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 .
Claim Objections
Claim 29 is objected to under 37 CFR 1.75 as being a substantial duplicate of Claim 28. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Please amend or cancel Claim 29.
Appropriate correction is required.
Claim 48 is objected to for the following informality: Claim 48 recites “A vehicle having an energy storage unit according to claim 25.” Although the claim is not indefinite or unclear, please change the limitation “an energy storage unit” to “the energy storage unit” to ensure proper antecedent basis.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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 35 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 35 recites “The energy storage unit according to claim 25, wherein one, some or all of the one or more protective films has been applied atop at least one of the carriers.” Applicant’s use of “atop” in Claim 35 indicates at least one of the protective films are positioned on the “top” or upper surface of the carrier. This claimed structure is not supported by the instant disclosure. Applicant’s carrier (element 15, Fig. 1) is the outermost component in the energy storage unit, and there are no other components (such as a protective film) “atop” or “above” the carrier:
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The instant disclosure at [0019] teaches “one, some or all protective film(s) may especially have been applied to at least one of the carriers.” Applicant’s use of “applied to” more accurately describes the structure taught by the instant disclosure, as the protective film is applied to the carrier, but is not located “atop” or “above” the carrier. See Figs. 10 and 11 for the protective film 300 applied to an interior surface of the carrier 15, facing the battery cells 20:
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Examiner recommends removing the word “atop” from Claim 35, and amending the claim to describe the position of the protective film relative to the carrier with terminology supported by the instant disclosure.
For the purpose of this action, Claim 35 will be examined as “The energy storage unit according to claim 25, wherein one, some or all of the one or more protective films has been applied to at least one of the carriers.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 26, 27, 33, 34, 37, 41, and 42 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 26 recites “The energy storage unit according to claim 25, wherein the protective films are thermally stable up to at least 800°C.” The limitation “the protective films” is unclear and can be interpreted two different ways. Is the claim now requiring the energy storage unit to comprise more than one protective film? Examiner notes Claim 25 (from which Claim 26 depends) recites “one or more protective films” on line 4 of the claim. It is unclear whether or not the claim limitations are met with an energy storage unit having one protective film with the claimed thermal stability.
Or, is “the protective films” a typographical error for “the one or more protective films”? For the purpose of this action, and based on the recitation of “the one or more protective films” in numerous dependent claims, Claim 26 will be examined as “The energy storage unit according to claim 25, wherein the one or more protective films is thermally stable up to at least 800°C.”
Appropriate correction is required.
Claim 27 recites “The energy storage unit according to claim 25, wherein the carriers form an electrical ground of the energy storage unit.” The limitation “the carriers” is unclear and can be interpreted two different ways. Based on the use of “carriers,” is the claim now requiring the energy storage unit to comprise more than one carrier? Examiner notes Claim 25 (from which Claim 27 depends) recites “one or more carriers” on line 3 of the claim. It is unclear whether or not the claim limitations are met with an energy storage unit having one carrier that forms an electrical ground.
Or, is “the carriers” a typographical error for “the one or more carriers” (see Claim 36), or a
similar expression? For the purpose of this action, Claim 27 will be examined as “The energy storage unit
according to claim 25, wherein the one or more carriers form an electrical ground of the energy storage unit.”
Appropriate correction is required.
Claim 33 recites “The energy storage unit according to claim 25, wherein the one or more protective films has a thickness of at least 0.05 mm.” Since the claimed invention permits the energy storage unit to comprise more than one protective film, Claim 33 is not clear whether each of “the one or more protective films” individually has a thickness of at least 0.05 mm, or if a total (i.e., combined) thickness of the protective films is at least 0.05 mm.
For the purpose of this action, the claim will be examined as “the one or more protective films each has a thickness of at least 0.05 mm.”
Appropriate correction is required.
Claim 34 recites “The energy storage unit according to claim 25, wherein the one or more protective films has a thickness of not more than 0.1 mm.” Since the claimed invention permits the energy storage unit to comprise more than one protective film, Claim 34 is not clear whether each of “the one or more protective films” cannot have a thickness exceeding 0.1 mm, or if a total (i.e., combined) thickness of the protective films cannot exceed 0.1 mm.
For the purpose of this action, the claim will be examined as “the one or more protective films each has a thickness of not more than 0.1 mm.”
Appropriate correction is required.
Claim 37 recites “The energy storage unit according to claim 25, wherein one, some or all of the one or more protective films has been applied at a distance from the one or more carriers.” Applicant’s
limitation “has been applied at a distance” is unclear and has at least two different interpretations.
The limitation “has been applied at a distance” can be interpreted as a product-by-process limitation, to reference a step in manufacturing or assembling the energy storage unit. The limitation “has been applied at a distance” can also be interpreted as a structural limitation, to establish a position of the protective film(s) and the carrier(s) in an assembled energy storage unit. Further clarification of this limitation is needed.
Examiner notes [0020] of the instant specification discloses “some or all protective film(s) is/are disposed at a distance from the carriers,” which implies a structural limitation. Thus, for the purpose of this action, the claim will be examined as “one, some or all of the one or more protective films is/are disposed at a distance from the one or more carriers.”
Appropriate correction is required.
Claim 41 recites “The energy storage unit according to claim 40, wherein one, some or all of the one or more cover elements is formed by a respective protective film.” Applicant’s limitation “a respective protective film” is unclear and has at least two different interpretations.
The limitation “a respective protective film” can be interpreted to reference the “one or more protective films” of Claim 25. The limitation can also be interpreted as an additional protective film that is not required to correspond to the protective film of Claim 25.
Examiner notes [0084-0089] of the instant specification discloses the cover element may be the protective film of Claim 25, but the two films may also have different structures/compositions. For the purpose of this action, the claim will be examined under the broadest reasonable interpretation, wherein “a respective protective film” of Claim 41 is a film not required to correspond to the “one or more protective films” of Claim 25.
Appropriate correction is required.
Claim 42 recites “The energy storage unit according to claim 40, wherein one, some or all of the one or more protective films has been applied atop at least one cover element in each case.” Applicant’s limitation “in each case” is unclear and has at least two different interpretations.
The limitation “in each case” can be interpreted as a reference to a battery case, but “a case” has not been claimed as a component of the energy storage unit. Is “each case” in reference to “the one or more housings” of Claim 38? The limitation “in each case” can also be interpreted an expression for “in each circumstance” and not an actual, physical component of the energy storage unit. Examiner notes “in each case” appears to be used as an expression in [0005, 0023-0026, 0040] of the instant specification, but appears to be used to reference a physical “case” in [0068-0069, 0128]. Further clarification of this limitation is needed.
As the limitation “in each case” does not appear to impart any additional structural limitations on Claim 42, for the purpose of this action, the claim will be examined as “The energy storage unit according to claim 40, wherein one, some or all of the one or more protective films has been applied atop at least one cover element
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 25, 27, 36-46, 47, and 48 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Itoi et al., US 20120164490 A1.
Regarding Claim 25, Itoi discloses an energy storage unit for storing electrical energy (battery module 200 [0012, 0048], Figs. 2-6), comprising:
one or more energy storage cells (plurality of cells 100 [0049], Figs. 2 and 4-6);
one or more carriers (external plate/lid 21 [0051]); and
one or more protective films disposed between the one or more energy storage cells and the one or more carriers (partition 40 [0051-0052]).
Regarding the limitation “protective film,” Itoi meets the limitation by disclosing the partition (40) is a “film” layer that “protects” the battery module by facilitating the removal of high-temperature battery gas from the module ([0009-0012]).
Regarding Claim 27, Itoi discloses all limitations as set forth above. The claim recites “the one or more carriers form an electrical ground of the energy storage unit,” which is considered intended use. 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 structural limitations of the claim, and Claim 27 does not recite any additional structural limitations necessary to achieve the intended use (i.e., to “form an electrical ground of the energy storage unit”), the prior art meets the claim.
Examiner notes in the instant specification, Applicant discloses the function of the carrier as “a ground” or “an electrical ground” is achieved by forming the carrier from aluminum:
[0009] The carriers may especially form an electrical ground of the energy storage unit. This permits the use of a comparatively heavy and/or bulky structure for provision of an electrical ground. The protective films mentioned can especially prevent a short circuit in the event of a fault on account of the use of such an electrical ground. In other words, it has been recognized that cell terminals, for example, the plus and minus poles of a cell, and current- and voltage-conducting cell connectors may be locally very close to a mechanical structure component made of aluminum (electrical ground), thus resulting in very small distances between the voltage-bearing components and electrical ground. For example, in the case of an 800 V storage system, compliance with airgap distances and leakage gap distances may be important in order to avoid insulation faults, short circuits and other faults.
[00113] The energy storage unit 10 has two carriers 15 that are shown schematically at the side and ensure mechanical stability. For example, they may be part of a housing (not shown in detail). They may especially be formed from aluminum and may form a ground for the energy storage unit 10.
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. Even assuming, arguendo, that Claim 27 also recited a structural limitation such as “the carrier is made of aluminum” (in order to “form an electrical ground”), Itoi discloses this limitation. Itoi discloses the external plate/lid 21 (analogous to the claimed carrier) “may be made of a material having a high thermal conductivity, such as aluminium” ([0067]), and in an alternate embodiment, also discloses “The top of the case 20 is covered with a metal (e.g., aluminium) external plate (lid) 21 ([0100]).Regarding Claim 36, Itoi discloses all limitations as set forth above. Itoi discloses the one or more carriers (21) has been wholly or partly covered by the one or more protective films (partition 40 is placed between the flat plate 30 and an external plate 21 [0051], Figs. 2, 5, and 6).
Regarding Claim 37, Itoi discloses all limitations as set forth above. Itoi discloses one, some or all of the one or more protective films (40) has been applied at a distance from the one or more carriers (to form exhaust duct second space 62, the partition 40 is “at a distance from” external plate 21 [0049-0052], Figs. 2, 5, and 6).
Regarding Claim 38, Itoi discloses all limitations as set forth above. Itoi discloses the energy
storage unit has one or more housings (case 20) in which there are formed one or more chambers (space 50) into which the energy storage cells partially extend (space 50 in side walls of case 20 houses the cells 100 [0049-0053, 0080], see Fig. 2).
Regarding Claim 39, Itoi discloses all limitations as set forth above. Itoi discloses one, some or all of the one or more protective films (40) has been applied to one or more of the housings (partition 40 divides the case into a housing space and exhaust duct [0009], partition 40 contacts side walls of case 20 in Figs. 2 and 6).
Regarding Claim 40, Itoi discloses all limitations as set forth above. Itoi discloses one, some or all of the one or more chambers (50) has an opening sealed watertight by a cover element (flat plate 30) (housing space 50 is hermetically sealed by the flat plate 30 [0049-0053], Fig. 2).
Regarding Claim 41, Itoi discloses all limitations as set forth above. Itoi discloses one, some or all of the one or more cover elements (30) is formed by a protective film (flat plate 30 may be an insulating member [0085]; “protective film” met by insulating capability of the plate).
Regarding Claim 42, Itoi discloses all limitations as set forth above. Itoi discloses one, some or all of the one or more protective films (40) has been applied atop at least one cover element (partition 40 placed above flat plate 30 [0051-0052]).
Regarding Claim 43, Itoi discloses all limitations as set forth above. Itoi discloses one, some or all of the one or more energy storage cells (100) has at least one pressure relief opening (gas generated in the cell 100 is released through a path including a through hole 13a in inner cap 13 [0046], Figs. 1 and 4), and wherein a protective film (flat plate 30) is disposed between one, some or all of the at least one pressure relief opening and at least one of the one or more carriers (flat plate 30 may be an insulating member [0085]; “protective film” met by insulating capability of the plate; Annotated Figs. 1 and 4).
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Itoi – Annotated Figs. 1 and 4
Regarding Claim 44, Itoi discloses all limitations as set forth above. Itoi discloses one, some or all of the one or more protective films (40) completely covers a cross section between a carrier (21) and one or more energy storage cells (100) (see cross-section of module 200 in Figs. 2, 5, and 6).
Regarding Claim 45, Itoi discloses all limitations as set forth above. Itoi discloses the energy storage cells (100) are designed as round cells and/or wherein longitudinal axes of the energy storage cells are aligned parallel to one another (cell 100 is a cylindrical lithium ion secondary battery [0043]).
Regarding Claim 47, Itoi discloses all limitations as set forth above. Itoi discloses the one or more carriers (21) mechanically stabilize the energy storage unit (external plate 21 is a component of case 20, which houses and secures cells with ribs 24 [0049-0051], Fig. 2).
Regarding Claim 48, Itoi discloses all limitations as set forth above. Itoi discloses a vehicle having the energy storage unit (power source for driving automobiles, electric motorcycles, and electric play equipment [0123]).
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, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 26, 28-31, and 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Itoi as applied to Claim 25 above, and further in view of Browning et al., US 20210376405 A1.
Regarding Claims 26, 28, and 29, Itoi discloses all limitations as set forth above. Itoi does not disclose the one or more protective film (partition 40) is thermally stable up to at least 800°C (Claim 26), and also does not disclose the protective film is electrically insulating (Claims 28 and 29). However, these limitations are taught by Browning.
Browning teaches a composite material layer for an electric vehicle battery pack (composite material 500 [0024], Figs. 7-8). Browning teaches the composite material layer is thermally stable, fire resistant, electrically insulating, and has “adequate thermal performance” in temperatures up to about 1000° C, which makes the composite material effective at preventing or slowing the spread of a thermal runaway event ([0038, 0044-0052]). Browning also teaches a battery pack, wherein a plurality of battery cells are wrapped, covered or lined with the protective composite material layer ([0049-0054]).
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to use the composite material layer of Browning, as the protective film of Itoi, in order to prevent or slow the spread of a thermal runaway event in the energy storage unit.
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Regarding Claims 30, 31, and 33, Itoi discloses all limitations as set forth above. Itoi does not disclose the one or more protective films comprises a carrier material and one or two layers applied to the carrier material (Claim 30), wherein the one or two layers is formed from mica or true mica (Claim 31). Itoi also does not disclose the one or more protective films has a thickness of at least 0.05 mm (Claim 33). However, this limitation is taught by Browning.
Browning teaches a composite material layer for an electric vehicle battery pack (composite material 500 [0024], Figs. 7-8) comprising a carrier material (porous core layer 540 [0024-0025]) and one or two layers applied to the carrier material (flame barrier layer 520 [0024]). Browning teaches when the flame barrier layer is formed from mica, the layer is fire resistant, flame retardant, and electrically insulating ([0006-0009, 0037-0038], mica tape [0083-0084]). Browning teaches the mica layer should have a thickness from 0.05 mm to 1 mm ([0037]), which would make the composite material layer have “a thickness of at least 0.05 mm” as claimed.
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to use the composite material layer of Browning, as the protective film of Itoi, as Browning teaches a composite material layer comprising a carrier material and at least one mica layer offers benefits such as fire resistance, flame retardance, and electrical insulation.
Regarding Claim 34, Itoi discloses all limitations as set forth above. Itoi does not disclose the one or more protective films has a thickness of not more than 0.1 mm (Claim 34).
Browning teaches the space allowed for thermal barrier materials in many electric vehicles can be quite limited (e.g., less than 5 mm), therefore thermal barrier materials should be thin, lightweight materials that provide a high thermal gradient when exposed to high temperature ([0004-0005]). Browning teaches benefits to including each of the separate layers in the multilayered thermal barrier ([0019-0025]), but also advises some thermal barriers may only have a total thickness less than or equal to 4 mm ([0005, 0023]).
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to optimize the thickness of the protective film in the energy storage unit of Itoi, by including enough layers in the film to achieve the desired thermal barrier benefits, yet also achieve a thin enough film to fit in an energy storage unit, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art [MPEP 2144.05].
Regarding Claim 35, Itoi discloses all limitations as set forth above. Itoi does not disclose one, some or all of the one or more protective films has been applied to at least one of the carriers. However, this limitation is taught by Browning.
Browning teaches a composite thermal/flame barrier material layer for an electric vehicle battery pack (composite material 500 [0024], Figs. 7-8). Browning teaches the layer may be used as a lid or pack liner a battery module, and doing so should prevent heat from flowing from a failing cell or module to an adjacent cell or module or the vehicle passenger compartment ([0046, 0053]). Browning also teaches the layer may prevent or reduce the rate of heat flow out of the battery pack ([0046]). Examiner notes Itoi teaches the energy storage unit may be used in electric vehicles (Itoi, [0002, 0123]).
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to apply the protective film of Itoi to at least one carrier, in the energy storage unit of Itoi, and would have a reasonable expectation of success in doing so, as Browning teaches a thermal/flame barrier towards the top of the battery module or unit will help prevent heat from entering the passenger compartment.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over modified Itoi as applied to Claims 25 and 30 above, and further in view of Mack et al., US 20160336578 A1.
Regarding Claim 32, modified Itoi discloses all limitations as set forth above. Modified Itoi does not disclose the carrier is polyethylene. However, this limitation is taught by Mack.
Mack teaches polyethylene may be used as a shielding material to protect batteries from sparks in a battery module (shield 80 [0039-0051], Fig. 5). Mack teaches polyethylene is an electrically insulating shielding material that does not melt at high temperatures, and also teaches a combination of polypropylene and mica ([0048]).
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to use polyethylene as the carrier material in the protective film of modified Itoi, and would have a reasonable expectation of success in doing so, as Mack teaches polyethylene is an electrically insulating shielding material that can protect batteries from damaging sparks.
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Mack – Fig. 5
Claim 46 is rejected under 35 U.S.C. 103 as being unpatentable over Itoi as applied to Claim 25 above, and further in view of Chan, US 20180138478 A1.
Regarding Claim 46, Itoi discloses all limitations as set forth above. Itoi does not disclose “the energy storage cells are designed as prismatic cells.” However, Chan teaches this limitation.
Chan teaches a plurality of cells 201 are arranged within the battery module 200, wherein the cell can be cylindrical, button, prismatic, or pouch-shaped ([0025]). Chan teaches a selection of the cell shape is dependent upon the desired arrangement orientation of the cells in the module (cylindrical cells can be arranged in staggered rows, prismatic cells can be arranged in parallel rows [0025]). Chan also teaches prismatic cells may be used in battery modules with gas venting capabilities ([0030-0031]).
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to have the energy storage cells be prismatic cells, in the energy storage module of modified Itoi, and would have a reasonable expectation of success in doing so, as Chan teaches prismatic cells may be used in battery modules with gas venting capabilities.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY C GARCIA whose telephone number is (571)272-2475. The examiner can normally be reached Mon-Fri, 0800 - 1730 MT.
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/BETHANY C GARCIA/Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721