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 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.
Claim(s) 1-2 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US20220320665A1 (Nakayama).
Regarding claim 1, Nakayama teaches a power storage device [abs], battery module, comprising: a battery cell stack in which a plurality of battery cells [0025; #101a, 101b, 101c] are stacked [0025, fig 3]; a pair of plate-shaped members provided at both ends of the battery cell stack in a stacking direction [#300; 0039 i.e. insulating sheets]; and a cushioning material [i.e. #500 restriction unit; 0024, 0043] disposed between the plurality of battery cells and/or between the battery cell stack and one of the plate-shaped members, the cushioning material comprising a pair of first elastic members [#510; #520] arranged on both outer sides in the stacking direction of the battery cell stack, a second elastic member [#530; corrugated plate; 0047-0048] disposed between the pair of first elastic members, and a rigid member [#531; 0073 disposed between one of the first elastic members and the second elastic member [fig. 2/3].
Regarding claim 2, Nakayama teaches wherein the second elastic member has a recess or a through hole [0081] .
Regarding claim 6, Nakayama teaches wherein the battery cells are solid-state battery cells [0082].
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.
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.
Claim(s) 3 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20220320665A1 (Nakayama)
Regarding claim 3, Nakayama does not teach wherein the recess or the through hole has a diameter of 4 mm or less. However, it is the Examiners position, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the through hole/recess to have a diameter of 4mm or less as a skilled artisan would easily be able to understand that adjusting the diameters of the through holes/recesses would not alter the way the battery functions. Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In addition, the instant specification teaches these through holes/recesses are can be manufactured using a mold, 3D printer, or a precision water jet [para 41]; therefore, a skilled artisan would easily be able to adjust the diameter of the recess/through holes using the mold/printer and arrive at the claimed dimensions with a reasonable expectation of success.
Regarding claim 4, Nakayama teaches wherein the rigid member is made of resin [0073], however fails to teach the rigid member has a Poisson’s ratio of 0.3 or less.
Poisson’s ratio is an inherent material property that describes how a solid material deforms in directions perpendicular to the direction of an applied load. Poisson’s ratio is inherent because it is a fixed, material-dependent measure of how a solid resists lateral deformation under axial load, rooted in the material’s elastic and thermodynamic properties. It is not an arbitrary parameter but a direct consequence of how the material’s internal structure responds to stress.
Because it arises from the fundamental elastic behavior of a material — the way it resists both shear and volume changes — it is considered an intrinsic property. This means it is determined by the material’s internal structure, bonding, and atomic arrangement, rather than by external conditions like temperature or loading rate (within the elastic range). Therefore, Nakayama inherently teaches the rigid member has as the Poisson’s ratio of 0.3 or less because the value of the Poisson’s ratio is determined by the material i.e. resin (which has a Poisson’s ratio of 0.3-0.35], and which is considered to be an inherent property. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claim 5, Nakayama fails to teach wherein the rigid member comprises stainless steel. However, it is the examiners position, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the resin material with a stainless steel material as this is considered a simple substitution of a known element for another and one would expect a reasonable expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Conclusion
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/S.G./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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