DETAILED ACTION
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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/11/24 has been entered.
This office action is responsive to the amendment filed in connection with the foregoing RCE. The applicant has not yet overcome the 35 USC 103 rejection and the double patenting rejection. Refer to the aforementioned amendment for substance of applicant's rebuttal arguments and/or remarks. However, the present claims are being non-finally rejected over the same art as composed infra on the written record:
Election/Restrictions and Claim Disposition
Claims 19-20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/24/23.
Claims 2, 5-6, 8-11 and 14-17 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/24/23.
Claims 1, 3-4, 12-13 and 18 are under examination.
Claim 7 has been cancelled.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/22/24 was considered by the examiner.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-4, 12-13 and 18 are still rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11588192. Although the claims at issue are not identical, they are not patentably distinct from each other because:
US Patent’192 claims the following (see claims 1-9):
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In the instant case, the claims of US Patent’192 anticipate the more generic/broader subject matter recited in the claims of the present application. In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010, 2016 (Fed. Cir. t993); In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).
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.
Claims 1, 3-4, 12-13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over the publication CN 111326807 (hereinafter referred to as “CN’807”) in view of Ferguson et al 2021/0245627.
As to claims 1, 3-4, 12-13:
CN’807 discloses that it is known in the art to make a battery thermal runaway detection/sensor system (see Abstract) use in a battery enclosure/box housing a plurality of lithium-based batteries comprising a CO sensor, a VOC sensor, a smoke sensor and a temperature sensor which are all integrated within the battery housing/compartment wherein various indexes/parameters of the environment in the battery box/enclosure are monitored in real time, and a power battery thermal runaway model is used and is judged through a composite software algorithm (see Abstract), once an abnormal conditioned is monitored/detected/sensed, an alarm signal is rapidly uploaded so that when the monitoring module detects abnormality, the alarm signal can be sent to the date module through the BCAN, and the date module controls the alarm module to give an alarm (see Abstract). In this case, CN’807 implicitly teaches a microcontroller (for determining power management and signal conditioned output on the presence or detection of a battery gas such as CO, VOC, smoke, or a temperature condition) as there is disclosed the use of a software algorithm integrally/functionally connected to the monitoring/data modules of the thermal runaway detection/sensor system. Thus, it is deemed that the teachings of CN’807 are sufficient to satisfy applicant’s broadly claimed and structurally undefined thermal runaway detection sensor system.
As to claim 18:
CN’807 teaches a CO sensor, a VOC sensor, a smoke sensor and a temperature sensor (see Abstract). In this case, any one of the VOC sensor, the smoke sensor and the temperature sensor can serve as the secondary sensor.
CN’807 teaches a thermal runaway detecting device according to the foregoing description. However, the preceding reference does not expressly disclose the specific gas sensor to sense a concentration of H2.
As to claims 1 and 18:
In this respect, Ferguson et al disclose that it is known in the art to make a thermal runaway detection system including a gas sensor configured to measure a level of a gas such as hydrogen (H2), CO, CO2 or hydrocarbons in the vicinity of a battery (0036; 0039-0040; Abstract; CLAIM 2; see FIGURE 4).
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In light of this disclosure, it would have been within the ambit of a skilled artisan prior to the effective filing date of the claimed invention to use the specific gas sensor to sense a concentration of H2 of Ferguson et al in the thermal runaway detecting device of CN’807 as Ferguson et al teach that the specifically disclosed sensor assists in detecting levels of specific types of gases in the vicinity of a battery so that it is useful to determine if the battery is out-gassing. Further, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Response to Arguments
Applicant's arguments filed 07/11/24 have been fully considered but they are not persuasive.
The main contention of applicant’s argument is premised on the assertion that “Cao…does not use a hydrogen sensor. It only teaches the use of temperature, CO, VOC and smoke sensors because it does not need a hydrogen input for its predictive model. Having a hydrogen sensor would therefore be redundant because the model has no predictive capabilities for hydrogen input” and “The ‘power battery thermal runaway model’ and the algorithm upon which it is based would also have to be modified to accommodate the hydrogen sensor input in order to continue to predict thermal runaway” and “Cao provides no guidelines for how the model or the algorithm would be modified in order to accommodate the input from the hydrogen sensor” and “There is additionally no motivation to combined the two references because the hydrogen sensor (and the data obtained therefrom) would not work in the model used by Cao”.
In response to applicant's argument that “there is no motive to modify Cao with Ferguson as they teach away from each other. Cao requires sensors that are present in the battery to measure temperature, CO, VOC and smoke. Ferguson teaches that the sensors are located in the vicinity of the electric vehicle”, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. (emphasis added→) Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, the examiner is of the view that the combination of the teachings of Cao with Ferguson would have clearly and evidently suggested or provided a detection system including a hydrogen concentration sensor configured to provide a hydrogen concentration measurement and a microcontroller/controlling unit providing, inputting and/or outputting a hydrogen concentration measurement/signal regardless of the working utility model, algorithm or software programming. To further this point, it bears noting that applicant’s detection system is wholly silent as to the working utility model, algorithm or software programming, if any, being used, integrated or incorporated therein in order to positively recite it in independent claim 1 as well as to positively discriminate/differentiate applicant’s working utility model, algorithm or software programming from that of the prior art. Furthermore, such applicant’s arguments is found untenable, irrelevant and meritless simply because the detection system of the applicant does not appear to require any working utility model, algorithm or software programming to operate. Thus, there is no specific working utility model, algorithm or software programming in applicant’s detection system for operational purposes. That is, there is no way to know whether applicant’s detection system requires any utility model, algorithm or software programming which can be different from that of the prior art. Hence, applicant’s argument is not commensurate in scope with the claimed subject matter. Succinctly stated, applicant’s argument is not reflective of the broadly claimed detection system recited in independent claim 1. Applicant is kindly reminded that the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is substantially the same, performs substantially the same functionality, or is capable of performing the intended use, then it meets the claim.
Applicant is encouraged to amend independent claim 1 to positively recite any utility model, algorithm or software programming, if so intended. In this respect, as an example, applicant is encouraged to further elaborate the subject matter recited in dependent claim 12 to more particularly define applicant’s specific utility model, algorithm or software programming, and thereafter, to incorporate such limitations into independent claim 1 for consideration.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “the specific utility model, algorithm or software programming”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicant is encouraged to amend independent claim 1 to positively recite any utility model, algorithm or software programming, if so intended. In this respect, as an example, applicant is encouraged to further elaborate the subject matter recited in dependent claim 12 to more particularly define applicant’s specific utility model, algorithm or software programming, and thereafter, to incorporate such limitations into independent claim 1 for consideration.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the combination of Cao with Ferguson would have clearly and evidently suggested or provided a detection system including a hydrogen concentration sensor configured to provide a hydrogen concentration measurement and a microcontroller/controlling unit providing, inputting and/or outputting a hydrogen concentration measurement/signal regardless of the working utility model, algorithm or software programming. Applicant has not yet come forward with objective or sound evidence to show that the use of Ferguson’s hydrogen sensor in Cao’s gas detection system would cause catastrophic, deleterious or detrimental damages therein. (Emphasis supplied→) Note that the arguments of counsel cannot take the place of evidence in the record, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of inherent anticipation or obviousness (See MPEP 716.01 and 2145: Consideration of Applicant's Rebuttal Arguments). Put differently, a statement or argument by the attorney is not factual evidence. (See MPEP 716.01 and 2145 Consideration of Applicant's Rebuttal Arguments). In short, applicant’s position on that point rests entirely upon unsupported attorney argument. In re Geisler, 116 F.3d at 1471 (argument of counsel cannot take the place of evidence).
In response to applicant's argument that “Ferguson therefore teaches that the sensor is located outside the battery”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Last but not least, applicant is conveniently overlooking the fact the Cao itself teaches, inter alia, a CO sensor as instantly claimed. In that, applicant has failed to provide any technical explanation or sound reasoning as to why such CO sensor is inapplicable, unsuitable or dysfunctional in the context of applicant’s broadly claimed and structurally undefined detection system which does not even stipulate any specific working utility model, algorithm or software programming for operational purposes. It is not understood why the CO sensor of Cao - which reads on applicant’s broadly claimed CO gas sensor - has been disregarded by the applicant in the context of the claimed invention. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. Moreover, applicant’s attention is directed to page 7 of the amendment accompanying the aforementioned RCE (amendment dated 07/11/24 – RCE filing date) where it can be clearly seen that applicant has admitted on the written record the presence of a CO sensor in Cao’s gas detection system.
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With respect to the double patenting rejection, the same still stands for the reasons of record as applicant has not yet overcome such ground of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND ALEJANDRO whose telephone number is (571)272-1282. The examiner can normally be reached Monday-Thursday (8:00 am-6:30 pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara L. Gilliam can be reached on (571) 272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAYMOND ALEJANDRO/
Primary Examiner
Art Unit 1727