NON-FINAL OFFICE ACTION
Acknowledgements
1. This non-final Office Action addresses reissue U.S. Application No. 18/598,587 (“instant application”). Examiners find the actual filing date of the instant application is March 7, 2024.
2. The instant application is a broadening reissue application of U.S. Patent No. 11,271,264, (“‘264 Patent”) issued March 8, 2022. The ‘264 Patent was filed on Feb. 13, 2020 as U.S. Application No. 16/790,033 (“’033 Application”), titled “BATTERY MODULE.”
3. Examiners do not find any certificates of correction, ongoing/previous proceedings before the Office, or current ongoing litigation involving the ‘264 Patent.
4. The ‘264 Patent issued with claims 1-18 (“Patented Claims”). In the preliminary amendment filed March 7, 2024 ("MARCH 2024 CLAIM AMENDMENTS"), claims 19-20 were added. In the amendment filed Nov. 18, 2024, claims 21-25 were added. In the amendment filed May 30, 2025 (“MAY 2025 CLAIM AMENDMENTS”), claims 19-24 were cancelled and claims 26-31 are added. Thus, claims 1-18 and 25-31 are pending and grouped as follows:
5. Claims 1-18 and 25-31 are pending and examined and are grouped as follows:
claims 1-18 and 30-31; and
claim 25-29.
Priority Claims
6. Examiners find the instant application is claiming domestic priority under 35 U.S.C. § 120 or 35 U.S.C. § 119(e) to U.S. App. No. 15/553,336, now Pat. No. 10,615,470 filed on Feb. 29, 2016.
7. Examiners find the instant application claims foreign priority to KR 10-2015-0028505 filed Feb. 27, 2015.
8. Because the instant application claims domestic priority to App. No. 15/553,336, the presumed effective U.S. filing date of the instant application is Feb. 29, 2016.
Claim Rejections - 35 USC § 103
9. Claims 1, 4-13, 15-18, 25, and 27-31 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0310911 to Yamamoto et al. published Dec. 9, 2010 (“Yamamoto”) in view of US 2014/0272328 to Forney et al. filed Sep. 18, 2014 (“Forney”).
As to claim 1, Yamamoto discloses “[a] method of manufacturing a battery module.” See ¶[0128].
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Yamamoto discloses “injecting a resin composition into a case of a battery module.” See figure 10C and ¶[0132].
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Yamamoto discloses “the case including a lower plate and a sidewall forming an inside space” as shown by casing (C) in figure 10C above. While Yamamoto teaches filling the casing with a molten resin that cures at 100[Symbol font/0xB0]C or less, Yamamoto does not specifically disclose that the molten resin cures at room temperature, i.e., about 22[Symbol font/0xB0]C. In other words, Yamamoto does not specifically disclose “the resin composition being a room temperature curing type resin composition… the curing being performed by maintaining the injected resin composition at room temperature.” Forney, however, teaches a multi-function epoxy casting resin for thermal management and fiber protection of lithium-ion battery-packs that cures at room temperature. See ¶¶[0040] and [0093]. Thus, it would have been obvious to cure the resin at room temperature for the advantage of a short thermal cure cycle, as specifically taught by Forney.
Yamamoto discloses “accommodating a plurality of battery cells in the inside space of the module case such that a 1st end portion of each of the battery cells faces the lower plate, each of the plurality of battery cells having a 2nd end portion opposite to the 1st end portion” as shown in Examiner annotated figure 10C below.
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Yamamoto discloses “after the step of accommodating the plurality of battery cells in the inside space, curing the resin composition in the inside space of the case so as to form a resin layer therein” at ¶[0132].
Yamamoto discloses “the resin layer partially fills the inside space of the module case, such that the resin layer contacts the lower plate of the module case and each of the 1st end portions of the plurality of battery cells, but the resin layer does not contact each of the 2nd end portions of the plurality of battery cells” because the 2nd end portion, which is shown as the electrodes protruding from the casing is not covered by resin and the resin fills the casing thereby covering the 1st end portion. See figure 10C.
As claims 4, 9, and 10, which claim thermal conductivities of 1.5W/mk, 2 W/mk, and 10kV/mm, Forney discloses the following. See ¶[0048].
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As to claim 5, Forney discloses “the thermally conductive fillers are ceramic particles” at ¶[0036], which is reproduced below.
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As to claim 6, Forney discloses “the resin layer is formed so as to conform to the plurality of battery cells.” See Figures 10A and 10C.
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As to claim 7, Yamamoto discloses “the sidewall or the lower plate in contact with the resin layer includes a thermally conductive region” at ¶[0012], which is reproduced below.
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As to claim 8, Yamamoto discloses “a contact ratio of the resin layer to the thermally conductive region is 80% or more of the entire area of the thermally conductive region” in figure 10C, which is reproduced above.
As to claim 11, Forney discloses “the resin layer has adhesion strength of 1,000 gf/10 mm or less” at ¶[0048], Table 3, which is reproduced below.
As to claim 12, Forney discloses “the resin layer has a specific gravity of 5 or less” at Table 2. See ¶[0048].
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As to claim 13, Forney discloses “a shore A hardness of the resin layer is less than 100 or a shore D hardness is 70 or less” at Table 3. See ¶[0048].
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As to claim 15, Forney’s “resin layer includes…an epoxy resin.” See Abstract.
As to claim 16, Forney discloses “the resin layer includes a thixotropic additive, a diluent, a dispersant, a surface treatment agent, a flame retardant, or a coupling agent” at Table 1. See ¶[0041].
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As to claim 17, Forney discloses “the resin layer has a thickness in a range of 100 μm to 5 mm” at Table 5. See ¶[0048].
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As to claim 18, Yamamoto discloses “the step of curing the resin composition is performed while the resin composition is in contact with the plurality of battery cells” for the same reasons as claim 6.
As to claim 25, this claim is rejected for the same reason as claim 1 because the instant claim claims “positioning a resin composition,” which Examiners find is patentably indistinct from the “injecting a resin composition” of claim 1.
As to claim 27, Yamamoto discloses “the case is a module case of a first battery module, and wherein the battery pack includes the first battery module and a second battery module” because each one of the batteries (#20) as shown, e.g., in figure 10A, reads on a claimed “battery module.”
As to claim 28, Yamamoto discloses “the first battery module is electrically connected to the second battery module” in figures 10A and 10C.
As to claims 29 and 31, Forney discloses the “resin composition is a solvent free resin composition” in Table 1, which is reproduced above.
10. Claims 2-3 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto in view of Forney and further in view of US 2012/0034514 to Baek published Feb. 9, 2012 (“Baek”).
Yamamoto in view of Forney does not specifically disclose “the resin composition is injected into the inside space of the module case after the step of accommodating the plurality of battery cells in the inside space, and wherein the resin composition is injected into the inside space through an injection hole provided in the lower plate or the sidewall.” Baek, however, teaches, injecting molding resin into a battery pack frame body via through-holes (#10a) located in the sidewalls of the frame body. See figure 3. Thus, it would have been obvious to one of ordinary skill in the art to inject the curable resin via injection holes located in the sidewalls of a casing/frame for the advantage of more firmly coupling the molding resin, as taught by Baek.
As to claim 3, Yamamoto in view of Forney does not specifically disclose “wherein the lower plate or the sidewall in which the injection hole is provided includes an observation hole” but anyone of the holes taught by Baek in the combination of claim 2 can be used as an observation hole.
As to claim 26, this claim is rejected for the same reason as claim 2.
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Double Patenting
11. Claims 1 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,342,629. These claims are not patentably distinct from each other because as shown in the table below, instant claim 1 is merely broader than conflicting claim 8. As to claim 25, this claim is rejected for the same reason as claim 1 because the only difference is that “positioning a resin composition” is claimed as “injecting a resin composition.”
Instant Claim
Conflicting Claim
USP 11,342,629
1. A method of manufacturing a battery pack, comprising:
injecting a resin composition into a case of a battery pack,
the case including a lower plate and a sidewall forming an inside space, and
the resin composition being a room temperature curing type resin composition;
accommodating a plurality of battery cells in the inside space of the case such that a 1st end portion of each of the battery cells faces the lower plate, each of the plurality of battery cells having a 2nd end portion opposite to the 1st end portion; and
after the step of accommodating the plurality of battery cells in the inside space, curing the resin composition in the inside space of the case so as to form a resin layer therein,
the curing being performed by maintaining the injected resin composition at room temperature,
wherein the resin layer partially fills the inside space of the case, such that the resin layer contacts the lower plate of the case and each of the 1st end portions of the plurality of battery cells, but the resin layer does not contact each of the 2nd end portions of the plurality of battery cells.
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12. Claims 1 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 11,909,053. These claims are not patentably distinct from each other because as shown in the table below, instant claim 1 is merely broader than conflicting claim 18. As to claim 25, this claim is rejected for the same reason as claim 1 because the only difference is that “positioning a resin composition” is claimed as “injecting a resin composition.”
Instant Claim
Conflicting Claim
USP 11,909,053
1. A method of manufacturing a battery pack, comprising:
injecting a resin composition into a case of a battery pack,
the case including a lower plate and a sidewall forming an inside space, and
the resin composition being a room temperature curing type resin composition;
accommodating a plurality of battery cells in the inside space of the case such that a 1st end portion of each of the battery cells faces the lower plate, each of the plurality of battery cells having a 2nd end portion opposite to the 1st end portion; and
after the step of accommodating the plurality of battery cells in the inside space, curing the resin composition in the inside space of the case so as to form a resin layer therein,
the curing being performed by maintaining the injected resin composition at room temperature,
wherein the resin layer partially fills the inside space of the case, such that the resin layer contacts the lower plate of the case and each of the 1st end portions of the plurality of battery cells, but the resin layer does not contact each of the 2nd end portions of the plurality of battery cells.
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13. Claims 1 and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Pub. No. 2025/0132446. These claims are not patentably distinct from each other because as shown in the table below, instant claim 1 is merely broader than conflicting claim 20. As to claim 25, this claim is rejected for the same reason as claim 1 because the only difference is that “positioning a resin composition” is claimed as “injecting a resin composition.”
Instant Claim
Conflicting Claim
US Pub. No. 2025/0132446
1. A method of manufacturing a battery pack, comprising:
injecting a resin composition into a case of a battery pack,
the case including a lower plate and a sidewall forming an inside space, and
the resin composition being a room temperature curing type resin composition;
accommodating a plurality of battery cells in the inside space of the case such that a 1st end portion of each of the battery cells faces the lower plate, each of the plurality of battery cells having a 2nd end portion opposite to the 1st end portion; and
after the step of accommodating the plurality of battery cells in the inside space, curing the resin composition in the inside space of the case so as to form a resin layer therein,
the curing being performed by maintaining the injected resin composition at room temperature,
wherein the resin layer partially fills the inside space of the case, such that the resin layer contacts the lower plate of the case and each of the 1st end portions of the plurality of battery cells, but the resin layer does not contact each of the 2nd end portions of the plurality of battery cells.
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Reissue Declaration
14. Claims 1-18 and 25-31 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251. See 37 CFR 1.175.
The reissue declarations filed November 13, 2024 (“NOVEMBER 2024 REISSUE DECLARATIONS”) are insufficient because the statement of the error no longer supports this application.
The statement of the error is as follows:
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While the MARCH 2024 CLAIM AMENDMENTS amended the patent claims, i.e., inter alia, “battery module” was amended to “battery pack,” the MAY 2025 CLAIM AMENDMENTS restored the patent claims to their original form, i.e., “battery pack” was restored to “battery module.” Thus, the error stated in the declaration is no longer being corrected by this reissue.
Because the NOVEMBER 2024 REISSUE DECLARATIONS were sufficient to support this reissue at prior to the filing of the MAY 2025 CLAIM AMENDMENTS, the door has been opened for Applicant to correct error statement via the remarks. Thus, Applicant may overcome this rejection by providing, in the remarks in response to this non-final rejection, a sufficient statement of an error to support this reissue application.
Claim Objections
15. The MAY 2025 CLAIM AMENDMENTS are objected to because the claim identifiers of claim 1 and 2 are “(Twice amended).” Because the claims are amended with respect to the patent, these restored patent claims should be identified as “(Original).” See 37 CFR 1.173(g). CORRECTION IS REQUIRED.
Allowable Subject Matter
16. If Applicant supplies a sufficient error statement to support this reissue, then claims 14 and 30 would be objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As to claim 14, the prior art does not disclose or make obvious in “a thermogravimetric analysis (TGA), the amount of residue of the resin layer at 800° C is 70 weight % or more” in combination with the other limitations of the claims.
As to claim 30, the prior art does not disclose or make obvious “wherein the step of accommodating the plurality of battery cells in the inside space of the module case is performed after the step of injecting the resin composition into the module case” in combination with the other limitations of the claims.
Conclusion
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEANDRA M HUGHES whose telephone number is (571)272-6982. The examiner can normally be reached Generally M-Th 8AM-6PM.
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, Hetul Patel can be reached at 571-272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed:
/DEANDRA M HUGHES/Reexamination Specialist, Art Unit 3992
Conferees:
/Woo H Choi/
Primary Examiner, Art Unit 3992
/H.B.P/
Hetul PatelSupervisory Patent Examiner, Art Unit 3992