DETAILED ACTION
This is the final office action for 18/244,985, filed 9/12/2023, which claims priority to German application DE10 2022 123 880.6, filed 9/19/2022.
Claims 1-7 and 10-16 are pending. Claims 1-5, 7, and 10-16 are considered herein.
In light of the terminal disclaimers filed 7/17/2026, the double patenting rejections are withdrawn.
In light of the claim amendments, the rejections under 35 U.S.C. 112(b) are modified, and the prior art rejections are withdrawn. New grounds of rejection are presented herein.
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 .
Additional Prior Art
The Examiner wishes to apprise the Applicant of the following reference, which is not currently applied in a rejection.
U.S. Patent Application Publication 2007/0292723 A1: This reference teaches a battery module with liquid absorbing elements (Figs. 1-4).
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.
Claims 1-5, 7, and 10-16 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.
Claim 1 has been amended to recite “wherein the activator liquid is disposed in a space between the compression pads and the battery housing and in direct contact with the battery cells.” This amendment is not supported by the instant specification, because, while the instant specification provides support for the activator liquid being absorbed by the compression pads, it does not provide support for the activator being disposed in a space between the compression pads and the battery housing and in direct contact with the battery cells.
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 1-5, 7, and 10-16 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 1 recites “the swelling body is configured to…compression on the battery cells.” Claim 1 further recites “wherein the activator liquid is disposed in a space…causes swelling of the swelling bodies of the compression pads.”
These limitations are indefinite, because it is unclear whether Claim 1 requires the swelling bodies to be in a swollen or unswollen state, and whether the activator liquid is required to be present in the swelling bodies, outside of them, or both.
Claim 1 further “the swelling body” in line 9. There is insufficient antecedent basis for this limitation, because there is a prior recitation of “at least one swelling body” in lines 8-9.
Claims 2-5, 7, and 10-16 are indefinite, because of their dependence on Claim 1.
Claims 3 and 5 further recite “the swelling body.” This limitation is indefinite, for the reasons outlined above.
Claim 4 recites “without abutment.” This limitation is indefinite, because it is unclear what structure is required by the limitation “without abutment.” It is unclear what structures do not abut each other.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 recites “the compression pads are at least semi-elastic in order to …compensate for volume changes of the battery cells.” Therefore, Claim 10 does not further limit Claim 1, because Claim 1 requires that the compression pads are at least semi-elastic, and the remaining limitations of Claim 10 are considered intended use limitations that do not impart further structural limitations to Claim 10. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-5, 10, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nomura, et al. (U.S. Patent Application Publication 2006/0022634 A1).
In reference to Claim 1, Nomura teaches a battery device (Fig. 3, paragraphs [0040]-[0042]). It is the Examiner’s position that the battery of Nomura is structurally capable of being used in an at least semi-electrically powered motor vehicle.
The device of Nomura comprises at least one battery housing 31 (Fig. 3, paragraph [0040]).
The device of Nomura comprises at least one assembly of battery cells 33 arranged in the battery housing (Fig. 3, paragraph [0040]).
The device of Nomura comprises compression pads 34 arranged between the battery cells (Fig. 3, paragraph [0040]).
Nomura teaches that the compression pads 34 swell upon absorbing electrolyte that leaks from the battery cells (paragraph [0040], Figs. 6-9).
This disclosure teaches the limitations of Claim 1, wherein the “compression pads are at least semi-elastic in order to exert a surface compression on the battery cells and/or to compensate for volume changes of the battery cells.”
This disclosure teaches the limitations of Claim 1, wherein “each compression pad at least partially comprises at least one swelling body, and the swelling body is configured to expand by absorption of an activator liquid from an unswollen pre-mounting state into a swollen finished mounting state and thereby increase in volume such that the compression pads can exert surface compression on the battery cells.”
Nomura teaches that the swelling bodies are configured to absorb electrolyte that leaks from the batteries in the case (paragraph [0040]).
This disclosure teaches the limitations of Claim 1, wherein the activator liquid (i.e. the electrolyte) is disposed in a space between the compression pads and the battery housing (i.e. is structurally capable of being so and/or is between at least a portion of the compression pads and the battery housing) and in direct contact with the battery cells and the compression pads.
This disclosure teaches the limitations of Claim 1, wherein the activator liquid causes swelling of the swelling bodies of the compression pads.
It is noted that “for an at least semi-electrically powered motor vehicle,” “in order to exert a surface compression on the battery cells and/or to compensate for volume changes of the battery cells,” “configured to expand by absorption of an activator liquid from an unswollen pre-mounting state into a swollen finished mounting state and thereby increase in volume such that the compression pads can exert surface compression on the battery cells,” and “causes swelling of the swelling bodies of the compression pads” are intended use limitations of the claim.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
In reference to Claim 3, Nomura teaches that the swelling body absorbs liquid (paragraph [0040], Figs. 6-9).
This disclosure teaches the limitations of Claim 3, wherein the swelling body comprises a spongy material (i.e. a material that absorbs liquid).
In reference to Claim 4, Nomura teaches that the battery cells 33 and the compression pads 34 are stacked to form at least one mounting assembly, and are disposed within housing 31 (Fig. 3).
Nomura teaches that the dimensions of the assembled batteries 33 and pads 34 is smaller than the width of the interior space of the battery housing 31 (Fig. 3).
This disclosure teaches the limitations of Claim 4, wherein the mounting assembly is smaller than a design space provided for the mounting assembly in the battery housing when the swelling bodies are in the unswollen pre- mounting state such that the mounting assembly is capable of being inserted into the battery housing without abutment.
In reference to Claim 5, Nomura teaches that each of the compression pads 34 is structurally capable of swelling upon absorption of electrolyte (Figs. 6-9).
This disclosure teaches the limitations of Claim 5, wherein the swelling body at least partially provides the elastic properties of the compression pad.
In reference to Claim 10, Nomura teaches that each of the compression pads 34 is structurally capable of swelling upon absorption of electrolyte (Figs. 6-9).
This disclosure teaches the limitations of Claim 10, wherein the compression pads are at least semi-elastic.
It is the Examiner’s position that this disclosure further teaches that the compression pads are structurally capable of compensating for volume changes of the battery cells.
It is noted that “compensate for volume changes of the battery cells” is an intended use limitation of the claim.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus.
In reference to Claim 13, Figs. 6-9 teach that swelling occurs over multiple hours.
Therefore, this disclosure teaches the limitations of Claim 13, wherein the compression pads remain at least semi-elastic after being exposed to the activator liquid (i.e. continue to swell after initial exposure to the activator liquid).
Claims 11 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nomura, et al. (U.S. Patent Application Publication 2006/0022634 A1), as evidenced by Reedy, et al. (U.S. Patent 4,360,442).
In reference to Claim 11, Nomura teaches that the electrolyte that is absorbed by the compression pads comprises ethylene carbonate (paragraph [0071]).
Evidentiary reference Reedy teaches that ethylene carbonate is structurally capable of absorbing heat (Abstract).
Therefore, it is the Examiner’s position that the activator liquid (which comprises ethylene carbonate as part of the electrolyte that leaks from the housed batteries) is structurally capable of cooling a battery cell.
Therefore, Nomura teaches the limitations of Claim 11, wherein the activator liquid also constitutes a cooling medium for directly cooling the battery cells.
In reference to Claim 15, Nomura teaches that the electrolyte that is absorbed by the compression pads comprises ethylene carbonate (paragraph [0071]).
Evidentiary reference Reedy teaches that ethylene carbonate is structurally capable of absorbing heat (Abstract).
Therefore, it is the Examiner’s position that the leaked electrolyte functions as a liquid coolant disposed in the space between the compression pads and the battery housing and in direct contact with the battery cells and the compression pads for cooling the battery cells.
It is noted that “for cooling the battery cells” is an intended use limitation of the claim.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus.
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Nomura, et al. (U.S. Patent Application Publication 2006/0022634 A1), in view of Sakurai (U.S. Patent Application Publication 2022/0255115 A1).
In reference to Claim 7, Nomura does not teach that the battery device of his invention is installed in a motor vehicle.
To solve the same problem of providing a lithium battery with compression pads between adjacent batteries, Sakurai teaches a battery pack for a motor vehicle that comprises lithium battery modules comprising liquid-absorbing compression pads (Fig. 7, paragraph [0091], with details in Figs. 1-5, paragraphs [0033]-[0068])) that is installed in a motor vehicle (paragraph [0085]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used the battery of Nomura in a motor vehicle, based on Sakurai’s disclosure that lithium batteries with compression pads between adjacent battery cells are suitable for use in powering motor vehicles.
This modification teaches the limitations of Claim 7, of a motor vehicle comprising the battery device of Claim 1.
In reference to Claim 12, the battery of Nomura does not comprise the cooling device of Claim 12.
To solve the same problem of providing a lithium battery with compression pads between adjacent batteries, Sakurai teaches a battery pack comprising a cooling device, corresponding to cooling jacket 6 (Fig. 7, paragraph [0091]).
In the cooling device of Sakurai, a liquid coolant flows directly around (i.e. below) battery cells 3 and compression pads 4 at least in sections, for directly cooling the battery cells (paragraph [0091]).
Sakurai teaches that the coolant is water (paragraph [0091]).
Sakurai teaches that the cooling jacket 6 provides the benefit of efficiently cooling the battery cells (paragraph [0091]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have modified the battery of Nomura with the cooling jacket of Sakurai, to achieve the taught benefit of efficiently cooling the battery cells of Nomura.
Modifying the battery of Nomura with the cooling jacket of Sakurai teaches the limitations of Claim 12, wherein the battery further comprises at least one cooling device for directly cooling the battery cells, and in which a liquid coolant can flow directly around the battery cells and the compression pads at least in sections for directly cooling the battery cells, wherein the liquid coolant (i.e. water) differs from the activator liquid (i.e. battery electrolyte).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Nomura, et al. (U.S. Patent Application Publication 2006/0022634 A1) as evidenced by Reedy, et al. (U.S. Patent 4,360,442).
In reference to Claim 2, Fig. 2 of Nomura does not teach that the battery comprises the cooling device of Claim 2.
However, in a separate embodiment, Nomura teaches a housing structure comprising an inlet, “h,” that is used to introduce activator liquid into the housing, to text the swelling capabilities of the absorbent material of his invention (Fig. 11, paragraphs [00806]-[0087]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have modified the housing of the embodiment of Fig. 3 of Nomura to comprise the inlet shown in Fig. 11 of Nomura, and to have introduced electrolyte into the housing of Fig. 3 of Nomura, so that the embodiment of Fig. 3 of Nomura may be tested for its electrolyte-absorbing capabilities.
Evidentiary reference Reedy teaches that ethylene carbonate is structurally capable of absorbing heat (Abstract).
Therefore, modifying the embodiment of Fig. 3 to include the added electrolyte and housing inlet of Fig. 11 teaches the limitations of Claim 2, wherein the battery further comprises at least one cooling device for directly cooling the battery cells (i.e. the housing inlet and the applied electrolyte), and in which a liquid coolant (i.e. the applied electrolyte) can flow directly around the battery cells and the compression pads at least in sections, wherein the activator liquid is the liquid coolant that flows directly around the battery cells for directly cooling the battery cells.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Nomura, et al. (U.S. Patent Application Publication 2006/0022634 A1).
In reference to Claim 14, Fig. 3 of Nomura does not teach that the battery comprises the inlet of Claim 14.
However, in a separate embodiment, Nomura teaches a housing structure comprising an inlet, “h,” that is used to introduce activator liquid into the housing, to text the swelling capabilities of the absorbent material of his invention (Fig. 11, paragraphs [00806]-[0087]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have modified the housing of the embodiment of Fig. 3 of Nomura to comprise the inlet shown in Fig. 11 of Nomura, so that the embodiment of Fig. 3 of Nomura may be tested for its electrolyte-absorbing capabilities.
This modification teaches the limitations of Claim 14, wherein the housing includes an inlet through which the activator liquid can be distributed into the housing.
It is noted that “through which the activator liquid can be distributed into the housing” is an intended use limitation of the claim.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Nomura, et al. (U.S. Patent Application Publication 2006/0022634 A1), in view of Murayama, et al. (U.S. Patent Application Publication 2020/0365855 A1).
In reference to Claim 16, Nomura does not teach that the swelling body is composed of foam.
Instead, he teaches that the swelling bodies of his invention may suitably comprise non-woven fabric as a structural support (paragraph [0032]).
To solve the same problem of providing a battery pack with material disposed between adjacent batteries, Murayama teaches that suitable forms of material disposed between adjacent batteries include foam and non-woven fabric (paragraph [0031]). This disclosure suggests that one of ordinary skill in the art would have had a reasonable expectation of success in forming the swelling member of Nomura to comprise a foam support.
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have replaced the non-woven support fabric of the swelling body of Nomura with foam, based on Murayama’s disclosure.
Using foam in the swelling body of Nomura teaches the limitations of Claim 16, wherein the swelling body is composed of foam.
Response to Arguments
Applicant's arguments filed 7/17/2026 have been fully considered and are persuasive.
The Applicant’s arguments regarding the double patenting rejections are persuasive. These rejections are withdrawn in light of the terminal disclaimers filed on 7/17/2026.
The Applicant’s arguments regarding the prior art rejections presented in the prior office action are persuasive. These rejections have been withdrawn, and new grounds of rejection are presented herein.
The Applicant does not appear to argue the rejections of record under 35 U.S.C. 112(b). These rejections have been modified in light of the claim amendments.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SADIE WHITE whose telephone number is (571)272-3245. The examiner can normally be reached 6am-2:30pm ET.
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/SADIE WHITE/Primary Examiner, Art Unit 1721
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