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.
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”.
Election/Restrictions
Applicants’ election of Group I (claims 1 – 11 and 13) in the reply filed on July 28, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)). Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1 – 11 and 13 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 pre-AIA the applicant regards as the invention.
The term “closely” in claim 1 (and by dependency, claims 2 – 11 and 13) is a relative term which renders the claim indefinite. The term “closely” is 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. For the purpose of evaluating the prior art, the Examiner has interpreted this limitation as simply reciting “… are attached …”. The Examiner notes that this term also occurs in claim 2 and is indefinite in claim 2 for the same reasons.
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.
Claims 1 – 11 and 13 are rejected under 35 U.S.C. 103(a) as being unpatentable over IDS reference Suga (U.S. Patent App. No. 2014/0023897 A1).
The Examiner notes that this is reference D1 in the supplied European Written Opinion and the following rejection is a substantial duplicate of the rejection set forth therein.
Regarding claim 1, Suga discloses a battery, comprising battery cells (see element 320) arranged in a first direction and provided with terminal posts (see elements 331, 341), wherein an extending direction of the terminal posts protruding from the ends of the battery cells is perpendicular to the first direction; and a sampling apparatus (see circuit board 350) comprising a sampling element having a built-in sampling signal line (see elements 301, 302), mounting portions (see element 351) are formed on the sampling element and match side shapes of the terminal posts (see elements 331, 341), so that the mounting portions are attached to the terminal posts (see Fig 1-6, and Paragraphs 0034 - 0105).
Suga fails to clearly teach that the mounting portions and terminal posts are “closely attached” as claimed.
However, as the mounting portions and the terminal posts are electrically connected (see "connected by a wiring for detecting a voltage via a connector", in Paragraph 0045), it is implicit that the sampling apparatus further comprises connection portion therefor.
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 Suga to ensure that the mounting portions and terminal posts are “closely attached” as this would allow voltage connection as required.
Regarding claim 2, Suga discloses cylindrical terminal posts (see elements 331, 341) and the mounting portion (see element 351) comprises arc-shaped portions attached thereto (see Fig 1-6).
Regarding claim 3, the use of adhesive ‘double sided tape’ to adhere objects is clearly within the knowledge of a person of ordinary skill in the art and would have been a matter of routine selection for allowing for removal adhesion characteristics. For support of this position, see the EPO Written Opinion citations, which clearly state that this subject matter is deemed routine and obvious (see also the various art cited herewith on the PTO-892 and PTO-1449s, many of which disclose various forms of adhesion or welding to secure elements within a battery module).
Regarding claim 4, the use of adhesive ‘double sided tape’ to adhere objects is clearly within the knowledge of a person of ordinary skill in the art and would have been a matter of routine selection for allowing for removal adhesion characteristics. For support of this position, see the EPO Written Opinion citations, which clearly state that this subject matter is deemed routine and obvious (see also the various art cited herewith on the PTO-892 and PTO-1449s, many of which disclose various forms of adhesion or welding to secure elements within a battery module).
Regarding claim 5, the use of adhesive ‘double sided foam tape’ to adhere objects is clearly within the knowledge of a person of ordinary skill in the art and would have been a matter of routine selection for allowing for removal adhesion characteristics. For support of this position, see the EPO Written Opinion citations, which clearly state that this subject matter is deemed routine and obvious (see also the various art cited herewith on the PTO-892 and PTO-1449s, many of which disclose various forms of adhesion or welding to secure elements within a battery module). The added limitation of a ‘foam’ tape is not deemed to convey patentable subject matter as a skilled artisan would recognize the functional equivalence of a wide range of adhesive tapes as serving a similar function.
Regarding claim 6, the use of a welding pad and welding to adhere objects is clearly within the knowledge of a person of ordinary skill in the art and would have been a matter of routine selection for allowing for removal adhesion characteristics. For support of this position, see the EPO Written Opinion citations, which clearly state that this subject matter is deemed routine and obvious (see also the various art cited herewith on the PTO-892 and PTO-1449s, many of which disclose various forms of adhesion or welding to secure elements within a battery module).
Regarding claim 7, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the dimensions of the welding pad through routine experimentation, especially given the knowledge in the art that space is limited in a battery module and a skilled artisan would have been well versed in using appropriate shapes and dimensions depending on the available space. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 8, Suga discloses that the sampling element is a flexible printed circuit board (see circuit board 350 and relevant disclosure) meeting the claimed limitations.
Regarding claim 9, Suga discloses temperature measurement (see Paragraph 0051) using ‘temperature sensors’. The Examiner notes that a thermistor is well established as a known ‘temperature sensor’ and such a selection would have been a routine selection from known, functionally equivalent ‘temperature sensors’ for measuring the temperature as claimed.
Regarding claim 10, Suga discloses the sampling apparatus (see element 350) connected to a battery management system (see element 100) via a connector (see Figures 1 – 2 and element 401).
Regarding claim 11, Suga discloses the battery cells in a row (see Figures 2 - 3) and battery cells in each row of the battery cells are connected in series (see Paragraph 0041). Duplication of parts to ensure that there are a plurality of sampling apparatus and that each battery has its own sampling apparatus would have been a routine design choice based on the number of batteries and how accurate the measurements would be; i.e. it would be obvious to want to monitor each individual battery within the battery module to know the SOH of each individual battery.
Regarding claim 13, Suga discloses a vehicle comprising the battery (see Paragraph 0035 and Figure 1).
Claims 1 – 11 and 13 are rejected under 35 U.S.C. 103(a) as being unpatentable over IDS reference Gong et al. (WO 2015/149275 A1). See provided Google Machine Translation of WO ‘275 A1 for page number citations.
Regarding claim 1, Gong et al. discloses a battery, comprising battery cells (Figures; e.g. see Figure 2, elements 119) arranged in a first direction and provided with terminal posts (see page 5, positive and negative poles), wherein an extending direction of the terminal posts protruding from the ends of the battery cells is perpendicular to the first direction (Figure 2); and a sampling apparatus (see circuit board 1131 and signal processing module 1133; pages 5 - 6) comprising a sampling element having a built-in sampling signal line (ibid, Figure 2, and see discussion on probes mounted in plugs to monitor the state of the battery on pages 8 - 9), mounting portions (ibid) are formed on the sampling element and match side shapes of the terminal posts (ibid), so that the mounting portions are attached to the terminal posts (ibid).
Gong et al. fails to clearly teach that the mounting portions and terminal posts are “closely attached” as claimed and the above teaching of a ‘built-in sampling signal line’ relied upon different language, but what the Examiner has taken as equivalent intent.
However, as the mounting portions and the terminal posts are electrically connected and measure the SOH of the battery cells, it is implicit that the sampling apparatus further comprises connection portion therefor. This also appears to be explicitly shown in Figure 2, even if not explicitly spelled out (i.e. the mounting portions appear to be in physical contact with the protruding terminal posts of the battery cells). In addition, having a ‘built-in sampling signal line’ would have been routine and obvious, as without a signal line to report the SOH of the battery cell to a monitoring device, the measurement would have been of little use.
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 Gong et al. to ensure that the mounting portions and terminal posts are “closely attached” as this would allow proper measuring of the SOH of each battery and to ensure a ‘built-in sample signal line’ to allow for the SOH conditions to be reported to a monitoring device.
Regarding claim 2, Gong et al. discloses cylindrical terminal posts (see Figure 2) and the mounting portion (ibid) comprises arc-shaped portions attached thereto (ibid).
Regarding claim 3, the use of adhesive ‘double sided tape’ to adhere objects is clearly within the knowledge of a person of ordinary skill in the art and would have been a matter of routine selection for allowing for removal adhesion characteristics. For support of this position, see the EPO Written Opinion citations, which clearly state that this subject matter is deemed routine and obvious (see also the various art cited herewith on the PTO-892 and PTO-1449s, many of which disclose various forms of adhesion or welding to secure elements within a battery module). In addition, the Examiner notes that Gong et al. explicitly teach using either ‘adhesive or solder’ (i.e. welding) to adhere components within the battery module (see page 11).
Regarding claim 4, the use of adhesive ‘double sided tape’ to adhere objects is clearly within the knowledge of a person of ordinary skill in the art and would have been a matter of routine selection for allowing for removal adhesion characteristics. For support of this position, see the EPO Written Opinion citations, which clearly state that this subject matter is deemed routine and obvious (see also the various art cited herewith on the PTO-892 and PTO-1449s, many of which disclose various forms of adhesion or welding to secure elements within a battery module). In addition, the Examiner notes that Gong et al. explicitly teach using either ‘adhesive or solder’ (i.e. welding) to adhere components within the battery module (see page 11).
Regarding claim 5, the use of adhesive ‘double sided foam tape’ to adhere objects is clearly within the knowledge of a person of ordinary skill in the art and would have been a matter of routine selection for allowing for removal adhesion characteristics. For support of this position, see the EPO Written Opinion citations, which clearly state that this subject matter is deemed routine and obvious (see also the various art cited herewith on the PTO-892 and PTO-1449s, many of which disclose various forms of adhesion or welding to secure elements within a battery module). In addition, the Examiner notes that Gong et al. explicitly teach using either ‘adhesive or solder’ (i.e. welding) to adhere components within the battery module (see page 11). The added limitation of a ‘foam’ tape is not deemed to convey patentable subject matter as a skilled artisan would recognize the functional equivalence of a wide range of adhesive tapes as serving a similar function.
Regarding claim 6, the use of a welding pad and welding to adhere objects is clearly within the knowledge of a person of ordinary skill in the art and would have been a matter of routine selection for allowing for removal adhesion characteristics. For support of this position, see the EPO Written Opinion citations, which clearly state that this subject matter is deemed routine and obvious (see also the various art cited herewith on the PTO-892 and PTO-1449s, many of which disclose various forms of adhesion or welding to secure elements within a battery module). In addition, the Examiner notes that Gong et al. explicitly teach using either ‘adhesive or solder’ (i.e. welding) to adhere components within the battery module (see page 11).
Regarding claim 7, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the dimensions of the welding pad through routine experimentation, especially given the knowledge in the art that space is limited in a battery module and a skilled artisan would have been well versed in using appropriate shapes and dimensions depending on the available space. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 8, Gong et al. discloses that the sampling element is a flexible printed circuit board (see circuit board 113 and relevant disclosure) meeting the claimed limitations.
Regarding claim 9, Gong et al. discloses temperature measurement (see element 1139 and pages 8 - 9) using ‘temperature probe. The Examiner notes that a thermistor is well established as a known ‘temperature probe and such a selection would have been a routine selection from known, functionally equivalent ‘temperature probes’ for measuring the temperature as claimed.
Regarding claim 10, Gong et al. discloses the sampling apparatus (see citations above) connected to a battery management system via a connector (see pages 13 - 14).
Regarding claim 11, Gong et al. discloses the battery cells in a row (see Figures 1 - 2) and battery cells in each row of the battery cells are connected in series (see page 5). Duplication of parts to ensure that there are a plurality of sampling apparatus and that each battery has its own sampling apparatus would have been a routine design choice based on the number of batteries and how accurate the measurements would be; i.e. it would be obvious to want to monitor each individual battery within the battery module to know the SOH of each individual battery.
Regarding claim 13, Gong et al. discloses a vehicle comprising the battery (see page 3).
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).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
September 19, 2026
Prosecution Insights