DETAILED 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) “a connector” in claim 1, 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 “connector” must be capable of providing a form of ‘connection’ between the battery module and exterior aspects. While the drawings are clear this is an electrical connector (
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), the Examiner has not restricted it to only electrical or ‘data’ connectors, but the ‘connector’ must be capable of forming some form of ‘connection’. I.e. a simple access panel with a blow-out cover would not be considered a ‘connector’.
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”.
Claim Rejections - 35 USC § 112
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.
Claim 3 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 term “having heat resistance and resistance to fire” in claim 3 is a relative term which renders the claim indefinite. The terms above are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. I.e. what one artisan might consider as being ‘resistant to fire’ or ‘having heat resistance’ would be reasonably expected to be different than another. Does this mean it smolders only? Doesn’t melt? Has a burning point above 100 C? 200 C? 500 C? Etc. For the purpose of evaluating the prior art, the Examiner has allowed for any ceramic, metallic or materially explicitly taught as used for fire prevention or similar.
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.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1, 2, 5, 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by You et al. (U.S. Patent App. No. 2021/0151804 A1). The Examiner notes that You et al. has a WO publication date of Nov. 13, 2020, which is more than 1 year from the effective filing date of the present invention since the claim to Foreign Priority has not been perfected by the filing of a Certified English Translation.
Regarding claim 1, You et al. disclose a battery module (Title; Abstract), comprising: a battery cell stack including a plurality of stacked battery cells (Figures 1 – 3 and at least Paragraphs 0001 – 0021); a case in which the battery cell stack is received (ibid); and a connector coupled to the case and including a flame propagation prevention member (
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).
Regarding claim 2, first body is taken as element 222, second body is taken as element 240, flame propagation prevention member is element 250, and connector pins go through all of these per Paragraphs 0069 – 0070. Figures 1 and 11 illustrate these all as connected to the case.
Regarding claim 5, a plurality of connector pins and holes meeting the claimed limitations are described as set forth above.
Regarding claims 10 and 11, these nominal limitations are met for the reasons set forth above (see also Paragraph 0001).
Claims 1, 10 and 11 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Okada et al. (U.S. Patent App. No. 2012/0164489 A1).
Regarding claim 1, Okada et al. disclose a battery module (Title; Abstract), comprising: a battery cell stack including a plurality of stacked battery cells (Figures 1 – 4 and at least Paragraphs 0010 -0017 and 0037 - 0041); a case in which the battery cell stack is received (ibid); and a connector (elements 4 and 7) coupled to the case and including a flame propagation prevention member (element 7:
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and
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).
Regarding claims 10 and 11, these nominal limitations are met for the reasons set forth above (see also Paragraph 0002).
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.
Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable over You et al. as applied above, and further in view of JP S58118681 U. See provided Abstract and Google Machine Translation of JP ‘681 U.
You et al. is relied upon as described above.
You et al. discloses using a resin material for the stiffener (element 250), which the Examiner deems would fail to meet the claimed ‘heat resistance and resistance to fire’.
However, JP ‘681 U teach a similar connector (albeit not in a battery application) wherein a ceramic material is used in a similar location as the stiffener inorder to provide flame propagation prevention (Figures 3 and 4, element 13, and entire Google Machine Translation vis a vis these Figures).
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 You et al. to use a ceramic material instead of the resin material as the stiffener, as it would not only provide stiffening and shock/vibration resistance, but also provide flame propagation prevention as taught by JP ‘681 U.
Claims 6 – 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over You et al. as applied above.
You et al. is relied upon as described above.
Regarding claims 6 – 9, while You et al. broadly discloses a substantially identical invention, You et al. fails to disclose the specific nuances as claimed in these claims.
However, in all of these claims, the Examiner deems that these are conventional aspects of battery modules that would have fallen under the doctrine of ‘common sense’; i.e. a skilled artisan working in the battery module art would have been well versed in all of these aspects for the reasons recited below and 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 You et al. to meet the specific (and nominal) limitations in these claims as conventional knowledge in the art1.
Regarding claim 6, having a single opening versus multiple smaller openings would have been a routine design choice between improved flame propagation prevention (the multiple smaller openings) and ease of assembly (the single, larger opening). Such a design choice would have been well within the knowledge of a person of ordinary skill in the art.
Regarding claim 7, while not shown in the Figure reproduced above, there must be some fastening means to secure the elements 240, 250 and 222 together, as shown in Figures 1 and 11. Since the material of element 250 is a resin, adding additional holes for some type of fastening means would have been trivial and within the knowledge base of a person of ordinary skill in the art (e.g. simply using a screw to screw all the elements together would create a new ‘hole’/’opening’ in element 250 that would be aligned with the other screw holes).
Regarding claims 8 and 9, using o-rings of silicone or rubber and located in a ‘groove’ around a periphery of two items to be sealed is extremely old in the electrical and mechanical arts as a means to insure that liquid or moisture can’t penetrate the sealing location. Since this is a battery, where liquid or moisture would be unwanted, adding a groove and a rubber or silicon sealant (o-ring) would have been a matter of routine design choice depending on the potential exposure to high humidity, liquids, etc.
Claims 2 – 6, 8 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over Okada et al. as applied above, and further in view of JP S58118681 U. See provided Abstract and Google Machine Translation of JP ‘681 U.
Okada et al. is relied upon as described above.
Regarding claim 2, Okada et al. fails to disclose the structure of a first body, the flame propagation member 7, and a second body meeting the claimed limitations.
However, JP ‘681 U teach a similar connector (albeit not in a battery application) wherein a flame propagation material (element 13) is used between two additional insulative bodies (elements 14 and 15) in order to provide flame propagation prevention and to isolate the two insulative bodies from direct contact (see Figures 3 and 4, element 13, and entire Google Machine Translation vis a vis these Figures).
The Examiner deems that the use of a single metallic flame propagation plate 7 as taught by Okada et al. and one where the plate is sandwiched between a ‘first body’ and a ‘second body’ to provide additional insulative capabilities would have been a matter of routine equivalence, as both structures would provide flame propagation prevention, but one would also provide additional insulative capabilities (albeit at the additional cost and space of the additional insulative materials). Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, using a single layer structure or a three-layered structure meeting the claimed limitations of claim 2 are functional equivalents in the field of suitable flame propagation plates, as recognized by the prior art in the field of connectors. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
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 Okada et al. to use a three-layered structure as taught by JP ‘681 U as the flame propagation member as it would be a functionally equivalent structure that would also provide insulative layers.
Regarding claim 3, the steel taught by Okada et al. (see citations above) reads on the claimed limitations for element 7.
Regarding claim 4, stainless steel is an art recognized functional equivalent to the non-magnetic metals taught by Okada et al. above (see citations above). Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, regular non-magnetic ‘steel’ and ‘stainless steel’ (which is non-magnetic) are functional equivalents in the field of suitable metals for the taught flame resistant plate 7. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claim 5, Okada et al. illustrates 2 (i.e. a plurality) of through-holes, both of which are distinct in passing through the flame propagation prevention member 7 (see Figures and citations above).
Regarding claim 6, having a single opening versus multiple smaller openings would have been a routine design choice between improved flame propagation prevention (the multiple smaller openings) and ease of assembly (the single, larger opening). Such a design choice would have been well within the knowledge of a person of ordinary skill in the art.
Regarding claims 8 and 9, using o-rings of silicone or rubber and located in a ‘groove’ around a periphery of two items to be sealed is extremely old in the electrical and mechanical arts as a means to insure that liquid or moisture can’t penetrate the sealing location. Since this is a battery, where liquid or moisture would be unwanted, adding a groove and a rubber or silicon sealant (o-ring) would have been a matter of routine design choice depending on the potential exposure to high humidity, liquids, etc.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: While no claim has been indicated as allowable, the Examiner notes that the structure shown in Applicants’ Figures; e.g. Figure 2 (
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) wherein a steel plate is located such that the at least one connection pins (per claim 2) pass through it and that it also has the aligned fastening holes (per claim 7) wherein the fastener member fastens the connector to the case through the aligned fastening holes. I.e. a claim including the subject matter of claims 2 and 7, as well as positively reciting that the flame propagation prevention member is a steel plate would appear to distinguish over the prior art, as the prior art (JP ‘681 U) that discloses the similar flame propagation ‘plate’ in such a structural arrangement only teaches using a ceramic material and, because the reference disclosing the metal (steel) plate does not teach the arrangement of fastening members as recited in claim 7, per se.
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
May 29, 2026
1 As additional support for the position that these limitations are considered conventional, the Examiner also points to the supplied Written Opinions of the International Search organizations, which also consider these limitations as not making a contribution over the prior art as conventional to a skilled artisan.
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