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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/17/2026 has been entered.
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.
Claim(s) 1, 5-9, 12-13, 17-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over GB1546611A in view of Ejiri et al. (US 2013/0330579A1).
Regarding claim 1, GB1546611A discloses an electrical storage facility (metal-hydrogen cell, see p.1, lines 8-12, Fig. 1-5), comprising:
an outer shell, the outer shell containing a hydrogen gas (casing 1 with cavity 2, hydrogen in cavity, see p.2, lines 34-61);
a battery pack rigidly mounted within the outer shell, the battery pack including an array of metal hydrogen batteries coupled between a first facility terminal and a second facility terminal, the array including a plurality of metal hydrogen batteries (electrode stack 3 in cavity, electrode stack including a plurality of positive electrodes, negative electrodes and separators, terminals 10,11, see p.2, lines 34-92).
However, GB1546611A does not disclose a monitor/control system coupled to monitor each of the metal hydrogen batteries in the array of individual metal hydrogen batteries and to the first facility terminal and the second facility terminal, the monitor/control system capable of determining if one or more of the individual metal hydrogen batteries are failing and require maintenance.
Ejiri discloses a battery block and power supply device, wherein battery cells are arrayed, connected and fixed, and electrode tabs are connected to outside terminals via bus bars, and a voltage sensing board that constitutes a sensing unit for sensing the voltage obtained from the large number of battery cells (see Title, Abstract, [0025], [0029]-[0030], [0034], [0036]-[0038], Fig. 1-10). Ejiri teaches rapidly sensing abnormality which is then appropriately processed ([0053]). Ejiri further discloses the batteries can be an array of nickel-hydrogen batteries ([0061]).
GB1546611A and Ejiri are analogous art because they are concerned with the same field of endeavor, namely metal hydrogen batteries.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify GB1546611A by incorporating a voltage sensing board for monitoring the voltage of the metal hydrogen batteries because Ejiri teaches improved performance and safety.
Further regarding claim 1 reciting “the monitor/control system capable of determining if one or more of the individual metal hydrogen batteries are failing and require maintenance”, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). In this case, the combination is considered capable of determining if one or more of the individual metal hydrogen batteries are failing and require maintenance.
Regarding claim 5, modified GB1546611A discloses all of the claim limitations as set forth above. GB1546611A further discloses the battery pack operates at a low hydrogen pressure of the hydrogen gas (2 atm, see p.2, lines 43-61).
Regarding claim 6, modified GB1546611A discloses all of the claim limitations as set forth above. GB1546611A further discloses the low hydrogen pressure is less than 500 psi (2 atm, see p.2, lines 43-61).
Regarding claim 7, modified GB1546611A discloses all of the claim limitations as set forth above. GB1546611A further discloses the low hydrogen pressure is less than 200 psi (2 atm, see p.2, lines 43-61).
Regarding claim 8, modified GB1546611A discloses all of the claim limitations as set forth above. GB1546611A further discloses the low hydrogen pressure is less than 100 psi (2 atm, see p.2, lines 43-61).
Regarding claim 9, modified GB1546611A discloses all of the claim limitations as set forth above. GB1546611A further discloses the outer shell includes a liner that contains hydrogen gas (casing 1 with cavity 2, hydrogen in cavity, tube 17, see p.2, lines 34-61).
Regarding claim 12, modified GB1546611A discloses all of the claim limitations as set forth above. Ejiri further discloses the monitor/control system is configured to monitor and control operation of each of the metal hydrogen batteries ([0036]-[0038]).
Regarding claim 13, GB1546611A discloses a method of providing energy storage (metal-hydrogen cell, see p.1, lines 8-12, Fig. 1-5), comprising:
providing an outer shell that contains a hydrogen gas (casing 1 with cavity 2, hydrogen in cavity, see p.2, lines 34-61);
mounting a battery pack within the outer shell, the battery pack including an array of metal hydrogen batteries coupled between a first facility terminal and a second facility terminal, the array including a plurality of metal hydrogen batteries (electrode stack 3 in cavity, electrode stack including a plurality of positive electrodes, negative electrodes and separators, terminals 10,11, see p.2, lines 34-92).
However, GB1546611A does not disclose monitoring the battery pack with a monitor/control system coupled to each of the metal hydrogen batteries in the array of individual metal hydrogen batteries and to the first facility terminal and the second facility terminal, the monitor/control system capable of determining if one or more of the individual metal hydrogen batteries are failing and require maintenance.
Ejiri discloses a battery block and power supply device, wherein battery cells are arrayed, connected and fixed, and electrode tabs are connected to outside terminals via bus bars, and a voltage sensing board that constitutes a sensing unit for sensing the voltage obtained from the large number of battery cells (see Title, Abstract, [0025], [0029]-[0030], [0034], [0036]-[0038], Fig. 1-10). Ejiri teaches rapidly sensing abnormality which is then appropriately processed ([0053]). Ejiri further discloses the batteries can be an array of nickel-hydrogen batteries ([0061]).
GB1546611A and Ejiri are analogous art because they are concerned with the same field of endeavor, namely 3metal hydrogen batteries.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify GB1546611A by incorporating a voltage sensing board for monitoring the voltage of the metal hydrogen batteries because Ejiri teaches improved performance and safety.
Further regarding claim 13 reciting “the monitor/control system capable of determining if one or more of the individual metal hydrogen batteries are failing and require maintenance”, the combination is considered capable of determining if one or more of the individual metal hydrogen batteries are failing and require maintenance.
Regarding claim 17, modified GB1546611A discloses all of the claim limitations as set forth above. GB1546611A further discloses operating the battery pack at a low hydrogen pressure (2 atm, see p.2, lines 43-61).
Regarding claim 18, modified GB1546611A discloses all of the claim limitations as set forth above. GB1546611A further discloses the low hydrogen pressure is less than 500 psi (2 atm, see p.2, lines 43-61).
Regarding claim 19, modified GB1546611A discloses all of the claim limitations as set forth above. GB1546611A further discloses the low hydrogen pressure is less than 200 psi (2 atm, see p.2, lines 43-61).
Regarding claim 20, modified GB1546611A discloses all of the claim limitations as set forth above. GB1546611A further discloses the low hydrogen pressure is less than 100 psi (2 atm, see p.2, lines 43-61).
Regarding claim 21, modified GB1546611A discloses all of the claim limitations as set forth above. GB1546611A further discloses providing a liner that contains hydrogen gas to the outer shell (casing 1 with cavity 2, hydrogen in cavity, tube 17, see p.2, lines 34-61).
Claim(s) 2-4, 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over GB1546611A in view of Ejiri et al. (US 2013/0330579A1), as applied to claims 1, 5-9, 12-13, 17-21 above, and further in view of Page et al. (US 5,173,376).
Regarding claim 2, modified GB1546611A discloses all of the claim limitations as set forth above. GB1546611A further discloses each of the metal hydrogen batteries in the array of metal hydrogen batteries comprises: an electrode stack, the electrode stack includes stacked cathode electrodes and anode electrodes separated by separators (electrode stack including a plurality of positive electrodes, negative electrodes and separators, see p.2, lines 34-92).
However, GB1546611A does not disclose each of the metal hydrogen batteries comprises: a container; and an electrode stack within the container.
Page discloses a metal oxide hydrogen battery having sealed cell modules with electrolyte containment and hydrogen venting, wherein the battery includes an outer pressure vessel containing a plurality of cell modules, each cell enclosed in a flexible sealed bag which is provided with a vent that is permeable to the flow of hydrogen gas (see Title, Abstract). Page further discloses the double bag arrangement insures no leakage of electrolyte between cell modules to prevent forming an electrical bridge while freely permitting passage of hydrogen gas between cell modules and the outer pressure vessel (col.2, lines 15-29).
Modified GB1546611A and Page are analogous art because they are concerned with the same field of endeavor, namely metal hydrogen batteries.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify GB1546611A by enclosing each cell in a flexible sealed bag because Page teaches preventing leakage thereby improving safety.
Regarding claim 3, modified GB1546611A discloses all of the claim limitations as set forth above. Further regarding claim 3 reciting “further including one or more additional electrode stacks within the container”, it would have been obvious to one having ordinary skill in the art at the time to including additional electrode stacks because a mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 124 USPQ 378, 380 (CCPA 1960). Further, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claim 4, modified GB1546611A discloses all of the claim limitations as set forth above. Modified GB1546611A further discloses each electrode stack is saturated with an electrolyte (GB1546611A: electrolyte, see p.2, lines 62-92) and the container contains the electrolyte and is porous to the hydrogen gas (Page: vent that is permeable to the flow of hydrogen gas, see Title, Abstract).
Regarding claim 14, modified GB1546611A discloses all of the claim limitations as set forth above. GB1546611A further discloses each of the metal hydrogen batteries in the array of metal hydrogen batteries comprises: an electrode stack, the electrode stack includes stacked cathode electrodes and anode electrodes separated by separators (electrode stack including a plurality of positive electrodes, negative electrodes and separators, see p.2, lines 34-92).
However, GB1546611A does not disclose each of the metal hydrogen batteries comprises: a container; and an electrode stack within the container.
Page discloses a metal oxide hydrogen battery having sealed cell modules with electrolyte containment and hydrogen venting, wherein the battery includes an outer pressure vessel containing a plurality of cell modules, each cell enclosed in a flexible sealed bag which is provided with a vent that is permeable to the flow of hydrogen gas (see Title, Abstract). Page further discloses the double bag arrangement insures no leakage of electrolyte between cell modules to prevent forming an electrical bridge while freely permitting passage of hydrogen gas between cell modules and the outer pressure vessel (col.2, lines 15-29).
Modified GB1546611A and Page are analogous art because they are concerned with the same field of endeavor, namely metal hydrogen batteries.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify GB1546611A by enclosing each cell in a flexible sealed bag because Page teaches preventing leakage thereby improving safety.
Regarding claim 15, modified GB1546611A discloses all of the claim limitations as set forth above. Further regarding claim 15 reciting “further including one or more additional electrode stacks within the container”, it would have been obvious to one having ordinary skill in the art at the time to including additional electrode stacks because a mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 124 USPQ 378, 380 (CCPA 1960). Further, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claim 16, modified GB1546611A discloses all of the claim limitations as set forth above. Modified GB1546611A further discloses the electrode stack is saturated with an electrolyte (GB1546611A: electrolyte, see p.2, lines 62-92) and the container contains the electrolyte and is porous to the hydrogen gas (Page: vent that is permeable to the flow of hydrogen gas, see Title, Abstract).
Claim(s) 10, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over GB1546611A in view of Ejiri et al. (US 2013/0330579A1), as applied to claims 1, 5-9, 12-13, 17-21 above, and further in view of Wright et al. (US 2024/0123849 A1).
Regarding claim 10, modified GB1546611A discloses all of the claim limitations as set forth above. However, GB1546611A does not disclose the outer shell is constructed with steel and stressed concrete.
Wright discloses an energy storage system comprising a storage vessel made of steel and including a lining formed of steel and/or concrete ([0058], [0073], Fig. 2).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
Regarding claim 22, modified GB1546611A discloses all of the claim limitations as set forth above. However, GB1546611A does not disclose providing the outer shell includes constructing the outer shell with steel and stressed concrete.
Wright discloses an energy storage system comprising a storage vessel made of steel and including a lining formed of steel and/or concrete ([0058], [0073], Fig. 2).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
Claim(s) 11, 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over GB1546611A in view of Ejiri et al. (US 2013/0330579A1), as applied to claims 1, 5-9, 12-13, 17-21 above, and further in view of Cui et al. (US 2019/0051907A1) and as evidenced by Brooker et al. (US 2023/0335995 A1).
Regarding claim 11, modified GB1546611A discloses all of the claim limitations as set forth above. However, GB1546611A does not disclose the battery pack provides energy storage greater than 2 GWh.
Cui discloses metal-hydrogen batteries for large-scale energy storage such as grid storage (Title, Abstract, [0040]), wherein a battery energy storage systems can be modular and provide energy on the order of GWhs as evidenced by Brooker (Brooker: [0020]).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
Regarding claim 23, modified GB1546611A discloses all of the claim limitations as set forth above. However, GB1546611A does not disclose the battery pack provides energy storage greater than 2 GWh.
Cui discloses metal-hydrogen batteries for large-scale energy storage such as grid storage (Title, Abstract, [0040]), wherein a battery energy storage systems can be modular and provide energy on the order of GWhs as evidenced by Brooker (Brooker: [0020]).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
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.
Claims 1-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 12,107,249 B2 in view of Ejiri et al. (US 2013/0330579A1); in view of Wright et al. (US 2024/0123849 A1); and Cui et al. (US 2019/0051907A1) and as evidenced by Brooker et al. (US 2023/0335995 A1).
Claims 1-27 of U.S. Patent No. 12,107,249 B2 discloses a metal-hydrogen battery comprising a vessel, a plurality of electrode stacks arranged in the vessel, and metal hydrogen batteries enclosed in a barrel pressure vessel.
However, claims 1-27 of U.S. Patent No. 12,107,249 B2 does not disclose a monitor/control system coupled to monitor each of the metal hydrogen batteries in the array of individual metal hydrogen batteries and to the first facility terminal and the second facility terminal, the monitor/control system capable of determining if one or more of the individual metal hydrogen batteries are failing and require maintenance.
Ejiri discloses a battery block and power supply device, wherein battery cells are arrayed, connected and fixed, and electrode tabs are connected to outside terminals via bus bars, and a voltage sensing board that constitutes a sensing unit for sensing the voltage obtained from the large number of battery cells (see Title, Abstract, [0025], [0029]-[0030], [0034], [0036]-[0038], Fig. 1-10). Ejiri teaches rapidly sensing abnormality which is then appropriately processed ([0053]). Ejiri further discloses the batteries can be an array of nickel-hydrogen batteries ([0061]).
Claims 1-27 of U.S. Patent No. 12,107,249 B2 and Ejiri et al. (US 2013/0330579A1) are analogous art because they are concerned with the same field of endeavor, namely metal hydrogen batteries.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1-27 of U.S. Patent No. 12,107,249 B2 by incorporating a voltage sensing board for monitoring the voltage of the metal hydrogen batteries because Ejiri teaches improved performance and safety.
Further regarding claim 1 reciting “the monitor/control system capable of determining if one or more of the individual metal hydrogen batteries are failing and require maintenance”, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). In this case, the combination is considered capable of determining if one or more of the individual metal hydrogen batteries are failing and require maintenance.
However, claims 1-27 of U.S. Patent No. 12,107,249 B2 does not disclose the outer shell is constructed with steel and stressed concrete.
Wright discloses an energy storage system comprising a storage vessel made of steel and including a lining formed of steel and/or concrete ([0058], [0073], Fig. 2).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
However, claims 1-27 of U.S. Patent No. 12,107,249 B2 does not disclose providing the outer shell includes constructing the outer shell with steel and stressed concrete.
Wright discloses an energy storage system comprising a storage vessel made of steel and including a lining formed of steel and/or concrete ([0058], [0073], Fig. 2).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
However, claims 1-27 of U.S. Patent No. 12,107,249 B2 does not disclose the battery pack provides energy storage greater than 2 GWh.
Cui discloses metal-hydrogen batteries for large-scale energy storage such as grid storage (Title, Abstract, [0040]), wherein a battery energy storage systems can be modular and provide energy on the order of GWhs as evidenced by Brooker (Brooker: [0020]).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
Claims 1-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/817,053 in view of Ejiri et al. (US 2013/0330579A1); in view of Page et al. (US 5,173,376); in view of Wright et al. (US 2024/0123849 A1); and Cui et al. (US 2019/0051907A1) and as evidenced by Brooker et al. (US 2023/0335995 A1).
Claim 1 of the copending application discloses a metal-hydrogen battery comprising a vessel and a plurality of electrode stacks arranged in the vessel.
However, claim 1 of the copending application does not disclose a monitor/control system coupled to monitor each of the metal hydrogen batteries in the array of individual metal hydrogen batteries and to the first facility terminal and the second facility terminal, the monitor/control system capable of determining if one or more of the individual metal hydrogen batteries are failing and require maintenance.
Ejiri discloses a battery block and power supply device, wherein battery cells are arrayed, connected and fixed, and electrode tabs are connected to outside terminals via bus bars, and a voltage sensing board that constitutes a sensing unit for sensing the voltage obtained from the large number of battery cells (see Title, Abstract, [0025], [0029]-[0030], [0034], [0036]-[0038], Fig. 1-10). Ejiri teaches rapidly sensing abnormality which is then appropriately processed ([0053]). Ejiri further discloses the batteries can be an array of nickel-hydrogen batteries ([0061]).
Claim 1 of the copending application and Ejiri et al. (US 2013/0330579A1) are analogous art because they are concerned with the same field of endeavor, namely metal hydrogen batteries.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify claim 1 of the copending application by incorporating a voltage sensing board for monitoring the voltage of the metal hydrogen batteries because Ejiri teaches improved performance and safety.
Further regarding claim 1 reciting “the monitor/control system capable of determining if one or more of the individual metal hydrogen batteries are failing and require maintenance”, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). In this case, the combination is considered capable of determining if one or more of the individual metal hydrogen batteries are failing and require maintenance.
However, claim 1 of the copending application does not disclose each of the metal hydrogen batteries comprises: a container; and an electrode stack within the container.
Page discloses a metal oxide hydrogen battery having sealed cell modules with electrolyte containment and hydrogen venting, wherein the battery includes an outer pressure vessel containing a plurality of cell modules, each cell enclosed in a flexible sealed bag which is provided with a vent that is permeable to the flow of hydrogen gas (see Title, Abstract). Page further discloses the double bag arrangement insures no leakage of electrolyte between cell modules to prevent forming an electrical bridge while freely permitting passage of hydrogen gas between cell modules and the outer pressure vessel (col.2, lines 15-29).
Claim 1 of the copending application and Page are analogous art because they are concerned with the same field of endeavor, namely metal hydrogen batteries.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify claim 1 of the copending application by enclosing each cell in a flexible sealed bag because Page teaches preventing leakage thereby improving safety.
However, claim 1 of the copending application does not disclose the outer shell is constructed with steel and stressed concrete.
Wright discloses an energy storage system comprising a storage vessel made of steel and including a lining formed of steel and/or concrete ([0058], [0073], Fig. 2).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
However, claim 1 of the copending application does not disclose providing the outer shell includes constructing the outer shell with steel and stressed concrete.
Wright discloses an energy storage system comprising a storage vessel made of steel and including a lining formed of steel and/or concrete ([0058], [0073], Fig. 2).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
However, claim 1 of the copending application does not disclose the battery pack provides energy storage greater than 2 GWh.
Cui discloses metal-hydrogen batteries for large-scale energy storage such as grid storage (Title, Abstract, [0040]), wherein a battery energy storage systems can be modular and provide energy on the order of GWhs as evidenced by Brooker (Brooker: [0020]).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
This is a provisional nonstatutory double patenting rejection.
Claims 1-23 are ground of nonstatutory double patenting as being unpatentable over claims 1-22 of US Patent No. 12,586,826B2 in view of Page et al. (US 5,173,376); in view of Wright et al. (US 2024/0123849 A1); and Cui et al. (US 2019/0051907A1) and as evidenced by Brooker et al. (US 2023/0335995 A1).
Claims 1-22 of US 12,586,826B2 discloses a metal-hydrogen battery comprising a vessel, at least one cell in the vessel, and a controller coupled to the at least one cell.
However, Claims 1-22 of US 12,586,826B2 does not disclose each of the metal hydrogen batteries comprises: a container; and an electrode stack within the container.
Page discloses a metal oxide hydrogen battery having sealed cell modules with electrolyte containment and hydrogen venting, wherein the battery includes an outer pressure vessel containing a plurality of cell modules, each cell enclosed in a flexible sealed bag which is provided with a vent that is permeable to the flow of hydrogen gas (see Title, Abstract). Page further discloses the double bag arrangement insures no leakage of electrolyte between cell modules to prevent forming an electrical bridge while freely permitting passage of hydrogen gas between cell modules and the outer pressure vessel (col.2, lines 15-29).
Claims 1-22 of US 12,586,826B2 and Page are analogous art because they are concerned with the same field of endeavor, namely metal hydrogen batteries.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify claim 1 of US 12,586,826B2 by enclosing each cell in a flexible sealed bag because Page teaches preventing leakage thereby improving safety.
However, claims 1-22 of US 12,586,826B2 does not disclose the outer shell is constructed with steel and stressed concrete.
Wright discloses an energy storage system comprising a storage vessel made of steel and including a lining formed of steel and/or concrete ([0058], [0073], Fig. 2).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
However, claims 1-22 of US 12,586,826B2 does not disclose providing the outer shell includes constructing the outer shell with steel and stressed concrete.
Wright discloses an energy storage system comprising a storage vessel made of steel and including a lining formed of steel and/or concrete ([0058], [0073], Fig. 2).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
However, claims 1-22 of US 12,586,826B2 does not disclose the battery pack provides energy storage greater than 2 GWh.
Cui discloses metal-hydrogen batteries for large-scale energy storage such as grid storage (Title, Abstract, [0040]), wherein a battery energy storage systems can be modular and provide energy on the order of GWhs as evidenced by Brooker (Brooker: [0020]).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/James Lee/Primary Examiner, Art Unit 1725 6/10/2026
Prosecution Insights