DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. Applicant’s response filed 4/3/2026 was received. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
2. Applicant’s election without traverse of Species I of the embodiment shown in Fig. 3 is noted here, with claims 1-7 and 9-14 are under examination, and claims 8 and 15 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Objections
3. Claim 1 is objected to because of the following informalities: claim 1 as amended recites “wherein the second insulating member comprises a protruding part protruding,” which is redundant and should be corrected to “…a protruding part Appropriate correction is required.
Claim Rejections - 35 USC § 112
4. The rejection of claim 4 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the cancellation of the claim.
5. 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.
6. Claim 1, and thus dependent claims 2-3, 5-6, and 9-14, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
A) Applicant adds the following new limitations to the claims:
“…a second insulating member formed to cover the battery cell assembly by surrounding an upper portion of the battery cell assembly and a portion of a side of the battery cell assembly in a direction in which electrode tabs of the battery cells protrude…”
There is no written description of the second insulating member surrounding an upper portion of the battery cell assembly. The plain and ordinary meaning of the term surrounding is to be everywhere around something (Cambridge Online Dictionary) or “to enclose on all sides: envelop” (Merriam Webster Online Dictionary):
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The drawings do not show the newly added feature, and the written description does not utilize the term “surrounding” or any equivalents thereof. The original disclosure only every describes the second insulating member is “…formed to cover a portion of one end of the battery cell assembly in a direction perpendicular to the stacking direction of the battery cells and the one or more first insulating members” or the second insulating member is formed to cover an upper portion of the battery cell assembly” (P29, 53, 60 of the PGPUB). Figs. 1, 3, 5, and 6 clearly show the upper portion of the battery cell assembly exposed on front and back sides thereof and not surrounded by the second insulating member. Accordingly, the amendment violates the written description requirement.
B) Pertaining to the newly added language quoted in section A above, the second insulating member also does not surround a portion of a side of the battery cell assembly in a direction in which electrode tabs of the battery cells protrude as amended into the claim. The drawings do not show the feature, and the written description does not utilize the term or any equivalents thereof. There is no portion of the side of the battery cell in which the second insulating member surrounds said side. Accordingly, the amendment violates the written description requirement. It is also not clear how something can be said to surround something else in only one direction (i.e., “in a direction in which the electrode tabs of the battery cell protrude”). If something surrounds something else, it encloses it on all sides such that the surrounding would take place in a multitude of directions.
C) Claim 1 also adds the language of:
“wherein a cross-section of each of the one or more first insulating members covers a cross-section of the electrode tabs…”
The language does not exist in the written description and is not shown in the drawings. The feature is significantly broader than that which is described in the written description or illustrated in the drawings which is that when viewing the second battery module from the front, the cross-sections (plural) of the electrode tabs are all covered by the cross-section of [each of the one or more] first insulating member[s], all of the cross-sections being taken in a plane parallel to the direction in which the electrode tabs of the battery cells protrude (P59).
Accordingly, the disclosure only ever describes the feature with reference to a specific cross-section (see Fig. 5, namely, in a plane parallel to the direction in which the electrode tabs of the battery cells protrude) viewed in a given direction (from the front of the secondary battery module) versus the claimed limitation which allows for any cross-section of each of the one or more first insulating members relative to any cross-section of the electrode tabs, wherein the claim does not require this to even be the same cross-section being taken for each component.
Thus, the disclosure does not adequately describe the cross-section being any cross-section(s) relative to one another, wherein cross-sections taken in other directions or from other viewpoints not described by the instant application description do not meet the feature. For example, a cross-section (when viewing the module from the side and taken down the center of second insulating member in the stacking direction of the cells) does not provide for each one or more of the first insulating members to cover a cross-section of the electrode tabs. Accordingly, the Examiner does not find that the inventors had possession of the broader limitation as presented which has no written description basis, and is not shown in the drawings.
Moreover, the language references a cross section of the electrode tabs, whereas the written description describes the cross-sections (plural) of the electrode tabs given in the direction shown, each cell and its corresponding electrode tabs would have its own, respective cross-section given the direction it is being taken in. Thus, the quoted portion also fails the written description for this reason as there is not a singular cross section of the electrode tabs that is covered by a cross-section of the one or more first insulating members. Accordingly, the Examiner does not find that the inventors had possession of the broader limitation as presented which has no written description basis, and is not shown in the drawings.
Lastly, it appears the “covering” feature also require clarification in the claims in terms of the direction in which the coverage is achieved given the only supported covering feature appears to occur: in a stacking direction of the of the battery cells and the one or more first insulating members (see Fig. 5). In other words, when comparing the cross-sections of these entities, the “covering” feature does not occur in any other direction such that the claims recite a feature significantly broader than that which Applicant was in possession of at the effective filing date of the invention.
D) Claim 1 also adds the language of:
“wherein the protruding part is positioned on an upper portion of each of the one or more first insulating members and in contact with the one or more first insulating members.”
The language has no basis whatsoever in the written description, nor is it illustrated in the drawings. The only figure showing the relationship between the entities claimed is Fig. 6 (truncated and annotated below) which illustrates a space between the protruding part 210 and the first insulating member 120 such that it does not appear the protruding part is on an upper portion of each of the one or more first insulating members, nor does it illustrate the protruding part being in contact with the one or more first insulating members.
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Accordingly, there is not an adequate basis to demonstrate the feature is supported by the written description or drawings.
It is noted that Applicant cites Fig. 6 of the drawings and “supporting potions of the original specification” as the alleged support for all newly provided limitations. The figure does not support any of the limitations as outlined above, nor does “supporting portions of the original specification” specifically point out the support for the amendments made. As previously indicated in the prior Office Action, Applicant should cite support by paragraph number for any language added to the claims (see MPEP 2163, section 3(b); MPEP § 714.02; and MPEP § 2163.06):
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007)
"Applicant should ... specifically point out the support for any amendments made to the disclosure."
If the sole support is considered the drawings for any future amendments, then any claim language added utilizing new terminology should also be added to the written description with appropriate reference numerals added to each of the drawings and specification designating the part or part(s) to which the new terminology applies such that claim language has proper antecedent basis in the written description (MPEP § 608.01(o)). A corresponding explanation is also helpful in this scenario for any newly added terminology and features that do not exist in the written description and are solely added on the basis of the drawings.
Appropriate correction is required.
7. Claim 1, and thus dependent claims 2-3, 5-6, and 9-14, 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.
A) Applicant adds the following new limitations to the claims:
“…a second insulating member formed to cover the battery cell assembly by surrounding an upper portion of the battery cell assembly and a portion of a side of the battery cell assembly in a direction in which electrode tabs of the battery cells protrude…”
It is not clear how something can be said to surround something else in only one direction (i.e., “in a direction in which the electrode tabs of the battery cell protrude”). If something surrounds something else, it encloses it on all sides such that the surrounding would take place in a multitude of directions. Accordingly, the feature renders the claim indefinite.
B) Claim 1 also adds the language below with emphasis added to the indefinite issue:
“ …a battery cell assembly in which a plurality of battery cells and one or more first insulating members are stacked;
a second insulating member formed to cover the battery cell assembly by surrounding an upper portion of the battery cell assembly and a portion of a side of the battery cell assembly in a direction in which electrode tabs of the battery cells protrude…
…wherein a cross-section of each of the one or more first insulating members covers a cross-section of the electrode tabs…”
The claim thus defines that there are a plurality of battery cells having electrodes tabs. The only supporting description pertaining to cross-section coverage is at P59 and describes the cross-sections (plural) of the electrode tabs may all be covered by the cross-section of the first insulating member. Plural cross-sections of the electrode tabs in the direction shown would have to occur given the corresponding cross-section in the direction shown in Fig. 5 will only ever include a single battery cell and its corresponding terminals. The issue with indefiniteness is it is entirely unclear how to configure or arrange a cross section of the one or more insulating members to cover a singular cross-section of the electrode tabs as recited in the claim which requires plural cross-sections in the direction and view point described in the instant application.
Appropriate correction is required.
Specification & Drawings
8. The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o):
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
Usually the terminology of the claims present on the filing date of the application follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
New claims, including claims first presented after the application filing date where no claims were submitted on filing, and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification. See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103.
Correction of the following is required:
“an upper portion of each of the one or more first insulating members”
Claim Rejections - 35 USC § 102
9. The rejection of claims 1-5, 7, 9-10,13-14 under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US 2021/0074972) is withdrawn. All rejections pending from this are also withdrawn.
Claim Rejections - 35 USC § 103
10. The alternative rejection of claims 1-5, 7, 9-10, 13-14 under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2021/0074972) in view of Persson et al. (US 2021/0288374) is withdrawn. All rejections pending from this are also withdrawn.
Prior Art Comments
11. Per MPEP § 2143.03:
“"All words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). (The Board erred because it ignored claim language that it considered to be indefinite, and reached a conclusion that the claim would have been obvious based only on the rest of the claim.). However, an examiner should not simply speculate about the meaning of the claim language and then enter an obviousness rejection in view of that speculative interpretation. In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (The "considerable speculation" by the examiner and the Board as to the scope of the claims did not provide a proper basis for an obviousness rejection.)
When evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter). Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984).
MPEP § 2173.06 further notes that when there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. The claims are indefinite to the point of precluding prior art examination as detailed above for the multiple reasons set forth under 35 U.S.C. 112(b)/second paragraph. A rejection is not made under 35 U.S.C. 103 based on what would be considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. Accordingly, once a definitive claim is set forth, prior art evaluation will resume.
Response to Arguments
12. Applicant’s arguments with respect to claims have been considered but are moot given the rejections have been withdrawn for the reason set forth above.
For clarity of the record, it is noted that Applicant argues a defining feature of the claim is that emphasized below; however, it does not exist in claim 1:
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It is not until claim 9 that the protruding part is spaced apart from the upper case.
Conclusion
13. The prior art previously made of record and not relied upon considered pertinent to applicant's disclosure is repeated below:
Guillemard et al. (2019/0252652)
Kang et al. (2024/0313288)
Chen et al. (2021/0320337) – (the first insulating member can be end plate 6)
Sugeno et al. (US 2019/0334143)
Haussmann et al. (2019/0190097)
Shimizu et al. (20140308550) (note P75 teaches a fire extinguishing agent is provided in exhaust passage 50)
Ogura et al. (US 2023/0062907)
Wu et al. (US 2021/0359372); and
Ogura et al. (US 2023/0062907).
Prior art pertaining to vent holes in end plates:
Pitre et al. (US 2022/0271369);
Choi et al. (US 2022/0271388); and
Oh et al. (US 2022/0115736).
Jang et al. (US 2022/0416327) is pertinent to the specific configuration of the second insulating member 400 which is taught as including having both an upper part and side parts as shown to ensure insulation performance (P43):
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Prior art sharing at least one common inventor, less all and including other inventors named on the prior art and the current application, currently applicable under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2):
Jeon et al. (US 2022/0052392);
Jeon et al. (US 2023/0231266) – note that 160 can have fire extinguishing media (P74);
Choi et al. (US 2022/0173475).
14. 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.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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, Ula Ruddock can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BARROW/Primary Examiner, Art Unit 1729
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