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 .
Status of the Claims
This is a final office action in response to the applicant’s arguments and remarks filed on 03/05/2026. Claims 1-13 and 21-26 are pending in the current office action. Claims 14-20 have been cancelled by the applicant. Claims 1 and 9 have been amended by the applicant and claims 21-25 are new claims.
Status of the Rejection
All 35 U.S.C. § 102 and 103 rejections from the previous office action are substantially maintained and modified only in response to the amendments to the claims.
New grounds of rejection under 35 U.S.C. § 112(a) and 112(b) are necessitated for new claim 27.
New grounds of rejection under 35 U.S.C. § 102 or 103 are necessitated by the amendments for new claims 21-25.
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.
Claim 27 is 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.
Claim 27 recites wherein the first and second beam have a “non-planar cross-section”. A review of the instant specification does not find support for the discussion of either a planar or a non-planar cross-section. Applicant appears to rely on the figures for support of a non-planar cross-section but Figs. 3 and 4 clearly show a cross section of the beams where the cross-section reveals a two-dimensional plane. A non-planar cross-section implies a cross section that follows some type of curve, contour or stepped path rather than a flat plane. However, such cross-section is not discussed in the instant specifications or shown in the figures and thus constitutes new matter.
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.
Claim 27 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.
As outlined above, claim 27 recites wherein the first beam and second beam have a “non-planar cross-section”. It is unclear what is being claimed by reciting that the elements have a “non-planar cross section”. The limitation could be interpreted wherein a cross-section of the element reveals a non-planar shape, however the instant figures clearly demonstrate a two-dimensional structure in the cross-sections shown in Figs. 3-4. The structures shown in Figs. 3-4 show the beam with top and bottom edges that are aligned along a two dimensional plane. The limitation could also be interpreted wherein the cross section itself is non-planar (i.e., the cross-section is along a curved path). However, any object could be sectioned along a curved cross-section and that subsequently would result in a non-planar cross-section of said object. The limitations of claim 27 are therefore indefinite. For purposes of compact prosecution the limitation is being interpreted wherein the cross-section is not rectangular as this appears to be the applicants intent.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-7, 9-11, 23 and 25 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jeon (US 2023/0231264 A1).
Regarding claim 1, Jeon discloses a battery pack venting assembly ([Para. 0023-0024]), comprising:
A first beam establishing a first side of a passageway within a battery pack (a first side plate 266 of a duct member 260 that establishes a first side of a flow space P wherein the plural duct members 260 form a cross member assembly of a battery pack [Paras. 0088, 0126; Figs. 2, 5-6, 8-9,10-14]);
A second beam establishing an opposite, second side of the passageway (a second side plate 267 of a duct member 260 that establishes a second opposite side of flow space P [Paras. 0088, 0126; Figs. 5-6, 10-12]), the passageway configured to communicate battery cell vent byproducts (the high temperature gas and/or flame introduced into the flow space P may flow through the duct member 260 [Para. 0062]).
The limitations “the first beam configured to transfer loads applied to a side of the battery pack” and “the first beam configured to transfer loads applied to a side of the battery pack" are interpreted as functional recitations. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, the duct members 260 form the internal structural frame of the battery pack as shown in Fig. 2 and also supports the weight of the cover 250 as shown in Fig. 1. Jeon further discloses that the duct member can be formed as a metal material having a high melting point [Para. 0086]. Examiner notes that the instant claims do not require any level of load transfer (i.e., a specific lb/ft or N/m). Absent any clear or convincing evidence to the contrary, the Office holds the position that the structural duct member 260 would be configured to transfer loads applied to the side of the battery pack to at least some degree.
Regarding claim 2, Jeon further discloses wherein an enclosure cover provides a vertically upper side of the passageway (upper plate 263 and/or the cover member 250 meet the limitation of “an enclosure cover” that form the upper side of the flow space P of the duct member 260 [Paras. 0055, 0088; Figs. 1, 5-6, 10-12]).
Regarding claim 3, Jeon further discloses wherein a thermal exchange plate, an enclosure tray, or both, provide a vertically lower side of the passageway (lower plate 264 and/or the bottom member 220 meet the limitation of “an enclosure tray” that provide a lower side of the passageway [Paras. 0055, 0088; Figs. 1, 5-6, 10-12]). Examiner notes, by broadest reasonable interpretation, that the claimed limitations require “either” a thermal exchange plate OR an enclosure tray OR both. This interpretation is described in the specification Para. 0049 that explains an embodiment with a thermal exchange plate 70 and then explains another example where the thermal exchange plate 70 is omitted and the passageway 58 is established by the enclosure tray 42. Therefor the claim has not been rejected under 35 USC 112(b) as the limitations are interpreted in view of the specification to suggest either or both of the thermal exchange plate and enclosure tray may be present.
Regarding claim 5, Jeon further discloses wherein the assembly comprises a first cell stack and a second cell stack, the first beam and the second beam providing portions of a cross-member assembly disposed between the first cell stack and the second cell stack (Jeon figure 2 shows various cell stacks separated by first beams 266 and second beams 267 that provide portions of the larger cross-member assembly [see Figs. 2-4, 8-9, 13-14]).
Regarding claim 6, Jeon further discloses wherein the first beam includes a plurality of first openings configured to receive battery cell vent byproducts from at least one battery cell of the first cell stack, wherein the second beam includes a plurality of second openings configured to receive battery cell vent byproducts from at least one battery cell of the second cell stack (a plurality of inlets H1 are formed on both the first side plate 266 and the second side plate 267 for receiving high temperature gas and/or flames from the first and second cell stacks, respectively [Paras. 0087-0098 describe the various inlets shown in Figs. 5, 7-11, and 13-14]).
Regarding claim 7, Jeon further discloses wherein the passageway is configured to communicate the battery cell vent byproducts to at least one exhaust valve in an enclosure assembly (each duct member 260 is connected to a connection duct 270 that routes the gas to the venting unit 280 that is formed as a venting valve [Paras. 0103-0105; Figs. 8-9, and 13-14]).
Regarding claim 9, examiner notes that “wherein the passageway, the first beam, and the second beam each extend longitudinally in a cross-vehicle direction” is a statement of intended use that does not further limit the structure of the claimed “battery pack venting assembly”. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) [MPEP 2114]. Since the structure of the prior art teaches all of the structural limitations of the claim, the structure is considered capable of meeting the intended use limitations. In the instant case, the layout of the venting assembly of the instant claims and instant Fig. 2 is substantially the same as the layout of the venting assembly disclosed by Jeon in Fig. 2 and thus the venting assembly of Jeon is configured to and capable of extending in the longitudinal direction when the battery assembly is placed in a vehicle in a “cross-vehicle direction”. The structure of the venting assembly is not further limited by the orientation the battery pack is installed in the vehicle.
Regarding claim 10, Jeon further discloses wherein the passageway is configured to communicate battery cell vent byproducts to a channel provided by a member that is oriented transversely to the passageway, the channel configured to communicate the battery cell vent byproducts to an opening in an enclosure (each duct member 260 is connected to a connection duct 270 “member” that is oriented transversely to the duct members 260 that routes the gas to the venting unit 280 that is formed as a venting valve [Paras. 0103-0105; Figs. 8-9, and 13-14]).
Regarding claim 11, Jeon further discloses wherein the passageway is a first passageway, wherein the member is configured to receive battery vent byproducts from a plurality of second passageways provided by other first and second beams (the connection duct 270 “member” is connected to plural duct members 260 [Paras. 0103-0105; Figs. 8-9, and 13-14]).
Regarding claim 23, Jeon further discloses wherein a perimeter of the passageway is at least partially established by the first beam and the second beam (the first side plate 266 and second side plate 267 form a perimeter of the passageway P [Para. 0126; Figs. 10-12]), and wherein the perimeter is further established by an enclosure cover providing a vertically upper side of the passageway (upper plate 263 and/or the cover member 250 meet the limitation of “an enclosure cover” that form the upper perimeter of the flow space P of the duct member 260 [Paras. 0055, 0088; Figs. 10-12]).
Regarding claim 25, Jeong discloses a battery pack venting assembly (battery pack including a venting assembly [Para. 0023]), comprising:
a cross-member assembly disposed between a first cell stack and a second cell stack within an enclosure assembly of a battery pack (duct member 260 is a cross-member assembly that is disposed between plural cell stacks within the enclosure [Paras. 0050-0051; Figs. 1-2]), the cross-member assembly including:
a first structural beam establishing a first side of a passageway (a first side plate 266 of a duct member 260 that establishes a first side of a flow space P [Paras. 0088, 0126; Figs. 2, 5-6, 8-9,10-14]); and
a second structural beam establishing an opposite second side of the passageway (a second side plate 267 of a duct member 260 that establishes a second opposite side of flow space P [Paras. 0088, 0126; Figs. 5-6, 10-12]),
wherein a vertically upper side of the passageway is established by an enclosure cover (upper plate 263 and/or the cover member 250 meet the limitation of “an enclosure cover” that form the vertical upper side of the flow space P of the duct member 260 [Paras. 0055, 0088; Figs. 1, 5-6, 10-12]), and a vertically lower side of the passageway is established by a thermal exchange plate or an enclosure tray such that the passageway has a complete circumferential perimeter (lower plate 264 and/or the bottom member 220 meet the limitation of “an enclosure tray” that provide a vertical lower side of the passageway; it is further noted that section P1 shown in Fig. 11 shows the complete circumferential perimeter of the chamber that is formed by the respective beams/plates/covers outlined above [Paras. 0055, 0088; Figs. 1, 5-6, 10-12]), wherein the passageway is configured to communicate battery cell vent byproducts longitudinally in a cross-vehicle direction toward an outboard side of the battery pack (the high temperature gas and/or flame introduced into the flow space P may flow through the duct member 260 [Para. 0062]).
Regarding the side plates being “structural beams”, the duct members 260 form the internal structural frame of the battery pack as shown in Fig. 2 and also supports the weight of the cover 250 as shown in Fig. 1. Jeon further discloses that the duct member can be formed as a metal material having a high melting point [Para. 0086]. The plates that form the internal structure of the duct assembly therefore read upon the limitations of a “structural beam”.
Furthermore, the gases venting in “a cross-vehicle direction” is a statement of intended use that does not further limit the structure of the claimed “battery pack venting assembly”. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) [MPEP 2114]. Since the structure of the prior art teaches all of the structural limitations of the claim, the structure is considered capable of meeting the intended use limitations. In the instant case, the layout of the venting assembly of the instant claims and instant Fig. 2 is substantially the same as the layout of the venting assembly disclosed by Jeon in Fig. 2 and thus the venting assembly of Jeon is configured to and capable of venting byproducts longitudinally in a cross-vehicle direction toward an outbound side of the battery pack when the battery assembly is placed in a vehicle in a “cross-vehicle direction”. The structure of the venting assembly is not further limited by the orientation it is installed in a vehicle.
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.
Claims 4, 13, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Jeon, as applied to claims 1 and 2 above, and further in view of Stephens et al. (US 20180337378 A1).
Regarding claims 4, 13, and 22, Jeon discloses the limitations of claims 1-2 as outlined previously. Jeon further discloses wherein the first and second beam extend longitudinally in a direction (see Figs. 1-2).
Jeon discloses wherein the duct members may be made of a material having a high melting point, such as a metal material, but is silent on any other materials or the mechanism by which the materials are connected. It follows that Jeon fails to expressly teach wherein the first beam and the second beam are each adhesively secured to the enclosure cover, of instant claim 4, wherein the first beam and the second beam are at least partially pultruded, of instant claim 13, and wherein each of the first beam and the second beam includes reinforcing fibers aligned along the direction, of instant claim 22.
Stephens discloses a battery tray for storing plural battery cell packs in a vehicle ([abstract; Figs. 2-3]). Stephens teaches that the battery tray components that form the cross members and inner and outer tray components are made from pultruded materials wherein the various components can be bonded or sealed together using heat treatment or adhesives [Paras. 0047-0048]. Stephens further teaches that pultruded materials such materials pultruded to have glass or a similar composite with a carbon fiber reinforced thermoplastic or similar resin-based composite has various benefits including improved rigidity, stiffness and strength in the lateral dimensions such as for increased axial loading when receiving lateral impact forces to the vehicle and thereby optimized for crush deformation [Para. 0064]. Stephens teaches where the different fiber strands are fed from spools and thus assigned [Para. 0063; Fig. 19]. Stephens also discloses that pultruded materials provide a low cost option to form the components and can also provide improved side impact and torsional loading while also providing high puncture resistance and impact absorption [Para. 0064].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the vent assembly, including the side plate assemblies, as disclosed by Jeon such that the structure is formed using a fiber reinforced pultruded material because of the benefits disclosed above by Stephens [Para. 0064]. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07]. It also follows that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any known method of joining the components of the battery tray/venting assembly/enclosure cover including the use of heat treatment or adhesives as Stephens teaches that these methods are known ways of joining the components of a battery enclosure/tray assembly [Para. 0047].
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Jeon, as applied to claim 7 above, and further in view of Maguire (US 20170288187 A1).
Regarding claim 8, Jeon discloses the limitations of claim 7 as outlined previously.
Jeon discloses, as outlined in the rejection of claim 7 above, that each duct member 260 is connected to a connection duct 270 that routes the gas to the venting unit 280 that is formed as a venting valve [Paras. 0103-0105; Figs. 8-9, and 13-14]).
However, Jeon appears to teach wherein the venting valve is located on the side of the assembly and thus fails to teach where the at least one exhaust valve extends “through a floor of an enclosure tray of the enclosure assembly such that the battery cell vent byproducts are expelled vertically downward from the enclosure assembly”, of instant claim 8.
Maguire discloses a battery pack for discharging battery vent byproducts ([abstract]). Maguire teaches wherein the battery enclosure 60 contains a bottom tray 62 and a cover 64 with side walls [Para. 0051]. Maguire further teaches wherein portions of the vent device 72 may be mounted outside of the enclosure 60 and that the vent device can be mounted on any wall of the tray 62 or the cover 64 for expelling the battery vent byproducts from the battery packs [Para. 0059; Fig. 4].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the orientation of the venting valve of the venting unit 280 disclosed by Jeon such that the venting valve is oriented downwards and extends through the floor of the enclosure tray such that the venting byproducts vent vertically downward because Maguire teaches that such venting valve orientation is known in the art and would have the obvious and predictable results of allowing for the battery vent byproducts to be expelled from the battery cells [Para. 0059]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (MPEP 2143(A)).
Claims 12 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Jeon, or in the alternative, further in view of Tang et al. (US 2021006667 A1).
Regarding claim 12, Jeon discloses the limitations of claim 1 as outlined previously.
Jong teaches wherein the first and second beams are in the shape of a plate and thus fails to expressly teach wherein the first beam and the second beam each have a C-shaped cross-section, as required by claim 12.
Generally, differences in shape will not support the patentability of subject matter encompassed by the prior art absent persuasive evidence that the particular configuration is significant. MPEP § 2144.04(IV)(B). Therefore, it would have been a matter of choice to use C-shaped beam rather than plate-shaped beam, which a person of ordinary skill in the art would have found obvious.
In the alternative, Tang discloses a battery pack box assembly for housing a plurality of battery modules [abstract] wherein the beams that form the box body structure can be formed as rectangular, trapezoidal, or C-shaped beams [Para. 0064].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the structural beams disclosed by Jeon such that the beams are formed with a C-shaped cross-section because Tang teaches that C-shaped structural beams are known in the art and the use of such C-shaped cross-sectional beams would provide an obvious and predictable result of forming the structure of the battery box assembly for housing the battery pack [Tang Para. 0064]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results [MPEP 2143(A)].
Regarding claim 27, Jeon discloses a battery pack venting assembly ([Para. 0023-0024]), comprising:
a first beam , establishing a first side of a passageway within the battery pack (a first side plate 266 of a duct member 260 that establishes a first side of a flow space P [Paras. 0088, 0126; Figs. 2, 5-6, 8-9,10-14]);
a second beam
an enclosure assembly, wherein the first beam and the second beam are each directly attached to the enclosure assembly (the cover member 250 and/or the bottom member 220 meet the limitations of an “enclosure assembly” where the duct member 260 is directly disposed in contact with the cover member 250 and bottom member 220 [see Figs. 1-2]; Examiner notes that the top portion of 266/267 as shown in Fig. 12 would be in direct contact with the cover member 250 and the bottom portion of 266/267 would be in direct contact with bottom member 220 according to the layout shown in Figs. 1-2 and 10-12).
Jong teaches wherein the first and second beams are in the shape of a plate thus are presumed to have a planar cross-section and thus fails to expressly teach wherein the first beam and the second beam each have a non-rectangular cross-section, as required by claim 27 (see the 112(b) rejection above).
Generally, differences in shape will not support the patentability of subject matter encompassed by the prior art absent persuasive evidence that the particular configuration is significant. MPEP § 2144.04(IV)(B). Therefore, it would have been a matter of choice to use a non-planar shaped beam rather than plate-shaped beam, which a person of ordinary skill in the art would have found obvious and would provide the predictable benefit of still forming the vent chamber for allowing gases to vent.
In the alternative, Tang discloses a battery pack box assembly for housing a plurality of battery modules [abstract] wherein the beams that form the box body structure can be formed as rectangular, trapezoidal, or C-shaped beams [Para. 0064].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the structural beams disclosed by Jeon such that the beams are formed with a C-shaped cross-section because Tang teaches that C-shaped structural beams are known in the art and the use of such C-shaped cross-sectional beams would provide an obvious and predictable result of forming the structure of the battery box assembly for housing the battery pack [Tang Para. 0064]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results [MPEP 2143(A)].
The limitations “the first beam configured to transfer loads applied to a side of the battery pack” and “the first beam configured to transfer loads applied to a side of the battery pack" are interpreted as functional recitations. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, the duct members 260 form the internal structural frame of the battery pack as shown in Fig. 2 and also supports the weight of the cover 250 as shown in Fig. 1. Jeon further discloses that the duct member can be formed as a metal material having a high melting point [Para. 0086]. Examiner notes that the instant claims do not require any level of load transfer (i.e., a specific lb/ft or N/m). Absent any clear or convincing evidence to the contrary, the Office holds the position that the structural duct member 260 would be configured to transfer loads applied to the side of the battery pack to at least some degree.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Jeon, as applied to claim 1 above, and further in view of Ren et al. (US 20220059901 A1).
Regarding claim 21, Jeon discloses the limitations of claim 1 as outlined previously.
Jeon appears to disclose embodiments with partitions inside the vent chamber and thus fails to teach wherein the passageway between the first and second beams is formed “without partition walls dividing the passageway into multiple discrete channels”, as required by claim 21. Examiner notes, however, that Jeon does disclose wherein the number of flow paths formed in the duct member 260 “may be variously changed” [Para. 0098].
Ren discloses a battery assembly with an inlet vent to discharge flames, smoke, or gases from the battery cell into an air passage [abstract] wherein the cell assembly, like Jeon, discloses vent partitions 30 between battery cells 200 [Para. 0043; Fig. 1]. Ren discloses wherein the partition plates 30 include inlet vents 31 for directing gases away from the battery pack [Para. 0048]. Ren further discloses wherein the partition plate is formed as a hollow structure and serves as the air passage [Para. 0006].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the structure of the duct assembly of Jeon to instead not have any partitions but rather a hollow structure because Ren discloses that such hollow structured vent partitions are known in the art to provide a system that will discharge flames, smoke, or gases from the battery cell. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved (i.e., both a partitioned and a hollow vent duct would effectively vent gases away from a battery cell) [MPEP § 2143(B)]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (MPEP 2143(A)).
Claims 24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Jeon, as applied to claims 6/5/1 and 25 above, and further in view of Miler et al. (US 20190157636 A1).
Regarding claims 24 and 26, Jeon discloses the limitations of claims 6/5/1 and 26, as outlined previously.
Jeon is silent on the use of membranes to seal the inlets and thus fails to expressly teach wherein at least one membrane is disposed within the passageway over at least one first opening in the plurality of first openings, the at least one membrane establishing part of a circumferential perimeter of the passageway, of instant claim 24, and wherein at least one first membrane is disposed within the passageway over at least one first opening in the first structural beam, wherein at least one second membrane is disposed within the passageway over at least one first opening in the second structural beam, of instant claim 26.
Miler discloses a battery pack that comprises cell block vent for venting matter such as gaseous matter such as vapors resulting from the decomposition of battery materials or burning of electrolyte, separator and/or electrode materials [Para. 0044]. Miler teaches that cell block vents may be coupled with the cell block structure via a polymeric membrane wherein the polymeric material is configured to weaken, break, or fail as a surrounding environmental temperature exceeds a threshold, which may be associated with, for example, delivery of vented material from one or more cells of a cell block [Paras. 0047, 0061].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Jeon to include membranes that are disposed within the duct member that cover the respective inlets on the first and second beams 266/267 because Miler teaches that polymeric membranes can be configured to weaken, break or fail when the environment around the membrane exceeds a threshold such that the resulting vapors from decomposition of the battery can then flow into the vent assembly [Paras. 0044, 0047]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (MPEP 2143(A)).
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, 11Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (MPEP 2143(A)).
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, 7, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8 of copending Application No. 18105447 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 is anticipated by claims 1-2 of ‘447.
Instant claim 7 is anticipated by claims 3-4 of ‘477.
Instant claim 11 is anticipated by claim 8 of ‘477.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18306418 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 is anticipated by claims 1-3 of ‘418.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18105428 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims 1 and 13 are anticipated by claims 1-3 of ‘428.
Instant claim 2-3 are anticipated by claims 1-4 of 428’.
Instant claim 12 is anticipated by claim 1-3 and 5 of ‘428.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18176731 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 is anticipated by claims 1-4 of ‘731.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18298497 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 is anticipated by claim 1 of ‘497.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18176719 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 is anticipated by claims 1-4 of ‘719.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 16-19 of copending Application No. 18105410 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 is anticipated by claims 1-6 or 16-17 of ‘410.
Instant claim 2-3 are anticipated by claim 7 or 18 of ‘410.
Instant claim 6 is anticipated by claim 19 of ‘410.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9-11 of copending Application No. 18176762 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 is anticipated by claims 1 and 9-10 of ‘762.
Instant claims 2-3 are anticipated by claim 10 of ‘762.
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 Remarks Pgs. 6-7, filed 03/05/2026, with respect to the 35 U.S.C. § 102 and 103 rejections have been fully considered and are not persuasive.
Applicant’s Argument #1
Applicant argues on Pg. 6 of the Remarks that it is improper to interpret the side plates 266 and 267 as beams and that one skilled in the art would understand a beam to indicate a load bearing structural member configured to transfer loads between members of the pack enclosure.
Examiner’s Response #1
Examiner respectfully disagrees. The term “beam” does not imply any distinct shape, as a flat beam (e.g., LVL beams) have a flat rectangular shape similar to the shape of the side plates 266/267. The phrase “beam” does not impart any type of structural shape and thus any feature that forms the structure of the battery back could read upon the limitations of a beam. Jeon teaches wherein the side plates 266 and 267 are in direct contact with the upper enclosure 250 and the lower surface 220 as shown in the combined teachings of Figs. 1 and 6/10/12 (note that the top and bottom of the plates 266 form the top of structure 260 and thus would be in direct contact with and would thus support the upper and lower portions of the enclosure 250/220, respectively. As outlined in the rejection above, the limitations “the first beam configured to transfer loads applied to a side of the battery pack” and “the first beam configured to transfer loads applied to a side of the battery pack" are interpreted as functional recitations. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, the duct members 260 form the internal structural frame of the battery pack as shown in Fig. 2 and also supports the weight of the cover 250 as shown in Fig. 1. Jeon further discloses that the duct member can be formed as a metal material having a high melting point [Para. 0086]. Examiner notes that the instant claims do not require any level of load transfer (i.e., a specific lb/ft or N/m). Absent any clear or convincing evidence to the contrary, the Office holds the position that the structural duct member 260 would be configured to transfer loads applied to the side of the battery pack to at least some degree.
Applicant’s Argument #2
Applicant argues regarding claim 2 that Jeon fails to disclose wherein the enclosure provides a vertically upper side of the passageway. Applicant further argues regarding claim 3 that Jeon fails to disclose where the bottom portion fails to provide a lower side of the passageway.
Examiner's Response #2
Examiner respectfully disagrees. As outlined in the rejection above, the enclosure cover is disposed on the upper plate 263 as shown in Fig. 1 and thus the upper plate 263 or the cover member 250, in connection with the upper plate 263, would “provide a vertically upper side of the passageway”. Examiner notes that the limitations do not require that the enclosure cover is in direct physical contact with the pathway, only that the enclosure “provides a vertically upper side” which would include being one of many layers that form the upper side of the pathway. The same logic applies to the lower side of the passageway in view of the bottom member 220 and lower plate 264.
Applicant’s Argument #3
Applicant argues with regards to claim 4 that the rejection fails to present any rationally based reason for modifying Jeon to adhesively secure plates to the cover.
Examiner's Response #3
Examiner respectfully disagrees. The rejection of claim 4 states that “it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any known method of joining the components of the battery tray/venting assembly/enclosure cover including the use of heat treatment or adhesives as Stephens teaches that these methods are known ways of joining the components of a battery enclosure/tray assembly [Para. 0047].” The use of adhesives to connect various components within a battery pack is well-known, as specifically taught by Stephens, and utilizing this known method to connect components would yield the obvious and predictable result of connecting the components in the battery pack.
Applicant’s Argument #4
Applicant argues with regards to claim 13 that the rejection fails to articulate a reasoning for using pultruded materials.
Examiner's Response #4
Examiner respectfully disagrees. Stephens discloses that pultruded materials provide a low cost option to form the components and can also provide improved side impact and torsional loading while also providing high puncture resistance and impact absorption [Para. 0064]. Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07].
Applicant’s Argument #5
Applicant argues with regards to claim 12 that the rejection fails to articulate a rationally based reason for modifying the places to have a c-shaped cross section.
Examiner's Response #5
Examiner respectfully disagrees. It is first noted that differences in shape will not support the patentability of subject matter encompassed by the prior art absent persuasive evidence that the particular configuration is significant. MPEP § 2144.04(IV)(B). Therefore, it would have been a matter of choice to use C-shaped beam rather than plate-shaped beam, which a person of ordinary skill in the art would have found obvious. Instant paragraph 0059 may indicate that the C-shaped cross-section “can facilitate providing the passageway 58”, but so would virtually any shaped plate/beam as evidenced by Jeon where the plates form the passageway.
Furthermore, as outlined in the rejection above, Tang discloses wherein the beams that form the box body structure can be formed as rectangular, trapezoidal, or C-shaped beams [Para. 0064]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the structural beams disclosed by Jeon such that the beams are formed with a C-shaped cross-section because Tang teaches that C-shaped structural beams are known in the art and the use of such C-shaped cross-sectional beams would provide an obvious and predictable result of forming the structure of the battery box assembly for housing the battery pack [Tang Para. 0064]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results [MPEP 2143(A)].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Matecki et al. (US 20220194201 A1) discloses a battery pack cross member with a non-rectangular cross section.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA ALLEN whose telephone number is (571)270-3176. The examiner can normally be reached 7:30am-4:30pm ET Mon-Thurs, 7:30am-11:30pm Fri.
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/JOSHUA L ALLEN/Supervisory Patent Examiner, Art Unit 1713
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