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 .
Summary
This is the initial Office Action based on Application 18/028,083 and is in response to an Request for Continued Examination filed 07/09/2026.
Claims 1-9 are previously pending, of those claims, claim 1 has been amended. All amendments have been entered. Claims 1-9 are currently pending and have been fully considered.
Specification
The disclosure is objected to because of the following informalities: Marked paragraphs [00052], [00085], and [00136] are blank.
Appropriate correction is required.
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/034,953 (reference application) in view of STEPHENS (US 2018/0337377 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because Application ‘953 claims a battery case that includes a case body, cover, and bottom plate, a side frame, a mounting frame, and a reinforcement material passing at least through closed sections of inner side wall of the side frame. Patent ‘953 does not explicitly claim both ends of the reinforcing member contact with the mounting frame. STEPHENS teaches a battery tray 510 which is taken to be the claimed battery case, and includes support structure 524 and tub component 520 for supporting and containing the battery modules 514 (paragraph 0076). The tub component 520 then includes a wall portion 530 that extend upward from the floor portion of the tub component (paragraph 0077). The wall portion 530 then is taken to be analogous to the claimed side frames and includes an inner and outer sidewalls (see figures 21-22). The support structure 524 including the longitudinal members 550 are taken to be the claimed mounting frame coupled to the outer sidewall of the side frame (see Figures 21-23 and paragraph 0078). The support structure includes cross members 580 (paragraph 0076) which is disposed on the floor panel 584 (paragraph 0079). The cross members are inserted into the side frames, and the end is in contact with the mounting frame by passing through the inner and outer sidewall of the side frame (see Figures 21-22). The cross members include at least the both ends in contact with the mounting material, 550, and pass through inner and outer sidewalls of the side frames, being the wall portions 530 (see Figure 22).
At the time the invention was filed one having ordinary skill in the art would have been motivated to have the ends of the reinforcing material be in contact with the mounting frame as taught by STEPHENS for Application ‘953 as this is a combination of known prior art elements and would have achieved predictable results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see pages 4-7 of Applicant Arguments/Remarks, filed 07/09/2026, with respect to the 35 U.S.C. 102 rejection of claim 1 in view of STEPHENS have been fully considered and are persuasive. The 35 U.S.C. 102 rejection of claim 1 in view of STEPHENS has been withdrawn.
Applicant has amended the claim to overcome the rejection.
Applicant’s arguments, see page 7 of Applicant Arguments/Remarks, filed 07/09/2026, with respect to the rejection(s) of claim(s) 1-9 under nonstatutory obviousness-type double patenting in view of copending application 18/034,953 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Copending application ‘953 and STEPHENS.
Applicant argues that claim 1 requires both ends of the reinforcing material to be in contact with the mounting frame by passing through both the inner side wall and the outer side wall of the side frame, and that the side frame has at least one closed cross-section. The Examiner notes that Application ‘953 claims the side frame has at least one closed section. Then new grounds of rejection have been made in view of STPHENS to address the amended claim limitations.
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: Applicant’s Arguments/Remarks filed 07/09/2026 with respect to how the claim amendments overcome the teachings of STEPHENS, and the other prior art of record were found to be persuasive. Further the arguments that the claimed configuration 1 provides significant advantages as outlined in page 6 of Applicant Arguments/Remartks filed 07/09/2026 were found to be persuasive.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN G JELSMA whose telephone number is (571)270-5127. The examiner can normally be reached Monday through Friday 9:00 AM to 4:00 PM EST.
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, Niki Bakhtiari can be reached at (571)272-3433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN G JELSMA/Primary Examiner, Art Unit 1722
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