CTFR 18/026,487 CTFR 86216 DETAILED ACTION Notice of Pre-AIA or AIA Status 1. Applicant’s response filed 3/6/2026 was received. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 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 Rejections - 35 USC § 112 07-30-01 AIA 2. The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 07-31-01 3. Claim 14 , and thus dependent claims 15 and 17-23, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 14 was amended to recite in part: “wherein the energy storage cells are aligned or positioned with the markings in a non-random arrangement that reduces the temperature responses of the energy storage cells .” There is not a written description of the italicized feature, nor does Applicant provide any citation as to support for the amendments filed in the response filed, wherein per Hyatt v. Dudas , 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007), this is sufficient to make such a rejection: Hyatt v. Dudas , 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.") A word search of the entire US PGPUB looking for the language is reproduced below: PNG media_image1.png 280 523 media_image1.png Greyscale Future claim amendments should be accompanied with comments that specifically point out support for any claim amendments. See MPEP 2163, section 3(b); MPEP § 714.02; and MPEP § 2163.06: With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas , 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) "Applicant should ... specifically point out the support for any amendments made to the disclosure." Although more is not required under the circumstances described above, it is noted first that the amendment no longer corresponds to the original requirement that the energy storage cells are aligned or positioned corresponding to the markings. Instead, the manner in which the claim is written appears to allow the “ in a non-random arrangement ” to modify either of the “the energy storage cells” or “the markings” (the latter of “with the markings” modifying/describing it is the energy storage cells with/including the markings that have this arrangement). The former interpretation that is the energy storage cells being arranged in a non-random arrangement is not a supported construct. Even with an assumption that the intent is that the “aligning or positioning in a non-random arrangement” corresponds to the aligning/positioning of the markings, there is never any description of the italicized portion of the quoted feature, or that the aligning or positioning of the markings in a non-random arrangement is capable of “ reducing the temperature responses of the energy storage cells .” The simple aligning/positioning of cells with such markings in a non-random arrangement would not appear to be capable of achieving the result-obtained, and is never described in the instant application as resulting in “reducing the temperature responses of the energy storage cells.” For example, if one were two take two energy storage cells with respective markings that indicate “a temperature response” of the energy storage cell [note “ a temperature response ” being broad and indicating any variety of temperature responses such as, but not limited to: a marking indicating how high or low the ambient environment temperature the cell may be operated in without reduced output or non-operability; at what temperature the cell will vent gases therein under thermal runaway conditions; or a marking indicating a particular area or hotspot of the cell], and simply align or position said cells and/or markings such that: 1) they each have their respective marking facing in a given direction to provide a “non-random arrangement” of the markings and/or 2) the cells are aligned in a vertical direction to be stacked one on top the other in a “non-random arrangement”), this would not produce the result of “…reducing the temperature responses of the energy storage cells.” In other words, the written description does not describe how aligning or positioning the markings in a non-random arrangement would have any effect on the temperature responses of the energy storage cells. As another example, if the marking is a label for a hotspot area of the cell, the hotspot or localized temperature increase due to the internal structural arrangement of the cell is going to occur regardless of the alignment/positioning of the markings arrangement. The temperature response of the energy storage cell is thus not reduced by the markings being aligned/positioned in a given orientation; the temperature response will occur by way of the cell operating. Additionally, given there is no description of the feature or the structure(s) that achieve the functional feature in the claims or specification, it is in effect an unlimited functional claim limitation that extends to all means or methods of resolving a problem that is not adequately supported by the written description and does not meet the written description requirement of 35 U.S.C. 112(a) (MPEP 2173.05(g); In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167). Appropriate correction is required. 07-30-02 AIA 4. 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. 5. Claim 14 , and thus dependent claims 15 and 17-23, 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. A) Claim 14 was amended to recite in part: “wherein the energy storage cells are aligned or positioned with the markings in a non-random arrangement that reduces the temperature responses of the energy storage cells .” The amendment no longer corresponds to the original requirement that the energy storage cells are aligned or positioned corresponding to the markings. Instead, the manner in which the claim is written appears to allow the “ in a non-random arrangement ” to modify either of the “the energy storage cells” or “the markings” (the latter of “ with the markings ” modifying/describing it is the energy storage cells with/including the markings that have this non-random arrangement). Accordingly, the metes and bounds of the claim are unclear rendering the claim indefinite. B) Claim 14 was amended to recite in part: “wherein the energy storage cells are aligned or positioned with the markings in a non-random arrangement that reduces the temperature responses of the energy storage cells .” The feature has no written description basis as outlined above in the rejection under 35 U.S.C. 112(a)/first paragraph. The issue with respect to indefiniteness is the language 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 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. The structure that is presented within the claim does not produce the result. For example, if one were two take two energy storage cells with respective markings that indicate “a temperature response” of the energy storage cell [note “ a temperature response ” being broad and indicating any variety of temperature responses such as, but not limited to: a marking indicating how high or low the ambient environment temperature the cell may be operated in without reduced output or non-operability; at what temperature the cell will vent gases therein under thermal runaway conditions; or a marking indicating a particular area or hotspot of the cell], and simply align or position said cells and/or markings such that: 1) they each have their respective marking facing in a given direction to provide a “non-random arrangement” of the markings and/or 2) the cells are aligned in a vertical direction to be stacked one on top the other in a “non-random arrangement”), this would not produce the result of “…reducing the temperature responses of the energy storage cells.” In other words, it is entirely unclear how aligning or positioning the markings in a non-random arrangement would have any effect on the temperature responses of the energy storage cells. As another example, if the marking is a label for a hotspot area of the cell, the hotspot or localized temperature increase due to the internal structural arrangement of the cell is going to occur regardless of the alignment/positioning of the markings arrangement. The temperature response of the energy storage cell is thus not reduced by the markings being aligned/positioned in a given orientation; the temperature response will occur by way of the cell operating. Thus, one of ordinary skill in the art would not know from the claim terms what structure is encompassed by the claim to achieve the result obtained such that the well-defined boundaries are not set forth and there is not a clear cut scope of the subject matter covered by the claim. Appropriate correction is required. Prior Art Evaluation 6. Per MPEP § 2143.03: “"All words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). (The Board erred because it ignored claim language that it considered to be indefinite, and reached a conclusion that the claim would have been obvious based only on the rest of the claim.). However, an examiner should not simply speculate about the meaning of the claim language and then enter an obviousness rejection in view of that speculative interpretation. In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (The "considerable speculation" by the examiner and the Board as to the scope of the claims did not provide a proper basis for an obviousness rejection.) When evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter). Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984). MPEP § 2173.06 further notes that when there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. Accordingly, as detailed above, the amendments provide claims that are highly indefinite and require considerable speculation as to the meaning of the non-supported claim language that recites a result-obtained, ambiguous functional feature with no correspondence in the specification, or any structure within the claim or specification that is capable of achieving the result claimed. To demonstrate the confusion further, all of the structure that is explicitly set forth in the claims is met by the prior art previously applied in an anticipation rejection Poirier (US 2016/0011270): Poirier teaches a cell array 24 (“cell arrangement”) (P36; Fig. 2), comprising: a multiplicity of battery cells 26 (“energy storage cells”) (P36; Fig. 2), each energy storage cell having a metallic case or pouch (“a cell housing”) (P38), wherein the cell housing of each energy storage cell (specifically surface 32) has a printed, imprinted, and/or painted label and thermochromic paint 30, 30' (“marking”) (P13, 22, 37-38, 63), that indicates a temperature response of the energy storage cell 26 (P3-5, 37, 44-52), and wherein the energy storage cells 26 are aligned or positioned with the markings in a non-random arrangement (see Fig. 2 in which the markings all line up to be in the same location facing the same direction). Applicant argues that the result-obtained functional limitation by said non-random arrangement of “…that reduces the temperatures responses of the energy storage cells ” is not met by Poirier (pages 5-6 of the instant response), and the Examiner does not find that Poirier meets this result-obtained functional limitation. Accordingly, all of the structure set forth in the claim is met by this prior art reference, yet the result-obtained is not met (as argued by Applicant). Accordingly, it is not clear from the claim terms (or the specification) what is required to meet the ambiguous, result-obtained functional limitation. As pointed out in MPEP 2173.05(g): Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty ") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)). Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167. Accordingly, it is not clear how to proceed with prior art examination given the considerable speculation of the scope of the claim and the structure(s) encompassed by the claim to meet the result-obtained limitation for which no correspondence exists in the instant application. Claim Rejections - 35 USC § 102 7. The rejection of claims 14, 15, and 22 under 35 U.S.C. 102(a)(1) as being anticipated by Poirier (US 2016/0011270) is withdrawn. All rejections pending from this are also withdrawn. See section 6 above for the reasons for withdrawal of the rejection. Allowable Subject Matter 8. The prior indication of claim 19 as being allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims is withdrawn in view of the amendments filed and issues under 35 U.S.C. 112(a)/first paragraph and 35 U.S.C. 112(b)/second paragraph against the claims as presented. Examiner Comment 9. This section was previously provided and not addressed in the instant response: As noted in the restriction/election section, withdrawn claims in a proper subcombination-combination format or methods of making an allowable product claim that is fully commensurate in scope with the elected product, and amended during prosecution concomitantly with the product, will be reconsidered for rejoinder at the time of finding an allowable product claim. Claim 25 recites “a high-voltage store.” High is relative terminology having no objective standard in the prior art and no specific definition accorded to the term in the specification. It creates a 35 U.S.C. 112(b)/indefinite issue (see MPEP 2173.05(b)). It is recommended this is corrected by way of providing objective evidence in the record of the meaning of “high-voltage” in the context claimed, or cancelling the claim. Response to Arguments 10. Applicant's arguments filed 3/6/2026 have been fully considered. The prior art rejection previously made is withdrawn on the basis that the claims are indefinite to the point of precluding prior art examination. Accordingly, the arguments against the prior art are presently moot. Please see section 6 above for further details on prior art analysis. Conclusion 07-40 AIA 11. 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. 12. 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. 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, Ula Ruddock can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /AMANDA J BARROW/ Primary Examiner, Art Unit 1729 Application/Control Number: 18/026,487 Page 2 Art Unit: 1729 Application/Control Number: 18/026,487 Page 3 Art Unit: 1729 Application/Control Number: 18/026,487 Page 4 Art Unit: 1729 Application/Control Number: 18/026,487 Page 5 Art Unit: 1729 Application/Control Number: 18/026,487 Page 6 Art Unit: 1729 Application/Control Number: 18/026,487 Page 7 Art Unit: 1729 Application/Control Number: 18/026,487 Page 8 Art Unit: 1729 Application/Control Number: 18/026,487 Page 9 Art Unit: 1729 Application/Control Number: 18/026,487 Page 10 Art Unit: 1729 Application/Control Number: 18/026,487 Page 11 Art Unit: 1729 Application/Control Number: 18/026,487 Page 12 Art Unit: 1729 Application/Control Number: 18/026,487 Page 13 Art Unit: 1729
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