DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. Applicant's submission filed on 6/15/2026 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Claims 9-16 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.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 Objections
Claim 1 is objected to because of the following informalities: the “and” in line 12 should be deleted as it is improper given Applicant adds additional “wherein” clauses to the series of clauses such that the “and” in this location is improper.
Claims 1, 4-6, and 17: the claims utilize a variety of terms for the same thing (e.g., “the vortex generators,” “the plurality of vortex generators,” “the plurality of vortex generators on the first inner wall,” “the plurality of vortex generators on the second inner wall,” and “plurality of vortex generators provided on each of the first inner wall and the second inner wall”). The claims should be corrected to utilize consistency throughout the claim set.
Claim 1 is objected due to lack of concision (Article 6: claims shall be clear and concise). Claim 1 could be greatly simplified and shortened. For example, at least with respect to the supported language, the following could be presented to address the lack of concision:
A battery immersion cooling system comprising:
a cooling block configured to accommodate a cooling fluid flowable within the cooling block; and
a battery having a first surface and a second surface on opposite sides of the battery, the battery accommodated within the cooling block,
wherein the cooling block comprises:
a first inner wall facing the first surface of the battery,
a second inner wall facing the second surface of the battery,
a plurality of vortex generators fixed to the first inner wall, each including first protrusions provided on a respective plate, the respective first protrusions each comprising a respective protruding end that protrudes toward the first surface of the battery;
a plurality of vortex generators fixed to the second inner wall, each including second protrusions provided on a respective plate, the respective second protrusions each comprising a respective protruding end that protrudes toward the second surface of the battery;
[wherein statements that are supported under 35 U.S.C. 112(a)/first paragraph1].
Appropriate correction is required.
Specification & Drawings
4. MPEP § 608.01(o) is reproduced below with emphasis added:
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
Usually the terminology of the claims present on the filing date of the application follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
New claims, including claims first presented after the application filing date where no claims were submitted on filing, and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification. See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103.
5. The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required where supported (i.e., no new matter should be added; see subsequent rejection under 35 U.S.C. 112(a)/first paragraph pertaining to some of the language):
“wherein the plurality of protrusions include first protrusions provided on respective plates of the vortex generators provided on the first inner wall,
and second protrusions provided on respective plates of the vortex generators provided on the second inner wall,
wherein the first protrusions protrude toward a first surface of the battery located on one of the opposite sides of the battery, and the second protrusions protrude toward a second surface of the battery located on another of the opposite sides of the battery,
wherein a first gap is defined between protruding ends of the first protrusions and the first surface of the battery, and a second gap is defined between protruding ends of the second protrusions and the second surface of the battery, and
wherein the cooling fluid flows through each of the first gap and the second gap, directly contacts the first surface of the battery in the first gap and the second surface of the battery in the second gap, and is disturbed by the first protrusions in the first gap and by the second protrusions in the second gap.”
A word search for the new terminology within SEARCH of the instant application PGPUB produces zero hits for all terms:
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Appropriate correction is required.
Drawings
6. The drawings are objected to because they do not include reference numerals properly annotating the part of parts to which the new terminology added to the claims applies (see emphasized portion of MPEP 608.01(o) above). Specifically, at least the following should be annotated via reference numeral with respect to language added to the claims:
a first inner wall;
first protrusions provided on respective plates of the vortex generators provided on the second inner wall
a second inner wall;
second protrusions provided on respective plates of the vortex generators provided on the second inner wall
a first gap;
a first surface of the battery;
a second gap;
a second surface of the battery
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
7. Claim 1, and thus dependent claims 2, 4-8, and 17; and claim 8 are 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 prior Office rejection of claim 6 is maintained and updated to reflect the amendments provided. 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.
A) Claim 1 has a multitude of new terminology presented not present in the specification and/or drawings added to the claim as quoted below:
“wherein the plurality of protrusions include first protrusions provided on respective plates of the vortex generators provided on the first inner wall,
and second protrusions provided on respective plates of the vortex generators provided on the second inner wall,
wherein the first protrusions protrude toward a first surface of the battery located on one of the opposite sides of the battery, and the second protrusions protrude toward a second surface of the battery located on another of the opposite sides of the battery,
wherein a first gap is defined between protruding ends of the first protrusions and the first surface of the battery, and a second gap is defined between protruding ends of the second protrusions and the second surface of the battery, and
wherein the cooling fluid flows through each of the first gap and the second gap, directly contacts the first surface of the battery in the first gap and the second surface of the battery in the second gap, and is disturbed by the first protrusions in the first gap and by the second protrusions in the second gap.”
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Applicant notes that support for these limitations is found in Figs. 2a, 2B, 3A, 3B, 4 and 5A-5D and P47-66 of the specification. This amounts to citation to every single figure of the instant application that is not a “prior art” figure (i.e., Fig. 1) as well every single paragraph of the disclosure pertaining to the description of the “Immersion Type Battery Cooling System.” This respectfully does not amount to specifically pointing out support for the newly added language that has no basis whatsoever in the cited paragraph numbers, wherein at least some of the features claimed do not appear possible or supported as is addressed subsequently.
Applicant then states:
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The above quoted support analysis with respect to the features described as quoted above is not contested; however, this does not adequately explain or provide support for the following features which are not described in the cited application written description, and for which the above commentary provides no explanation:
“wherein a first gap is defined between protruding ends of the first protrusions and the first surface of the battery, and a second gap is defined between protruding ends of the second protrusions and the second surface of the battery, and
wherein the cooling fluid flows through each of the first gap and the second gap, directly contacts the first surface of the battery in the first gap and the second surface of the battery in the second gap, and is disturbed by the first protrusions in the first gap and by the second protrusions in the second gap.”
Accordingly, given the absence of specifically pointing out2 support for at least the above emphasized portion, with no correspondence between the new terminology and the specification, no annotation or corresponding reference numerals in the figures or specification, at least the language emphasized above is treated as an Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) situation:
Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.")
Although more is not required under the circumstances, an additional analysis follows.
The first gap is first defined as between protruding ends of the first protrusions and the first surface of the battery. If the first gap is defined as existing between these entities, it is then not clear how it is possible or supported that the cooling fluid “…directly contacts the first surface of the battery in the first gap.” The first surface of the battery is not in the first gap as defined.
The same analysis is applied to the second gap as claimed and the feature of the cooling fluid directly contacts the second surface of the battery in the second gap. The second surface of the battery is not in the second gap as defined. Accordingly, the feature does not appear supported.
The same analysis applied to the cooling fluid is disturbed by the first protrusions in the first gap and by the second protrusions in the second gap. The first gap is defined as between protruding ends of the first protrusions and the first surface of the battery. If the first gap is defined as existing between these entities, it is then not clear how it is possible or supported that there are first protrusions in the first gap.
The same analysis is applied to the second protrusions in the second gap (it is not clear how it is possible or supported that there are second protrusions in the second gap as defined).
Additionally, the Examiner cannot find any teaching of the newly added limitation of the cooling fluid is disturbed by the first protrusions in the first gap and by the second protrusions in the second gap as presented; no such language exists.
B) Claim 6: there is not support for a plurality of vortex generators provided on each of the first inner wall and the second inner wall in the configurations presented. There are a plurality of vortex generators provided on the first inner wall, and there are a plurality of vortex generators provided on the second inner wall (see newly presented claim 17); however, there is no support for a plurality of vortex generators provided on each of the first inner wall and the second inner wall as claimed, that then subsequently have the configuration claimed (spaced apart from one another by a first interval). Arguendo, even if this was assumed to define a plurality of vortex generators on a first wall, and a respective plurality of vortex generators on a second wall, 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. As previously noted, 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).
C) Within claim 6, Applicant changed the ratio claimed and this does not appear supported. P55 of the instant application states “…a ratio between an entire length L of the battery and the interval d between the vortex generators may be configured to 0.1 or more” (P55). Accordingly, the amendment reverses what is stated in the specification. If there is an obvious error in the specification it may be corrected to match the claim with a corresponding appropriate explanation. Given the differences between the specification and the claim; the Examiner is not clear on which version is correct. Appropriate correction and/or explanation is necessary.
D) Claim 8 defines that the battery is configured to have any one of a cylindrical shape, a prismatic shape, and a pouch shape. Claim 1 as amended requires the battery to now have a first surface on one of the opposite sides of the battery, and a second surface on another of the opposite sides of the battery. A cylindrical battery will have a singular, cylindrical surface and thus the requirement that the battery is a cylindrical shape does not appear possible in the context of amended claim 1 such that it is not supported.
Appropriate correction is required.
8. Claim 1, and thus dependent claims 2, 4-8, and 17; claim 6; and claim 17 are rejected 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.
A) Claim 1 defines that each of the plurality of vortex generators includes a plate extending along the battery (lines 13-14). . The amendments filed then recite:
“wherein the plurality of protrusions include first protrusions provided on respective plates of the vortex generators provided on the first inner wall, and second protrusions provided on respective plates of the vortex generators provided on the second inner wall…”
It is not clear whether there is a failure to invoke proper antecedent basis to the already defined plates of lines 13-14 (i.e., what would be):
“wherein the plurality of protrusions include first protrusions provided on the respective plates of the vortex generators provided on the first inner wall, and second protrusions provided on the respective plates of the vortex generators provided on the second inner wall…”
or if this is an attempt to define a new plate entity that is part of the first protrusions and second protrusions. In view of the specification, it appears this is a failure to invoke proper antecedent basis.
B) Claim 1 was amended to recite in part:
“wherein a first gap is defined between protruding ends of the first protrusions and the first surface of the battery, and a second gap is defined between protruding ends of the second protrusions and the second surface of the battery, and
wherein the cooling fluid flows through each of the first gap and the second gap, directly contacts the first surface of the battery in the first gap and the second surface of the battery in the second gap, and is disturbed by the first protrusions in the first gap and by the second protrusions in the second gap.”
As detailed in the rejection under 35 U.S.C. 112(a)/first paragraph, the above portion of the claim does not appear supported as it has no written description basis and Applicant has not explained how the above features are supported by the instant application, and the Examiner cannot surmise how the features can be met which appear contradictory in nature. Specifically, tfhe first gap is first defined as between protruding ends of the first protrusions and the first surface of the battery. If the first gap is defined as existing between these entities, it is then not clear how it is possible or supported that the cooling fluid “…directly contacts the first surface of the battery in the first gap.” The first surface of the battery is not in the first gap as defined.
The same analysis is applied to the second gap as claimed and the feature of the cooling fluid directly contacts the second surface of the battery in the second gap. The second surface of the battery is not in the second gap as defined. Accordingly, the feature does not appear supported.
The same analysis applied to the cooling fluid is disturbed by the first protrusions in the first gap and by the second protrusions in the second gap. The first gap is defined as between protruding ends of the first protrusions and the first surface of the battery. If the first gap is defined as existing between these entities, it is then not clear how it is possible or supported that there are first protrusions in the first gap.
The same analysis is applied to the second protrusions in the second gap (it is not clear how it is possible or supported that there are second protrusions in the second gap as defined).
Additionally, the Examiner cannot find any teaching of the newly added limitation of the cooling fluid is disturbed by the first protrusions in the first gap and by the second protrusions in the second gap as presented; no such language exists (this is an issue under 35 U.S.C. 112(a)/first paragraph). The issue with respect to being indefinite under 35 U.S.C. 112(b)/second paragraph is that the “disturbance” feature is considered a functionality achieved by the first protrusions and the second protrusions, and given it has no basis in the written description, the Examiner is not clear from the claim terms or specification what is structurally necessary to achieve the described disturbance functionality claimed. When a claim recites functional language, the Examiner looks to the specification for the particular structure that accomplishes the function (MPEP 2173.05(g)) if it is not explicitly recited in the claim already. Given the language has no basis in the written description, and the claim does not positively recite any structure that achieves this function, the claim is indefinite.
C) Claim 6 as amended defines, “the plurality of vortex generators provided on each of the first inner wall and the second inner wall.” There is insufficient antecedent basis for this feature. Instead, as appropriately claimed at claim 17, there are a plurality of vortex generators provided on the first inner wall, and there are a plurality of vortex generators provided on the second inner wall.
D) Claim 17 (newly added) recites in part, “…on opposite sides of the battery.” “Opposite sides of the battery” was already defined in claim 1; accordingly, it is not clear if this is a failure in invoking proper antecedent basis (i.e., “on the opposite sides of the battery”), or if this is an attempt to define new, [second] opposite sides of the battery. It is assumed the issue is the former in terms of compact prosecution purposes for prior art application.
Appropriate correction is required.
9. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
10. Claim 17 (newly added) is rejected 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. Claim 17 adds no further additional features or limitations not already found in claim 1. The feature of “..such that the battery is positioned between the plurality of vortex generators on the first inner wall and the plurality of vortex generators on the second inner wall” is intrinsic to the requirements presented in claim 1 and does not further limit the claim. If Applicant can demonstrate via a drawing how to configure the battery immersion cooling system of claim 1 such that the battery is positioned in any other arrangement other than between the plurality of vortex generators on the first inner wall and the plurality of vortex generators on the second inner wall while meeting all of the features within claim 1, then the rejection of claim 17 as non-limiting will be withdrawn. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Appropriate correction is required.
Prior Art Examination
11. The claims as presented include limitations that do not appear possible or are not definitive in addition to also appearing unsupported (see rejections under 35 U.S.C. 112(a)/first paragraph and 35 U.S.C. 112(b)/second paragraph). Per MPEP § 2143.03:
“"All words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). (The Board erred because it ignored claim language that it considered to be indefinite, and reached a conclusion that the claim would have been obvious based only on the rest of the claim.). However, an examiner should not simply speculate about the meaning of the claim language and then enter an obviousness rejection in view of that speculative interpretation. In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (The "considerable speculation" by the examiner and the Board as to the scope of the claims did not provide a proper basis for an obviousness rejection.)
When evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter). Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984).
MPEP § 2173.06 further notes that when there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Claim Rejections - 35 USC § 103
12. The rejection of claim 1-4 and 6-8 (as presented) under 35 U.S.C. 103 as being unpatentable over Cho et al. (US 2006/0214633) is withdrawn in view of the amendments made and the reasons outlined above in section 11.
Response to Arguments
13. Applicant's arguments filed 6/15/2026 with respect to the prior art rejection has been fully considered. The prior art rejection is presently withdrawn for the reasons set forth in section 11 above. For compact prosecution purposes, the following arguments/remarks are addressed:
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The Examiner is unclear how the identical structure of Cho including a plate 47 with a plurality of protrusions 46 adjacent a battery module would not provide for “a disturbance” in the gap that exists between the module and the same protrusion/plate (46/47) (“vortex generator”) construct of Cho. The feature has no basis within the written description, and there is no additional structure recited in the claim or the specification that achieves said feature. Accordingly, all of the structure with respect to the plurality of (first/second) protrusions is met, and it is not clear why “a disturbance” would not be achieved in the adjacent gaps between the corresponding protrusions and the module of Cho.
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 rejections under 35 U.S.C. 112(a)/first paragraph, 35 U.S.C. 112(b)/second paragraph, and the corrections needed to the drawings and specification with respect to correspondence between the claims and specification/drawings, 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 objections or rejections made in this Office Action with respect to the claims presented on 6/15/2026.
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14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Reizo et al. (JP 2000-133225) (machine translation provided) teaches the following construct of a battery unit (i.e., battery module – P13) with a plurality of flow path regulating members 5 as shown below in reproduced Figs. 1 & 2:
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15. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
16. 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.
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, 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.
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: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic 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.
/AMANDA J BARROW/Primary Examiner, Art Unit 1729
1 See rejections below pertaining to the subject matter considered not supported under 35 U.S.C. 112(a)/first paragraph.
2 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."
Prosecution Insights