DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Regarding the limitation(s) “a flange” in the claims, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, ‘a flange’ is not specifically defined and the structural aspects are not specifically called out. As such, the Examiner has given this term, essentially, the Webster’s dictionary definition of: “a rib or rim for strength, for guiding, or for attachment to another object”. It must be distinct from the ‘wall’; i.e. a multilayered wall having rumple zones, etc. would not read on a ‘flange’, as a skilled artisan would recognize it as part of the ‘wall’, not the ‘flange’.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Drawings
The drawings are objected to because Figure 2 appears to be missing the numbering of the side bar element:
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. From Paragraph 0038 of the PGPUB, it appears this should be numbered ‘280’. 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 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 - 20 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 pre-AIA the applicant regards as the invention.
The term “soft zones” in claims 12, 13 and 20 is a relative term which renders the claims indefinite. The term “soft zone” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The Examiner notes that Paragraph 0067 of the PGPUB indicates that the soft zones are regions that are less brittle and more ductile than other areas of the flange:
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. Amendment to these claims that said soft zones are “zones that are less brittle and more ductile than at least one other area of the flange” would be sufficient to overcome this rejection.
Claims 1 – 20 are rejected as indefinite because the term “crack mitigation regions” is not an art specific term and the full scope of what might be considered a ‘crack mitigation region’ is subject to a specific artisan’s interpretation. I.e. what one artisan might consider a ‘crack mitigation region’ will differ from what another artisan might consider something that constitutes a proper ‘crack mitigation region’. Since the scope is not well defined, it is necessarily indefinite. However, the Examiner notes that the as-filed disclosure (and claims 9 – 141) provide some guidance as to what is meant by ‘crack mitigation regions’ (see also Paragraphs in the PGPUB discussing the various crack mitigation regions, such as Paragraph 0062:
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). For the purpose of evaluating the prior art, the Examiner has interpreted the independent claims as if they further recited: “, wherein each crack mitigation region stops, mitigates, or redirects cracks that would otherwise propagate from an outer edge of said flange and comprises one or more of openings, beads, soft zones that are less brittle and more ductile than at least one other area of the flange, and/or a greater ductility than a remaining region of the flange” (i.e. see language in specification and claims 9, 11, 12 and 14). The Examiner notes that amendment of the independent claims to positively recite the above would overcome this rejection.
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.
(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.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1 – 3, 6 and 16 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Ishitobi (U.S. Patent No. 12,676,375 B2 and WO 2022/049971).
Regarding claim 1, Ishitobi discloses a battery enclosure apparatus (Title; Abstract; and at least cover Figure 4 and Figure 9), comprising: a flange (
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) including an outer edge (
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), an inner rim defining an opening (
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), and crack mitigation regions formed between the outer edge and the inner rim (
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); a wall extending from the inner rim of the flange, the wall including a first portion and a second portion, the first portion joined to the inner rim of the flange (
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); and a bottom (
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), joined to the second portion of the wall, the bottom configured to support a battery pack (
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and col. 7, lines 14 - 24).
Regarding claim 2, as shown in Figure 4, above, the ‘flange’ is on both sides and therefore meets the claimed limitations.
Regarding claim 3, Ishitobi discloses using metal for the claimed components (at least col. 1, line 37 bridging col. 2, line 56). The limitation “by a stamping process” is a product-by-process limitation and is not further limiting in so far as the structure of the product is concerned. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product 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.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). In the instant case, stamping thin ‘sheet metal’ structures is conventional in the art and the claimed product is deemed the same as or obvious regardless of whether the metal was formed by a stamping process or a different process.
Regarding claim 6, given that the upper surface of the ‘flange’ above is flat, it is deemed to be clearly ‘configured to’ accept a sealing material per the claimed limitations.
Regarding claim 16, Ishitobi discloses the battery enclosure as recited above, and further discloses a tub and top cover meeting the claimed limitations (at least Figures 2 – 4 and col. 6, line 1 bridging col. 8, line 29; noting teaching of forming the seal to be water tight and that adhesive is known to be used for sealing, albeit discussed in a different section of the module). The Examiner deems that there is sufficient specificity to anticipate the claimed limitations given the teaching of a ‘sealing structure’ to prevent water entry:
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.
Allowable Subject Matter
Claims 4, 5, 7 – 15 and 17 - 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: claims 4, 5, 7 – 15 and 17 – 20 recite sufficient structure in terms of relative thickness values (e.g. claims 4 and 17), the overall battery enclosure (e.g. claim 7) or the specifics of the flange and mounting pads (claims 8 and 17 - 20). Ishitobi fails to provide sufficient guidance or specificity to teach or render obvious these limitations as their ‘flange’ is not really an identical ‘flange’ as used by Applicants (though the Examiner maintains that the L-shaped extension qualifies as a ‘flange’ as it meets the definition of “a rib or rim for strength, for guiding, or for attachment to another object”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
July 10, 2026
1 The Examiner notes that the language in claims 9 – 14 of ‘including’ is not sufficient to be definite as defining what the full scope of ‘crack mitigation region’ covers, which is why these claims have still been included in this rejection, even though part of the claimed scope is proposed for overcoming the rejection.
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