DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/3/2026 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
Claims 9-16 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. The election was made without traverse in the reply filed on 5/13/2025.
Claim Analysis – Support for Amendments
It is noted that Applicant makes no comments as to the support for the amendments provided to the claims. It is respectfully reiterated that future claim amendments should be accompanied with comments that specifically point out support for any claim amendments for clarity of the record. See MPEP 2163, section 3(b); MPEP § 714.02; and MPEP § 2163.06:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007)
"Applicant should ... specifically point out the support for any amendments made to the disclosure."
For clarity of the record in the absence of remarks filed by Applicant, the Examiner finds the newly added limitations to claim 1 supported as follows:
The battery immersion cooling system is shown in Figs. 2A and 2B in which there is a cooling block 10 with a plurality of vortex generators 11, provided on an inner wall that includes at least a first inner wall and a second inner wall at positions corresponding to opposite sides of the battery so as to face each other (annotated below in Fig. 2B), and each [vortex generator] 11 being spaced apart from the battery by a first distance (Fig. 2B), wherein each of the plurality of vortex generators 11 includes a plate 1 extending along the battery and a plurality of protrusions 2 protruding from the plate (Fig. 4; see also Figs. 5A-5D; P59-62 of the PGPUB), wherein the protrusions 2 of the vortex generators 11 provided on the first inner wall and the protrusions of the vortex generators 11 provided on the second inner wall protrude toward each other (Figs. 2B, 4):
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Claim Rejections - 35 USC § 112
4. The rejection of claim 3, with claims 4-5 depending thereon, under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is withdrawn in view of the cancellation of claim
The rejections of claim 1, and thus dependent claims 2-8; and claim 3, and thus dependent claims 4-5, under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention are withdrawn in view of the corrections filed.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 6 within the construct of amended claim 1 is not supported. The “Claim Analysis – Support for Amendments” section is incorporated into the instant rejection and not repeated here. As shown in Fig. 2B, the plurality of vortex generators are not each spaced apart from another by a first interval. For example, the vortex generator on the first inner wall is not spaced apart from the vortex generator on the second inner wall by a first interval. It appears an appropriate correction would be to define that the plurality of vortex generators are each spaced from another by a first interval relative to the inner wall they exist on (not recommended claim language; just the general concept of what needs captured to reflect a supported configuration).
Appropriate correction is required.
Claim Rejections - 35 USC § 102
6. The rejection of claims 1-8 under 35 U.S.C. 102(a)(1) as being anticipated by Chung et al. (US 2012/0088131) is withdrawn in view of the amendments filed.
Claim Rejections - 35 USC § 102/ § 103
7. The rejection of claims 1-4 and 6-8 under 35 U.S.C. 102(a)(1) as being anticipated by Cho et al. (US 2006/0214633) is withdrawn; however, the alternative rejection under 35 U.S.C. 103(a) as being unpatentable over Cho et al. (US 2006/0214633) is maintained and updated below. The rejection is moved to be placed under the proper header (i.e., under § 103 only).
Claim Rejections - 35 USC § 103
8. The rejection of claim 1-4 and 6-8 under 35 U.S.C. 103 as being unpatentable over Cho et al. (US 2006/0214633) is maintained and updated to reflect the amendments filed.
Regarding claims 1 and 3, Cho teaches a battery immersion cooling system (embodiment shown in Figs. 12-13), comprising:
a housing (42) (“cooling block”) configured to accommodate a cooling fluid (air or coolant fluid – P29) flowable within the housing (42) (“cooling block”) (P34, 46-47, 56); and
a battery [(41)- individual battery cells OR the respective collective configuration thereof that forms a corresponding battery module] accommodated within the housing (42) (“cooling block”) (P2-5, 31-32, 47; Fig. 12),
wherein the housing (42) (“cooling block”) has a plurality of “vortex generators” (46, 47) configured to protrude towards the battery (Figs. 12-13; P47-50, 37),
wherein the plurality of vortex generators (46, 47) are provided on1 an inner wall of the cooling block including at least a first inner wall and a second inner wall at positions corresponding to opposite sides of the battery so as to face each other, and each being spaced apart from the battery by a first distance such that the cooling fluid flows between the plurality of vortex generators (46, 47) and the battery (P14, 36-37; Fig. 12),
wherein each of the plurality of vortex generators (46, 47) is fixed to the inner wall (P14 describes support plate 47 as attached thereinside, see also P47; Fig. 12), and
wherein each of the plurality of vortex generators (46, 47) includes a support plate 47 extending along the battery, and a plurality of protrusions 46 protruding from the support plate 47,
wherein the protrusions 46 of the vortex generator (46, 47) provided on the first inner wall and protrusions 46 of the vortex generator (46, 47) provided on the second inner wall protrude toward each other (Fig. 12).
Figures 12 & 13 of Cho are annotated below for clarity of the record:
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Cho is only deficient in teaching that the there are plural vortex generators provided on the first inner wall and plural vortex generators provided on the second inner wall as claimed (i.e., “wherein the protrusions of the vortex generators provided on the first inner wall and the protrusions of the vortex generators provided on the second inner wall protrude toward each other”). The courts have held constructing a formerly integral structure into various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to construct the formerly integral vortex generator (46, 47) into various elements (i.e., sectioned, individual vortex generators (46, 47)) versus one large panel vortex generator (46, 47)) given the courts have held constructing a formerly integral structure into various elements involves only routine skill in the art (Nerwin v. Erlichman, 168 USPQ 177, 179), the alteration being considered an obvious matter of design choice that would not alter the functionality thereof and would provide for the predictable result of saving weight for applications where weight is highly critical (e.g.., space or underwater applications), and allowing more cooling fluid to be held within the housing (42) (“cooling block”).
The formerly integral vortex generator (46, 47) of Cho constructed into various elements would thus be individual strips with each having a plate portion 47' and a plurality of protrusions 46' thereon. One non-limiting option of this modification is shown below, wherein the respective individual strips could of course be horizontal, include more than one row of protrusions 46', etc. as parameters based on design choice:
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Lastly, it is noted that the entire disclosure of Cho as a whole is relied upon with analogous explanations of functionalities and parts described for other similar embodiments being understood as applicable to the various embodiments taught by Cho including the Figs. 12-13 embodiment.
Regarding claim 2, Cho teaches wherein the housing (42) (“cooling block”) comprises an inlet (labeled 18 in Fig. 1, 22a in Fig. 2; not labeled in Fig. 12 but illustrated) through which the cooling fluid is introduced (see double-headed arrows showing the cooling fluid being introduced in Fig. 12 through the inlet), and an outlet (labeled 19 in Fig. 1; 22b in Fig. 2; not labeled in Fig. 12 but illustrated) through which the cooling fluid is discharged (at least Figs. 1, 2, 12, 16, and 18; P35, 40, 56).
Regarding claim 4, Cho illustrates the feature claimed as annotated below, wherein
drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification (see MPEP § 2125). It is noted that the claimed “battery” can be interpreted as respective, individual battery cells OR the respective collective configuration thereof that forms a corresponding battery module (P3-5, 31-32, 47). Using the latter interpretation, the “battery” (annotated as placed in a box) is considered the collective whole of cells 41 forming the battery module (P3-5, 31-32, 47; Fig. 12), wherein as annotated below, the feature is met with (one option for) the first distance between each of the plurality of vortex generators and the battery being the lighter arrow, and the second distance between the inner wall of the cooling block 42 and the battery being the darker arrow on the right, and the first distance is illustrated as more than ½ of the second distance.
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Alternatively, “the first distance” could be measured from the top of the protrusions 46, and this meets the feature of the first distance is ½ of the second distance as defined:
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Furthermore regarding the above latter interpretation, Cho teaches the protrusions can be made such that their height from top to bottom can vary depending on the interval between the plate 47 and the unit cells 41 (P49), wherein the “height can be appropriately regulated according to the design of the rechargeable battery module” (P49). Accordingly, Cho teaches that the height of the protrusions may change according to the design of the module, wherein altering the height of the protrusion would change the first distance between the vortex generator and the battery relative to the second distance as defined, the feature being explicitly taught as a design feature of the overall system (P41, 49), the aim of Cho being to allow the cooling air/coolant fluid to collide with the protrusion while passing between the internal wall thereof and the unit cells to generate a turbulent flow (P37).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to determine an optimum or workable height of the protrusion of the vortex generator in order to achieve a desired turbulent flow that resolves local thermal imbalances (P37), with Cho explicitly teaching the variable of height of the protrusions is selected according to design needs (P37), and wherein altering the height of the protrusion would change the first distance between the vortex generator and the battery relative to the second distance as defined, the courts holding that “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, Cho does not give a numerical amount or range for the first distance between each of the vortex generators and the battery, the claimed range being “3 mm or more;” however, there is intrinsically some numerical amount as there is a first distance between each of the the vortex generator and the battery as shown in the figures.
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04). Accordingly, the difference of the relative dimension recited, absent objective evidence commensurate in scope with the claimed subject matter that the relative dimension creates a new or unexpected result, is not a reason for patentability.
Furthermore, Cho teaches the protrusions of the vortex generators can be provided such that their height from top to bottom can vary depending on the interval between the plate 47 and the unit cells 41 (P49), wherein the “height can be appropriately regulated according to the design of the rechargeable battery module” (P49).
Accordingly, Cho teaches that the interval (i.e., distance) between the support plate of the vortex generator and the battery may change (P49), as may the height of the protrusions of the vortex generator according to the design of the module (P41, 49), wherein altering either or both of the interval between the support plate and batteries and/or the height of the protrusions thereof would change the first distance between teach of the vortex generators and the battery, the features being explicitly taught as design features of the overall system (P41), the aim of Cho being to allow the cooling air/coolant fluid to collide with the protrusion while passing between the internal wall thereof and the unit cells to generate a turbulent flow (P37).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to determine an optimum or workable interval/distance between the support plate and the battery, as well as a height of the protrusions of the vortex generators depending on the selected interval, in order to achieve a desired turbulent flow that resolves local thermal imbalances (P37), with Cho explicitly teaching the variables are selected according to design needs (P37, 41, 49), and the courts holding that “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 6, Cho teaches wherein the plurality of vortex generators (46, 47) are each spaced apart from another by a first interval (annotated below), and a ratio of the battery and the first interval is configured to be some value that meets the range claimed of (“0.1 or more”) (selecting either length option shown):
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Alternatively, in the interest of compact prosecution and addressing the supported construct (see rejection under 35 U.S.C. 112(a)/first paragraph) versus that which is claimed, Cho teaches that the protrusions may be regularly formed at predetermined intervals (P11). This is shown in Fig. 12. The modification of Cho (see rejection of claim 1) is not aiming to alter the taught and illustrated configuration, but to provide the formerly integral vortex generator (46, 47) of Cho constructed into various elements (46', 47'). This would not alter the illustrated regular interval construct shown between protrusions 46, and would look the following modified, truncated Fig. 12):
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Accordingly, using the respective protrusions 46' and measuring this as the first interval between each of the plurality of vortex generators, and using either length annotated above for the battery, the feature of “a ratio of a length of the battery and the first interval is configured to be 0.1 or more” is met as the first interval is some value that is larger than 0.1 in each instance.
Additionally, Cho teaches that the protrusions are provide at predetermined intervals (P11), wherein a length of the battery (multiple options available given length is not defined relative to any other entity) is considered a design feature based on how many individual batteries are provided to achieve an overall module to meet desired current and/or voltage output requirements.
Therefore, it considered obvious to one having ordinary skill in the art at the effective filing date of the invention to determine the optimum or workable “predetermined intervals” of the protrusions, as well as the overall size dimensions of the battery with length being one measurement thereof, as an exercise in design choice as well as optimization of the desired current and/or voltage output requirements of the battery, with the optimization of each of these vairables altering their relative ratio to one another.
Regarding claim 7, Cho teaches wherein the battery [using the interpretation of the collective whole of the batteries that form a battery module] is formed by stacking a plurality of cells 11 (P9-16).
Regarding claim 8, Cho teaches wherein the battery (either interpretation- individual cell 11 or collective grouping) is configured to have a prismatic shape (P32; at least Figs. 1, 2).
Response to Arguments
9. Applicant's arguments filed 3/3/2026 with respect to the maintained rejection using Cho has been fully considered but they are not persuasive.
Applicant argues:
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In response: Applicant is respectfully directed to the Figs. 12-13 embodiment of Cho teaching a plate component 47 extending along the battery that serves as the substrate from which multiple protrusions 46 project. The cited disclosure does teach this plate-with-plural-protrusions arrangement (46, 47; Figs. 12-13) extending along the battery. Accordingly, the argument is not persuasive and the rejection is maintained. Annotated Figs. 12-13 are reproduced below for convenience:
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Applicant argues:
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In response: The above arguments are all met and shown in the Fig. 12 embodiment of Cho. Accordingly, the argument is not persuasive and the rejection is maintained.
Applicant argues:
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In response: All of the argued features argued are shown in the Fig. 12-13 embodiment. Accordingly, the argument is not persuasive and the rejection is maintained.
Applicant argues:
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In response: All of these features are found in the Figs. 12-13 embodiment of Cho. The only deficiency of Cho is the requirement of plural vortex generators on the first inner wall and plural vortex generators on the second inner wall which is not argued by Applicant, and is addressed in the updated rejection of record as an obvious modification based on legal precedent.
Applicant remarks: There being no further outstanding objections or rejections, it is submitted that the application is in condition for allowance. .Finally, if there are any formal matters remaining after this response, the Office is requested to telephone the undersigned to attend to these matters.
In response: In view of the maintained prior art rejection as well as new rejection under 35 U.S.C. 112(a)/first paragraph necessitated by the amendments filed, the Examiner does not find that an interview prior to the mailing of this Office Action would result in expediting the allowance of the application. Applicant’s representative is welcome to schedule an interview after receipt of this Office Action if Applicant would like clarification on any rejections made or maintained in this Office Action with respect to the claims presented on 3/3/2026.
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10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BARROW/Primary Examiner, Art Unit 1729
1 It is noted that the language of provided on is product-by-process language which is evaluated for its implicit or explicit structure provided to the product (MPEP 2113). So long as the vortex generator of the prior art is on, with or without intervening elements therebetween – (see P38 of the instant application PGPUB), an inner wall of the cooling block, the product-by-process language is considered met.