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 .
Election/Restrictions
Claims 8-10, 13, 15, 17, 19, 24-25, 28, 31, 34, 37-39, 43-45, 48, and 59 are withdrawn from further consideration pursuant to 37 CFR 1.145, as lacking unity of invention (MPEP § 1850, PCT Rule 13.1, and PCT Rule 13.2). Election was made without traverse in the reply filed on 10/20/2025.
Status of Claims
Claims 1, 8, 38, and 43 are original. Claims 2-3, 6, 9-10, 13, 15, 17, 19, 24-25, 28, 31, 34, 37, 39, 44-45, and 48 have been amended. Claims 4-5, 7, 11-12, 14, 16, 18, 20-23, 26-27, 29-30, 32-33, 35-36, 40-42, 46-47, and 49 have been canceled. Claims 50-59 are new. Claims 8-10, 13, 15, 17, 19, 24-25, 28, 31, 34, 37-39, 43-45, 48, and 59 are withdrawn. Therefore, claims 1-3, 6, 8-10, 13, 15, 17, 19, 24-25, 28, 31, 34, 37-39, 43-45, 48, and 50-59 are currently pending, and claims 1-3, 6, and 50-58 are considered below.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s).
The two-way control valve has at least three ports (Claim 6)
Solid electrolyte interphase layer (Claim 51)
Liquid electrolyte (Claim 51)
The heat stimulus is the result of applied heat to the enclosure from an external source (Claim 53)
No new matter should be entered.
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 Objections
Claim 54 objected to because of the following informalities: Claim 54 recites the limitation “the LIB” in line 3 of claim 54. However, it is suggested to amend to -the lithium ion battery-. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are as follows:
“A device” in line 3 of claim 1. The limitation appears to include a generic placeholder “device” coupled with functional language “is powered by a lithium ion battery” and the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
A review of the specification does appear have corresponding structure described in the specification for 35 U.S.C. 112(f) limitation regarding “A device” in line 3 of claim 1., because para 0041 of the applicant’s specification states “Examples of lithium ion battery- powered devices which are suitable for the methods and systems disclosed herein include datalogger, telecommunication equipment, personal electronic equipment, power tools, energy storage system, data center, electric motor vehicle, and electric bicycle. Personal electronic equipment includes cell phone, laptop computer and gaming system. The examiner will interpret this limitation as a datalogger, telecommunication equipment, power tools, energy storage system, data center, electric motor vehicle, electric bicycle, cell phone, laptop computer and gaming system, or equivalent thereof.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 6, and 50-58 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.
Claim 1 recites the limitation “a device powered by a lithium ion battery ” in line 2 of claim 1, but claim 1 also recites the limitation “a device … the device comprises and is powered by a lithium ion battery” in lines 3-4 of claim 1. It is unclear if there are separate “devices” and “lithium ion batteries” or if these are the same “device” and “lithium ion battery”. The examiner will interpret these limitations as the same “device” and “lithium ion battery.”
Claim 1 recites the limitation “a predetermined pressure and temperature suitable for normal operating conditions of the device” in lines 10-11 of claim 1. Is 10 psi, 20 psi, or 100 psi a pressure suitable for normal operating conditions of the device? Is 10 °F, 20 °F, or 100 °F a temperature suitable for normal operating conditions of the device? The examiner cannot determine the meets and bounds of the invention. The examiner will interpret this claim as “any predetermined pressure and temperature”.
Claims 2-3, 6, and 50-58 depend on claim 1, therefore claims 2-3, 6, and 50-58 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Claim Rejections - 35 USC § 112
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.
Claim 2 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 2 recites the limitation “the temperature sensitive tube contains an inert gas or a thermal runaway termination agent in step (d)” in lines 1-3 of claim 2, however claim 1 from which claim 2 depends recites the limitation “a temperature sensitive tube containing an inert gas or a thermal runaway termination agent” in lines 9-10 of claim 1. The examiner has determined that the limitation of claim 2 does not appear to further limit the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 3 depends on claim 2, therefore claim 3 is also rejected under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), fourth paragraph.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 6, 50, and 54 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Li (WO 2022012453).
Regarding claim 1, Li discloses a method (Para. 0059 – “an intelligent heat-triggered fire
extinguishing method”) for extinguishing a flame and terminating thermal runaway in a device powered by a lithium ion battery (Para. 0110 – “it can achieve fixed-point and directional fire extinguishing, and can carry out targeted fire extinguishing on battery modules that have thermal runaway”), which comprises:
(a) providing an enclosure (Fig. 10, 100);
(b) providing a device (Para. 0134 – “energy storage system includes several energy storage modules”; An energy storage system is a device as outlined in the 112(f) interpretation) positioned within the enclosure, wherein the device comprises and is powered by a lithium ion battery (Fig. 10, 102; Para. 0004-0005 – “Lithium-ion battery”; Para. 0115 – “Two battery modules 102 are disposed in any cavity 101”);
(c) providing a source of a thermal runaway termination agent (Para. 0085 – “the fire extinguishing agent.”), wherein the source comprises a container (Fig. 10, 10) and a two-way control valve (Fig. 10, 21-27 & 33), wherein the container contains the thermal runaway termination agent (Para. 0085 – “The fire extinguishing agent storage unit 10 is used to store and supply the fire extinguishing agent.), the two-way control valve is attached to an opening (Fig. 10, opening in container 10 that allows connection to 24 via a conduit) in the container, and the thermal runaway termination agent comprises HFC-227ea (Para. 0129 – “the fire extinguishing agent includes: hexafluoropropane, accounting for 3% to 40% (by volume) of the fire extinguishing agent; heptafluoropropane, accounting for 3% to 40% (by volume) of the fire extinguishing agent; and carbon dioxide”; Hexafluoropropane is HFC-227ea.);
(d) providing a temperature sensitive tube (Fig. 11, L11 & L111-116; Para. 0121) containing an inert gas or a thermal runaway termination agent (Para. 0026 – “the fluid is a fire extinguishing agent … the initial high-pressure fluid inside the fire extinguishing agent flow pipeline”) at a predetermined pressure (Para. 0091 – “initial high-pressure fluid inside the fire extinguishing agent flow pipeline”) and temperature (Para. 0131 – “The fire extinguishing agent is stored at room temperature and is pressurized”) suitable for normal operating conditions of the device (See 112(b) above.), wherein the tube has two ends (Annotated Fig. 11), wherein
(i) one end is in communication with the control valve (L11 is in communication with the control valve via L1, 34, and 27 as shown in Fig. 10) and the other end is capped (Annotated Fig. 11 shows the termination of L11.),
(ii) the tube is located within the enclosure (Fig. 10) and comprises a temperature sensor (Para. 0121 – “temperature sensing nozzle”) for detection of a threshold temperature (Para. 0142), and
(iii) the tube is disposed in proximity to the lithium ion battery (Fig. 10); and
(e) providing a heat stimulus (Para. 0111 – “temperature of a ternary lithium battery”), which generates a flame (Para. 0111 – “causing a fire”) and initiates thermal runaway (Para. 0111 – “the ternary lithium battery will enter a thermal runaway state”), whereupon the temperature sensitive tube ruptures (Para. 0117), creating an opening in the temperature sensitive tube and causing release of the inert gas or thermal runaway termination agent within the temperature sensitive tube through the heat stimulus-created opening in the temperature sensitive tube and into the enclosure (Para. 0026, 0117, 0141-0143), resulting in a pressure drop (Para. 0142 – “thereby reducing the real-time fluid pressure value”) within the temperature sensitive tube which actuates the control valve to deliver the thermal runaway termination agent from the storage container through the control valve to the temperature sensitive tube and out of the heat stimulus-created opening in the temperature sensitive tube and into the enclosure (Para. 0141-0143);
wherein the delivery of the thermal runaway termination agent is characterized by a discharge time (The length of time at step 208 that the thermal runway termination agent is discharged into the enclosure as described in Para. 0143), a thermal runaway termination agent concentration (Para. 0129 – “the fire extinguishing agent includes: hexafluoropropane, accounting for 3% to 40% (by volume) of the fire extinguishing agent; heptafluoropropane, accounting for 3% to 40% (by volume) of the fire extinguishing agent; and carbon dioxide”), and hold time (The length of time after the discharge time that the thermal runway termination agent remains in the enclosure.), thereby extinguishing the flame and terminating thermal runaway and preventing reignition following the extinguishment of the flame (Para. 0143 – “extinguish the fire in a fixed and directional manner”).
Annotated Figure(s)
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Regarding claim 2, Li discloses the method of claim 1, and further discloses wherein the temperature sensitive tube contains an inert gas or a thermal runaway termination agent in step (d) (Para. 0129 – “the fire extinguishing agent includes: hexafluoropropane, accounting for 3% to 40% (by volume) of the fire extinguishing agent; heptafluoropropane, accounting for 3% to 40% (by volume) of the fire extinguishing agent; and carbon dioxide”; The temperature sensitive tube contains a thermal runway termination agent comprising hexafluoropropane, heptafluoropropane, and carbon dioxide.).
Regarding claim 3, Li discloses the method of claim 2 wherein the temperature sensitive tube contains an inert gas and wherein the inert gas is chosen from nitrogen, argon, helium, carbon dioxide, and mixtures thereof (Para. 0129 – “the fire extinguishing agent includes: hexafluoropropane, accounting for 3% to 40% (by volume) of the fire extinguishing agent; heptafluoropropane, accounting for 3% to 40% (by volume) of the fire extinguishing agent; and carbon dioxide”; The temperature sensitive tube contains a thermal runway termination agent comprising hexafluoropropane, heptafluoropropane, and carbon dioxide, and thus the temperature sensitive tube contains the inert gas carbon dioxide.).
Regarding claim 6, Li discloses the method of claim 1, and further discloses wherein the two-way control valve has at least three ports (Fig. 10, {24, 25, & 33}) .
Regarding claim 50, Li discloses the method of claim 1, and further discloses wherein the device is an energy storage system (Para. 0134 – “energy storage system includes several energy storage modules”).
Regarding claim 54, Li discloses the method of claim 1, and further discloses wherein the heat stimulus is the result of applied heat to the enclosure from an internal source and wherein the internal source is due to the LIB overheating due to a mechanical event or electrical event or a defect event (The internal source is the lithium ion battery (LIB) reaching a runaway condition {Para. 0110 – “it can achieve fixed-point and directional fire extinguishing, and can carry out targeted fire extinguishing on battery modules that have thermal runaway”} which is an electrical event.).
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.
Claim(s) 52-53 and 55-58 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li.
Regarding claim 52, Li discloses the method of claim 1, and further discloses wherein the thermal runaway termination agent comprises HFC-227ea (Para. 0129 – “Hexafluoropropane”; Hexafluoropropane is HFC-227ea.) in an amount sufficient to provide a concentration of HFC-227ea (Para. 0129 – “hexafluoropropane, accounting for 3% to 40% (by volume) of the fire extinguishing agent”) when delivered to the enclosure.
Li does not disclose wherein the concentration is at least 17% v/v (volume/volume) HFC-227ea.
However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.) MPEP § 2144.05-I.
Furthermore, since applicants have not disclosed that these modifications solve any stated problem or are for any particular purpose and it appears that the device would perform equally well with either design, these modifications are a matter of design choice. Absent a teaching as to criticality of the concentration is at least 17% v/v (volume/volume) HFC-227ea (Para. 0056, 0090; Para. 0090 recites “to provide flame extinguishment, terminating thermal runaway in single or multiple cell configurations and cooling sufficient to prevent reignition”, which is not a novel or unexpected result.), this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975). MPEP 2144.05.
Regarding claim 53, Li discloses the method of claim 1, but does not disclose wherein the heat stimulus is the result of applied heat to the enclosure from an external source.
However, the examiner finds that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention would have recognized that a heat stimulus can come from an external source and the device of Li will work with any heat stimulus because the tube will rupture at a specific temperature regardless of the stimulus (Para. 0142), and there would be a reasonable expectation of success, namely, suppressing a fire.
Regarding claim 55, Li discloses the method of claim 1, and further discloses wherein the thermal runaway termination agent comprises HFC-227ea (Para. 0129 – “Hexafluoropropane”; Hexafluoropropane is HFC-227ea.) in an amount sufficient to provide a concentration of
Li does not disclose wherein the concentration is a concentration of 17% to 30% v/v HFC-227ea.
However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.) MPEP § 2144.05-I.
Furthermore, since applicants have not disclosed that these modifications solve any stated problem or are for any particular purpose and it appears that the device would perform equally well with either design, these modifications are a matter of design choice. Absent a teaching as to criticality of the concentration is a concentration of 17% to 30% v/v HFC-227ea (volume/volume) HFC-227ea (Para. 0087), this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975). MPEP 2144.05.
Regarding claim 56, Li discloses the method of claim 1.
Li teaches the claimed invention except for disclose wherein the discharge time ranges from 18 seconds to 180 seconds. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the discharge time ranges from 18 seconds to 180 seconds, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. MPEP 2144.05-II-A.
Furthermore, since applicants have not disclosed that these modifications solve any stated problem or are for any particular purpose and it appears that the device would perform equally well with either design, these modifications are a matter of design choice. Absent a teaching as to criticality of wherein the discharge time ranges from 18 seconds to 180 seconds (Para. 0088), this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975). MPEP 2144.05.
Regarding claim 57, Li discloses the method of claim 1.
Li teaches the claimed invention except for disclose wherein the hold time ranges from 10 to 15 minutes. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the hold time ranges from 10 to 15 minutes, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. MPEP 2144.05-II-A.
Furthermore, since applicants have not disclosed that these modifications solve any stated problem or are for any particular purpose and it appears that the device would perform equally well with either design, these modifications are a matter of design choice. Absent a teaching as to criticality of wherein the hold time ranges from 10 to 15 minutes (Para. 0089), this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975). MPEP 2144.05.
Regarding claim 58, Li discloses the method of claim 1.
Li further discloses the thermal runaway termination agent comprises HFC-227ea (Para. 0129 – “Hexafluoropropane”; Hexafluoropropane is HFC-227ea.) in an amount sufficient to provide a concentration of HFC-227ea (Para. 0129 – “hexafluoropropane, accounting for 3% to 40% (by volume) of the fire extinguishing agent”).
Li does not disclose wherein the discharge time is at least 18 seconds and the concentration is at least 17% v/v HFC-227ea.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the discharge time is at least 18 seconds, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. MPEP 2144.05-II-A.
Furthermore, since applicants have not disclosed that these modifications solve any stated problem or are for any particular purpose and it appears that the device would perform equally well with either design, these modifications are a matter of design choice. Absent a teaching as to criticality of the discharge time is at least 18 seconds (Para. 0090), this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975). MPEP 2144.05.
Additionally, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.) MPEP § 2144.05-I.
Furthermore, since applicants have not disclosed that these modifications solve any stated problem or are for any particular purpose and it appears that the device would perform equally well with either design, these modifications are a matter of design choice. Absent a teaching as to criticality of the concentration is at least 17% v/v (volume/volume) HFC-227ea (Para. 0056, 0090; Para. 0090 recites “to provide flame extinguishment, terminating thermal runaway in single or multiple cell configurations and cooling sufficient to prevent reignition”, which is not a novel or unexpected result.), this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975). MPEP 2144.05.
Claim(s) 51 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Hwang (US 2022/0231286).
Regarding claim 51, Li discloses the method of claim 1, but does not disclose wherein the lithium ion battery comprises an anode chamber comprising an anode, a cathode chamber comprising a cathode and a semipermeable membrane, which separates the anode chamber from the cathode chamber and wherein the anode is constructed of graphite protected with a solid electrolyte interphase layer and the cathode is constructed of a lithium metal oxide chosen from LiCoO2, LiFePO4, LiMn204 or LiNiMnCoO2 and wherein the anode chamber and cathode chamber are each filled with a liquid electrolyte which is a flammable organic carbonate chosen from ethylene carbonate or diethyl carbonate, which contains a lithium salt chosen from LiPFe, LiAsFe, LiCIO4, LiBF4, or LiCF3SO3.
However, Hwang teaches a prior art comparable lithium ion battery (Fig. 1A-1B, 100) comprises an anode chamber (Fig. 1A-1B, Chamber encompassing the anode and the area between the anode and the semipermeable membrane (106)) chamber comprising an anode (Fig. 1A-1B, 102) a cathode chamber (Fig. 1A-1B, Chamber encompassing the cathode, the semipermeable membrane (106) and the area between the cathode and the semipermeable membrane) comprising a cathode (Fig. 1A-1B, 104) and a semipermeable membrane (Fig. 1A-1B, 106), which separates the anode chamber from the cathode chamber and wherein the anode is constructed of graphite (Para. 0004 – “The composite anode may include a graphite layer”) protected with a solid electrolyte interphase layer (Fig. 2A, 210 ;Para. 0047 – “Further, as described below with reference to Figures 2A-2D, the anode 102 may include a multilayered composite structure”; Para. 0066 – “the protective layer 210 may include a solid polymer layer”; A solid polymer layer is a solid electrolyte interphase layer.) and the cathode is constructed of a lithium metal oxide chosen from LiCoO2, LiFePO4, LiMn204 or LiNiMnCoO2 (Para. 0016 – “The cathode may comprise LiCoO2”) and wherein the anode chamber and cathode chamber are each filled with a liquid electrolyte (Fig. 1A-1B, 110) which is a flammable organic carbonate chosen from ethylene carbonate or diethyl carbonate (Para. 0053 – “the electrolyte 110 may be an organic solvent (e.g., ethylene carbonate, dimethyl carbonate, diethyl carbonate, an ether, or a fluorinated ether)”), which contains a lithium salt chosen from LiPFe LiAsFe LiCIO4 LiBF4 or LiCF3SO3 (Para. 0052 – “the anode 102 may provide free lithium ions and/or lithium salts (e.g., LiPF6, LiBF4, LiBC4O8, Li[PF3(C2F5)3], LiClO4, or LiC2F6NO4S2 (i.e., lithium bis(fluorosulfonyl)imide (LiFSI))) dissolved within the electrolyte 110 may provide free lithium ions”).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate one known element (lithium ion battery) with a known function (storing electrical energy), taught by Hwang, by performing a simple substitution with another element (lithium ion battery) disclosed by Li yielding the predictable result, namely storing electrical energy.
Conclusion
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/ANDREW DOMENIC ONDREJCAK/Examiner, Art Unit 3752 November 20, 2025
/ARTHUR O. HALL/Supervisory Patent Examiner, Art Unit 3752