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 .
Claim Rejections - 35 USC § 112
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.
Claims 1, 3, 4, and 6 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.
In this instance, the limitation “the plurality of battery cells is disposed such that gas generated from the second electrode rises toward the folded portion of the separator” (in independent claims 1 and 4) does not have support in the applicant’s originally filed specification, and thus is considered to be new matter. Throughout the applicant’s specification, it is noted that the “gas” is disclosed as “easily escapes” rather than “rises”, of which the limitation “rises” is not limited to “easily escapes” since “rises toward the folded portion” could also mean that the gas would become “trapped” (and not “escape”) under the folded portion. For purposes of examination, the new matter limitation is broadly interpreted as that gas merely “rises toward the folded portion of the separator”.
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.
Claims 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/204064 A1, of which a complete copy of the Japanese document with a machine translation was provided with the Information Disclosure Statement dated March 7, 2023.
Regarding independent claim 1, WO ‘064 discloses a battery module (abstract; pages 1-5 of translation; and Figures 1-6), in which the battery module (10) includes the following structural features:
a housing member (outer can (11)), as shown in Figure 1;
a plurality of battery cells (electrode assembly (17)) housed in the housing member (11), wherein each of the plurality of battery cells (17) includes a first (positive) electrode (20), a second (negative) electrode (30) having an area similar to or larger than that of the first electrode (20), and a separator (40,41,42) folded and extending through between the first electrode (20) and the second electrode (30) adjacent to each other, wherein the first electrode (20) and the second electrode (30) are arranged in a first direction in each of the plurality of battery cells (17) – see pages 2-5 of translation; and Figures 1-6; and
a folded portion of the separator (41,42) covers a portion of the second electrode (30) on a same side in each of the plurality of battery cells (17), as shown in Figures 5 and 6 (see pages 2-5 of translation), wherein the folded portion of the separator (41,42) covers an upper portion of the second electrode (30) in each of the plurality of battery cells (17), as shown in Figures 5 and 6 (see page 5 of translation).
With regard to the limitation “a second electrode having an area larger than that of the first electrode”, one of ordinary skill in the art would have recognized (as inherent and/or obvious) that a negative electrode is generally larger in area than a positive electrode, as set forth in WO ‘064, for the purpose of reducing lithium plating (potentially leading to thermal runaway) in lithium-ion batteries.
With regard to the new limitation “the plurality of battery cells being arranged in a first direction orthogonal to a vertical direction”, it is noted that selection of orientation to be either “orthogonal” or “parallel” would have been obvious to one of ordinary skill in the art since either orientation would be obvious to try with a finite number of predictable solutions under a reasonable expectation of success, for the purpose of improving heat dissipation of the battery module (see the last paragraph on page 1 of translation).
As to the “new matter” limitation (in the 35 USC 112(a) rejection above) pertaining to “the plurality of battery cells is disposed such that gas generated from the second electrode rises toward the folded portion of the separator”, one of ordinary skill in the art would have recognized that gas would be generated by the battery module (10) of WO ‘064 during operation, in which the plurality of battery cells (17) is disposed such that gas generated from the second electrode (30) would rise toward the (top) folded portion(s) of the separator (41,42), as shown in Figures 5 and 6 (see page 5 of translation).
Regarding claim 3, WO ‘064 discloses that the first electrode (20) is a positive electrode, and the second electrode (30) is a negative electrode (see page 2 of translation; and Figures 2-6).
Regarding independent claim 4, WO ‘064 discloses/suggests the structural features of the battery module of independent claim 1, and further includes the claimed method of using the battery module having the following process steps:
providing a housing member (outer can (11)), as shown in Figure 1;
providing a plurality of battery cells (electrode assembly (17)) housed in the housing member (11), wherein each of the plurality of battery cells (17) includes a first (positive) electrode (20), a second (negative) electrode (30) having an area similar to or larger than that of the first electrode (20), and a separator (40,41,42) folded and extending through between the first electrode (20) and the second electrode (30) adjacent to each other, wherein the first electrode (20) and the second electrode (30) are arranged in a first direction in each of the plurality of battery cells (17) – see pages 2-5 of translation; and Figures 1-6; and
charging the battery module (10) by providing a folded portion of the separator (41,42) that covers a portion of the second electrode (30) on a same side in each of the plurality of battery cells (17), as shown in Figures 5 and 6 (see pages 2-5 of translation), wherein the folded portion of the separator (41,42) covers an upper portion of the second electrode (30) in each of the plurality of battery cells (17), as shown in Figures 5 and 6 (see page 5 of translation).
With regard to the limitation “a second electrode having an area larger than that of the first electrode”, one of ordinary skill in the art would have recognized (as inherent and/or obvious) that a negative electrode is generally larger in area than a positive electrode, as set forth in WO ‘064, for the purpose of reducing lithium plating (potentially leading to thermal runaway) in lithium-ion batteries.
With regard to the new limitation “the plurality of battery cells being arranged in a first direction orthogonal to a vertical direction”, it is noted that selection of orientation to be either “orthogonal” or “parallel” would have been obvious to one of ordinary skill in the art since either orientation would be obvious to try with a finite number of predictable solutions under a reasonable expectation of success, for the purpose of improving heat dissipation of the battery module (see the last paragraph on page 1 of translation).
As to the “new matter” limitation (in the 35 USC 112(a) rejection above) pertaining to “the plurality of battery cells is disposed such that gas generated from the second electrode rises toward the folded portion of the separator”, one of ordinary skill in the art would have recognized that gas would be generated by the battery module (10) of WO ‘064 during operation, in which the plurality of battery cells (17) is disposed such that gas generated from the second electrode (30) would rise toward the (top) folded portion(s) of the separator (41,42), as shown in Figures 5 and 6 (see page 5 of translation).
Regarding independent claim 5, WO ‘064 discloses/suggests the structural features of independent claim 1, as well as the claimed method of using the battery module of independent claim 4, wherein the claimed method of manufacturing a battery cell includes the following process steps:
wrapping, by an exterior material (laminate sheet forming each exterior case), a first (positive) electrode (20), a second (negative) electrode (30) having an area similar to or larger than that of the first electrode (20), and a separator (41,42) folded and extending through between the first electrode (20) and the second electrode (30) adjacent to each other (see pages 2-5 of translation; and Figures 1-6); and
removing gas (via venting during operation of the battery module (10)) inside the exterior material with a folded portion of the separator (41,42) covering an upper portion of the second electrode (30), as shown in Figures 5 and 6 (see page 5 of translation).
With regard to the limitation “a second electrode having an area larger than that of the first electrode”, one of ordinary skill in the art would have recognized (as inherent and/or obvious) that a negative electrode is generally larger in area than a positive electrode, as set forth in WO ‘064, for the purpose of reducing lithium plating (potentially leading to thermal runaway) in lithium-ion batteries.
With regard to the new limitation “the plurality of battery cells being arranged in a first direction orthogonal to a vertical direction”, it is noted that selection of orientation to be either “orthogonal” or “parallel” would have been obvious to one of ordinary skill in the art since either orientation would be obvious to try with a finite number of predictable solutions under a reasonable expectation of success, for the purpose of improving heat dissipation of the battery module (see the last paragraph on page 1 of translation).
Regarding new claim 6, WO ‘064 discloses that each of the plurality of battery cells (17) includes an exterior material (laminate sheet forming each exterior case) wrapping the first electrode (20), the second electrode (30), and the separator (40,41,42), and a plurality of fixing members provided along an upper side of the exterior material (see Figures 2 and 4-6).
Response to Arguments
The examiner acknowledges the applicant’s amendment received by the USPTO on October 29, 2025. The amendment overcomes the prior objection to the abstract, as well as the prior 35 USC 112(b) rejection. Although the amendments overcome the prior 35 USC 102(a)(1) rejection in view of JP 2012-190548 A, new 35 USC 112(a)(1) and 35 USC 103 rejections are necessitated by the applicant’s amendments. The applicant has cancelled claim 2 and have added new claim 6. Claims 1 and 3-6 are currently under consideration in the application.
Applicant’s arguments with respect to claims 1 and 3-6 have been considered but are moot because the new ground of rejection includes a new reference to WO 2017/204064 A1 in the 35 USC 103 rejection above, and thus does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN P KERNS/Primary Examiner, Art Unit 1735 February 11, 2026