DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/15/2026 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
2. This section was previously provided and is repeated here. The instant application is a CIP of Application No. 17/014,034 (“parent application”). The instant application claims the subject matter within independent claim 1 of:
“an extinguisher sheet structure between the top cover and the top plate, the extinguisher sheet structure being configured to emit a fire extinguishing agent at a reference temperature, and
wherein the extinguisher sheet structure comprises an extinguisher sheet and a heat spread plate between the extinguisher sheet and the battery cells.”
The quoted language is not found in the parent application. The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis. When applicant files a continuation-in-part (CIP) application, none of whose claims are supported by the parent application under 35 U.S.C. 112(a)/first paragraph, the effective filing date is the filing date of the child CIP.
Any claim that contains a limitation that is only supported as required by 35 U.S.C. 112(a)/first paragraph by the disclosure of the CIP application will have the effective filing date of the CIP application. See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012) (patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application); Studiengesellschaft Kohle, m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 42 USPQ2d 1674 (Fed. Cir. 1997).
Thus, the disclosure of the prior-filed application, Application No. 17/014,034, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for all claims of this application in view of the quoted language above. The effectively filed date of the claimed subject matter is thus that of the instant application, 8/14/2023.
Specification
3. The abstract of the disclosure filed 12/19/2025 remains objected to. The abstract has the same indefinite issue outlined below that are found in the amended claim. Appropriate correction is required. A suitable correction is recommended below by the Examiner below.
Claim Objections
4. The objection to claim 15 is withdrawn in view of the amendment filed.
Claim Rejections - 35 USC § 112
5. The prior Office Action rejections of claim 2, and thus dependent claim 18; claim 10, and thus dependent claim 11; claim 17; claim 18, and thus dependent claim 19; and claim 19 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement are withdrawn in view of the claim amendments filed.
The rejections of claims 18 and 19 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 are withdrawn in view of the corrections filed are withdrawn in view of the corrections filed.
6. The prior Office Action rejection of claim 1, and thus dependent claims 3 and 5-19 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is maintained. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The amendments filed necessitate additional rejections under this heading against claim 1.
A)1 Claim 1 was amended to recite, “wherein the heat spread plate comprises a grid-like mesh.” The breadth of the language is not supported. The original language pertaining to this feature is reproduced below:
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This is described at P94 which states, “…in some embodiments, the heat spread plates 156a, 156b may be formed to have a grid-like mesh structure inside, thereby making it easier for gases to escape…”
The language broadens the scope of the construct of the heat spread plate to include options not contemplated by the inventors at the effective filing date of the invention. For example, a heat spread plate having a multi-layer construct with a grid-like mesh on an outer surface reads on “the heat spread plate comprises a grid-like mesh,” wherein this construct is not supported by the written description. The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 "merely by clearly describing one embodiment of the thing claimed." LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005). The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed. In the instant scenario, the broadening amendment is not supported by the written description and is akin to presenting a broad genus claim limitation when only one narrow species is presented with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc).
B) Claim 1 as amended adds:
“…wherein the heat spread plate covers the surface where the vents of a plurality of battery cells arranged in the first direction are formed.”
There is no written description of the feature in the instant application as demonstrated by the search of the entire PGPUB document for the language presented:
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Applicant cites figures and “the corresponding text” including at least P92-95 for support; however, the Examiner does not see how the figures support the language presented, wherein no such language exists in the written description. Accordingly, in effect, Applicant has not specifically pointed out how the feature is supported, and there is no basis for the language in the written description, wherein per Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007), this is sufficient to make such a rejection:
Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.")
Future claim amendments should be accompanied with comments that specifically point out support for any claim amendments. See MPEP 2163, section 3(b); MPEP § 714.02; and MPEP § 2163.06:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007)
"Applicant should ... specifically point out the support for any amendments made to the disclosure."
An example of “specifically pointing out” support for the amendments is to map any amended limitation presented in the claim to a specific, corresponding paragraph in the disclosure.
Although more is not required under the circumstances, for clarity of the record, Fig. 8B of the instant application is annotated below. The heat spread plate is part of extinguisher sheet structure 150. As annotated below, 150 does not cover any surface (whether a surface of the battery cells, a surface of the vents, the surface [of the extinguisher sheet facing toward the battery cells])2 –where the vents of a/the plurality of battery cells arranged in the first direction are formed:
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The provision that the extinguisher sheet and the heat spread plate each have openings respectively corresponding to the vent[s] of the battery cells renders the feature of “the heat spread plate covers the surface where the vents of a plurality of battery cells in the first direction are formed” impossible to meet. As annotated above, no part of the heat spread plate (part of extinguisher sheet 150) covers any surface where the vents of a/the plurality of battery cells arranged in the first direction are formed given the claim requires openings within the heat spread plate that correspond to the vent[s]s of the battery cells.
Appropriate correction and/or explanation is required.
7. Claim 1, and thus dependent claims 3 and 5-19; claim 10, and thus dependent claim 11; claim 17; 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.
A) Claim 1 defines at least an energy storage module including a plurality of battery cells, each of the battery cells comprising a vent. There are thus, intrinsically, a plurality of vents corresponding to the plurality of battery cells. Claim 1 as amended recites:
“a top plate coupled to a top of the cover member and comprising a plurality of ducts respectively corresponding to the vent of the battery cells…
…wherein the extinguisher sheet and heat spread plate each have openings respectively corresponding to the vent of the battery cells…”
There is insufficient antecedent basis for “the vent (singular) of the battery cells” (plural) in each location. The Examiner recommends changing “vent” to “vents” in each location.
B) Claim 1 was amended to recite, “wherein the heat spread plate covers the surface where the vents of a plurality of battery cells in the first direction are formed.”
There is insufficient antecedent basis for “the surface where the vents of a plurality of battery cells in the first direction are formed” given “…a surface where the vents of a plurality of battery cells arranged in the first direction are formed” has not previously been defined in the claim. It is further not clear what entity/entities this surface is constituted by (i.e., the surface [of what?])? Applicant does not provide any specific support citation for the amendment provided, and the language does not exist in the written description. Accordingly, the Examiner cannot determine the intent of the meaning thereof.
For example, is this meant to reference/define [respective battery] surfaces[s] where the vents of [the?]
In any interpretation that the Examiner can think of, the feature is not taught in the instant application. In this regard, Fig. 8B of the instant application is annotated below, wherein the heat spread plate is part of extinguisher sheet structure 150. As annotated below, extinguisher sheet structure 150 (including the heat spread plate) does not cover any surface (whether part that of the battery cells, the vents, the surface [of the extinguisher sheet facing toward the battery cells]) where the vents of a/the plurality of battery cells arranged in the first direction are formed:
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The provision that the extinguisher sheet and the heat spread plate each have openings respectively corresponding to the vent[s] of the battery cells renders the feature of “the heat spread plate covers the surface where the vents of a plurality of battery cells in the first direction are formed” impossible to meet. As annotated above, no part of the heat spread plate (part of extinguisher sheet 150) covers any surface where the vents of a/the plurality of battery cells arranged in the first direction are formed given the claim requires openings within the heat spread plate that correspond to the vent[s]s of the battery cells.
C) The claim first defines “a plurality of battery cells in an internal receiving space, the battery cells arranged in a first direction, each of the battery cells comprising a vent” (lines 2-4 of the claim). The amended limitation recites “the surface where the vents of a plurality of battery cells in the first direction are formed.” It is entirely unclear whether this is a failure in attempting to reference the already defined vents of [the] (“[a second set of] a plurality of battery cells”). The application does not delineate any grouping or sets of battery cells from one another (i.e., the second option is not supported). If it is the former, then consistency through the claim should be utilized (i.e., the claim references “a plurality of battery cells” as “the battery cells” everywhere else and this should be used throughout.
C) Claim 10 was amended to recite, “wherein a fire extinguishing agent in the receiving spaces” which is non-sensical and appears to be missing a verb.
D) Claim 17 recites “the surface of the insulation spacers.” There is not a singular surface corresponding to plural insulation spacers. An appropriate correction was previously proposed and not implemented: (i.e., “[respective] surface[s] of the insulation spacers”).
Appropriate correction is required.
Claim Rejections - 35 USC § 103
8. All prior art rejections are presently withdrawn given the claims are indefinite to the point of precluding prior art examination as outlined above.
Per MPEP § 2143.03:
“"All words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). (The Board erred because it ignored claim language that it considered to be indefinite, and reached a conclusion that the claim would have been obvious based only on the rest of the claim.). However, an examiner should not simply speculate about the meaning of the claim language and then enter an obviousness rejection in view of that speculative interpretation. In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (The "considerable speculation" by the examiner and the Board as to the scope of the claims did not provide a proper basis for an obviousness rejection.)
When evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter). Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984).
MPEP § 2173.06 further notes that when there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. The claims are indefinite to the point of precluding prior art examination as detailed above for the multiple reasons set forth under 35 U.S.C. 112(b)/second paragraph. Prior art examination will resume once a definitive claim is set forth.
Double Patenting
9. The rejections set forth against the claims with respect to double patenting are also withdrawn given the limitation presented in the final two lines of claim is not examinable and cannot be evaluated against the prior art for the reasons set forth under 35 U.S.C. 112(b)/second paragraph. Double patenting evaluation will resume once a definitive claim is set forth.
Response to Arguments
10. Applicant's arguments filed 6/15/2026 have been fully considered but are moot given prior art examination is not possible at the present time in view of the indefinite issues as outlined above.
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Lee et al. (KR 10-2022-0021518) (copy provided) teaches a heat dissipating device/structure for a battery pack and teaches it is a known technique to provide a grid-type metal mesh as a reinforcing structure within the heat dissipating structure to reduce external deformation and damage that occur to the overall heat dissipation device/structure (abstract).
Son et al (US 2024/0216733) teaches a flame arrestor 100 (“an extinguisher sheet structure”) for a battery pack, the flame arrestor 100 (“extinguisher sheet structure”) including:
a heat dissipating member 150 (“heat spread plate”) and
a fire extinguishing member 190 held with a case 190a that houses the fire extinguishing (see Figs. 1-2).
Kang et al. (US 2024/0313288) teaches a battery module including a case 110 to which a cooling and fire extinguishing module 120 (“C&FEM”) is coupled, the C&FEM 120 including a fire extinguishing fluid in first space 140 that is held by lower body 201 having openings coupled with sealing member 211 which break/melt to release the fire extinguishing fluid at a temperature limit (i.e., “a fire extinguisher sheet”), where at least one heat dissipating pad (“heat spread plate”) is disposed between the first plate 210 and the batteries 111 in order to allow the heat to be transferred between the batteries 111 and the cooling and fire extinguishing module 120 (P61).
Yasui et al. (US 2011/0274951) teaches a battery module including a heat-absorbing member 50 that encloses heat absorbing agent 60 by fusing two sets of outer films 58, each film 58 including first and second resin films 54, 56 with a metal film 52 therebetween (Fig. 2C):
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12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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, Ula Ruddock can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BARROW/Primary Examiner, Art Unit 1729
1 Prior section C from the prior Office Action; updated to reflect the change from “is” to “comprises”
2 See rejection under 35 U.S.C. 112(b)/second paragraph below regarding issues with the quoted language above with respect to “the surface where the vents of a plurality of battery cells arranged in the first direction are formed.”
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