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
The amendment filed on 12/16/2025 has been entered. Claim 1 has been amended and Claims 1-12 are pending.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 6-10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tsurumaki et al. (JP2016110881A -Machine Translation), hereinafter “Tsurumaki” in view of Kobayashi et al. (JP 2016062757 A - Machine Translation), hereinafter “Kobayashi”. Tsurumaki et al. and Kobayashi et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely venting battery modules.
In regard to Claim 1, Tsurumaki et al. discloses a battery module comprising: a battery cell stack including a plurality of battery cells, a module frame accommodating the battery cell stack (Tsurumaki, Abstract), a venting part formed on one side plate of the module frame and wherein the venting part comprises an inflow port and a discharge port discharging gas introduced through the inflow port (Tsurumaki, Figure 1 (27, 28), Paragraph [19]). Tsurumaki et al. also discloses the inflow port and the discharge port of the venting part are spaced apart from each other in a longitudinal direction of the one side plate (Tsurumaki, Figure 1 (27, 28)). However, Tsurumaki et al. fails to explicitly disclose the inflow port and discharge port are spaced apart such that an imaginary straight line connecting them forms an angle to the longitudinal direction of the one side plate.
Kobayashi et al. discloses a battery module comprising: a battery cell stack including a plurality of battery cells; a module frame accommodating the battery cell stack; and a venting part formed on one side plate of the module frame, wherein the venting part comprises an inflow port and a discharge port discharging gas introduced through the inflow port (Kobayashi, Abstract).
Kobayashi et al. also discloses a preferred embodiment wherein the inflow port and discharge port are spaced apart such that an imaginary straight line connecting them forms an angle to the longitudinal direction of the one side plate (See annotated Figure 16). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide an inflow port and discharge port formed at an angle as taught in Kobayashi et al. as doing so would give the skilled artisan the reasonable expectation of success and as doing so would amount to nothing more than a variation of it for use in the same field based on design incentives or other market forces, as the variations are predictable to one of ordinary skill in the art.
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Annotated Figure 16
In regard to Claims 6-7, Tsurumaki in view of Kobayashi et al. discloses the battery module of claim 1. Tsurumaki et al. also discloses wherein: the venting part has a hole structure, having an inclined structure, and wherein the venting part has a hole structure formed in an upper side plate of the module frame, while the hole structure obliquely penetrates the upper side plate (Tsurumaki, Figures 4, 5, 7).
In regard to Claim 12, Tsurumaki in view of Kobayashi et al. discloses the battery module of claim 1. Tsurumaki et al. also discloses a battery pack comprising the battery module of claim 1 (Tsurumaki, Abstract, Figure 1).
In regard to Claims 8-9, Tsurumaki et al. in view of Kobayashi discloses the battery module of claim 1. Tsurumaki et al. also discloses wherein: the venting part comprises the inflow port formed on the one side plate of the module frame and faces the battery cell stack, and the discharge port discharging the gas introduced through the inflow port, wherein the one side plate is an upper side plate of the module frame and wherein the discharge port is formed in a direction parallel to the inflow port (Tsurumaki, Figures 1, 4 (27, 28)). However, Tsurumaki et al. fails to explicitly disclose wherein the discharge port is formed in a direction perpendicular to the inflow port.
Kobayashi et al. discloses a preferred embodiment wherein the discharge port discharging the gas introduced through the inflow port, wherein the discharge port is formed in a direction perpendicular to the inflow port (Kobayashi, Figure 18 (36), Paragraph [31]).
While Tsurumaki et al. discloses a venting part comprising an inflow port and a discharge port, it fails to explicitly disclose wherein: the venting part comprises a connection part formed between the inflow port and the discharge port and guides the gas introduced through the inflow port in a direction in which the discharge port is located, while an upper surface of the connection part is formed obliquely.
Kobayashi et al. discloses a preferred embodiment wherein the venting part comprises a connection part formed between the inflow port and the discharge port and guides the gas introduced through the inflow port in a direction in which the discharge port is located and an upper surface of the connection part is formed obliquely (Kobayashi, annotated Figure 16). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a discharge part and connection part perpendicular and obliquely formed at the discretion of the skilled artisan, as doing so would amount to nothing more than a variation of the design for use in the same field based on design incentives or other market forces as the variations are predictable to one of ordinary skill in the art.
In regard to Claim 10, Tsurumaki in view of Kobayashi et al. discloses the battery module of claim 1. Tsurumaki et al. also discloses wherein: the venting part comprises the inflow port that is connected to the battery cell stack and is formed in an upward direction on the one side plate of the module frame and the discharge port that is formed in the upward direction and discharges the gas introduced through the inflow port (Tsurumaki, Figures 1, 7 (27, 28)), but fails to explicitly disclose a connection part.
Kobayashi et al. discloses a preferred embodiment wherein a connection part connects the inflow port and the discharge port wherein the one side plate is an upper side plate of the module frame, and wherein the connection part is formed in a direction perpendicular to inflow direction and discharge direction of the inflow port and the discharge port respectively (Kobayashi, Figures 15-16 (34D)). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a connection part perpendicular to the inflow and discharge directions at the discretion of the skilled artisan to guide the flow of gas, as doing so would amount to nothing more than a variation of the design for use in the same field based on design incentives or other market forces as the variations are predictable to one of ordinary skill in the art.
Claims 2-5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Tsurumaki et al. (JP2016110881A -Machine Translation), hereinafter “Tsurumaki” in view of Kobayashi et al. (JP 2016062757 A - Machine Translation), hereinafter “Kobayashi” as applied to claim 1 above, and further in view of Kwak et al. (US 20210074979 A1), hereinafter “Kwak”. Tsurumaki, Kobayashi and Kwak et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely venting battery modules.
In regard to Claims 2-4, Tsurumaki in view of Kobayashi et al. discloses the battery module of claim 1. Tsurumaki et al. also discloses the battery module further comprising a fire extinguishing material layer formed in the venting part and the fire extinguishing material layer includes a fire extinguishing agent, specifically potassium hydrogen carbonate (KHCO3), which undergoes thermal decomposition reaction when fire occurs in the battery module (Tsurumaki, Paragraph [33-34], Figure 7). However, Tsurumaki et al. fails to explicitly disclose a fire extinguishing material layer located between one side plate of the module frame and the battery cell stack. Kwak et al. discloses a first or second fire extinguishing material layer (extinguisher sheet) located between one side plate of the module frame and the battery cell stack, and the fire extinguishing material layer includes a fire extinguishing agent (Kwak, Abstract, Paragraph [0084]).
Kwak et al. also discloses a benefit of this configuration in that it can prevent or reduce heat from spreading to adjacent battery cells by rapidly extinguishing a fire therein and cooling the battery cell(s) when a vent of the battery cell(s) opens (or ruptures) and/or when a fire occurs (Kwak, Paragraph [0030]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a first/second fire extinguishing material layer formed in the vent portion consisting of potassium hydrogen carbonate (KHCO3), as disclosed in Tsurumaki et al. and a first/second fire extinguishing material layer located between one side plate of the module frame and the battery cell stack consisting of the same material (KHCO3), as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Kwak and as doing so would amount to nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
In regard to Claim 5, Tsurumaki in view of Kobayashi et al. and further in view of Kwak et al. discloses the battery module of claim 4. Tsurumaki et al. discloses a first fire extinguishing material layer formed in the venting (Tsurumaki, Figure 7) and Kwak et al. discloses a fire extinguishing material layer formed between one side plate of the module frame and the battery cell stack (Kwak, Abstract) and when combined, by definition the fire extinguishing material layers would be connected to each other. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide first and second fire extinguishing material layers that connect to each other as opposed to layers that do not connect to each other as doing so would be obvious to try and would amount to nothing more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
In regard to Claim 11, Tsurumaki et al. in view of Kobayashi and further in view of Kwak et al. discloses the battery module of claim 2. While Tsurumaki et al. discloses a thermal decomposition reaction of the first fire extinguishing material layer forming a discharge venting passage, it fails to explicitly disclose a discharge passage formed between the one side plate of the module frame and the battery cell stack by a thermal decomposition reaction of the first fire extinguishing material layer.
Kobayashi et al. discloses a preferred embodiment wherein: a discharge passage is formed between the one side plate of the module frame and the battery cell stack by a thermal decomposition reaction of the first fire extinguishing material layer by disclosing the thermal decomposition of material 19 which facilitates the discharge of gas to occur, being guided by the connection part and forming the discharge passage (Kobayashi, Figure 15-16, Paragraphs [19-21]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a discharge passage formed by a thermal decomposition reaction of the first fire extinguishing material layer as taught in Kobayashi, as doing so would give the skilled artisan the reasonable expectation of achieving the preferred function as taught in Kobayashi and as doing so would amount to nothing more than the use of known technique to improve similar devices (methods, or products) in the same way.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection has been changed from a 35 U.S.C. 102 (a)(1) rejection to a 35 U.S.C. 103 rejection relies on a secondary reference not applied in the prior rejection of record of claim 1 (Kobayashi et al.), thus Tsurumaki” in view of Kobayashi teaches all of the limitations of amended claim 1. Further, Applicants’ request that that the double patenting rejection be held in abeyance is acknowledged. However, the double patenting rejection will be withdrawn if and when the requirements are met.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 6-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 8-10 of copending Application No. 18/035,862 (reference application) in view of Kobayashi et al. (JP 2016062757 A - Machine Translation), hereinafter “Kobayashi”. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of the current application is disclosed by claims 1, 8 and 10 of the reference application in view of Kobayashi et al. which discloses a preferred embodiment wherein the inflow port and discharge port are spaced apart such that an imaginary straight line connecting them forms an angle to the longitudinal direction of the one side plate (See annotated Figure 16), which is an obvious variation and would be obvious to the skilled artisan. Claim 2 of the current application is fully disclosed by claims 4-5 of the reference application. Claims 6-7 of the current application are fully disclosed by claims 9-10 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725