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.
(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 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamoto (US-20190348650-A1), hereafter referred to as Nakamoto.
Regarding Claim 9, Nakamoto teaches a battery module comprising a plurality of battery cells, where the module comprises a plurality of prismatic battery cells, and/or a plurality of battery cells in the form of pouch cells, the plurality of battery cells are arranged adjacent to one another in a longitudinal direction of the battery module (Figs. 6-8 show these are a plurality of pouch/prismatic cells arrange adjacent to one another in a longitudinal direction), and a compensating element is furthermore arranged between two battery cells arranged directly adjacent to one another [“a plurality of unit cells 110 are stacked with filler members (elastic adhesives 117) interposed therebetween,” paragraph 49; 117 in Fig. 8D].
Regarding the limitation “produced according to claim 1,” even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself. Product-by-process limitations only have patentable weight to the extent that they process requires or leads to a particular structure. In the instant case, the process recites that the plurality of cells need to be prismatic and/or pouch cells arranged adjacent to one another in the longitudinal direction, and a compensating element needs to be arranged between two battery cells arranged directly adjacent to one another. Thus, these are the only additional limitations considered by the Examiner with respect to the limitation, “produced by claim 1.” Please see MPEP § 2113.
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.
Claims 1-4, 6-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamoto in view of Kim (KR-101306683-B1, see machine translation), hereafter referred to as Kim.
Regarding Claim 1, Nakamoto teaches a method for producing a battery module comprising a plurality of prismatic battery cells, and/or a plurality of battery cells in the form of pouch cells (“A battery pack production method is provided for producing a battery pack having several unit cells that are stacked with filling members interposed therebetween,” Abstract; Figs. 6-8 show these are a plurality of pouch/prismatic cells),
wherein, in a first method step, a measurement is made on a respective battery cell to establish a defined width of the battery cell (S101 in Fig. 7), and
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 (Fig. 8B-G), and a compensating element is furthermore arranged between two battery cells arranged directly adjacent to one another [“a plurality of unit cells 110 are stacked with filler members (elastic adhesives 117) interposed therebetween,” paragraph 49; 117 in Fig. 8D; S103 in Fig. 7], wherein a width and/or a deformability of the compensating element is formed such that, when a defined total width of the battery module is formed, a defined force acts on a respective battery cell (S104 in Fig. 7; Figs. 8G-H).
Nakamoto does not teach, in the first method, that a force acting on a respective battery cell is detected in order to form a defined width. However, Kim teaches a battery pressing device for pouch cells where a force acting on a respective battery cell is detected in order to form a defined width [“a pressing plate (200) positioned to be raised and lowered above the base block (120) and pressing the upper surface of the battery cell when lowered,” paragraph 11; Figs. 2-4 and 9]. Kim teaches that the benefit of this strategy is a more reliable measurement of thickness “by precisely controlling the magnitude of the pressure applied to the battery cell when measuring the thickness of the battery cell, and simultaneously ensuring that uniform pressure is applied to the entire area of the battery cell” (paragraph 1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date to take the method for producing a battery module taught by Nakamoto and modify the first step to apply and detect a force on a respective battery cell in order to form a defined width in order to more reliably determine the width and ensure that uniform pressure is applied to the entire area of the battery cell, as taught by Kim.
Regarding Claim 2, Nakamoto modified by Kim teaches the method according to claim 1, wherein Kim further teaches that the force acts on largest lateral surfaces of the respective battery cell (C in Fig. 9).
Regarding Claim 3, Nakamoto modified by Kim teaches the method according to claim 1, wherein Kim further teaches the force is applied by two plates, wherein the respective battery cell is arranged between the two plates [“a pressing plate (200) positioned to be raised and lowered above the base block (120) and pressing the upper surface of the battery cell when lowered,” paragraph 11; Figs. 2-4 and 9].
Regarding Claim 4, Nakamoto modified by Kim teaches the method according to claim 1, wherein, in the first method step, Nakamoto further teaches the respective force acting on a battery cell is also stored as belonging to this respective battery cell and, in the second method step, the respective force acting on a battery cell is also read out and associated with this respective battery cell (“In the method for producing the battery pack 100, based on the measured thicknesses of each of the unit cells 110 that are adjacent after stacking, the thickness of the elastic adhesives 117 in the stacking direction Z is controlled through at least one of the following: an amount of elastic adhesives 117 arranged in the arrangement step S103; a length of time during which the elastic adhesives 117 are pressurized in the pressurization step S104,” paragraph 49). As the excerpt states, the thicknesses measured for each battery cell in S101 are then used later in S103 and S104 to determine the thickness of the compensating elements (elastic adhesives 117). Thus, the method disclosed by Nakamoto necessarily stores each thickness as belonging to each respective battery and then reads for use in the later steps. The direct measurement made by Nakamoto, when modified by Kim, would be the force acting on a respective battery cell.
Regarding Claim 6, Nakamoto modified by Kim teaches the method according to claim 1, wherein compensating elements having different widths and/or deformabilities are arranged, wherein a first compensating element having a first width and/or a first deformability is arranged between two battery cells, whose applied forces form a first sum, and a second compensating element having a second width and a second deformability is arranged between two battery cells, whose applied forces form a second sum, wherein the first sum is greater than the second sum, and the first width is smaller than the second width, and/or the first deformability is less than the second deformability [“The pressurization force (P22>P21) applied to the elastic adhesives 117 via the unit cells 110 differs depending on the size of the gap (D22>D21) between unit cells 110 vertically adjacent after stacking,” paragraph 159; Figs. 11, 13A, and 13B].
Regarding Claim 7, Nakamoto modified by Kim teaches the method according to claim 1, wherein compensating elements having identical widths and/or deformabilities are arranged, wherein Nakamoto further teaches that a total force is first formed as a sum of all forces acting on the respective battery cells, and the identical widths and/or deformabilities are then determined as a function of the defined total width of the battery module (“the thickness of the filling member is controlled based on the measured thicknesses of the unit cells after stacking according to at least one of: an amount of the elastic adhesives arranged; a length of time during which the elastic adhesives are pressurized; and a force pressurizing the elastic adhesives; and a distance between stacking-direction centers of two unit cells adjacent in the stacking direction is kept within a constant range,” Abstract). While modified Nakamoto allows for possible variation in thickness of the unit cells, if the unit cells are of uniform thickness, then Nakamoto’s method necessarily results in all of the compensating elements having identical widths that are a function of the total width of the battery module.
Regarding Claim 8, Nakamoto modified by Kim teaches the method according to claim 7, wherein Nakamoto further teaches the formation of the total force also comprises a calculation of an average force, and the defined total force is calculated as a product of the average force and the number of battery cells (S102 and S104 in Fig. 7, again under the circumstance plausible in Nakamoto where the battery cells each have uniform thickness).
Regarding Claim 10, Nakamoto modified by Kim teaches the method according to claim 1, wherein Nakamoto further teaches the plurality of battery cells are lithium-ion battery cells (“The unit cells 110 correspond to, e.g., lithium ion secondary cells,” paragraph 59).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamoto in view of Kim and in further view of Ha et al. (TW-201010161-A, see machine translation), hereafter referred to as Ha.
Regarding Claim 5, Nakamoto modified by Kim teaches the method according to claim 4, wherein neither specifically teach that the respective force acting on a battery cell belonging to this battery cell is stored in a database or on the battery cell. However, Ha teaches a battery manufacturing method where the dimensions, including the thickness, of the battery pack is measured and stored in a database (“a sensor is used to measure the dimensions of each battery pack and a measurement data (C) is transmitted to the data server,” paragraph 1).
It would have been obvious to take the method taught by Nakamoto modified by Kim, which teaches that the respective force is applied and the thickness of each cell is stored and associated with that respective cell, and further modify to store that data specifically in a database, as taught by Ha, for use in the later steps taught by Nakamoto.
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. 18/413356 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 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.
Correspondence
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/JORDAN P WILKERSON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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