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 .
Reply Under 37 CFR 1.111
The submission of the reply filed on 09/08/2026 to the non-final Office action of 06/08/2026 is acknowledged. The Office action on currently pending claims 1-7, 9, and 11-13 follows.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims.
Regarding claim 1, the “inner side” and the “outer side” (of the first end plate) must be shown and reference characters provided therefor on the drawings and in the specification, or the feature(s) canceled from the claim(s). No new matter should be entered.
Regarding claim 11, the “elastic members” must be shown and reference characters provided therefor on the drawings and in the specification, or the feature(s) canceled from the claim(s). No new matter should be entered.
Regarding claim 2, the Office would like to emphasize that the entire structure of the “cells contact assembly” with all components and cooperative relationships thereof must be shown with all necessary reference characters provided on the drawings and in the specification
(i.e., “cells contact assembly”, “cells contact assembly is electrically connected to the cells”, “sampling assembly”, “the high-voltage output sheet…is electrically connected to the cells”, etc.).
Regarding claim 4, “the weight-reducing holes communicate with the limiting groove or the installation groove” must be shown, or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2 and 5-7, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 2 recites the limitations: “the battery module further comprises a cells contact system assembly, the cells contact system assembly is electrically connected to the cells, the cells contact system assembly comprises a sampling assembly and a high-voltage output sheet, the sampling assembly comprises a low-voltage connector, the low-voltage connector is installed on the low-voltage output terminal installation portion, and the high-voltage output sheet is installed in the high-voltage output terminal installation portion and is electrically connected to the cells.”
The aforementioned limitations are not enabled since the disclosure does not provide adequate explanation how the aforementioned “cell contact assembly” recited in the claim is actually constructed (i.e., see drawings objection above and relevant portion of the specification).
After considering all of the Wands factors (and specifically, that there is no adequate direction provided by the inventor/applicant, no existence of the working examples (as per the current record), and that there is low predictability of the claimed functions in the relevant arts), the Office has concluded that the quantity of experimentation needed to make or use the invention based on the content of the instant disclosure will be high and undue to a person of the ordinary skill, and therefore, such a person will not be able to make and use the claimed invention without resorting to undue experimentation. See In re Brown, 477 F.2d 946, 177 USPQ 691 (CCPA 1973); In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA 1971).
The remaining dependent claims 5-7 have been also rejected since they inherit the aforementioned problems of the parent claim 2.
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 1-7, 9, and 11-13, 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitations: “wherein the low-voltage output terminal installation portion is inserted into the limiting groove in a thickness direction of the first end plate”.
It’s not clear whether “inserted…in a thickness direction” limitations describe the assembly step per se (i.e., the step of inserting), or whether the limitations pertain to mutual disposition of the low-voltage output terminal installation portion and the first end plate in the assembled end product (i.e., disposed/installed/extends “in a thickness direction”). For examination purposes the claim will be interpreted as reciting mutual disposition of the low-voltage output terminal installation portion and the first end plate in the assembled end product.
Claim 4 recites the limitations: “the weight-reducing holes communicate with the limiting groove or the installation groove”. It's not clear how the “weight-reducing holes” are actually “communicate with the limiting groove or the installation groove”. The drawings do not show the aforementioned subject matter (see drawings objection above). The scope of the claim is unclear.
Claim 8 recites the limitations: “the limiting groove is formed by extending from an inner side to an outer side of the first end plate in a thickness direction of the first end plate, and an outer side wall of the first end plate closes an end surface of the limiting groove”.
Furthermore, the Office reminds Applicant that the uniform terminology must be used throughout the claims. The claimed terminology must be consistent with the terminology of the specification and must follow the nomenclature of the specification. The terms and phrases used in claims must have a clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
The remaining dependent claims have been also rejected since they inherit the aforementioned problems of the parent claim 1.
Appropriate corrections are required. Applicant’s cooperations is requested in correcting any remaining problems and informalities of which Applicant may become aware in the claims.
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.
Claims 1-5, 8, 11, and 12, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2022/ 213728 to Wang et al. (hereafter “Wang”, cited on IDS).
Regarding claims 1 and 12, as best understood, Wang discloses (Fig. 2-7 and English translation of record) a battery module (200), comprising: a frame comprising side plates (202) opposite to each other and a first end plate (201) and a second end plate (201) opposite to each other; a plurality of cells (400) stacked and installed in the frame; and a plastic (par. [0073]) output terminal base (203) comprising a high-voltage output terminal installation portion (2032), a low-voltage output terminal installation portion (2034), and a limiting portion, wherein the high-voltage output terminal installation portion and the low-voltage output terminal installation portion are arranged side by side, and the limiting portion (see annotated Fig. 7 below) is formed by extending from a bottom portion of the low-voltage output terminal installation portion (see annotated Fig. 7 below), wherein a top portion of the first end plate (201) is provided with a limiting groove and an installation groove (see annotated Fig. 7 bellow), the high-voltage output terminal installation portion is installed in the installation groove, and the limiting portion is installed in the limiting groove to connect the output terminal base (203) to the first end plate (201) (see annotated Fig. 7 below), wherein the low-voltage output terminal installation portion (2034) is inserted into the limiting groove in a thickness direction of the first end plate (201) (i.e., disposed/installed/extends “in a thickness direction” of the first end plate (201)), the limiting groove is formed by extending from an inner side to an outer side of the first end plate (201) in a thickness direction of the first end plate (201), and an outer side wall of the first end plate closes an end surface of the limiting groove (see annotated Fig. 7 below), wherein the inner side of the first end plate (201) is relatively close to the cells (400) while the outer side of the first end plate is relatively away from the cells (400) (see annotated Figs. 5 and 7 below).
Examiner’s Note: regarding the limitations “inserted into the limiting groove in a thickness direction” (if said limitations interpreted as method of making/assembly limitations), the limitations do not have any patentable weight, since it has been held that even though the claim is limited by and defined by the recited process, the determination of patentability of the product is based on the product itself, and does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). It is the patentability of the product claimed and not of the recited process steps which must be established. See In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). It should also be noted that a “[p]roduct-by process claim, although reciting subject matter of claim in terms of how it is made, is still product claim; it is patentability of product claimed and not recited process steps that must be established, in spite of fact that claim may recite only process limitations”. See In re Hirao and Sato, 190 USPQ 15 (Fed. Cir. 1976). The presence of process limitations on product claims, which product does not otherwise patentably distinguish over prior art, cannot impart patentability to the product. See In re Stephens, 145 USPQ 656 (CCPA 1965).
PNG
media_image1.png
519
721
media_image1.png
Greyscale
Regarding claim 2, as best understood, Wang discloses that the battery module further comprises a cells contact system assembly, the cells contact system assembly is electrically connected to the cells (400), the cells contact system assembly comprises a sampling assembly (205) and a high-voltage output sheet (204), a low-voltage connector (see annotated Fig. 5 below), the flexible circuit board (205) is electrically connected to the cells (400) (par. [0084]), the low-voltage connector is installed on the low-voltage output terminal installation portion (2034), and the high-voltage output sheet (204) is installed in the high-voltage output terminal installation portion (2032) and is electrically connected to the cells (400), (Figs. 2, 5).
PNG
media_image2.png
288
753
media_image2.png
Greyscale
Regarding claim 3, as best understood, Wang discloses that a threaded hole ( i.e., a threaded hole (5) of the nut (2033)) is arranged in the high-voltage output terminal installation portion (2032), the high-voltage output sheet (204) is installed on the high-voltage output terminal installation portion (2032), (Figs. 5, 6 and par. [0081]).
Regarding claim 4, as best understood, Wang discloses that the first end plate (201) or the second end plate (201) is provided with a plurality of weight-reducing holes, and the weight-reducing holes communicate with the limiting groove or the installation groove (see annotated Fig. 7 above).
Regarding claim 5, as best understood, Wang discloses (Fig. 7) that the low-voltage output terminal installation portion further comprises hook structures (see annotated Fig. 7 above), and the hook structures are formed by extending from both sides of a top portion of the low-voltage output terminal installation portion in a direction away from the low-voltage output terminal installation portion (see annotated Fig. 7 above).
Regarding claim 11, Wang discloses that the limiting portion comprises a plurality of elastic members, and the elastic members are engaged in the limiting groove (see annotated Fig. 7 above).
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.
Alternatively, Claim 4, as best understood, is rejected under 35 U.S.C. 103 as being unpatentable over Wang taken alone.
Regarding claim 4, it can be seen in Wang that the end plate (201) is not a solid structure but is formed with ribs, while assuring that the structure of the end plate and of the entire battery module has the required strength. Therefore, making a configuration including weight reducing through holes is merely a matter of design choice that could have been appropriately selected by a person skilled in the related arts before the effective filing date of the claimed invention, in order to predictably reduce weight, material consumption, and production costs of the device, while preserving its sufficient structural strength. All claimed elements were known in the prior art and one skilled in the art could have combined / modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of US 2012/0298433 to Ohkura.
Regarding claim 13, Wang does not disclose a battery pack comprising a box body, wherein the battery module is installed in the box body.
First, it would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have formed a battery pack from a plurality of the battery modules of Wang, in order to predictably provide sufficient power as required by a specific application, since providing a plurality of the battery modules instead of a single one would amounted to a mere duplication of said battery module which is not inventive, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Second, the battery module (200) of Wang is inherently mounted on an apparatus that uses its power. Therefore, accommodating it in a housing such as a box is merely a common practice and could have been easily achieved by a person skilled in the art as evidenced, for example, by Ohkura which teaches that the battery modules (100a-100d) form a battery pack and are mounted in casing/box (550), (pars. [0149]-[0150]).
Therefore, it would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have installed the battery pack/modules of Wang in a box body, as taught by Ohkura, in order to predictably construct the battery pack as a unit and also to protect its components from environment, thus enhancing reliability and safety. All claimed elements were known in the prior art and one skilled in the art could have combined / modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Allowable Subject Matter
Claim 9 would be allowable if rewritten or amended 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.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 9, the limitations of claim 9 (“the limiting portion comprises a first limiting portion, a second limiting portion, and a third limiting portion, the first limiting portion and the second limiting portion are formed by extending away from a vertical direction, the third limiting portion is located between the first limiting portion and the second limiting portion and is arranged in the vertical direction, the limiting groove comprises a first limiting groove, a second limiting groove, and a third limiting groove respectively corresponding to the first limiting portion, the second limiting portion, and the third limiting portion, and the first limiting portion, the second limiting portion, and the third limiting portion are respectively installed in the first limiting groove, the second limiting groove, and the third limiting groove in a thickness direction of the first end plate to fix the output terminal base”) in combination with all of the limitations of the parent claim 1, are believed to render the combined subject matter, allowable over the prior art of record taken alone or in combination.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. The rejection has been modified to meet the limitations of the amended claims as explained above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anatoly Vortman whose telephone number is (571)272-2047. The examiner can normally be reached Monday-Thursday, between 10 am and 8:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash N. Gandhi can be reached at 571-272-3740. 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.
/Anatoly Vortman/
Primary Examiner
Art Unit 2841
Prosecution Insights