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.
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”.
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 1 – 20 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without the first functional part “being capable of being blown when the current is large” (see specification; e.g. Paragraph 0076), which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). The present claims are very broad and generic in terms of the claimed limitations, which could read on outlet plugs, circuitry, etc., yet it is clear from the disclosure that the invention is a form of fuse/circuit protection based on the ability of the first functional part being capable of being blown when the current is large (i.e. exceeds normal operating ranges). Amendment to claim 1 to positively recite this functional aspect of the first functional part would obviate this rejection.
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.
Claim 1 requires that the first functional part is ‘disposed between the first connecting part and the second connecting part’ with these two connecting parts spaced apart from each other in a second direction, and the ‘first part connects the first connecting part and the second connecting part’: e.g. something akin to:
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Yet claim 1 also requires that the first functional part ‘comprises a first aprt and a first protrusion’, wherein the ‘first protrusion extends from the first connecting part towards the second connecting part along the second direction’ but is also ‘apart from both the first part and the second connecting part’. Which would appear to imply something like:
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… yet, the first protrusion is recited as being part of the first functional part which includes the first part. I.e. something akin to:
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, but then the first protrusion is not ‘apart from the first part’. So is the ‘first protrusion’ a part of the first functional part? Or is the first protrusion a part of the first connecting part? Or neither? The Examiner is completely unclear what Applicants are actually trying to claim here, in part because of the VERY generic langauge used in the claim, which can almost read on anything. For the purpose of evalauting the prior art, the Examiner has interpreted the ‘protrusion’ as necessarily being part of the first functional part, as recited in the claim, so the ‘first part’ and ‘first protrusion’ must necessarily be mated together in some way, as they are both part of the ‘first functional part’.
The Examiner notes that there is similar issues when second protrusions are added in dependent claims, etc.
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.
Claim Rejections - 35 USC § 103
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 of this title, 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.
The factual inquiries 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 4, 9 – 11 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over a conventional battery part having a conventional plug.
Regarding claims 1 and 20, a conventional battery pack plug is deemed to read on the claimed invention for the reasons as follows:
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I.e. the positive and negative terminals of the plug are the first and second connecting parts, spaced part from each other in an arbitrary ‘second direction’, while the plug can be connected to the battery pack in an arbitrary ‘first direction’ normal to said ‘second direction’ (as the plug can easily be moved around). A first ‘functional part’ (i.e. the body of the plug) comprises top and bottom parts (‘first part’ and ‘second part’) which are covered in protrusions of various form and shape, which extend from these parts in the second direction (side grip protrusions, for example) and are spaced apart from the first and second connecting parts.
Alternative to anticipation, if it is argued that such a ‘plug’ is a replacement style plug and not a single-form entity like some plugs, the Examiner notes that such a plug form is still clearly art recognized as a means for forming a plug on a power cord.
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, uniform, single-body plugs and plugs with securable tops and bottoms are functional equivalents in the field of known plugs for power cords. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claim 2, the above image illustrates how the plug reads on the claimed ‘second part’.
Regarding claim 3, again, given the confusion on the relative location of these protrusions given the contradictory language in the claims, the ‘gripping’ protrusions on the opposite side of the ‘first part’ above are deemed to meet these limitations.
Regarding claim 4, internal protrusions (of which these are conventional and know; e.g. the place to secure the screw to hold the two plug halves together, etc.) would meet the claimed protrusion in a ‘third direction’ between the ‘first part’ and ‘second part’.
Regarding claim 9, conventional plugs often have additional ‘insulation’ (i.e. plastic) rings/bodies around the plug; e.g.
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; which would read on the claimed limitations.
Regarding claim 10, the power cord has an insulating coating around the wire, which reads on the claimed ‘insulator’ disposed between the battery pack and the first conductive member. The other directional limitations are moot as the cord can be easily moved to meet the claimed limitations as these ‘directions’ are arbitrary:
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Regarding claim 11, a battery pack has two power cords, one to provide recharging power to the batteries and one (or more) to provide power to devices attached to the battery pack (or it wouldn’t be much of a battery pack). The second power cord meets the limitations of claim 11 for the reasons set forth above.
Claims 1 – 4, 9 – 11 and 16 – 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Lee et al. (U.S. Patent App. No. 2024/0379312 A1).
Regarding claims 1 and 20, Lee et al. disclose (see Figure below)
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a battery module, comprising: a battery pack (element 11); and a first conductive member (portion of fuse including elements as indicated in Figure above) comprising a first connecting part (one of the elements 22), a second connecting part (the second element 22, as indicated in figure), and a first functional part (all the portions connecting these two connecting parts to the portion that connects to the circuit board); wherein the first connecting part, the second connecting part, and the first functional part are located at a side of the battery pack in a first direction (as indicated, but see also below); the first connecting part is electrically connected to the battery pack (as indicated; see also disclosure that indicates the fuse structure is located electrically between the battery and the circuit board), the first connecting part and the second connecting part are spaced apart from each other in a second direction (also as indicated, but see below), the second direction being perpendicular to the first direction (ibid), and the first functional part is disposed between the first connecting part and the second connecting part (as shown in Figure); and the first functional part comprises a first part (the wires leading from portion that connects to circuit board, for example, and the wires between element 22 and the fuse) and a first protrusion (the fuse portion), wherein the first part connects the first connecting part and the second connecting part (connected via circuit board); the first protrusion extends from the first connecting part towards the second connecting part along the second direction (as shown in Figure); and the first protrusion is apart from both the first part and the second connecting part (ibid).
While the Examiner maintains that all of the aspects of the claim can be ‘interpreted’ to be read on by the fuse structure shown above, the Examiner acknowledges that there is not specific guidance to have the different parts ‘spaced apart’ in a specific direction, or clear separation of what is a ‘part’ versus a ‘protrusion’.
However, the Examiner deems that all the orientation aspects that are claimed (e.g. “located at a side of the battery pack in a first direction”; “spaced apart in a second direction”, etc.) are all arbitrary and moot when considering the patentability of the claimed structure. Specifically, a skilled artisan would readily appreciate how to arrange different components so that they were secured to/in the device and did not short circuit, etc., and the exact ‘direction’ that these are located has absolutely no bearing on the function and ability of the fuse device. As such, these are matters of routine design choice and optimization, well within the knowledge of a person of ordinary skill in the art. Second, the various portions of the first functional part; i.e. the first ‘part’ and first ‘protrusion’ are also arbitrary labels and almost anything could be considered a ‘part’ or a ‘protrusion’ depending on the frame of reference. Add in the fact that there is confusing in the claim as to what is exactly meant by the structural location of said ‘protrusion’ (see 112 rejections above), and the Examiner has applied these limitations in a very broad manner.
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Lee et al. to meet the totality of claim 1, as claim 1 is broadly claiming something with electrical connections to a battery pack and some connecting wires or connections with, essentially, arbitrarily located protrusions. As such, even if it is shown that the figure above does not anticipate the claimed limitations, the Examiner still maintains that a skilled artisan would have been motivated to perform routine design choice and optimization to render obvious the claimed invention, as it simply involves moving around the physical components to ensure that they perform their purpose in the device while remaining secure and not short circuiting other components.
Regarding claim 2, one of the other wires can be taken as the claimed ‘second part’ for the same reasoning as set forth above (connecting through the circuit board).
Regarding claims 3 and 4, the additional protrusions are met for the reasons shown in the figure.
Regarding claims 9 and 10, Lee et al. disclose insulator coatings meeting the claimed limitations (see at least Paragraphs 0052 – 0073). The Examiner further notes that it would have been obvious to insulate the conductive components from each other to avoid potential short circuits.
Regarding claim 11, as shown in the figure, the additional wires, fuses, elements 22, etc. on the opposite side of the figure meet the limitations of claim 11.
Regarding claims 16 – 19, Lee et al. disclose circuit boards as part of the battery pack assembly. While the Examiner maintains that the broadly claimed circuit board limitations are met by the Lee et al. disclosure (Figures and at least Paragraphs 0005 – 0010), the Examiner acknowledges that Lee et al. is relatively light on specific structural locations of the circuit board. However, even if Lee et al. fails to anticipate the exact structural location of the circuit board as claimed in claims 16 – 19, the Examiner deems that Lee et al. renders obvious these claimed limitations as moving the circuit board around while maintaining the necessary electrical connection to the fuse structure would have been routine and obvious to a skilled artisan, depending on the exact structural layout of the battery pack.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: other than the 112 rejections above, claims 5 – 8 and 12 – 15 are deemed allowable over the prior art because there are specific structural aspects of the protrusions (claims 5 – 7 and 12 – 14) or overlapping projections of the functional parts (claims 8 and 15) that are neither taught nor rendered obvious by the prior art of record. Amendment to overcome the 112 rejection and incorporate some or all of these aspects into the independent claim would appear to distinguish over the art of record.
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
August 5, 2026
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