DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), which papers have been placed of record in the file.
Information Disclosure Statement
3. Information disclosure statements (IDS), submitted March 3, 2025 and June 23, 2025, have been received and considered by the examiner.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
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.
5. Claims 15-18 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 15 recites “the alignment member comprises an alignment hole formed through any of the tray and the battery module” but this claim depends from Claim 14, and Claim 14 recites that the alignment member is between the tray and the battery module. It is unclear how the alignment member is placed between the tray and battery module and it also has a hole formed through the tray or the battery module. Claims 16-18 are rejected as being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 102
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 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.
5. Claims 1-4 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tessler US PG Publication 2018/0130983.
Regarding Claims 1 and 2, Tessler discloses an energy storage system comprising a rack frame (battery box) 12, a tray 14 provided to the rack frame 12, a battery module 8 provided on the tray and insertable in the rack frame 12 while moving in a first direction (see directional arrows in Fig 1), a guide rail (glide mount) 16 arranged to face the battery module and configured to guide movement of the battery module (para 0044, Fig 1-2), and a stopper (rearward stop edge and L-shaped bracket) 110/48 (which are spaced apart from each other in the first direction, meeting Claim 2) between the battery module 8 and the guide rail 16 and configured to selectively restrict movement of the battery module 8 in a second direction opposite to the first direction (para 0089, restrict forward withdraw of the battery tray) (see entire disclosure and especially Figs and paras 0025-0028, 0034-0038, 0044-0046, 0087-0092).
Regarding Claims 3-4, Tessler discloses wherein the guide rail comprises a rail body (upper horizontal glide surface and left vertical side) 74/22 arranged to face the battery module (para 0048) and a rail hole (affixation aperture) 80 formed through the rail body, having a smaller length than the battery module (see Figs, meeting Claim 4), and having a first end and a second end space apart from the first end in the first direction (see annotated fig below and e.g. para 0048).
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Regarding Claim 14, Tessler discloses wherein the energy storage system comprises an alignment member (upper horizontal glide surface and left vertical side) 74 between the tray 14 and the battery module 12 and configured to align a position of the battery module via aligning the tray (paras 0036, 0048-0050) such that the alignment member comprises an alignment hole (aperture) 80 aligned with affixation holes 34, para 0049) .
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 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, 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 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 35 U.S.C. 103 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.
7. Claims 5-8 and 15-18 are rejected under 35 U.S.C. 103 as being obvious over Tessler US PG Publication 2018/0130983.
Regarding Claims 5-8, Tessler discloses the claimed energy storage system as described in the rejection of Claim 14, which is incorporated herein in its entirety. Tessler teaches a stopper body movably connected to the battery module since it is movably connected to the tray upon which the battery module sits, and is elastically deformable via the spring element 60 (meeting Claim 6) and is reciprocally movably connected to the tray (and therefore to the battery module) in an up-down direction which is a direction intersecting the first direction (meeting Claim 7), where the stopper body comprises a stationary end (U-shaped bracket) 58 connected to the battery module via connection to the tray, and a moveable end (latching member) 62 extending from the stationary end in the second direction (see the direction in which the hook portion 62 extends, away from the tray/module, meeting Claim 9) and spaced apart from the battery module and tray, the movable end being rotatable about the stationary end (given the spring attachment) (meeting Claim 8) and discloses the hook (latching member) 62 secured to the stopper body and insertable in or disengageable from latching holes in a movement direction of the stopper body (see Figs and paras 0037-0038). Tessler does not disclose these features as part of the guide rail and rail body. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the guide rail and rail body of Tessler such that the stopper body 58 with hook 62 is used as the guide rail alignment mechanism because Tessler teaches that the stopper body 58 is successful in securing the tray from moving after the tray, and therefore the battery module, is placed. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Regarding Claims 15-16, Tessler discloses the claimed energy storage system as described in the rejection of Claim 14, which is incorporated herein in its entirety. Tessler discloses alignment protrusion (mechanical fastening element) protruding from the tray and discloses an alignment hole (attachment opening) 94 which align to secure the guide rails to the rack frame 12 (Figs 3-4; paras 0073-0074), and designs the alignment holes as first, second, and third alignment holes sequentially arranged in the first direction, and first, second and third alignment protrusions arranged sequentially in the first direction (see Figs 2-4) (meeting Claim 16) but Tessler does not specifically disclose wherein the alignment member comprises an alignment hole formed through any of the tray and the battery module and an alignment protrusion protruding from another of the tray and the battery module and insertable in or separator from the alignment hole in conjunction with movement of the battery module. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the system of Tessler such that the alignment member comprises an alignment hole formed through any of the tray and the battery module and an alignment protrusion protruding from another of the tray and the battery module and insertable in or separator from the alignment hole in conjunction with movement of the battery module in order to ensure that the module is securely held in the assembly since the mere rearrangement of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Harza, 124 USPQ 378 (CCPA 1960) (see MPEP § 2144.04).
Regarding Claim 17, Tessler teaches the first, second, and third alignment holes in a line, the same as in the instant invention (Fig 4 of instant invention) and therefore teaches “wherein the second alignment hole is located to alternate with the first alignment hole in an intersecting direction with respect to the first direction, and the third alignment hole is located to face the first alignment hole in a direction parallel to the first direction (i.e. the second direction).
Regarding Claim 18, each of the first, second, and third alignment protrusions of Tessler have a beveled edge (see below, from Fig. 4).
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Allowable Subject Matter
8. Claims 10-13 are 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. Claim 10 recites structure that would not be obvious to provide as modifications to the closest prior art, Tessler, and there is no other prior art available to disclose the claimed structure of this invention. Claims 11-13 depend from Claim 10 and are objected to for the same reasons.
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Carignan US PG Publication 2022/0109210 discloses an energy storage system comprising a rack frame 250, a tray (shelf) 262 provided to the rack frame, a battery module 400 on the tray and insertable into the rack frame 250 while moving in a first direction, a guide rail (guiding bracket) 270 arranged to face the battery module and configured to guide movement of the battery module, and a stopper 280 between the battery module and the guide rail and configured to selectively restrict movement of the battery module in the first direction (see entire disclosure and especially Fig 6-8 and paras 0084-0085).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA S PARK whose telephone number is (571)270-3597. The examiner can normally be reached M-Th 5:30a to 3p Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Tavares-Crockett can be reached on 5712721481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LISA S PARK/Primary Examiner, Art Unit 1729
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