DETAILED ACTION
Response to Amendment
Amendments, filed on August 12, 2026, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Regarding the limitation(s) “thermally conductive material” in claim 7, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, a skilled artisan would readily appreciate that materials such as ‘adhesives’ are not ‘thermally conductive’ unless explicitly modified to be so; i.e. most polymeric materials or resins would be art recognized as insulative materials, not ‘thermally conductive’ materials.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Request for Continued Examination
A Request for Continued Examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 12, 2026 has been entered.
Claim Rejections - 35 USC § 103
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 6 are rejected under 35 U.S.C. 103(a) as being unpatentable over Morimitsu et al. (U.S. Patent App. No. 2018/0366701 A1) in view of Nakamura et al. (U.S. Patent No. 9,899,646 B2).
Regarding claim 1, Morimitsu et al. discloses a battery cell holder (Title; Abstract) with improved cooling efficiency1 for fixing a plurality of cylindrical battery cells (Title; Abstract; Figures), the battery cell holder comprising: a support part that includes a through hole having a first diameter; and a stepped part that extends from the support part, includes a through hole having a second diameter, and is spaced apart from the outer circumferential surface of the cylindrical battery cell to form a predetermined gap, wherein the second diameter is larger than the first diameter, and wherein the support part further includes at least one slot recessed therein, the at least one slot extending from the inner circumferential surface of the through hole having the first diameter to an outer surface of the battery cell holder (see Figure 7 reproduced below).
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Morimitsu et al. fail to disclose wherein at least a portion of an inner circumferential surface of the through hole comes into contact with an outer circumferential surface of the cylindrical battery cell to fix the cylindrical battery cell in the through hole by contact with the inner circumferential surface of the through hole (Morimitsu et al. disclose a small ‘gap’ being left which is then filled with adhesive to fix the cylindrical battery cell in the through hole).
However, Nakamura et al. teaches a similar guiding portion concept (Title; Abstract; at least Figures 3 – 9 and relevant disclosure thereto) wherein the guiding portions are designed to ensure that the cylindrical battery cells line up exactly with the bottom electrical contact, as this ensures both excellent electrical contact, but also good cooling as the batteries are optimized and uniformly spaced when the guiding elements properly position each battery (col. 8, lines 25 – 47). A skilled artisan would readily appreciate that a 0 mm gap between the inner circumferential surface and the outer circumferential surface of the cylindrical battery cell would result in the optimal placement of each battery cell, as it would be mandatory for the battery cell to be in the exact location desired.
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Morimitsu et al. to utilize an embodiment wherein the bottom (first diameter) was such that the battery cell was in contact with the support part as taught by Nakamura et al., as such a structure would ensure the most accurate battery alignment and result in optimized battery placement, leading to improved cooling properties.
Regarding claim 2, Morimitsu et al. clearly show filling the slot and the ‘gap’ encompassing the first and second diameters with adhesive material, which is deemed to necessarily be capable of meeting the claimed functional limitation should air be present. The limitation “wherein air is discharged … to prevent formation of air bubbles in the predetermined gap” is deemed a functional limitation(s). As defined in the MPEP, “[a] functional limitation is an attempt to define something by what it does, rather than by what it is (e.g., as evidenced by its specific structure or specific ingredients). There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper. In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971)” – MPEP § 2173.05(g). In the instant case, the claimed limitation(s) “wherein air is discharged … to prevent formation of air bubbles in the predetermined gap” is a functional limitation(s) and is deemed to be met by the prior art since the prior art structure is substantially identical in form and use.
Regarding claims 3 and 4, Morimitsu et al. fail to teach the dimensions of the guiding portions (second diameter and height of stepped part). However, Nakamura et al. provides guidance for forming the guiding portions, in terms of desired angles for the slope (which impacts the second diameter – see Nakamura et al., col. 5, lines 8 - 28), the overall diameter range (which impacts the second diameter – see Nakamura et al., col. 6, lines 38 - 55), and the height of the guiding portion (which impacts the percentage height of the stepped part – see Nakamura et al., col. 5, lines 29 - 53). In all cases, the Examiner deems that these are results effective variables and it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the second diameter value and the relative percentage height of the stepped portion through routine experimentation, especially given the teaching in Nakamura et al. regarding the desire to control these parameters to ensure good guiding performance for the cylindrical batteries. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, Figure 7 above reads on the claimed ‘stepped part’ limitation, but see also Morimitsu et al., Figure 10 for a uniform width ‘stepped part’.
Regarding claim 6, Figure 7 above reads on the claimed stepped part ‘sloped’ diameter limitations.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record disclose similar guiding portions with ‘grooves’ that run from the inner circumferential surface to an outer surface in order to fill with an adhesive material (as per Morimitsu et al. teachings above). However, Morimitsu et al. specifically teaches liquid adhesives which cure to form air-tight seals around the batteries (see entire disclosure, but especially Paragraph 0097 as exemplary). Similarly, Nakamura et al. references using an adhesive to ‘glue’ the battery in place … yet none of the prior art teachings teach or suggest a combination of the claimed structural components (the support part having the first diameter and stepped part with a second diameter and the claimed slot) while also utilizing a thermally conductive material filling the predetermined gap. This combination of limitations is deemed neither taught nor rendered obvious by the prior art of record.
Response to Arguments
The rejection of claims under 35 U.S.C § 102/103 – Nakamura et al. alone or in view of Morimitsu et al.
The above noted rejection has been withdrawn because Applicants’ amendment(s) have set forth new limitations (e.g. amendments to claims 1 and 7) no longer anticipated, nor rendered obvious, by the above noted rejection (while Nakamura et al. implied ‘slots’ in Figures 9 and 10, these are not deemed sufficiently similar to what Applicants’ embodiments appear to illustrate as a ‘slot’).
The rejection of claims under 35 U.S.C § 103(a) – Morimitsu et al. in view of Nakamura et al.
Applicants’ arguments have been considered but are moot in view of the new ground(s) of rejection. In so far as they apply to the present rejection of record, Applicant(s) argue that Nakamura et al. fails to disclose a ‘slot’ meeting the claimed limitation (page 4 of response). Without ascertaining to the correctness of this, the Examiner has relied upon Morimitsu et al. ‘slot’ 27Sc, which is illustrated in Figure 7 extending from the inner diameter all the way to an outer surface of the support member/battery cell holder.
Regarding Applicants’ argument that Morimitsu et al. fails to disclose a ‘slot’, the Examiner notes that it is element 27Sc which is pointed to as the ‘slot’, not 27H or 27S.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
September 5, 2026
1 This is an intended use/functional limitation which is not germane to the determination of patentability of the claimed product; but also see teaching in Nakamura et al. regarding improved cooling.
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