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 .
BATTERY THERMAL MANAGEMENT SYSTEM
Examiner: Adam Arciero SN: 17/697,611 Art Unit: 1727 April 2, 2026
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 03, 2025 has been entered. Claims 1-7 and 11-13 are currently pending.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
The claim rejections under 35 USC 102(a)(1) as being anticipated by Terada on claims 1-5 and 11-13 are maintained.
Claim(s) 1-5 and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Terada et al. (US 2012/0219838 A1).
As to Claims 1 and 4, it is noted that claim 1 is a product-by-process claim. The courts have held that “even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113, I. Terada discloses a thermally-conductive lithium-ion battery cell, comprising: two terminals configured to store electrical energy; and a thermally-conductive aluminum coating formed about the periphery of the battery cell, which is intrinsically configured to allow internally-generated thermal energy to be conducted from at least a portion of the periphery of the battery cell given that the claimed materials and structure are the same, see MPEP 2112 (Fig. 2-3 and paragraphs [0099 and 0139]).
As to Claims 2-3, it is the position of the Office that the battery cell intrinsically generates internal thermal energy during charging and discharging given that the structure of the prior art and the claims are the same, see MPEP 2112.
As to Claim 5, Terada discloses wherein the cell is thermally coupled to a thermal management assembly 1 (Fig. 1-3 and paragraph [0129]).
As to Claims 11-13, Terada discloses wherein the thermally conductive metallic coating covers the entire periphery of the battery call and is connected (bonded) with the thermal management system (Fig. 2-3).
Claim Rejections - 35 USC § 103
The claim rejections under 35 USC 103(a) as being unpatentable over Terada and Bourke on claim 6 is maintained.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terada et al. (US 2012/0219838 A1) in view of Bourke et al. (US 2020/0220132 A1).
As to Claim 6, Terada does not specifically disclose the claimed thermal management assembly.
However, Bourke teaches of a battery thermal management assembly, comprising a body structure 140 having a cell-shaped recess 141 configured to receive a thermally-conductive battery cell 200; and a thermal management passage 129 positioned within the body structure and configured to circulate a thermal management fluid to extract the internally-generated thermal energy from the battery cell (Fig. 3A and paragraph [0065]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the cell of Terada to comprise the claimed thermal management assembly because Bourke teaches that heat can be removed from the battery cells and the temperature of the batteries can be controlled (paragraphs [0055 and 0065]).
Response to Arguments
Applicant's arguments filed June 03, 2025, with respect to the rejections of claims 1 and 5 have been fully considered but they are not persuasive.
Applicant’s principle arguments are:
a) The claimed battery cell comprises a battery casing that is separate and distinct from the claimed thermally conductive surface coating (claim 1).
b) The thermally conductive elements of Terada are separate elements from the battery cells and are only applied when assembling a battery pack comprising a plurality of cells. Therefore, Terada does not disclose a battery cell having “a thermally-conductive surface positioned about at least a portion of the periphery of the battery cell” in which “the thermally conductive surface includes a thermally-conductive coating applied to the surface of the battery cell (claim 1).
c) The process limitations impart structural characteristics which one of ordinary skill in the art would understand (claim 1).
In response to Applicant’s arguments, please consider the following comments:
a) 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., battery casing) 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). Terada therefore discloses a thermally conductive battery casing (reads on the claimed coating) applied to the surface of the battery cell, as discussed in the rejections above. In addition, in the case a battery casing is claimed, Terada also discloses the thermally-conductive members '1' positioned about at least a portion of the periphery of the battery cell also reads on the claimed thermally-conductive surface coating (Fig. 2 and paragraphs [0136 and 0146]).
b) The thermally-conductive members '1' positioned about at least a portion of the periphery of the battery cell also reads on the claimed thermally-conductive surface coating (Fig. 2 and paragraphs [0136 and 0146]). The claims do not exclude the arrangement of Terada.
c) It is noted that the claims are product-by-process claims. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." See MPEP 2113, I. The product claims do not contain any of the supposed structural differences. Applicant does not provide any evidence or point to any recitation in the original disclosure for the distinctive structural characteristics supposedly provided by the process steps.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM ARCIERO whose telephone number is (571)270-5116. The examiner can normally be reached Monday-Friday 8:00-5 ET.
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, Barbara Gilliam can be reached at (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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/ADAM A ARCIERO/Primary Examiner, Art Unit 1727
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