Prosecution Insights
Last updated: July 17, 2026
Application No. 18/091,374

BATTERY MODULE

Final Rejection §103
Filed
Dec 30, 2022
Priority
Feb 03, 2022 — JP 2022-015552
Examiner
RUTISER, CLAIRE A
Art Unit
1751
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Prime Planet Energy & Solutions Inc.
OA Round
2 (Final)
42%
Grant Probability
Moderate
3-4
OA Rounds
0m
Est. Remaining
65%
With Interview

Examiner Intelligence

Grants 42% of resolved cases
42%
Career Allowance Rate
68 granted / 161 resolved
-22.8% vs TC avg
Strong +22% interview lift
Without
With
+22.5%
Interview Lift
resolved cases with interview
Typical timeline
3y 6m
Avg Prosecution
16 currently pending
Career history
214
Total Applications
across all art units

Statute-Specific Performance

§101
7.0%
-33.0% vs TC avg
§103
80.8%
+40.8% vs TC avg
§102
2.8%
-37.2% vs TC avg
§112
3.3%
-36.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 161 resolved cases

Office Action

§103
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 . Status of Claims Claims 1, 2, 4, 6, 9, and 14 are amended. Claims 1-20, as filed 3 February 2026, are examined herein. No new matter is included. Response to Arguments The objection to claim 4 is withdrawn in light of Applicant’s amendment. Regarding claims 1 and 4, Applicant argues that Kakiuchi fails to disclose “a heat conduction member disposed adjacent to the plurality of battery cells and the cooling member and sandwiched between each of the plurality of battery cells and the cooling member to be directly in contact with the plurality of the battery cells, the heat conduction member having a heat conductivity lower than a heat conductivity of the cooling member.” Applicant specifically argues that the instant claim limitation requires the "high-conductivity portion 62" of Kakiuchi being between the "low-conductivity portion 61"and "the plurality of the battery cells" to provide sufficient heat transfer. This is not persuasive. Examiner notes that Kakiuchi at [0049] explicitly teaches that the high conductivity portion 62 can be in close contact with heat exchanger 50 and the low conductivity portion 61 is in close contact with the battery 10. Examiner notes that amended claim 1 requires heat conduction member having a heat conductivity lower than a heat conductivity of the cooling member to be sandwiched between the plurality of battery cells and the cooling member. Kakiuchi’ s flipped 61 and 62 meet this limitation. The rejection is maintained. Instant specification, FIG. 3 Kakiuchi, FIG. 3 Heat conduction member 420 (silicone resin) (in contact with battery) [0049] “low conductivity portion 61 in close contact with the battery” [0047] silicone rubber Cooling member 410 High conductivity portion 62 made integral with heat exchanger 50 Claim Objections Claim 14 is objected to because it is a duplicate of claim 12. Appropriate correction is required. Claim Interpretation Claim 1 includes the limitation “wherein the cooling mechanism further includes a cooling member provided with the flow path portion”. Examiner notes that the broadest reasonable interpretation of “provided with” includes “in close contact with” and “comprising”. Claim 4 includes the limitation “a region in which the plurality of battery cells and the heat conduction member are in contact is wider in the direction from the upstream toward the downstream of the flow path portion.” The broadest reasonable interpretation of the instant claim limitation is determined to include a tapered contact area, where the widest part is downstream and the narrowest part is upstream. Claims 8-10 include the limitation “the heat conduction member is composed of a silicone-based resin curable from a gel state.” Page 6 of the instant specification states “wherein the silicone-based resin is in a gel state as an initial state and is cured to be a solid after being applied, such as a gap filler.” The broadest reasonable interpretation is determined to include “wherein the silicone-based resin is in a gel state as an initial state and is cured to be a solid after being applied, such as a gap filler.” Claim Rejections - 35 USC § 103 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(s) 1, 6, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kakiuchi (JP 2021051894 A) using the English translation provided by Applicant 9 April 2024. Regarding claim 1, Kakiuchi teaches a battery module ([0002] battery mounted on the vehicle body) comprising: a plurality of battery cells arranged side by side in a first direction; (FIG. 3 showing multiple cells 10) a cooling mechanism that is disposed adjacent to each of the plurality of battery cells and that cools the plurality of battery cells, (FIG. 3 and [0045] heat exchanger 50 faces the battery; heat transfer member 60 comprising low conductivity portion 61 and high conductivity portion 62) Kakiuchi teaches high conductivity portion 62 as a separate member from heat exchanger 50. However, it would have been obvious for a person of ordinary skill to make integral the heat transfer member 60 and heat exchanger 50. See MPEP 2144.V.B. “the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” wherein the cooling mechanism (50, 60) includes a flow path portion through which cooling water is able to flow, the flow path portion extending inside the cooling mechanism along each of the plurality of battery cells in the first direction, and ([0031] cooling water may be used in addition to the refrigerant; [0044]) Examiner notes that the instant claim limitation is “a flow path portion through which cooling water is able to flow” – therefore the cooling water or other fluid is not part of the claimed invention. the heat resistance of the cooling mechanism with respect to the plurality of battery cells is decreased in a direction from an upstream toward a downstream of the flow path portion. (FIG. 3 and [0046-0049] the heat transfer member 60 has a low conductivity portion 61 and a high conductivity portion 62. [0049] the low conductivity portion is thinner and the high conductivity portion 62 is thicker in the downstream direction. At [0051] the thermal conductivity of the heat transfer member 60 can be changed continuously from the upstream to the downstream side … the battery can be cooled more appropriately.) Examiner notes that the tapered thickness of the heat transfer portions 61 and 62 as shown in FIG. 3 creates decreased heat resistance (higher thermal conductivity) in the downstream direction of the flow path, thus meeting the instant claim limitation. the cooling mechanism further includes: a cooling member provided with the flow path portion which is provided in the cooling member. (FIG. 3 62 and 50 made integral as set forth above: However, it would have been obvious for a person of ordinary skill to make integral the heat transfer member 60 and heat exchanger 50. See MPEP 2144.V.B. “the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” ), and a heat conduction member disposed adjacent to the plurality of battery cells and the cooling member and sandwiched between each of the plurality of battery cells and the cooling member to be directly in contact with the plurality of the battery cells, (FIG. 3 and [0049] a low conductivity portion 61) the heat conduction member having a heat conductivity lower than a heat conductivity of the cooling member, ([0049] “a configuration may also be adopted in which the high conductivity portion 62 is in close contact with the heat exchanger 50 and the low conductivity portion 61 is in close contact with battery 10.”) Examiner notes that Kakiuchi at [0049] explicitly teaches that the high conductivity portion 62 can be in close contact with heat exchanger 50 and the low conductivity portion 61 is in close contact with the battery 10. “Even in this case, the low-conductivity portion 61 is formed thinner on the downstream side than on the upstream side, with reference to the flow direction of the heat transfer medium, while the high-conductivity portion 62 is formed thicker on the downstream side than on the upstream side” Examiner notes that amended claim 1 requires heat conduction member having a heat conductivity lower than a heat conductivity of the cooling member to be sandwiched between the plurality of battery cells and the cooling member. Kakiuchi’ s flipped 61 and 62 meet this limitation. A person of ordinary skill in the art would have understood that Kakiuchi two possible configurations for 61 and 62. Kakiuchi does not teach any specific performance difference from the two orientations. Therefore, the person of ordinary skill could select the configuration with low-conductivity 61 in contact with the batteries, as it represents one of the two possible configurations to apply 61 and 62 between the heat exchanger and the batteries, with a reasonable expectation of success. a thickness of the heat conduction member is thinner in the direction from the upstream toward the downstream of the flow path portion, and a thickness of the cooling member is thicker in the direction from the upstream toward the downstream of the flow path portion. (61 and 62 are each tapered as shown FIG. 3) Regarding claims 6, Kakiuchi teaches all of the limitations as set forth above, and Kakiuchi further teaches wherein the heat conduction member is in a form of a sheet. ([0024] sheet-shaped heat transfer material) Regarding claims 9, Kakiuchi teaches all of the limitations as set forth above, and further teaches wherein the heat conduction member is composed of a silicone-based resin curable from a gel state. ([0024] Kakiuchi discloses heat transfer member 40 may be made from silicon rubber.) Claim(s) 4, 2, 3, 5, 7, 8, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kakiuchi (JP 2021051894 A) using the English translation provided by Applicant 9 April 2024, in view of Recouvreur (WO 2022074016 A1) with citations to US 20240006679 A1. Regarding claim 4, Kakiuchi teaches a battery module ([0002] battery mounted on the vehicle body) comprising: a plurality of battery cells arranged side by side in a first direction; (FIG. 3 showing multiple cells a cooling mechanism that is disposed adjacent to each of the plurality of battery cells and that cools the plurality of battery cells, (FIG. 3 and [0045] heat exchanger 50 faces the battery; heat transfer member 60 comprising low conductivity portion 61 and high conductivity portion 62) Kakiuchi teaches high conductivity portion 62 as a separate member from heat exchanger 50. However, It would have been obvious for a person of ordinary skill to make integral the heat transfer member 60 and heat exchanger 50. See MPEP 2144.V.B. “the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” wherein the cooling mechanism (50, 60) includes a flow path portion through which cooling water is able to flow, the flow path portion extending inside the cooling mechanism along each of the plurality of battery cells in the first direction, and ([0031] cooling water may be used in addition to the refrigerant; [0044]) Examiner notes that the instant claim limitation is “a flow path portion through which cooling water is able to flow” – therefore the cooling water or other fluid is not part of the claimed invention. the heat resistance of the cooling mechanism with respect to the plurality of battery cells is decreased in a direction from an upstream toward a downstream of the flow path portion. (FIG. 3 and [0046-0049] the heat transfer member 60 has a low conductivity portion 61 and a high conductivity portion 62. [0049] the low conductivity portion is thinner and the high conductivity portion 62 is thicker in the downstream direction. At [0051] the thermal conductivity of the heat transfer member 60 can be changed continuously from the upstream to the downstream side … the battery can be cooled more appropriately.) Examiner notes that the tapered thickness of the heat transfer portions 61 and 62 as shown in FIG. 3 creates decreased heat resistance (higher thermal conductivity) in the downstream direction of the flow path, thus meeting the instant claim limitation. the cooling mechanism further includes: a cooling member provided with the flow path portion which is provided in the cooling member. (FIG. 3 62 and 50 made integral as set forth above. However, it would have been obvious for a person of ordinary skill to make integral the heat transfer member 60 and heat exchanger 50. See MPEP 2144.V.B. “the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” ), and a heat conduction member disposed adjacent to the plurality of battery cells and the cooling member and sandwiched between each of the plurality of battery cells and the cooling member to be directly in contact with the plurality of the battery cells, (FIG. 3 and [0049] a low conductivity portion 61) the heat conduction member having a heat conductivity lower than a heat conductivity of the cooling member, ([0049] “a configuration may also be adopted in which the high conductivity portion 62 is in close contact with the heat exchanger 50 and the low conductivity portion 61 is in close contact with battery 10.”) Kakiuchi does not explicitly teach wherein a region in which the plurality of battery cells and the heat conduction member are in contact is wider in the direction from the upstream toward the downstream of the flow path portion. Recouvreur teaches (abstract) a battery cooling system having a cooling device and a thermal interface, where [0011] the dimension of the thermal exchange surface, perpendicular to the cooling direction, increases in the cooling (downstream) direction. (e.g. contact region between battery and heat conduction member is wider) At [0007] Recouvreur contemplates that this facilitates uniform temperature distribution. A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to modify the cooling system of Kakiuchi with Recouvreur’s contact region is wider in the downstream direction of the flow path, with a reasonable expectation of successfully facilitating uniform temperature distribution. Regarding claim 2, Kakiuchi in view of Recouvreur teaches all of the limitations as set forth above, and Kakiuchi further teaches wherein a thickness of the heat conduction member (61) is thinner in the direction from the upstream toward the downstream of the flow path portion. Kakiuchi teaches [0049] the low conductivity portion 61 is formed thinner on the downstream side. Regarding claim 3, Kakiuchi in view of Recouvreur teaches all of the limitations as set forth above, and Kakiuchi further teaches a thickness of the cooling member (62) is thinner in the direction from the upstream toward the downstream of the flow path portion. ([0049] the high conductivity portion 62 is thicker in the downstream direction.) Regarding claims 5 and 7, Kakiuchi in view of Recouvreur teaches all of the limitations as set forth above, and Kakiuchi further teaches wherein the heat conduction member is in a form of a sheet. ([0024] sheet-shaped heat transfer material) Regarding claims 8 and 10, Kakiuchi in view of Recouvreur teaches all of the limitations as set forth above, and Kakiuchi further teaches wherein the heat conduction member is composed of a silicone-based resin curable from a gel state. ([0024] Kakiuchi discloses heat transfer member 40 may be made from silicon rubber.) Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kakiuchi (JP 2021051894 A) using the English translation provided by Applicant 9 April 2024, in view of Kim (US 20110229749 A1) Regarding claim 11, Kakiuchi teaches all of the limitations as set forth above. However, Kakiuchi does not explicitly teach wherein a cross-sectional area of the flow path portion is smaller in the direction from the upstream toward the downstream of the flow path portion. (e.g. the outlet cross section is smaller than the inlet cross-section, as shown in FIG. 5 of the instant specification.) Kim teaches (abstract) a battery cooling system having a flow channel 147 for a cooling fluid 150. The channel (147) has a first hydraulic diameter at the inlet that is greater than a second hydraulic diameter at the outlet to the channel (147). The hydraulic diameter is … decreased along the length of the channel (147) such that the system provides a first surface heat transfer coefficient proximate to the channel inlet that is less than a second surface heat transfer coefficient proximate to the channel outlet. While Kim contemplates ([0026] that (emphasis added) “the inventors recognized that the heat transfer coefficient is also sensitive to hydraulic diameter in a direct cooling system such as an air system while liquids such as mineral oil and water/glycol do not experience much variance in the heat transfer coefficient with changes in the hydraulic diameter of the passageway.”, Examiner notes that while Kim contemplates that “liquids … do not experience much variance”, there is still some variance, and therefore there is still some benefit provided, even with a liquid cooling fluid. A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to modify Kakiuchi with the varied hydraulic diameter of Kim, with a reasonable expectation of successfully creating a more even heat transfer from the cooling system into the battery. Claim(s) 12, 14, 17, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kakiuchi (JP 2021051894 A) using the English translation provided by Applicant 9 April 2024, as set forth in claim 1, above, and in further view of Lee (US 20110189521 A1). Regarding claims 12, 14, and 17, Kakiuchi teaches all of the limitations as set forth above, however Kakiuchi does not explicitly teach wherein the cooling mechanism has a turning portion that is connected to the flow path portion and that allows the cooling water to flow in an opposite direction between the upstream and the downstream, the upstream and the downstream are located on one side in the first direction, and the turning portion is located on the other side in the first direction. Lee discloses (abstract) a battery pack with multiple modules and having a coolant system. At [0049] Lee discloses the use of a U-shaped coolant channel, which facilitates coolant being introduced and discharged at coolant ports on the same side of the pack case. While Lee is primarily directed to the use of air cooling, a person of ordinary skill would understand that Lee’s teaching of coolant being introduced and discharged at coolant ports on the same side of the pack case is also applicable to liquid cooled systems. A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to modify the cooling mechanism of Kakiuchi to include a U-shaped coolant channel, to allow both inlet and outlet ports to be on the same side of the pack case, creating a smaller battery footprint and more efficient assembly of the battery pack. Regarding claim 19, Kakiuchi teaches all of the limitations as set forth above, and further teaches wherein each of the plurality of battery cells (FIG. 1 cells 10) which appear to have a case body having an upper surface and a lower surface (FIG. 1), the lower surface being a surface opposite to the upper surface, and the cooling mechanism is provided on the lower surface side. (FIG. 3 showing cooling mechanism under the battery cases, [0077] the battery cooling device can be placed not only on the side or below the battery but also above the battery). However, Kakiuchi does not show the electrode terminals and does not explicitly teach the upper surface being a surface on which an electrode terminal is disposed. Lee discloses (abstract) a battery pack with multiple modules and having a coolant system. At [0021] and FIG. 11 the cell terminals 321 and 320 are formed at the upper and lower ends of an individual battery cell. At FIG. 1, FIG. 2 and [0068-0070], the output terminals 430 and 432 are formed at the front surface of the battery module. At [0014] Lee explains that the front placement of the battery output terminals facilitates stacking. However, a person of ordinary skill would understand that battery terminals can be placed in any location as part of a design choice, for example on the side to facilitate stacking or on the top to facilitate packing more batteries in a horizontal direction in the chassis of a vehicle. A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to modify Kakiuchi with the use of output terminals as taught by Lee, and to place those terminals on the top surface to facilitate packing more batteries in a horizontal direction in the chassis of a vehicle, with a reasonable expectation of success. Regarding claim 20, Kakiuchi teaches all of the limitations as set forth above, and further teaches wherein each of the plurality of battery cells (FIG. 1 cells 10) which appear to have a case body having an upper surface and a side surface, the side surface being a surface intersecting the upper surface, and the cooling mechanism is provided on the side surface side. (FIG. 1 showing cooling mechanism on a side surface of the battery cases, [0077] the battery cooling device can be placed not only on the side or below the battery but also above the battery) However, Kakiuchi does not show the electrode terminals and does not explicitly teach the upper surface being a surface on which an electrode terminal is disposed. Lee discloses (abstract) a battery pack with multiple modules and having a coolant system. At [0021] and FIG. 11 the cell terminals 321 and 320 are formed at the upper and lower ends of an individual battery cell. At FIG. 1, FIG. 2 and [0068-0070], the output terminals 430 and 432 are formed at the front surface of the battery module. At [0014] Lee explains that the front placement of the battery output terminals facilitates stacking. However, a person of ordinary skill would understand that battery terminals can be placed in any location as part of a design choice, for example on the side to facilitate stacking or on the top to facilitate packing more batteries in a horizontal direction in the chassis of a vehicle. A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to modify Kakiuchi with the use of output terminals as taught by Lee, and to place those terminals on the top surface to facilitate packing more batteries in a horizontal direction in the chassis of a vehicle, with a reasonable expectation of success. Claim(s) 13, 15, 16, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kakiuchi (JP 2021051894 A) using the English translation provided by Applicant 9 April 2024, as set forth in claim 1, above, and in further view of Recouvreur (WO 2022074016 A1) with citations to US 20240006679 A1, as set forth in claims 4 and 7, above, and in further view of Lee (US 20110189521 A1). Regarding claims 13, 15, 16, and 18, Kakiuchi in view of Recouvreur teaches all of the limitations as set forth above, however Kakiuchi does not explicitly teach wherein the cooling mechanism has a turning portion that is connected to the flow path portion and that allows the cooling water to flow in an opposite direction between the upstream and the downstream, the upstream and the downstream are located on one side in the first direction, and the turning portion is located on the other side in the first direction. Lee discloses (abstract) a battery pack with multiple modules and having a coolant system. At [0049] Lee discloses the use of a U-shaped coolant channel, which facilitates coolant being introduced and discharged at coolant ports on the same side of the pack case. While Lee is primarily directed to the use of air cooling, a person of ordinary skill would understand that Lee’s teaching of coolant being introduced and discharged at coolant ports on the same side of the pack case is also applicable to liquid cooled systems. A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to modify the cooling mechanism of modified Kakiuchi to include a U-shaped coolant channel, to allow both inlet and outlet ports to be on the same side of the pack case, creating a smaller battery footprint and more efficient assembly of the battery pack. 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 CLAIRE A RUTISER whose telephone number is (571)272-1969. The examiner can normally be reached 9:00 AM to 5:00 PM M-F. 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, Jonathan Leong can be reached at 571-270-1292. 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. CLAIRE A. RUTISER Examiner Art Unit 1751 /C.A.R./Examiner, Art Unit 1751 /Haroon S. Sheikh/Primary Examiner, Art Unit 1751
Read full office action

Prosecution Timeline

Dec 30, 2022
Application Filed
Nov 07, 2025
Non-Final Rejection mailed — §103
Feb 03, 2026
Response Filed
Jul 02, 2026
Final Rejection mailed — §103 (current)

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Prosecution Projections

3-4
Expected OA Rounds
42%
Grant Probability
65%
With Interview (+22.5%)
3y 6m (~0m remaining)
Median Time to Grant
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