DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-5 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 1 recites “an elastic member for battery pack”, followed by “arranged in a battery pack…”. The preamble suggests that the claim is drawn to an elastic member having an intended use in a battery pack. The language following then requires the elastic member to be particularly configured in a battery pack. The scope of the claim is indefinite, as it is unclear if the claim is recited to an elastic member alone, and that the following language is limiting to the degree that the elastic member must be capable of being configured in a battery pack as claimed, or if the claim is drawn to a battery pack, of which the elastic member having the claimed limitations is a part.
Claim 1 also recites “with a direction of elastic contact with the battery cells as a thickness direction”. If the claim is drawn to an elastic member alone, then the claimed thickness direction is indefinite, as it is only defined with respect to an intended use. In other words, if the claim is drawn to an elastic member not configured with respect to other parts of a battery pack, the thickness direction should be defined with respect to the member itself.
Claims 2-5 are also rejected as indefinite in scope because they require the limitations of claim 1.
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative as unpatentable over JP2019/178210A to Sekisui (document and translation provided along with 9/30/2025 IDS).
As noted above in the rejection of the claims under 112(b), the scope of the claim is unclear. In this analysis, the scope is interpreted as an elastic member, which has the intended use of being configured in a battery pack in which a plurality of battery cells are arranged side by side in a predetermined direction such that the elastic member is in elastic contact with the battery cells.
Regarding claims 1 and 2, Sekisui teaches an elastic member, wherein the elastic member is made of a foam that satisfies:
An Asker C hardness of 32 to 40 (¶0011 of the translation)
a foaming ratio of ~ 1.08 to 13 (the density of raw material composition is ~0.9 g/cm3, ¶0015; the density of foam is (1/1.2)=0.83 g/cm3 to (1/15)= 0.067 g/cm3, ¶0022)
a closed cell ratio is 70% or more (¶0023)
in a thickness direction, a structure of a bubble in cross-section has an elliptical bubble having an elongated elliptical shape in the thickness direction (¶0025, 0026).
While a function of the elastic member in an battery pack is not specifically disclosed, it is recited as being capable of being used in an electronic device (¶0036). Therefore according to the teachings of Sekisui and the similarity of the prior art to the claimed invention, a skilled artisan would understand that the elastic member could be used in the claimed function. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
It is the examiner’s understanding that the range of foaming ratio of the prior art overlaps the claimed foaming ratio sufficiently to anticipate. MPEP §2131.03.II. If it can be shown that the ranges is not anticipatory, it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to form an elastic member with the claimed foaming ratio due to the overlap between ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP §2144.05.
Per claim 2, in the elliptical bubble, a ratio of a major axis to a minor axis (major axis/minor axis) is 1.0 or more and 3.0 or less (¶0026).
Claim(s) 1, 2, and 4, is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2020/139062A to Takasu (machine translation relied upon herein), and further in view of Sekisui.
As noted above in the rejection of the claims under 112(b), the scope of the claim is unclear. In this analysis, the scope is interpreted as battery pack comprising the an elastic member configured as claimed.
Regarding claims 1, 2, and 4, Takasu teaches an elastic member 11B for battery pack (Fig. 1), arranged in a battery pack 10 in which a plurality of battery cells 12A, 12B are arranged side by side in a predetermined direction and is in elastic contact with the battery cells (p. 2 of translation), wherein the elastic member for battery pack is made of a foam that satisfies:
(b) a foaming ratio is 3.0 times or more and 35.0 times or less (bottom p. 3 of translation)
(c) a closed cell ratio is 80% or more (top p. 4 of translation).
Takasu’s recited foaming ratio renders the claimed foaming ratio obvious due to the substantial overlap of the ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP §2144.05.
While Takasu is concerned with mechanical properties of the foam such as shear strength (p. 3 of translation), the reference does not disclose a preferred Asker C hardness. Sekisui, also concerned with foam elastic members suitable for use in electronic devices (¶0002 of translation), teaches that a reworkability such a member can be improved if the Asker C hardness is between 32 and 40 (¶0009, 0011). Therefore it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to form the Asker C hardness of the elastic member of modified-Takasu to be in the claimed range to improve reworkability.
While Takasu clearly teaches bubbles are present in the member, the reference does not teach, with a direction of elastic contact with the battery cells as a thickness direction, a structure of a bubble in a cross-section in the thickness direction has an elliptical bubble having an elongated elliptical shape in the thickness direction. Sekisui teaches that a desired Asker C hardness can be achieved by including an elliptical bubble configured as claimed (¶0026 of translation). Therefore it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to form the claimed elliptical bubble having an elongated elliptical shape in the defined thickness direction to achieve the benefits of reworkability.
Per claim 2, modified-Takasu teaches the limitations of claim 1. While Takasu does not explicitly teaches a ratio of a major axis to a minor axis (major axis/minor axis) of the elliptical bubble, Sekisui teaches a range of 1.0 or more and 3.0 or less (¶0026 of translation).
Per claim 4, modified-Takasu teaches the limitations of claim 1. The member has a thickness of 1.0 mm or more and 7.0 mm or less (bottom of p. 3 of translation of Takasu).
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0272177 to Apeldorn, and further in view of Sekisui.
Regarding claims 1-4, As noted above in the rejection of the claims under 112(b), the scope of the claim is unclear. In this analysis, the scope is interpreted as battery pack comprising the an elastic member configured as claimed.
Apeldorn teaches an elastic member 16 for battery pack (¶0020-0024 discuss the cushioning properties of the member, which requires expansion and contraction complementary to that of battery cells), arranged in a battery pack (Fig. 9) in which a plurality of battery cells 19 are arranged side by side in a predetermined direction and is in elastic contact with the battery cells (¶0258; also see Fig. 5, ¶0133), wherein the elastic member is made of a foam that satisfies (d) with a direction of elastic contact with the battery cells as a thickness direction, a structure of a bubble in a cross-section in the thickness direction has an elliptical bubble having an elongated elliptical shape in the thickness direction (¶0099, 0100).
Apeldorn teaches a preferred density of foam of 200 to 500 kg/m3 (¶0113, 0114), and teaches a preferable final thickness of the foam portion of the element (¶0125, 0126). Further, the thickness and density (in terms of “coating weight” in g/cm2) of the raw material of the foam are known result effective variables that can be optimized to accommodate an efficiency of the manufacturing method (¶0074, 0075, 0276-0278, 0281).
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Therefore the claimed foaming ratio of the foam of the elastic member is an obvious result of optimization of known result effective variables to achieve desired properties.
Apeldorn measures a Shore hardness (¶0115, 0116), but does not explicitly teach an Asker C hardness. Sekisui, also concerned with foam elastic members suitable for use in electronic devices (¶0002 of translation), teaches that a reworkability such a member can be improved if the Asker C hardness is between 32 and 40 (¶0009, 0011). Therefore it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to form the Asker C hardness of the elastic member of modified-Apeldorn to be in the claimed range to improve reworkability.
Apeldorn implies that the bubbles in the foam material are filled with gas to complete foam molding (¶0062-0066, 0098-0104), and therefore implies the existence of closed cells, but does not explicitly teach a closed cell ratio. Sekisui teaches it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to conventionally form such a foam material with a closed cell ratio of 70% or more (¶0023, 0024 of translation). 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. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Per claim 2, modified-Apeldorn teaches the limitations of claim 1. While Apeldorn does not explicitly teaches a ratio of a major axis to a minor axis (major axis/minor axis) of the elliptical bubble, Sekisui teaches a range of 1.0 or more and 3.0 or less (¶0026 of translation).
Per claim 3, modified-Apeldorn teaches the limitations of claim 1. In the foam, an average diameter of the bubble in the cross-section in the thickness direction is 5 micrometers or more and 3000 micrometers or less (¶0102, 0103).
Per claim 4, modified-Apeldorn teaches the limitations of claim 1. The elastic member has a thickness of 0.1 mm or more and 10 mm or less (¶0190).
Regarding claim 5, Apeldorn teaches a manufacturing method of an elastic member of a battery pack (¶0020-0024 discuss the cushioning properties of the member, which requires expansion and contraction complementary to that of battery cells), the method comprises:
a raw material composition arranging step (Fig. 1) of arranging a raw material composition of a foam in a mold (material 3 moving in direction 8 is molded into the shape of the gap between 7 and 2 in Fig. 1, ¶0061, 0062)
a sheet member arranging step of arranging a sheet member 6 on a surface of the raw material composition 3
a foam molding step of foam molding the raw material composition 3 with a surface covered with the sheet member (“The layer of the precursor of the polymeric foam 3 is thereafter allowed to foam and cure resulting into the polymeric foam layer 4”).
The elastic member 16 formed by the method is arranged in a battery pack (Fig. 9) in which a plurality of battery cells 19 are arranged side by side in a predetermined direction and in elastic contact with the battery cells (¶0258; also see Fig. 5, ¶0133). Apeldorn specifically teaches that the elastic member is made of a foam that satisfies (d) with a direction of elastic contact with the battery cells as a thickness direction, a structure of a bubble in a cross-section in the thickness direction has an elliptical bubble having an elongated elliptical shape in the thickness direction (¶0099, 0100).
Apeldorn teaches a preferred density of foam of 200 to 500 kg/m3 (¶0113, 0114), and teaches a preferable final thickness of the foam portion of the element (¶0125, 0126). Further, the thickness and density (in terms of “coating weight” in g/cm2) of the raw material of the foam are known result effective variables that can be optimized to accommodate an efficiency of the manufacturing method (¶0074, 0075, 0276-0278, 0281).
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Therefore the claimed foaming ratio of the foam of the elastic member is an obvious result of optimization of known result effective variables to achieve desired properties.
Apeldorn measures a Shore hardness (¶0115, 0116), but does not explicitly teach an Asker C hardness. Sekisui, also concerned with foam elastic members suitable for use in electronic devices (¶0002 of translation), teaches that a reworkability such a member can be improved if the Asker C hardness is between 32 and 40 (¶0009, 0011). Therefore it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to form the Asker C hardness of the elastic member of modified-Apeldorn to be in the claimed range to improve reworkability.
Apeldorn implies that the bubbles in the foam material are filled with gas to complete foam molding (¶0062-0066, 0098-0104), and therefore implies the existence of closed cells, but does not explicitly teach a closed cell ratio. Sekisui teaches it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to conventionally form such a foam material with a closed cell ratio of 70% or more (¶0023, 0024 of translation). 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. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan S Cannon whose telephone number is (571)270-7186. The examiner can normally be reached M-F, 8:30am-5:30pm PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Barton can be reached at (571) 272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Ryan S. Cannon
Primary Examiner
Art Unit 1726
/RYAN S CANNON/Primary Examiner, Art Unit 1726
Prosecution Insights