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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/639,692
`
`02/17/2020
`
`JIRO MURATSU
`
`083710-2941
`
`3947
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`WYLUDA, KIMBERLY
`
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/27/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`) )
`
`Application Papers
`10)L) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)C] accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)C1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)LJ None of the:
`b)L) Some**
`a)LJ All
`1.2 Certified copies of the priority documents have been received.
`2..) Certified copies of the priority documents have beenreceived in Application No.
`3.0.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 202307112
`
`Application No.
`Applicant(s)
`16/639,692
`MURATSU etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`KIMBERLY WYLUDA
`1725
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 07/07/2023.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on__; the restriction requirement and election have been incorporatedinto this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`)
`)
`
`Disposition of Claims*
`1-5 and 7-11 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Claim(s) 10-11 is/are allowed.
`) 1-5 and 8-9 is/are rejected.
`Claim(s
`Claim(s) 7 is/are objectedto.
`() Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`

`

`Application/Control Number: 16/639,692
`Art Unit: 1725
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA 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.
`
`Continued Examination Under 37 CFR 1.114
`
`2.
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in
`
`37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible
`
`for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been
`
`timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR
`
`1.114. Applicant's submission filed on July 7, 2023 has been entered.
`
`Claim Rejections - 35 USC § 102
`
`3.
`
`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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction
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`of the statutory basis for the rejection will not be considered a new ground of rejection if the
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`prior art relied upon, and the rationale supporting the rejection, would be the same under
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`either status.
`
`4.
`
`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 effectivefiling date of the claimed invention.
`
`5.
`
`Claims 1-3 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shimizu
`
`et al. (US PGPub 2011/0076521, cited on the IDS dated March 23, 2020).
`
`

`

`Application/Control Number: 16/639,692
`Art Unit: 1725
`
`Page 3
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`Regarding Claim 1, Shimizu discloses in Figs. 2-4 a battery module ([0042], battery
`
`assembly) comprising:
`
`a battery block (see annotated Fig. 13 provided below) including a plurality of cell rows
`
`(C), in each of which a plurality of cells (12) are arranged in a line along a row direction (Fig. 4,
`
`[0042], [0048], see also annotated Fig. 13 provided below), wherein each of the plurality of cells
`
`(12) includes a positive electrode terminal (32b) and a negative electrode terminal (32a)
`
`disposed on one end part (30b,lid) of each of the plurality of cells (12) (Fig. 5, [0044]-[0045]), a
`
`plurality of end parts (30b) are positioned on a same side in the battery block, and wherein the
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`plurality of cell rows (C) are arranged in parallel with other in a column direction crossing the
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`row direction (Figs. 4-5, see also annotated Fig. 12 provided below);
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`an insulative plate (18, upper case) disposed abovethe plurality of one end parts (30b)
`
`of the plurality of cells (12) (Figs. 3-5 and 8, [0042], [0053]-[0054]), the insulative plate (18)
`
`including holes (56a, 56b, apertures) that are provided in the insulative plate (18) and through
`
`each of which the positive electrode terminal (32b) and the negative electrode terminal (32a) of
`
`each of the plurality of cells (12) are exposed (Figs. 8-10, [0054]); and
`
`a plurality of conductive members (78, common bus bar) disposed on a surface of the
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`insulative plate (18) opposite to a surface of the insulative plate (18) opposed to the plurality of
`
`cells (12) (Figs. 4, 9-10, and 13, [(0074]), wherein:
`
`the plurality of conductive members (78) extend along the row (C) direction ([0048],
`
`[0079]),
`
`each of the plurality of conductive members (78) includes terminal connecting parts (84)
`
`connected through the holes (56a, 56b) to the terminals (32a, 32b) of a same pole of each of
`
`

`

`Application/Control Number: 16/639,692
`Art Unit: 1725
`
`Page 4
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`the cells (12) included in the battery block (see annotated Fig. 13 provided below) (Figs. 10 and
`
`15, wherein the terminal connecting parts 84 are connected to the terminals 32a, 32b and the
`
`terminals 32a, 32 extend through the holes 56a, 56b and therefore the terminal connecting
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`parts 84 are connected through the holes 56a, 56b to the terminals 32a, 32b), and
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`each of the plurality of terminal connecting parts (84) has a protruding shape that
`
`protrudes from a corresponding conductive member (78) in the plurality of conducting
`
`members(78) (Fig. 10).
`
`e.g. a first cell
`row of the
`plurality of cell
`
`&.g. a secand
`ceil rowof the
`plurality of cell
`
`nth call rows
`of the pluratity
`
`of cell rows
`
`t T
`
`:
`
`vattery bloc’
`
`FIG, 13
`
`Regarding Claim 2, Shimizu discloses all of the limitations as set forth above. Shimizu
`
`further discloses wherein the battery block includes more than two rows(see annotated Fig. 13
`
`provided above).
`
` i
`
`6 aa.16
`o.”
`ib ceealas
`
`
`iGa’.q TRS 4 i ~
`L
`ETO
`
`
`
`
`
`1
`
`BY.
`
`on TST CI
`
`f
`
`

`

`Application/Control Number: 16/639,692
`Art Unit: 1725
`
`Page 5
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`Regarding Claim 3, Shimizu discloses all of the limitations as set forth above. Shimizu
`
`further discloses wherein each ofthe plurality of conductive members(78) is made ofa plate-
`
`shaped metallic material ([0074], [0079], aluminum).
`
`Regarding Claim 9, Shimizu discloses all of the limitations as set forth above. Shimizu
`
`further discloses wherein each ofthe plurality of conductive members (78) has a shape hanging
`
`over at an edge part of each of the holes (56a, 56b) (see annotated Fig. 10 provided below).
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`7.
`
`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 obviousnessor
`
`nonobviousness.
`
`8.
`
`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
`
`ownedas ofthe effective filing date of the claimed invention(s) absent any evidence to the
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`

`

`Application/Control Number: 16/639,692
`Art Unit: 1725
`
`Page 6
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned as ofthe 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.
`
`9.
`
`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Shimizu etal. (US
`
`PGPub 2011/0076521, cited on the IDS dated March 23, 2020), as applied to Claim 1 above, and
`
`further in view of Kim et al. (US PGPub 2018/0351206, which has a foreign priority date of June
`
`1, 2017).
`
`Regarding Claim 4, Shimizu discloses all of the limitations as set forth above. Shimizu
`
`further discloses wherein each ofthe plurality of conductive members(78) is made of metal
`
`([0074], aluminum).
`
`Specifically, Shimizu discloses wherein the material of each of the plurality of conductive
`
`members(78) is not particularly limited so long as it is electrically conductive ([0074], [0138]).
`
`However Shimizu does notexplicitly disclose wherein each of the plurality of conductive
`
`members is made of a metal foil.
`
`Kim teaches a conductive member (200, 300, bus bar) for a battery ([0030]), wherein
`
`the conductive member (200, 300) includes terminal connecting parts (210, 310) connected to a
`
`terminals of a same pole (121, 131) of the battery ([0047]-[0048], [0053]-[0054)]).
`
`Specifically, Kim teaches wherein the conductive member (200, 300) may be a metal foil
`
`([0046], [0052], copper or aluminum foil).
`
`It would have been obvious to one of ordinaryskill in the art to make the plurality of
`
`conductive membersof Shimizu of a metal foil, as taught by Kim, as such is an electrically
`
`

`

`Application/Control Number: 16/639,692
`Art Unit: 1725
`
`Page 7
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`conductive material and therefore the skilled artisan would have reasonable expectation that
`
`such would successfully form functioning conductive members, as desired by Shimizu.
`
`10.
`
`Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et
`
`al. (US PGPub 2011/0076521, cited on the IDS dated March 23, 2020), as applied to Claim 1
`
`above, and further in view ofIto et al. (JP 2013-073929, see also EPO machine generated
`
`English translation provided with this Office Action).
`
`Regarding Claims 5 and 8, Shimizu discloses all of the limitations as set forth above.
`
`However, Shimizu does not explicitly disclose wherein each of the plurality of terminal
`
`connecting parts connected to the negative electrode terminals has a fuse function due to
`
`having a cross-sectional area of a current flow passage less than or equal to a predetermined
`
`area.
`
`Ito teaches in Figs. 1-4 a battery module (10) comprising a plurality of cells (11) capable
`
`of protecting a cell when an abnormal excessive current flows while reducing the number of
`
`parts (P1, para 4 and P4, para 4).
`
`Specifically, Ito teaches in Figs. 1-4 wherein the battery module (10) comprises a
`
`plurality of conductive members(30) (P5, para 2), wherein each of the plurality of conductive
`
`members(30) includes terminal connecting parts (34) connected to terminals (13A, 13B) of a
`
`same pole of each of the cells in the plurality of cells (12) (P5, para 5).
`
`Ito further teaches wherein each of the plurality of terminal connecting parts (34) has a
`
`fuse function due to having a cross-sectional area of a current flow passage less than or equal
`
`to a predetermined area so that when an excessive current flows, the cross-sectional area less
`
`than or equal to the predetermined area has a higher resistance than other parts of the
`
`

`

`Application/Control Number: 16/639,692
`Art Unit: 1725
`
`Page 8
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`plurality of conductive members so that the amount of heat generation becomes large and
`
`melts, thereby interrupting the current (P2, para 2, P5, para 5-6, and P6, para 5).
`
`It would have been obvious to one of ordinaryskill in the art to form the plurality of
`
`terminal connecting parts connected to the negative electrode terminals of Shimizu to have a
`
`fuse function due to having a cross-sectional area of a current flow passage less than or equal
`
`to a predetermined area, as taught byIto, in order to protect a cell of the plurality of cells in the
`
`battery module when an abnormal excessive current flows while reducing the number of parts.
`
`The Examiner notes that the plurality of terminal connecting parts (84 of Shimizu) have
`
`a protruding shape (Fig. 10 of Shimizu) and therefore the protruding shape of the plurality of
`
`terminal connecting parts (84 of Shimizu) connected to the negative electrode terminals has
`
`the fuse function (P2, para 2, P5, para 5-6, and P6, para5ofIto).
`
`Allowable Subject Matter
`
`11.
`
`Claim 7 is 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.
`
`12.
`
`The following is a statement of reasons for the indication of allowable subject matter:
`
`Claim 7 was indicated as containing allowable subject matter in the prior Office Action dated
`
`May 3, 2022. Thus, refer to the Office Action dated May 3, 2022 for the statement of reasons
`
`for the indication of allowable subject matter.
`
`13.
`
`Claims 10-11 are allowed.
`
`14.
`
`The following is an Examiner’s statement of reasons for allowance:
`
`

`

`Application/Control Number: 16/639,692
`Art Unit: 1725
`
`Page 9
`
`Claim 10 has been amended to be rewritten in independent form including all of the
`
`limitations of the base claim. Claim 10 was as indicated as containing allowable subject matter
`
`in the prior Office Action dated May 3, 2022. Thus, refer to the Office Action dated May 3, 2022
`
`for the statement of reasons for the indication of allowable subject matter.
`
`Claim 11 was indicated as allowable the prior Office Action dated August 16, 2022.
`
`Thus, refer to the prior Office Action dated August 16, 2022 for the statement of reasons for
`
`allowance.
`
`Any comments considered necessary by applicant must be submitted no later than the
`
`paymentof the issue fee and, to avoid processing delays, should preferably accompany the
`
`issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for
`
`Allowance.”
`
`Response to Arguments
`
`15.
`
`Applicant's argumentsfiled July 7, 2023 have been fully considered but they are not
`
`persuasive.
`
`Regarding amended Claim 1, the Applicant argued that none of the cited references
`
`disclose or suggest that each of the plurality of terminal connecting parts has a protruding
`
`shape that protrudes from a corresponding conductive member in the plurality of conductive
`
`members(see the allowable features of original Claim 7).
`
`The Examiner respectfully disagrees and notes that Shimizu discloses in Fig. 10 wherein
`
`each of the plurality of terminal connecting parts (84) has a protruding shape that protrudes
`
`from a corresponding conductive member (78) in the plurality of conducting members(78).
`
`

`

`Application/Control Number: 16/639,692
`Art Unit: 1725
`
`Page 10
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`Specifically, the limitation “from a corresponding conductive member in the plurality of
`
`conductive members” can be interpreted to mean “from a corresponding conductive member
`
`that is included in the plurality of conductive members”.
`
`The Examiner notes that amended Claim 1 does not comprise the entirety of the
`
`allowable features of original Claim 7. As noted in the Office Action dated May 3, 2022, the
`
`closest prior art fails to disclose teach, suggest, or render obvious the claim limitation “wherein
`
`each of the plurality of terminal connecting parts has a protruding shape that protrudes ina
`
`corresponding hole of each of the plurality of conductive members” in combination with all of
`
`the other limitations taken as a whole.
`
`The Examiner suggests amending Claim 1 to include all of the limitations of original
`
`Claim 7 and then canceling Claim 7 in order to put the application in condition for allowance.
`
`Thus, the arguments are not found to be persuasive.
`
`Conclusion
`
`16.
`
`The prior art made of record and not relied upon is considered pertinent to applicant's
`
`disclosure.
`
`Geshi et al. (US PGPub 2016/0181579) discloses in Figs. 2-5 a battery module (40)
`
`comprising, among additional limitations, a plurality of conductive members(Fig. 6), each of the
`
`plurality of conductive membersinclude terminal connecting parts (16, 17) connected through
`
`holes (19) to terminals of a same pole ofcells (2) ({(0033]-[0036]).
`
`Sweeny (US PGPub 2014/0234683) discloses in Fig. 3A-B wherein a conducting member
`
`(208) includes a terminal connecting part (302) extending into and passing through holes and
`
`

`

`Application/Control Number: 16/639,692
`Art Unit: 1725
`
`Page 11
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`connected to terminals (202A, 202B) of a same pole of a plurality of cells (108A, 108B) ([0023]-
`
`[0025]).
`
`However, Sweeny does not disclose wherein a positive electrode terminal and a
`
`negative electrode terminal are disposed on one end part of the plurality of cells, as called for
`
`in the claimed invention.
`
`17.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KIMBERLY WYLUDAwhosetelephone number is (571)272-4381.
`
`The examiner can normally be reached Monday-Thursday 7 AM - 3 PM EST.
`
`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, BASIA RIDLEY can be reached on (571)272-1453. The fax phone number for the
`
`organization wherethis application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is available
`
`to registered users. To file and manage patent submissions in Patent Center,visit:
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`

`

`Application/Control Number: 16/639,692
`Art Unit: 1725
`
`Page 12
`
`Business Center (EBC) at 866-217-9197(toll-free). If you would like assistance from a USPTO
`
`Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/K.W./
`Examiner, Art Unit 1725
`July 12, 2023
`
`/CHRISTOPHER P DOMONE/
`Primary Patent Examiner, Art Unit 1725
`July 24, 2023
`
`