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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/27/2026 has been entered.
Claim Status
This Office action is in response to the remarks filed on 4/27/2026.
Claims 1, 3 and 8 have been amended.
Claims 1, 3-6, and 8-18 are currently pending.
Claims 2 and 7 are cancelled.
Claim 1 still stands rejected under the provisional nonstatutory double patenting rejection dated 10/22/2024.
Response to Arguments
Applicant’s arguments, see page 7, filed 4/27/2026, with respect to the rejection of the claim under USC §103 have been fully considered and are persuasive. The rejection of the claims under USC §103 dated 1/27/2026 has been withdrawn.
It should be noted that the applicant’s arguments make reference to color coding throughout the arguments dated 4/27/2026. Applicant should please take note that the office scans in BLACK AND WHITE ONLY. Below is a screenshot of what the examiner was able to see of the drawings.
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Examiner was able to get a clearer understanding of the argument when looking at a magnification of figure 9 of HE that is explained in greater detail below.
Allowable Subject Matter
Claims 1, 3-6, and 8-18 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The following is the closest related art US 20160164148 A1, YUM et al. and US 20210175572 A1, HE et al.
Claim: 1. YUM discloses a battery module comprising:
a battery cell stack comprising a plurality of battery cells (450-480), (YUM Fig 1 and 2)
a housing (40, 42, 44, 46-support plate) accommodating the battery cell stack,
a cooling port supplying a coolant to the heat sink, (first and second tubular ports 90, 92)
wherein the housing comprises a housing protrusion portion formed at the bottom portion of the housing,(see annotated fig 5 below)
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wherein the housing protrusion portion comprises a first housing protrusion portion and a second housing protrusion portion that are spaced apart from each other on one side of the housing (annotated fig 5), and
wherein the cooling port comprises a coolant inlet port (90-inlet) and a coolant outlet port (92-outlet, [0045]), and the coolant inlet port and the coolant outlet port are disposed on the first housing protrusion portion and the second housing protrusion portion, respectively (fig 2).
Annotated figure 4 below depicts the lower plate (80) of the heat sink includes recessed portion formed on a lower side thereof, wherein
the recessed portion and the bottom portion of the housing form a coolant flow passage, and
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wherein the heat sink (22) comprises a protruding pattern (first and second corrugated support members 82, 84 fig 5), and the protruding pattern comprises a plurality of protrusions protruding toward the bottom portion of the housing (the individual corrugations protrude upwards toward the housing of the first and second corrugated support members 82, 84).
YUM does not teach a heat sink integrally formed with the housing, where a bottom portion of a housing constitutes an upper plate of the heat sink and is joined to a lower plate of the heat sink.
HE discloses a vehicle and energy storage device and teaches a heat sink.
However, the heatsink disclosed by HE is not integrally formed with the case shown in the annotated figure depicted below thereby not meeting al the limitations of the claim.
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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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17769514 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim: 1. A battery module comprising:
a battery cell stack comprising a plurality of battery cells,
A battery module comprising: a battery cell stack in which a plurality of battery cells are stacked;
a housing accommodating the battery cell stack,
a module frame housing the battery cell stack therein; end plates covering front and rear surfaces of the battery cell stack;
a heat sink integrally formed with the housing, where a bottom portion of the housing constitutes an upper plate of the heat sink and is joined to a lower plate of the heat sink, and
a heat sink attached to a bottom part of the module frame; and
a cooling port supplying a coolant to the heat sink,
a cooling port configured to supply a refrigerant to the heat sink,
wherein the housing comprises a housing protrusion portion formed at the bottom portion of the housing,
wherein the housing protrusion portion comprises a first housing protrusion portion and a second housing protrusion portion that are spaced apart from each other on one side of the housing, and
wherein the module frame comprises a module frame protrusion part that extends from a bottom part of the module frame beyond one of the end plates,
wherein the cooling port comprises a coolant inlet port and a coolant outlet port, and the coolant inlet port and the coolant outlet port are disposed on the first housing protrusion portion and the second housing protrusion portion, respectively.
and wherein the cooling port protrudes upward from an upper surface of the module frame protrusion part.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE LA RAIA III whose telephone number is (703)756-5441. The examiner can normally be reached Mon-Thur 6:00am-4:00pm.
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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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LAWRENCE LA RAIA III
Examiner
Art Unit 1727
/L.L./Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727
Prosecution Insights