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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has complied with all of the conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 02/16/2024 and 03/22/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings received on 01/16/2024 were reviewed and are acceptable.
Specification
The specification filed on 01/16/2024 was reviewed and is acceptable.
Claim Objections
Claim 1 is objected to because of the following informalities: “the plurality of battery cells is arranged” in line 5 should be replaced with --the plurality of battery cells are arranged--.
Appropriate correction is required.
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(s) 2 and 4-5 is/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 2 recites the limitation “the defined force acts on largest lateral surface of a respective battery cell” in lines 1-2. It is unclear whether this is intended to be the same respective battery cell previously recited in parent claim 1, or another separate and distinct respective battery cell. For purposes of this Office Action, it will be assumed that this was intended to be the same respective battery cell previously recited, as indicated by the claim’s dependency.
Claim 4 recites the limitation “the width of a battery cell is read out” in line 3. It is unclear whether this is intended to be the same battery cell previously recited, or another separate and distinct battery cell. For purposes of this Office Action, it will be assumed that this was intended to be the same battery cell previously recited, as indicated by the preceding use of the term in the claim in line 2.
Appropriate correction is required.
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.
(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.
Claim(s) 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wagner et al. (US 2019/0044113 A1; hereinafter “Wagner”).
Regarding claim 9, Wagner discloses a battery module with a plurality of battery cells (Title).
With respect to the limitations “produced according to the method of claim 1”, in accordance with MPEP 2113, the method of forming the device is not germane to the issue of patentability of the product itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself. "The patentability of a product, i.e.----, does not depend on its method of production, i.e.----." In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985). Because patentability of product claims are based on the product’s structure, and Wagner discloses the claimed structure, the process limitations are not afforded patentable weight since such limitations do not appear to provide the claimed product with patentably distinct structure.
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) 1-3, 7-8, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wagner et al. (US 2019/0044113 A1; hereinafter “Wagner”) in view of Kim (KR 20130053753 A; see attached machine translation for reference).
Regarding claim 1, Wagner discloses a method for producing a battery module (Title) having a plurality of prismatic battery cells (2; see also [0013] which describes the battery cells may be prismatic),
wherein, in a second method step, the plurality of battery cells [are] arranged adjacent to one another in a longitudinal direction of the battery module (as shown in Fig 1, 10 denotes the longitudinal direction, [0030]), and
furthermore, a compensating element (partitions 4) is arranged between two battery cells that are arranged directly adjacent to one another (as shown in Fig 1), wherein
a width of the compensating element is formed in such a way that a sum of the widths of the two battery cells arranged directly adjacent to one another and the width of the compensating element has a defined value, so that the battery module has a defined overall width (it is submitted that any battery cell and any partition necessarily have a certain width, i.e. thickness, such that a sum of the widths equal a defined value, and thus any battery module necessarily has a defined overall width).
However, Wanger does not disclose a first method step wherein a width of a battery cell is detected when a defined force is applied to a respective battery cell.
Kim teaches a thickness measuring apparatus (Title). Kim teaches that a thickness measuring device is provided to precisely control pressure being applied to a battery cell in order to measure and indicate a thickness of the battery cell (Abstract). Kim teaches that such a device makes it possible to easily select whether a battery cell is good by displaying the measured thickness (Technical Field, pg. 18).
Wagner and Kim are analogous prior art to the current invention because they are concerned with the same field of endeavor, namely methods of producing battery cells.
Before the effective filing date of the current invention, it would have been obvious to one having ordinary skill in the art to utilize the method of Kim as a first method step in the assembly method of Wanger with the reasonable expectation that doing so before assembly of the battery module would enable the skilled artisan to determine if a particular battery cell is good, as suggested by Kim.
Accordingly, the skilled artisan would find it obvious that modified Wagner discloses a first method step wherein a width of a battery cell is detected (Kim: via thickness measuring apparatus) when a defined force is applied to a respective battery cell (Kim: via precisely controlled pressure).
Regarding claim 2, modified Wagner discloses all of the claim limitations as set forth above.
Modified Wagner further discloses that the defined force acts on largest lateral surfaces of [the] respective battery cell (Kim: as shown in Fig 9, battery cell is labeled “C”).
Regarding claim 3, modified Wagner discloses all of the claim limitations as set forth above.
Modified Wagner further discloses that the defined force is applied by two plates (Kim: push plate 200 and base plate 120), wherein the respective battery cell is arranged between the two plates (Kim: as shown in Fig 9, battery cell is labeled “C”).
Regarding claim 7, modified Wagner discloses all of the claim limitations as set forth above.
Modified Wagner further discloses that compensating elements with identical widths are used (Wagner: as shown in Fig 1),
wherein a total width is formed as a sum of all widths on the plurality of battery cells (it is submitted that a total width is necessarily formed as a sum of all individual widths), and then
the total width is subtracted from the defined total width of the battery module (it is submitted that a total width of all battery cells necessarily must be subtracted from the overall width of the battery module because the battery module total width necessarily includes the total width of all battery cells within the module), and finally
the identical widths are distributed identically over a resulting difference (Wagner: as shown in Fig 1).
Regarding claim 8, modified Wagner discloses all of the claim limitations as set forth above.
Modified Wagner further discloses that the formation of the total width further compromises a calculation of an average width (it is submitted that an average width of identical width battery cells is necessarily the average width of the same battery cells)m and
the total width is calculated as a product of the average width and the number of battery cells (it is submitted that a total width of a number of identical width battery cells is necessarily the product of the average width and the number of battery cells).
Regarding claim 10, modified Wagner discloses all of the claim limitations as set forth above.
Modified Wagner further discloses that the plurality of battery cells are lithium-ion battery cells (Wagner: Abstract).
Allowable Subject Matter
Claims 4 and 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The present invention is related to, inter alia, a method for producing a battery module comprising:
(claim 4) in the second method step, the width of [the] battery cell is read out and assigned to the respective battery cell; and
(claim 6) wherein compensating elements with different widths are used.
Wagner et al. (US 2019/0044113 A1; hereinafter “Wagner”) in view of Kim (KR 20130053753 A; see attached machine translation for reference) is considered to be the closest relevant prior art to dependent claims 4 and 6. Wagner in view of Kim discloses most of the claim limitations as set forth above.
However, Wagner in view of Kim does not disclose, teach, fairly suggest, nor render obvious the above noted limitations. To the contrary, with respect to claim 4, Kim explicitly discloses that measuring and displaying thicknesses of battery cells enables one to determine if a battery cell is good nor not (as noted above), and thus there does not appear to be any reasonable basis for the skilled artisan to display the measurement in the step of arranging the battery cells because the battery cells would have already been determined, via the displaying of the thicknesses, whether to be assembled or not, via the “good” determination. With respect to claim 6, Wanger explicitly discloses compensating elements of identical thicknesses (as noted above), and further discloses that springs (6) accommodate deformation and force applicaiton (Abstract), and thus there does not appear to be any reasonable basis for the skilled artisan to abandon the structure of Wagner and be directed towards unequal thicknesses because doing so would interfere with the spring constants, and thus interfere with determination of deformation and/or force applied.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/436912 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim(s) are substantially identical and recite substantially identical subject matter
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M ERWIN whose telephone number is (571)272-3101. The examiner can normally be reached Monday-Friday: 6am-3pm PDT.
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/JAMES M ERWIN/
Primary Examiner, Art Unit 1725 08/05/2026
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