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 .
Election/Restrictions
Newly submitted independent claim 16 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); and prior art applicable to one invention would not likely be applicable to another invention. For example, the battery pack of independent claim 1 can be made by a process that is materially different from that of independent claim 16, including providing the steps of assembling in a different sequence and/or providing additional process steps in the manufacture of the battery pack.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 16 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claims 8 and 9 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.
Claim 8 recites the limitation "outer side face" in the last line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to add either "the" or "the corresponding" before "outer side face" to obtain proper antecedent basis with "a corresponding outer side face" in the 13th line of independent claim 1. Since claim 9 depends from claim 8, claim 9 is rejected under 35 USC 112(b) for the same reason.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 1-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2014/0370354), and further in view of CN 101926022 A, of which a complete copy of the Chinese document with a machine translation was provided with the Information Disclosure Statement dated December 30, 2022.
Regarding independent claim 1, Yang et al. disclose a battery pack (abstract; paragraphs [0037]-[0056]; claim 1; and Figures 1, 2, 9a, and 9b), in which the battery pack comprises the following structural features (also refer to annotated Figure 9a of Yang et al. below):
a battery module (200) with multiple cells (100) that are electrically connected to each other, wherein each cell (100) of the multiple cells comprises a respective outer side face in a direction of longitudinal extension thereof (see claim 1; and Figures 1 and 2);
an adapter portion, used for establishing mechanical and electrical connection between an electric tool and the battery pack (see paragraph [0037]);
a holder in the form of brackets (101,102), wherein multiple independent accommodating cavities used for mounting the multiple cells are internally formed in the holder (101,102), in which each cell (100) is at least partially received in a respective accommodating cavity, wherein a clearance exists between a cell’s portion accommodated in a corresponding accommodating cavity and the corresponding accommodating cavity, the cell being one of the multiple cells (see Figures 1 and 2, as well as annotated Figure 9a of Yang et al. below); and
a filler (500) in a solid state that wraps outer side faces of the cells (100) – see paragraphs [0040], [0049], and [0051]; and Figures 1-3.
Yang et al. fail to teach a filler that is disposed in the clearance and wrapping a corresponding outer side face of the cell, is located at an inner side of the corresponding accommodating cavity, and wherein the filler is set in a lengthwise direction of the multiple cells to a length of the multiple cells is not less than 30%.
However, CN ‘022 discloses a holder (34) with a plurality of cavities to hold a respective plurality of cells (20) – see paragraphs [0033]-[0037] and [0097]-[0121]; and Figures 2-5, wherein a filler (54) in the form of a thermally conductive resin is located in each cavity (see Figure 4) of not less than 30%, for the purpose of providing insulation and absorbing impact (see paragraphs [0033]-[0037]).
Therefore, it would have been obvious to one of ordinary skill in the art to include a filler in each cavity, as taught by CN ‘022, into the battery pack disclosed by Yang et al., in order to hold the cells while providing insulation and absorbing impact (see paragraphs [0033]-[0037] of CN ‘022).
As to the applicants’ new claim 1 limitation “wherein the filler is injection molded with the multiple cells or the holder” has no patentable weight, since this limitation is drawn to a method of making, whereas the claimed apparatus of a “battery pack” only requires that the “filler” material is provided inside the cell(s). Whether the “filler” is provided by injection molding (or by any other means related to a method of making), it imparts no patentable weight to the claim(s). In this instance, CN ‘022 discloses the claimed invention of having a filler within the cell(s).
Regarding claim 2, and as also applied to the limitation “not less than 30%” of independent claim 1 in the combined teachings of Yang et al. and CN ‘022 in the above section, CN ‘022 discloses that a ratio of the length along which the filler is set in a lengthwise direction of the multiple cells to the length of the cells is not less than 50% (see Figure 4 of CN ‘022).
Regarding claim 3, Yang et al. disclose that each holder (101,102) is of an integrated structure (see Figure 9b).
Regarding claim 4, Yang et al. disclose that the holder (101,102) comprises a first sub-holder (101) and a second sub-holder (102), in which each sub-holder (101,102) has a respective accommodating cavity of the multiple accommodating cavities and is abutted towards each other while wrapping the multiple cells (100) along the lengthwise direction of the multiple cells (100), as shown in Figure 9a of Yang et al.
Regarding claim 5, Yang et al. disclose that the multiple accommodating cavities are enclosed by an inner wall of the holder (101,102), wherein the multiple cells (100) are enclosed in its respective holder (101,102), as shown in Figure 9a of Yang et al.
Regarding claim 6, Yang et al. disclose that a sealing element (600) in contact with the outer side faces of the cells (100) is arranged inside the accommodating cavity, wherein a radial width of the sealing element (600) is greater than or equal to a clearance between the outer side faces of the cells (100) and the inner wall of the accommodating cavity, such that the filler (500) is located between the first sub-holder (101) or the second sub-holder (102) and the sealing element (600) in the lengthwise direction of the cells (100) – see Figures 1, 2, and 9a of Yang et al.
Regarding claim 7, Yang et al. disclose (in Figure 3) that each cell (100) is provided with a main body for longitudinal extension and comprises an anode section and a cathode section along the lengthwise direction, wherein the filler (500) is arranged in a clearance between the cathode section and/or the anode section and an inner wall of the corresponding accommodating cavity (see paragraphs [0040] and [0041]).
Regarding claims 8 and 9, the combined teachings of Yang et al. and CN ‘022 disclose and/or suggest the features of independent claim 1, including that the cell (100) is sleeved with a phase change material (filler (500)) to form a coverage region (400), as shown in Figures 1 and 2 of Yang et al., but fail to teach convexly arranged positioning elements that abut against outer side faces of the cells and a mounting slot formed on the inner wall of the accommodating cavity, wherein a filler is arranged in the mounting slot. However, it would have been obvious to one of ordinary skill in the art to add positioning elements and mounting slots, in order to more firmly secure the cells, along with additional filler material to be applied therein, since it would be obvious to try with a reasonable expectation of success to further secure the cells while obtaining improved heat dissipation (Yang et al.; abstract; and paragraphs [0040] and [0049]).
Regarding claims 10-12, Yang et al. disclose that the filler (500) comprises at least two different kinds of phase change materials (500) with melting ranges between 40°C and 70°C, thus being in a solid state at room temperature (see paragraphs [0055] and [0056]).
Regarding claim 13, Yang et al. disclose (in Figure 8) that a material of the filler (500) includes an adhesive such as adhesive tape or another adhesive such as a heat-conducting glue (800) defining a predetermined thermal conductivity (see paragraphs [0049] and [0053]). In addition, CN ‘022 discloses a filler (54) in the form of a thermally conductive resin that is located in each cavity (see paragraphs [0033]-[0037]; and Figure 4). However, since the limitation in this claim requires a unilateral thickness of the adhesive to be from zero to 0.5 mm, the examiner can take the position that little or no heat-conducting glue (or a very thin or no adhesive tape) was added to meet the claim limitation of zero.
Regarding claim 15, CN ‘022 discloses that the outer side of the cell is completely accommodated in the corresponding accommodating cavity.
Response to Arguments
The examiner acknowledges the applicants’ amendment provided with the request for continued examination received by the USPTO on January 13, 2026. Although the amendment overcomes the prior objection to the abstract, a new 35 USC 112(b) rejection is provided in above section 3. The applicants have cancelled claim 14, and have added new independent claim 16 that has been withdrawn from consideration under an election by original presentation status, as set forth in above section 1. Claims 1-13 and 15 are currently under consideration in the application.
Applicants’ arguments with respect to claims 1-13 and 15 have been considered but are moot because the argument pertaining to the new limitation of independent claim 1 has been addressed in the newly underlined portions applied above in the 35 USC 103 rejection.
Conclusion
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 10, 2026