DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant's election without traverse of Group I (Claims 2-13) in the reply filed on 10/14/2025 is acknowledged. Claims 14-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
Priority
3. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
4. Information disclosure statements (IDS), submitted November 28, 2022, January 30, 2023, March 28, 2023, August 2, 2023 (two IDS), March 27, 2024, and October 14, 2025 have been received and considered by the examiner.
Claim Interpretation
5. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Rejections - 35 USC § 112
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.
6. Claims 9 and 11-13 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.
7. Claim 9 recites the main portions of the electrode tabs of one of the pair of batteries extends from that side of the PCB providing the second face” but it is wholly unclear what is meant by “that side of the PCB”.
8. Claim 11 and 12 recite “the PCM” of but there is no single PCM recited in the claims (and so this limitation appears to lack antecedent basis). Claim 2 (upon which the claims ultimately depend) recites “PCM components” and “each PCM component” and it is unclear what is meant by “the PCM”. In the interest of compact prosecution, this limitation is interpreted as “the PCB” since this part is previously recited and makes sense in the context of the rest of the claim language. Claim 13 is rejected as being dependent upon a rejected base claim.
9. Claim 12 is 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 12 recites “a thickness direction of the PCB, being defined by a transverse spacing between the first and second faces” but it is unclear how a “transverse spacing” takes place physically in the PCB since the PCB is a solid object with no apparent spaces. The thickness direction is understood to be the dimension in which the PCB extends from the first to second parallel face, for example.
Claim Rejections - 35 USC § 102
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 1
03) is incorrect, any correction of the statutory basis 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 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.
107. Claims 2-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aoyama US PG Publication 2007/0231682.
Regarding Claims 2-3, Aoyama discloses a battery pack comprising a pair of electrochemical batteries 2a/2b for generating electrical power (inherent to the operation of batteries); a protective circuit board 12 (PCB, circuit board including protective circuits, para 0034) having a pair of parallel major surfaces that define a first face and a second face on opposite sides of the PCB respectively, a peripheral edge face of the PCT extending transversely between the first and second faces (see annotated Fig 3 below), protection circuit module (PCM) components (fuses, thermistors, charge/discharge control FET, para 0034, which together are considered a PCM) mounted on at least one of the first and second face of the PCB 3 (on the first face) such that the PCM components and the PCB together provide a PCM arrangement (the term “arrangement is broad and encompasses the PCB and PCM of Aoyama) configured to control one or more functions of the pair of batteries (e.g. control charge/discharge, para 0034), each PCM component being an electronic component being mounted on the PCB such as to be electrically coupled to the circuitry of the PCB (para 0034), and an electrode arrangement that connects the pair of batteries to the PCB (via electrode leads 11/12 from each battery) wherein respective electrode connections 12a/12b for both of the pair of batteries are located at the first face of the PCB (see e.g. Fig 3, 9-11) wherein the second face of the PCB 3 is free of any electrode connection 12a/12b (meeting Claim 3) (see entire disclosure and especially Figs 3 and 9-11 and paras 0033-0036, 0084-0091).
Regarding Claim 4, Figs. 3 and 10 show wherein in spatial arrange of the PCB relative to the electrode arrangement is such that substantially the entirety of the second face is available for mounting of PCM components uninterrupted by the electrode arrangement.
Regarding Claim 5, Figs. 9-11 show wherein the electrode arrangement comprises four electrode tabs 11a/11a/11b/11b provided by a respective pair of electrode tabs for each of the pair of batteries 2a/2b, all four of the electrode tabs being conductively connected to the first face via electrode connections at 12a/12b.
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Regarding Claim 6, Aoyama discloses a stacked configuration in which respective end portions of a first pair of electrode tabs 11a/11a lie flat against the first face of the PCB 12 and respective end portions of a second pair of electrode tabs 11b/11b lie flat against corresponding end portions of the first pair of electrode tabs 11a/11a such that the second pair of electrode tabs 11b/11b are indirectly coupled to the PCB via the first pair of electrode tabs 11a/11a to which the second pair of electrode tabs 11b/11b are directly coupled (Figs 3 and 9-11).
Regarding Claim 7, Aoyama discloses wherein the first face of the PCB provides a pair of exposed connection pads (contact portions) 12a/12b (para 0034) and discloses wherein the leads 11a/11b of the battery cells are formed of metal (paras 0051, 0058) and discloses wherein respective front surfaces of the first pair of electrode tabs are soldered or welded to the pair of connections pads, substantially covering the connection pads, respective rear surfaces of the first pair of electrode tabs facing away from the PCB, and wherein the second pair of electrode tabs are soldered or welded to the rear surfaces of the first pair of electrode tabs (see Figs and para 0034). Because the metal electrode tabs are resistively or ultrasonically welded to the connection pads, the skilled artisan would understand that the connection pads must be formed of a metal.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
11. Claim 8-9 and 11-13 is rejected under 35 U.S.C. 103 as being unpatentable over Aoyama US PG Publication 2007/0231682, as applied to Claim 6, and further in view of Matsui JP2003-168408.
Regarding Claim 8, Aoyama discloses the claimed battery pack as described in the rejection of Claim 6, which is incorporated herein in its entirety. Aoyama discloses wherein each electrode tab comprises a main portion projecting away from the respective battery towards the PCB, the main portion of each electrode tab extending transversely relative to the first face of the PCB but fails to specifically disclose wherein each electrode tab comprises a respective end portion that is bent normally from the main portion to be parallel with the first face of the PCB, to which it is connected. However, in the same field of endeavor of multicell battery connectivity design, Matsui discloses wherein a PCB is mounted to a terrace portion 2 of the battery cell via L-shaped intermediate tabs 6a such that the combined electrode tab comprise a respective end portion that is bent normally from the main portion to be parallel with the first face of the PCB, to which it is connected because this design provides reliability and protection of the tabs-PCB connection (see paras 0012-0019, Figs 2-3g). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the battery pack of Aoyama such that each electrode tab comprises a respective end portion that is bent normally from the main portion to be parallel with the first face of the PCB, to which it is connected because Matsui teaches that this configuration is part of a design that protects the reliability and engagement of the tab-PCB connection.
Regarding Claim 9, Aoyama modified by Matsui fails to specifically disclose wherein the main portions of the electrode tabs of one of the pair of batteries extends from the side of the PC providing the second face, past the edge face of the PCB, and onto the first face of the PCB (i.e. wraps around from the back), and wherein the main portions of the electrode tabs of the other one of the pair of batteries extend between their battery and the first face of the PCB without extending past the PCB edge face. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the battery pack of Aoyama and Matsui such that the main portions of the electrode tabs can wrap around the PCB past edge faces and over the second face in order to best fit the structure together in the space given such that the main portions of the electrode tabs of one of the pair of batteries extends from the side of the PC providing the second face, past the edge face of the PCB, and onto the first face of the PCB (i.e. wraps around from the back), and wherein the main portions of the electrode tabs of the other one of the pair of batteries extend between their battery and the first face of the PCB without extending past the PCB edge face since the rearrangement of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04).
Regarding Claims 11-13, Aoyama discloses wherein the pair of batteries are elongate modular units that are longitudinally aligned in a lengthwise direction (Fig. 3) but fails to specifically disclose a longitudinal spacing between adjacent ends of the batteries, the PCB being located within the longitudinal spacing between the batteries, wherein the PCB is oriented such that a thickness dimension of the PCB, being defined by a extending in a dimension between the first and second faces, extends in the lengthwise direction of the aligned batteries, the first and second faces each facing toward a respective one of the batteries between which the PCB is located, and fails to specifically disclose wherein the respective pair of electrode tabs of one of the batteries extend from the respective battery past a side edge of the PCB, a pair of opposite side edges of the PCB being defined by respective portions of the peripheral edge face that extend transversely to the lengthwise direction of the aligned batteries. However, as explained in the rejection above, Matsui discloses a configuration that beneficially fits the PCB arrangements into a transverse spacing of the battery shape, extending in a lengthwise direction of the battery, first face facing toward the respective battery against which the PCB is located, with the benefit that this arrangement is secure in its attachment between the PCB and the battery leads (via the terrace portion connection) (see rejection above for rationale/citations) and so the skilled artisan would have found it obvious before the effective filing date of the instant application to design the battery pack of Aoyama such that the aligned batteries include a space between where the PCB extends wherein the PCB is oriented such that a thickness dimension of the PCB, being defined by a extending in a dimension between the first and second faces, extends in the lengthwise direction of the aligned batteries, the first and second faces each facing toward a respective one of the batteries between which the PCB is located because Matsui teaches the security of a configuration that beneficially fits the PCB arrangements into a transverse spacing of the battery shape, extending in a lengthwise direction of the battery, first face facing toward the respective battery against which the PCB is located, with the benefit that this arrangement is secure in its attachment between the PCB and the battery leads (via the terrace portion connection). The rearrangement of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04).
Although Aoyama modified by Matsui does not specifically disclose a respective pair of electrode tabs of one of the batteries to extend from the respective battery past a side edge of the PCB, a pair of opposite side edges of the PCB being defined by respective portions of the peripheral edge face to extend transversely to the lengthwise direction of the aligned batteries (Claim 13) in the combined embodiments, it would have been obvious to design the pack with this configuration in order to ensure the secure attachment of the electrode tab pair and to fit securely with the PCB extending between the batteries in the lengthwise direction since the mere rearrangement of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04).
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12. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Aoyama US PG Publication 2007/0231682, as applied to Claim 6, and further in view of Kozu US PG Publication 2003/0146734.
Regarding Claim 10, Aoyama discloses the claimed battery pack as described in the rejection of Claim 6, which is incorporated herein in its entirety. Aoyama discloses wherein the PCM components including components such as fuses, thermistors, charge/discharge control FET (para 0034) mounted on the first face of the PCB 3 but does not illustrate them, and so cannot disclose wherein the PCM components mounted on the first face are arranged in three sub-blocks interrupted by the two pairs of stacked electrode end portion connections. However, in the same field of endeavor of multicell battery connectivity design, Kozu teaches the same types of PCM components (temperature detection terminal, fuse, PTC, etc, paras 0072-0076) provided on the PCB interrupted by the pairs of electrode end portion connections 11/12/19, and so it would have been obvious before the effective filing date of the instant application to design the battery pack of Aoyama such that the components of the PCM are laid out like those of Kozu in order to provide the desired protection to the battery cells since applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D. Further, the mere rearrangement of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04). Although Aoyama modified by Kozu does not specifically disclose the components in three sub-blocks, without a special definition of sub-block, the skilled artisan would be capable of designating any of the sets of components as a sub-block such that the claimed configuration is met.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA S PARK whose telephone number is (571)270-3597. The examiner can normally be reached M-Th 5:30a to 3p Eastern Time.
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/LISA S PARK/Primary Examiner, Art Unit 1729