DETAILED ACTION Notice to Applicant Claims 1-2 are pending and are examined herein. This is the first action on the merits. 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. Claim s 1-2 are rejected under 35 U.S.C. 112 (a) 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 1 requires “a heat conduction member […] having a higher thermal conductivity than the shielding plate.” The instant specification indicates that the heat conduction member 50 is “a soft sheet-like member” and “is not particularly limited as long as it is made of a material having low rigidity and high heat conductivity […] for example, a soft rubber sheet having a high thermal conductivity and a soft rubber shape” (US 2024/0213574 at ¶ 0038, 0040). The shielding plate, however, is made of metal, such as “a steel plate” (¶ 0037). Steel typically has thermal conductivities of 40-50 W/m·K. The specification does not actually list candidate materials for the heat conduction member with a “higher thermal conductivity” than steel. A PHOSITA might consider a thermal silicone rubber, but such materials typically have thermal conductivities of only around 8-13 W/m·K . It is not clear what materials, conventional or exotic, are within the scope of the invention. There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). See MPEP 2164.01(a). In the instant case, the claims are directed towards seemingly any material with “higher thermal conductivity” than a steel (or other metal) shielding plate, but the description seems to require a soft, rubber-like material capable of forming a compressible sheet. It is not clear what conventional, commercially available materials are intended, or even whether “higher thermal conductivity” is an intensive or extensive quantity. No working examples are provided. The application gives no numerical targets or ranges for the heat conduction, and it is unclear whether claim 1 is directed towards a thermally insulative shielding plate not comprising steel. So while something like a conventional thermal rubber might be the obvious choice, it is not clear exactly what materials are intended, what is meant by “thermal conductivity,” and whether or not a thermal rubber-like resin would count, despite having a strictly lower thermal conductivity than steel. Claim 2 is rejected for depending on claim 1. 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. Claims 1-2 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 1 requires “a heat conduction member […] having a higher thermal conductivity than the shielding plate.” The instant specification indicates that the heat conduction member 50 is “a soft sheet-like member” and “is not particularly limited as long as it is made of a material having low rigidity and high heat conductivity […] for example, a soft rubber sheet having a high thermal conductivity and a soft rubber shape” (US 2024/0213574 at ¶ 0038, 0040). The shielding plate, however, is made of metal, such as “a steel plate” (¶ 0037). It is not clear whether “thermal conductivity” is an intensive or extensive property, or what kinds of materials might read on the claims. Highly conductive graphite-based products might have high-conductivity in the right plane, but given that the specification teaches that the sheet is supposed to be vertically compressed, it is not clear if this material would work, or if such materials even read on “rubber”-like sheets. So it is unclear what exactly is being compared and what materials might meet the claims. Claim 2 is rejected for depending on claim 1. The claims have been interpreted broadly to refer to what are conventionally known as highly thermally conductive rubbers and the like. 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)(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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamaguchi (JP 2017-059299 to Yamaguchi et al. , the Office cites to provided machine English translation ) . Regarding Claim 1 , Yamaguchi teaches; a power storage device comprising a plurality of storage modules 21 disposed side by side along a first direction orthogonal to a vertical direction (Fig. 4) a housing case that includes an upper case 23-24 and a lower case 11 housing the power storage modules (Fig. 4, ¶ 0033) a plate 31 disposed above the power storage modules in the housing case and a shielding plate 22 fixed to the plate and disposed between the power storage modules (Fig. 4, ¶ 0033-0037) a heat conduction member 13 disposed between the shielding plate 22 and the lower case 11 and having a higher thermal conductivity (Fig. 4, ¶ 0027, 0050) Regarding Claim 2 , Yamaguchi teaches: the heat conduction member having lower rigidity than the shielding plate, and compressed in the vertical direction (¶ 0035, 0048-0051) wherein a portion of the shielding plate at the bottom, near the lower case, is prevented from moving horizontally by a reaction force such as friction from the heat conduction member (Fig. 4) Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US Patent No. 11,437,676 US 2017/0025719 Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Dignan, whose telephone number is (571) 272-6425. The examiner can normally be reached from Monday to Friday between 10 AM and 6:30 PM. If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Tiffany Legette, can be reached at (571)270-7078. Another resource that is available to applicants is the Patent Application Information Retrieval (PAIR). Information regarding the status of an application can be obtained from the (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAX. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). Applicants are invited to contact the Office to schedule an in-person interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner. /MICHAEL L DIGNAN/ Examiner, Art Unit 1723