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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Sept. 7, 2023 has been considered by the examiner.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. US 11,784,365 B2 (‘365). Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations as claimed in claims 1-12 of the instant invention are taught by the limitations recited in claims 1-19 of ‘365.
Claim Objections
Claims 5 and 10 are objected to because of the following:
The word “entirely” recited in claim 5 does appear to be “entirety”.
In claim 10, the recitation “… is not contact with …” should read “… is not in contact with”.
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.
Claims 6 and 11 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 6 recites the limitation "the depression". There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the front face of the second portion". There is insufficient antecedent basis for this limitation in the claim. See the art rejection below for how this limitation is interpreted.
Claim Rejections - 35 USC § 102
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)(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.
Claims 1-4 and 6-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Cao (US 2018/0212212 A1).
Regarding claims 1-4 and 6-10, Cao discloses a battery module comprising a battery stack that includes a plurality of batteries stacked (See Figs. 1-7, [0003]),
a pair of end plates that are disposed at both ends, in a stack direction in which the batteries are stacked, of the battery stack ([0034]), the pair of end plates including at least one end plate that includes a first portion (connecting plate 11) made of a first metal (steel) that has a Young’s modulus higher than a Young’s modulus of a second metal (aluminum), and a second portion (body 10) made of the second metal that has a density lower than a density of the first metal ([0036],[0037]);
a pair of restraint member (side plates 20) disposed on both sides of the battery stack, the pair of restraint members 20 being made of the first metal (steel), wherein the pair of restrain members 20 have eaves portions that protrude from ends of sides of restraint members 20 and are bent inwardly so that the eaves portions sandwich the battery stack and the pair of end plates in the stack direction ([0034], [0037]), wherein
the first portion includes a first face and a second face,
the second portion includes a third face and a fourth face,
the first face faces the battery stack in the stacking direction,
the second face is opposed to the first face in the stacking direction,
the third face faces the battery stack in the stacking direction, and the fourth face is opposed to the third face in the stacking direction (See the annotated figure below); and
welded portions that connect the second face of the first portion 11 of the at least one end plate with the eaves portions of the pair of restraint members 20 ([0035]).
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Cao discloses that the at least one end plate includes a heat-transfer restrictor (round gap behind the first portion 11) that restricts heat transfer between the first portion 11 and the second portion 10 (because they are not in direct contact at the gap).
Cao further teaches at least part of the second portion is disposed between the first portion and the battery stack, the second portion includes a depression at the further fourth face, and at least part of the first portion is disposed in the depression (See the annotated figure, above).
Cao further teaches a fixing member (limiting protrusion 114) that fixes the first portion 11 to the second portion 10 (relative movement can be limited) ([0042]-[0044]).
Cao further teaches the eaves portions of the pair of restraint members are in contact with the second face and the sides of restraint members are in contact with the second portion (See Fig. 7).
Cao further teaches that the first portion 11 is exposed (e.g., on the top end) from the pair of restraint members 20 (See Fig. 7).
Cao further teaches the heat-transfer restrictor comprises unevenness formed at the bottom surface of the depression, and the first face is in contact with a convex part of the unevenness and is not in contact with a concave part of the unevenness (See the annotated figure below).
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Cao further teaches the depth of the depression is larger than a thickness of the first portion in the stack direction.
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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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Cao, as applied to claim 1 above, and further in view of Nagane et al. (US 2017/0352850 A1, hereafter Nagane).
Regarding claim 5, Cao teaches the battery module according to claim 1, wherein at least part of the second portion is disposed between the first portion and the battery stack and the second portion includes a depression at the fourth face (Fig. 7), but is silent on “an entirety of the first portion is disposed in the depression”.
Nagane however teaches a pair of end plates 3 each including a first member 5 and a second member 6 of high rigidity, wherein the second member 6 is disposed in an engagement recess 50 of the first member 5 such that an entirety of the bottom face of the second member 6 is in contact with a bottom of the engagement recess 50 ([0080]. See Figs. 3, 8). The thickness of plate portion 60 of second member 6 is absorbed by engagement recess 50, thereby preventing end plate 3 from becoming thick [0080], and the vertical length of second member 6 is set slightly lower than the height of first member 5 to have a size corresponding to the first member 5 other than its upper end [0081], so that second member 6 can press a large lower-region including a center part of rectangular cell 1, which mainly expands during the charge and discharge, without pressing the upper end so that the terminal surface side 10 on which electrode terminals 11 and the sealing plate including a gas exhaust valve of the like are disposed is prevented from being pressed strongly and can be effectively prevented from being deformed or damaged ([0082]).
Therefore, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of Nagane into Cao such that the pair of end plates of Cao each comprising a first and second portions are replaced with a pair of end plates taught by Nagane each comprising a first member 5 and a second member 6, in order to achieve advantages/benefits stated above. As a result, the second member 6 of the combination of Cao and Nagane reads on the second portion as claimed, and as shown below, a part of the first member 5 of the combination of Cao and Nagane reads on the first portion, and an entirety of the first portion is disposed in the depression.
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Regarding claim 11, Cao teaches the battery module according to claim 5, wherein the eaves portions of the pair of restraint members are in contact with the front face of the second portion (See the annotated figure below).
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Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Cao.
Regarding claim 12, Cao teaches the battery module according to claim 6, and further teaches a tip of the eaves portions bent inward toward the second face (Fig. 7, [0035]). Cao does not appear to teach an entirety of the welded portions are formed in the depression. However, mere rearrangement of parts, without any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Japikse, 86 USPQ 70 (CCPA 1950). It also has previously been held that the mere rearrangement of parts without modifying the operation of a device is prima facie obvious. See, e.g., In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). See also MPEP § 2144.04(VI)(C).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727