculating a property along with examples that meet the claim limitation and examples that do not" (see id. at 1256, 85 USPQ2d at 1663 (citing Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1341, 65 USPQ2d 1321, 1326 (Fed. Cir. 2003)));
(3) applicant could demonstrate that the specification provides a general guideline and examples sufficient to teach a person skilled in the art when the claim limitation was satisfied (see Marosi, 710 F.2d at 803, 218 USPQ at 292); or
(4) applicant could amend the claims to recite the particular structure that accomplishes the function.
It would appear that only options 3 and 4 above would be applicable in this scenario, wherein the Examiner cannot find an explanation or guideline or any structure in the instant application specification that achieves the functionality claimed. Accordingly, there is not a general guideline or examples that teaches a person skilled in the art when the claim limitation is satisfied, and there is no structure taught that accomplishes the function.
Furthermore regarding claim 17, the meaning of “in compression” is not clear.
Appropriate correction and/or explanation is required.
Claim Rejections - 35 USC § 102
9. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
10. Claims 1, 15, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (US 2019/0148681).
Regarding claim 1, Park teaches a battery module 200 (“battery pack”) (Figs. 2-8; entire disclosure relied upon), comprising:
a plurality of battery cells 100;
a bus bar assembly 250/230 having a first side and a second side, the second side of the bus bar assembly provided to a first side of the plurality of battery cells and electrically connected to the plurality of battery cells (Fig. 2; P129-133);
a heat pipe 260 used for cooling (“a cooling unit”) disposed at1 the second side of the bus bar assembly 250/230 and arranged between the plurality of battery cells 100 along a longitudinal direction of the battery pack (Figs. 2-5; P12, 18, 71-78); and
a module housing 210 (or just 210A, 210B, or the collective whole) (“a side structure unit configured to accommodate the cooling unit 260 and the plurality of battery cells 100”), wherein opposite ends of the cooling unit are fixed to the module housing 210 (or 210A, 210B) (“side structure unit”) (see Figs. 7-8 in which the module housing 210A and 210B includes respective concave grooves 213A, 213B such that the heat pipe 260 is inserted through the inside thereof and fixed thereto – P106-112).
Regarding claim 15, Park teaches a battery pack case structure (tray 270- Figs. 10-11), comprising at least one battery module 200 (“battery pack”) according to claim 1.
Regarding claim 17, Park teaches wherein the plurality of battery cells are “in compression” in a height direction of a [respective] cylindrical can of each of the plurality of battery cells (i.e., they are held by upper and lower surfaces of 210A, 210B of module housing 210 as illustrated). Alternatively, the battery cells composed of a cylindrical battery can 120, an electrode assembly held therein and the upper surface (P62-64) and intrinsically sealed is thus “in compression” in a height direction as the cell is sealed so that the contents therein do not interact with the environment or the air. The claim has been interpreted as best as possible in view of the rejection under 35 U.S.C. 112(b)/second paragraph applied against this claim.
11. Claims 1-7, 10-11, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sekine et al. (JP 2012-009388) (machine translation provided).
Regarding claim 1, Sekine teaches a battery pack (Figs. 2-3; entire disclosure relied upon), comprising:
a plurality of battery cells 8 (P25; Fig. 3);
a bus bar assembly 6 having a first side and a second side, the second side of the bus bar assembly provided to a first side of the plurality of battery cells 8 and electrically connected to the plurality of battery cells 8 (Fig. 3; P27-28);
a cooling unit 3 disposed at the second side of the bus bar assembly 6 and arranged between the plurality of battery cells 8 along a longitudinal direction of the battery pack (Fig. 3); and
a side structure unit (2; 4; or 2/4) configured to accommodate the cooling unit 3 and the plurality of battery cells 8 (Figs. 2-3), wherein opposite ends of the cooling unit 3 are fixed to the side structure unit (2; 4; or 2/4) (via bolts 9 – P26) (entire disclosure relied upon).
Regarding claim 2, Sekine teaches wherein the cooling unit 3 includes:
a cooling tube [either the tube-like frame 3 or the pipe 5] having a predetermined length along the longitudinal direction of the battery pack and disposed between the plurality of battery cells (Figs. 3);
a cooling channel provided in the cooling tube and configured to circulate a cooling fluid for cooling the plurality of battery cells (P32); and
a cooling fluid inlet/outlet portion connected to the cooling tube to communicate with the cooling channel (P32; 36-37; entire disclosure relied upon).
Regarding claim 3, Sekine teaches wherein the cooling tube 3 is formed to have a shape corresponding to an outer surface of the plurality of battery cells, which face the cooling tube, in a width direction of the battery pack (Fig. 3).
Regarding claim 4, Sekine teaches wherein the cooling tube 3 includes a plurality of convex portions and concave portions, which are formed convexly and concavely in the width direction of the battery pack and alternately arranged along the longitudinal direction of the battery pack (Fig. 3).
Regarding claim 5, Sekine teaches wherein the cooling channel includes:
at least one upper channel disposed at an upper side of the cooling tube to be provided near the bus bar assembly;
at least one lower channel disposed at a lower side of the cooling tube to be spaced apart from the at least one upper channel; and
a connection channel configured to connect the at least one lower channel and the at least one upper channel (see embodiments shown in Figs. 9, 11, and 12).
Regarding claim 6, Sekine teaches wherein the side structure unit 4 has a cooling unit insert groove provided at opposite ends of the side structure unit 4 to fix the opposite ends of the cooling unit 3 respectively (via bolts 9 which are screwed into the support frame 4) (P26).
Regarding claim 7, Sekine teaches wherein the cooling tube of the cooling unit is interposed between the plurality of battery cells arranged in two front and rear rows along the width direction of the battery pack (Figs. 3-4).
Regarding claim 10, Sekine teaches wherein at least one end of the side structure unit (2 or 4) is formed shorter than one surface of the plurality of battery cells in contact with the cooling tube(Fig. 3; multiple interpretations).
Regarding claim 11, Sekine teaches the battery pack further comprising:
a filling member (resin sheet) filled in a space between the cooling unit 3 and the plurality of battery cells 8 (P30).
It is noted that the claim language of “filled in” is product-by-process language evaluated solely for the implicit or explicit structure provided to the final product claim. In this instance, so long as there is a filling member” in the location claimed, all of the structure provided by the language is considered met.
Regarding claim 15, Sekine teaches a battery pack case structure 10, comprising at least one battery pack according to claim 1 (Fig. 15)..
Regarding claim 16, Sekine teaches a vehicle comprising: the battery pack case structure according to claim 15 (Figs. 1, 15),
wherein a longitudinal direction of the at least one battery pack (see Fig. 15 with input/output terminals in the shown location) is arranged approximately perpendicular to a length direction of the vehicle (211 is the battery pack and its input/output terminals are illustrated – Fig. 1) so that the module housing 210 (“side structure unit”) is considered capable of providing protection to the plurality of battery cells during a front or rear collision of the vehicle.” It is noted that the italicized language is considered purely functional language such that if the structural aspects of the claim are met (i.e., the lines 3-4 of claim 16), the feature will be considered to naturally flow from this structure.
Regarding claim 17, Sekine teaches wherein the plurality of battery cells are “in compression” in a height direction of a cylindrical can of each of the plurality of battery cells given side plates 6c and 7a are attached to both side surfaces of the frames 2, 4 and cooling frame 3 by bolts such that “both end portions in the axial direction of the unit cells are supported by the side plates 6a and 7a” (P27).
12. Claims 1-3, 5, 7, 15-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yoon et al. (WO 2024/144159) (copy provided and using EP 4,553,989 as an English language translation with a copy provided).
The reference is an intervening reference between the filing date of the US instant application (17/944,672) and the document to which foreign priority is claimed (KR 10-2021-0135354 – filing date of 10/21/2021) which is not in the English language. To perfect and be accorded the effective filing date of the non-English language foreign application is a manner in which to obviate the applied references as being considered “prior art.” In order to do so, an English language translation of the non-English language foreign application KR 10-2021-0135354) is required, wherein the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216. See also MPEP 2304.01(c).
Alternatively, the applied reference has a common inventor and a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, Yoon teaches a battery pack 10 (Figs. 1-3), comprising:
a plurality of battery cells 100;
a bus bar assembly (210, wires “W”) having a first side and a second side, the second side of the bus bar assembly provided to a first side of the plurality of battery cells and electrically connected to the plurality of battery cells;
a cooling unit 220/300 disposed at the second side of the bus bar assembly and arranged between the plurality of battery cells along a longitudinal direction of the battery pack; and
a side structure unit 400 configured to accommodate the cooling unit (220/300) and the plurality of battery cells 100, wherein opposite ends of the cooling unit are fixed to the side structure unit (entire disclosure relied upon).
Regarding claims 2-3, 5, 7, 15-16, Yoon teaches all of the structure claimed (see Figs. 1-4; entire disclosure relied upon).
Claim Rejections - 35 USC § 103
13. 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.
14. Claims 2-11 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2019/0148681) as applied to at least claim 1 above, and further in view of Sekine et al. (JP 2012-009388) (machine translation provided).
Regarding claim 2, Park teaches wherein the heat pipe 260 (“cooling unit”) includes:
a cooling tube (outer wall 262 – see Figs. 3-4) having a predetermined length along the longitudinal direction of the battery pack and disposed between the plurality of battery cells (Figs. 2, 5, 7-8); and
a cooling channel provided in the cooling tube and configured to circulate a cooling fluid 264 for cooling the plurality of battery cells (Figs. 3-4).
The heat pipe 260 (“cooling unit”) of Park is configured to allow the coolant 264 to vaporize therein and the heat dissipated to the outside (71) versus a construct in which a cooling fluid inlet/outlet portion is connected to the cooling tube to communicate with the cooling channel.
In the same field of endeavor, Sekine teaches analogous art of a battery pack having all of the same structure as Park and within the claims (see rejection above under 35 U.S.C. 102(a)(1) applied to at least claims 1-2 using Sekine as an anticipatory reference), wherein Sekine teaches that the analogous cooling unit (cooling frame 3 with coolant pipe 5 therein) is configured to have a coolant tube, a coolant channel, as well as a coolant inlet/outlet (i.e., openings at each end of the coolant pipe 5) to allow a circulating coolant fluid to flow therethrough (Figs. 2-4; entire disclosure relied upon).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to configure the heat pipe 260 (“cooing unit”) of Park such that its respective ends are open and allowed coolant to flow therethrough given Sekine teaches an analogous construct and that it is a known alternative to have the analogous heat pipe 5 open at both ends (“a cooling fluid inlet/outlet portion”) with liquid coolant circulated therethrough as a known, alternative means by which battery cells can be cooled to thereby provide the predictable result of increased cooling given liquid cooling is more effective than vaporization/dissipation through the air, especially over longer periods of time once the vaporization has been exhausted and there is no additional cooling effect to be achieved.
Regarding claim 3, Park teaches wherein the cooling tube is formed to have a shape corresponding to a [respective] outer surface of each of the plurality of battery cells, which face the cooling tube, in a width direction of the battery pack (see Figs. 2-6).
Regarding claim 4, Park teaches wherein the cooling tube includes a plurality of convex portions and concave portions, which are formed convexly and concavely in the width direction of the battery pack and alternately arranged along the longitudinal direction of the battery pack (see Figs. 2-6).
Regarding claim 5, Park fails to teach the cooling channel features as defined; however, Sekine teaches that in addition to a singular channel construct (Fig. 4), it is known to configure the coolant channel in the manners illustrated in Figs. 9, 11, 12 which each individually include a cooling channel including:
at least one upper channel disposed at an upper side of the cooling tube to be provided near the bus bar assembly;
at least one lower channel disposed at a lower side of the cooling tube to be spaced apart from the at least one upper channel; and
a connection channel configured to connect the at least one lower channel and the at least one upper channel (see Figs. 9-11).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to configure the cooling channel of Park with the design features taught by Sekine in order to achieve a desired degree and distribution of cooling via the various designs taught by Sekine (see Figs. 4, 9, 11 and 12).
Regarding claim 6, Park teaches wherein the module housing 210 (“side structure unit”) has a cooling unit insert groove 215, 215 (Figs. 1-2) provided at opposite ends of the side structure unit to fix the opposite ends of the heat pipe 260 (“cooling unit”) respectively (P110); alternatively, the “cooling unit insert groove” could be concave grooves 213A, 213B that the heat pipe 260 (“cooling unit”) is inserted through the inside thereof and fixed thereto (P106-112).
Regarding claim 7, Park teaches wherein the cooling tube of the heat pipe 260 (“cooling unit”) is interposed between the plurality of battery cells arranged in two front and rear rows along the width direction of the battery pack (Figs. 2, 5, 6).
Regarding claim 8, Park teaches wherein the opposite ends of the heat pipe 260 (“cooling unit”) are inserted into the cooling unit insert groove provided at the opposite ends of the side structure unit (either interpretation; Figs. 2, 5, 6-8).
Regarding claim 9, Park teaches wherein the cooling fluid inlet/outlet portion (i.e., this would located at the end of the pipe) is disposed to protrude out of the module housing 210 (“side structure unit”) (see Figs. 1, 5).
Regarding claim 10, Park teaches wherein at least one end of the module housing 210 (=210A, 210B) (“side structure unit”) is formed shorter than one surface of the plurality of battery cells in contact with the heat pipe 260 (“cooling tube”) (see Figs. 2, 7-8; many interpretations possible).
Regarding claim 11, Park fails to disclose the battery pack further comprising:
a filling member filled in a space between the heat pipe 260 (“cooling unit”) and the plurality of battery cells.
It is noted that the claim language of “filled in” is product-by-process language evaluated solely for the implicit or explicit structure provided to the final product claim. In this instance, so long as there is a filling member” in the location claimed, all of the structure provided by the language is considered met.
Sekine teaches it is a known technique to provide a resin-sheet (“filling member”) covering the cylindrical outer peripheral surface of the unit cell 8 having thermal conductivity and electrically insulating properties in order that the heat can be easily transferred while insulating the cells (P30). The resin sheet 8 is located between the analogous cooling unit 3 and the plurality of battery cells.
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to provide a resin-sheet 8 (“filling member”) covering the
the cylindrical outer peripheral surface of the cells of Park and located between the heat pipe 260 (“cooling unit”) and the plurality of battery cells given Sekine teaches such a construct and technique are known and provide the predictable result of allowing easy heat transfer while electrically insulating the cells from the surrounding parts.
Regarding claim 16, Park teaches a device comprising the battery pack case (claim 13), but does not specify a vehicle or that, “wherein a longitudinal direction of the at least one battery pack is arranged approximately perpendicular to a length direction of the vehicle so that the side structure unit provides protection to the plurality of battery cells during a front or rear collision of the vehicle.”
Sekine teaches analogous art of a battery pack case structure comprising at least one batter pack (Fig. 15) that is comprised by a vehicle (Fig. 1), wherein a longitudinal direction of the at least one battery pack (see Fig. 15 with input/output terminals in the shown location) is arranged approximately perpendicular to a length direction of the vehicle (211 is the battery pack and its input/output terminals are illustrated – Fig. 1) so that the module housing 210 (“side structure unit”) is considered capable of providing protection to the plurality of battery cells during a front or rear collision of the vehicle.” It is noted that the italicized language is considered purely functional language such that if the structural aspects of the claim are met (i.e., the lines 3-4 of claim 16), the feature will be considered to naturally flow from this structure.
15. Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2019/0148681) as applied to at least claim 1 above, and further in view of Flannery et al. (US 2022/0263159).
Regarding claim 11, Park fails to disclose the battery pack further comprising:
a filling member filled in2 a space between the cooling unit and the plurality of battery cells.
In the same field of endeavor, Flannery teaches analogous art of a battery pack 21 comprising a plurality of battery cells 30 (Figs.6, 9, 18-22), a busbar assembly (P46, 237, 261, 277-281) a cooling unit 50/230 (P3, 15-20; Figs. 9-22), and a “side structure unit” (at least one of upper and/or lower clamshells 20, 80 (P237; Figs. 2-3); and further teaches it is a known technique to provide “a filling member” (potting means that comprises a foam, a thermosetting plastic, silicone rubber gel or epoxy resin- P59-61) filled in (it is poured into the pack in a liquid state and sets- P68, 170-171; Fig. 23) a space between the cooling unit 50/230 and the plurality of battery cells (P73-80, 157, 179-180).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to provide the potting means (“filling member”) filled in a space between the cooling unit 260 and the plurality of battery cells 100 of Park given Flannery teaches the construct and technique are known in the prior art, with Flannery teaching that the construct provides the predictable, advantageous results of preventing a thermal event from spreading throughout the pack (P4), providing a battery pack that is fire-retardant (P6), providing a supportive potting means to both the cells and duct that acts as an adhesive and secures the components in position (P8, 74-80, 277).
It is noted that in addition to the potting means “filling member,” Flannery also describes that there can be a thermally conductive filler materials such as a conductive paste or adhesive between the sides surfaces of the one or more cells and the duct (“cooling unit”) (P30) (i.e., an alternative option for the claimed “filling member”), the use thereof in the construct of Park providing the predictable results increasing the thermally conduction between the cells and the cooling unit of Park (P30).
Regarding claim 12, Park as modified by Flannery teaches wherein the filling member is made of a potting resin (P61, 68).
Regarding claim 13, Park as modified by Flannery teaches wherein the filling member is made of a silicon resin (P61).
Regarding claim 14, Park as modified by Flannery teaches wherein the filling member (potting means) is filled in2 the bus bar assembly to cover a first side of the bus bar assembly (i.e., by way of the potting means itself or the potting resin bonding the outering casing to the clamshells 20, 80) (P46, 184-188, 237, 261, 277, 281-282).
Double Patenting
16. 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.
7. Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over each of:
Claims 1-3, 7-20, and 22-27 of copending Application No. 17/944,452 (reference application);
Claims 1-13, 15-21 of copending application No. 17/944,768 (reference application); or
Claims 1-22 and 24 of copending application 17/944,846 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because all of the subject matter of the reference application claim set (each one identified above) is found in the instant claim set, and the instant claim set does not recite any additional subject matter not found in the reference application claim set.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
18. Claims 1-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,463,283 (=17/944,431). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the subject matter of the '283 claim set is found in the instant claim set, and the instant claim set does not recite any additional subject matter not found in the '283 claim set.
Conclusion
19. The prior art made of record is considered pertinent to applicant's disclosure:
Each of the following references individually teaches all of the structure set forth in at least claim 1:
Flannery et al. (US 2022/0263159); Hirsch et al. (US 2020/0036062); German (US 2009/0301700); and Morimitsu et al. (US 2018/0366701).
Regarding the latter (Morimitsu et al. (US 2018/0366701)) – with respect to at least claims 1 and 11-14, identical claims to those identified were presented in 17/944,452 (since amended ) and rejected in the Non-Final Rejection Office Action mailed 4/24/2025 (copy cited and provided by Applicant), the rejection made on pages 4-7 of said Office Action applicable to these claims in the same manner as outlined in said Office Action.
Kwag et al. (US 2021/0074965) teaches the use of potting resin over a busbar assembly (full disclosure).
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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/AMANDA J BARROW/ Primary Examiner, Art Unit 1729
1 “at” is a broad preposition defined as “in, on, or near”
2 It is noted that the claim language of “filled in” is product-by-process language evaluated solely for the implicit or explicit structure provided to the final product claim. In this instance, so long as there is a “filling member” in the location claimed, all of the structure provided by the language is considered met, regardless of the process by which it was achieved.