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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. This is a broadening reissue application of U.S. Patent No. 10,981,454 to Choi et al. (hereafter “the ‘454 patent”).
Ongoing Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b) to timely apprise the Office of any prior or concurrent proceeding(s) in which U.S. Patent No. 10,981,454 is or was involved in. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56 to timely apprise the Office of any information which is material to the patentability of the claims under consideration in this reissue application.
The obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01, and 1442.04.
Status of Claims
New claims 15-34 of the instant reissue application are pending.
Multiple Reissue Applications
This reissue application is the continuation of application of reissue application 18/1378,346. 37 CFR 1.177(a) requires that all multiple reissue applications resulting from a single patent must include as the first sentence of their respective specifications a cross reference to the other reissue application(s). Accordingly, the first sentence of each reissue specification must provide notice stating that more than one reissue application has been filed, and it must identify each of the reissue applications and their relationship within the family of reissue applications, and to the original patent. An example of the suggested language to be inserted is as follows:
Notice: More than one reissue application has been filed for the reissue of Patent No. 10,981,454. The reissue applications are application number 18/137,346 and application number 19/299,178 (the instant application), which is a continuation reissue of Patent No. 10,981,454. See MPEP 1451.
Original Patent Requirement
The following is a quotation of the first paragraph of 35 U.S.C. § 251:
IN GENERAL – Whenever any patent is, through error, deemed wholly or partially inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than they had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 15-34 are rejected as not complying with the original patent requirement under 35 U.S.C. 251.
As is stated in Forum US, Inc. v. Flow Valve LLC, 926 F.3d 1346, 2019, USPQ2d 221227 (Fed. Cir.), for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus. Chem., 315 U.S. at 676. Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362.
Further, MPEP 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are "for the invention disclosed in the original patent" as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
Claims 15-34, filed 13 August 2025, do not meet the “original patent” clause because the ‘454 patent does not clearly and unequivocally disclose a battery module which does not comprise a first and second bus bar frame or a battery module comprising a sensing bus bar having an elastic bending portion which is configured to be bent or is bent any two directions.
As it pertains to the presence of a bus bar frame, instantly pending independent claim 15 does not recite the presence of a bus bar frame and therefore does not require that the first and second bus bars be coupled to a first and second bus bar frame. However, the ‘454 patent only ever clearly and unequivocally discloses a battery module comprising a first and second bus bar which are respectively coupled to a first and second bus bar frame.
For example, the ‘454 patent recites:
“The bus bar unit may include: a first bus bar frame mounted in front of the plurality of battery cells; a first bus bar coupled to the first bar frame and connected to the electrode leads…” and “..second bus bar frame mounted behind the plurality of battery cells; a second bus bar coupled to the second bus bar frame…” (col. 2 lines 33-39).
Additionally, the ‘454 patent recites:
“Each of the first bus bar frame and the second bus bar frame may include: a bus bar mounting portion to which the first bus bar or the second bus bar is mounted…” (col.2 line 60-62).
Furthermore, figures 1-3, 6, 7, 9, and 11-13 of the ‘454 patent illustrate a battery module in which a first bus bar is coupled to a first bus bar frame and a second bus bar is coupled to a second bus bar frame. For example, when describing figures 1-5 the ‘454 patent recites:
“The first bus bar 220 is coupled to the first bus bar frame 210, in more detail to the bus bar mounting portion 212 of the first bus bar frame…” and “The second bus bar 240 is coupled to the second bus bar frame 230, in more detail to the bus bar mounting portion of the second bus bar frame 230…” (col. 4 lines 58-60 and col 5 lines 14-16).
None of the figures of the ‘454 patent illustrate an embodiment in which the first and second bus bars are not coupled to a first and second bus bar frame. While the ‘454 patent clearly discloses a battery module comprising first and second bus bars respectively coupled to a first and second bus bar frame, it does not clearly disclose as a separate invention a battery module wherein there is not a first and second bus bar frame. As such, the’454 patent does not clearly and unequivocally disclose the newly claimed invention as a separate invention as required by 35 U.S.C. § 251.
As it pertains to the folding direction of the elastic bending portion of the sensing bus bar, independent claim 15 recites that the sensing bus bar includes an elastic bending portion that is folded in the first and second directions of the battery module, there is no recitation in claim 15 regarding the relationship between the first and second directions. As such, the scope of instantly pending reissue claim 15 encompasses embodiments in which the elastic bending portion of the sensing bus bar is folded in any two directions. The ’454 patent on the other hand only ever clearly and unequivocally discloses embodiments of the battery module wherein the sensing bus bar has an elastic bending portion that is configured to be folded or is folded in a front and rear direction (i.e., in opposite directions).
For example, claim 1 of the ‘454 patent recites
“wherein the sensing bus bar includes an elastic bending portion which is configured to be elastically bendable and folded which is configured to be elastically bendable and folded in the front and rear directions of the plurality of battery cells,”
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Further, the ‘454 patent presents an illustration of the disclosed sensing bus bar wherein the elastic bending portion is configured to be folded or is folded in a first direction and an opposite second direction. There is no further disclosure regarding the folding direction of the elastic bending portion of the sensing bus bar.
Figures 3 and 4 of the ‘454 patent illustrating the folding of the
elastic bending portion of the sensing bus bar.
While the ‘454 patent clearly discloses a sensing bus bar which includes an elastic bending portion configured to be elastically bendable and/or folded in a first direction and a second opposite direction, the ‘454 patent does not disclose a sensing bus bar having an elastic bending portion which is configured to be elastically bendable and/or folded in any two directions encompasses by instant claim 15. As such, the ‘454 patent does not clearly and unequivocally disclose the newly claimed invention as a separate invention as required by 35 U.S.C. § 251. Claims 16-34 are rejected under 35 U.S.C. § 251 for inheriting the deficiencies of claim 15. Appropriate action is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 15-25, 28, 29, and 32-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, 9, 11, 12, and 14 of U.S. Patent No. RE 50,620 (the reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation recited in claims 15-25, 28, 29, and 32-34 are recited in claims 1-5, 8, 9, 11, 12, and 14 of the reference patent.
Pertinent Prior Art
Nishihara et al., US 2012/0019061 discloses a battery formed from battery modules comprising a plurality of battery cells (1) which are stacked on another as claimed [abstract, 0001, 0007, 0008, 0013, 0023, 0027, 0102, 0159-0164, 0176, Figs. 1, 10 and 11]. Each of the battery cells (1) comprises electrode leads (3) which correspond to the claimed electrode leads [0008, 0013, 0023, 0091, 0159-0164, 0176, Figs. 10 and 11]. The battery module further comprises a wiring unit (70) which in turn comprises a plurality of spaced apart bus bars (40) which electrically connect the leads of two adjacent battery cells [0091, 0159-0164, 0176, Figs. 1, 10 and 11]. The bus bars are electrically connected to a flexible printed circuit (50)(referred to as in the reference as “FPC”) [0013, 0014, 0091, 0159-0164, 0176, Figs. 1, 10 and 11].
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Figures 1 (left) and 10 (right) of Nishihara illustrating
the disclosed battery module
The flexible printed circuit comprises an accordion shaped portion (55) which allows the bus bars and flexible printed circuit to be attached to the battery module while absorbing an error [0176, Fig. 11].
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Figure 11 of Nishihara illustrating the disclosed wiring unit comprising
a spaced apart bus bars connected via a flexible printed circuit
Nishihara does not reasonably teach or suggest that the flexible printed circuit (i.e., a sensing bus bar) comprises a bending portion that has at least one fold that overlaps the sensing bus bar as recited in instantly pending claim 15.
Conclusion
Claims 15-34 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEE E SANDERSON whose telephone number is (571)270-1079. The examiner can normally be reached M-F: 9:30AM to 7:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEE E SANDERSON/ Reexamination Specialist, Art Unit 3991
Conferees:
/LEONARDO ANDUJAR/ Primary Examiner, Art Unit 3991
/Patricia L Engle/ SPRS, Art Unit 3991
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