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 .
Response to Arguments
Applicant's reply filed 4/24/2026 includes claim amendments and arguments corresponding to the new limitation(s). All Claim Objections and 35 USC 112(a)/(b) rejections set forth in the previous action have been withdrawn due to Applicant’s amendments.
Applicant argues the art of record does not disclose the new independent Claim 25 limitation “one, some or all of the one or more protective films is disposed on a surface of the cover element.” Applicant’s new limitation is supported by several embodiments within the instant disclosure. However, it does not appear this limitation is generic to all embodiments set forth in the dependent claims. See Claim Rejections - 35 USC § 112 for additional detail.
After an updated search and consideration of the amended claims, the claimed invention remains obvious over the previously-cited art.
Claim Rejections - 35 USC § 112(b)
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 41 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.
The structure created by the combination of Claims 25 and 41 is not clear. Independent Claim 25 sets forth an energy storage unit comprising a cover element and at least one protective film, wherein “one, some or all of the one or more protective films is disposed on a surface of the cover element” (see lines 11-12 of Claim 25). This limitation is supported by the instant specification and embodiments including Fig. 9, see protective film (300) and cover element (160) as an example:
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However, dependent Claim 41 recites “The energy storage unit according to claim 25, wherein one, some or all of the one or more cover elements is formed by one of the one or more protective films.” Claim 41 appears to represent an embodiment different than Claim 25. Claim 41 appears to correspond to the embodiment where a protective film may be “used directly as a cover element,” eliminating the need for a protective film and a cover element. See [0024]:
[0024] In particular, one, some or all chamber(s) may have an opening sealed wholly or partly watertight by a cover element. In this regard, reference is made to the description given elsewhere. One, some or all cover elements may especially be formed by a respective protective film. In other words, the protective film may be used directly as [a] cover element, meaning that it not only fulfills the protective function already described in the case of a thermal event but also seals the chamber, especially against the ingress of water. Reference is made to the details given elsewhere relating to the cover element.
Claim 41, when read in combination with Claim 25 and in light of the instant specification, has multiple interpretations:
Does Claim 41 set forth an energy storage unit comprising a protective film, but does not have a cover element (i.e., “the protective film may be used directly as [a] cover element”)? This conflicts with Claim 25, which positively recites a cover element and a protective film as separate components, disposed on each other. Under this interpretation, Claim 41 would also be rejected under 35 USC 112(d) for failing to include all the limitations of the claim upon which it depends.
Does Claim 41 set forth an energy storage unit comprising the protective film and cover element of Claim 25, and then replaces the cover element with an additional protective film? Examiner cannot locate support for this interpretation in the instant disclosure.
Does Claim 41 require the cover element and protective film of Claim 25 be “formed by” or comprise at least one of the same materials? This interpretation is very narrowly supported, as the instant specification teaches only one overlapping material (polyethylene) used in both the protective film ([0015]) and the cover element ([0085]). For the purpose of this action, Claim 41 will be examined under this interpretation, as it is best supported by the instant disclosure.
Further clarification of Claim 41 is requested. Applicant is encouraged to either amend Claim 25 with limitation(s) generic to all embodiments, or keep Claim 25 as written and only set forth dependent claims applicable to the embodiment(s) using the structure of Claim 25.
Appropriate correction is required.
Claim 41 also recites “one, some or all of the one or more cover elements” on line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim. Claim 25, from which Claim 41 depends, only recites one cover element (see “a cover element” on line 10 of Claim 25).
Appropriate correction is required.
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 25, 27, 36, 37, 39, 41, 43-45, 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; Annotated Fig. 5C), 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, 0065], Figs. 5C and 17; “protective film” met by 40 being a layer that protects the battery module by facilitating the removal of high-temperature battery gas ([0009-0012]),
wherein 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);
wherein one, some or all of the one or more chambers (50) has an opening sealed watertight by a cover element (housing space 50 is hermetically sealed by the flat plate 30 [0049-0053]; claimed “cover element” comprises the flat plate 30 and side wall 41 structure [0065], Fig. 5C).
Regarding the limitation “wherein one, some or all of the one or more protective films is disposed on a surface of the cover element,” Itoi does not disclose the side wall 41 is integral to the partition 40 structure ([0102], see Figs. 17A-B). Since each first space 61 for gas accumulation is defined by a protective film (partition 40) and cover element (flat plate 30 and side walls 41, see Fig. 5C), and the only path of egress for gas in each first space 61 is through the holes 40a in the partition 40 ([0062-0070]), “one, some or all of the one or more protective films” (40) must be in sufficient gas-tight contact with “a surface of the cover element” (41).
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Itoi – Annotated Fig. 5C
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 claimed carriers, 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) is/are disposed at a distance from the one or more carriers (second exhaust duct space 62 is established by positioning the partition 40 “at a distance from” the external plate 21 [0049-0052], Fig. 5C).
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, Figs. 2 and 6).
Regarding Claim 41, Itoi discloses all limitations as set forth above. See Claim Rejections - 35 USC § 112 for Examiner’s best understanding and interpretation of the claim. Itoi discloses the cover element (30/41) may be formed by one of protective films (40) (cover element 30/41 and protective film 40 may be made of the same material, see [0085, 0100]).
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 (partition 40) 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 (partition 40 disposed between opening of cell 100 and external plate 21, see Figs. 3 and 5C).
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 [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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 films (40) are thermally stable up to at least 800°C (Claim 26), and also does not disclose the protective film is electrically and thermally 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 thermally and electrically insulating 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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Browning – Fig. 7
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 each of 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 (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 is within the claimed range of “at least 0.05 mm.”.
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 [0004]). Browning teaches 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]), with thicknesses as small as 0.05 mm ([0037]).
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.
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
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY C GARCIA/Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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