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 .
Status of Claims
Claims 3, 6, 8-10, 13, 15, 17, 19, 24-25, 28, 31, 34, 37-39, 43-45, 48, 50-51, 53-55, 57 and 59 are as previously presented. Claims 1 and 54 are amended. Claims 2, 4-5, 7, 11-12, 14, 16, 18, 20-23, 26-27, 29-30, 32-33, 35-36, 40-42, 46-47, 49, 52, 56 and 58 have been canceled. Claims 60-62 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 Claims 8-10, 13, 15, 17, 19, 24-25, 28, 31, 34, 37-39, 43-45, 48, and 59 are withdrawn.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, 51, 53-55, 57, and 59-62 are currently pending, and claims 1, 3, 6, 50-51, 53-55, 57 and 59-62 are considered below.
Response to Amendment
The amendment filed on 04/29/2026 has been entered. Applicant's amendment overcomes the following:
Certain 35 USC § 112(b) Rejection
35 USC § 112(d) Rejection
Claim Objection
Drawing Objection
35 USC 112(f) interpretation (The examiner notes that this is not a rejection but the limitation “the device” will not be interpreted under 35 USC 112(f) because the generic placeholder “device” is not modified by functional language. See MPEP § 2181-I-B)
Claim Objections
Claim 1 objected to because of the following informalities: Claim 1 recites the limitation "and hold time of'' in line 26 of claim 1. However, it is suggested to amend to -and a hold time-. Appropriate correction is required.
Claim 1 objected to because of the following informalities: Claim 1 recites the limitation "thereby extinguishing the flame and terminating thermal runaway and preventing reignition following the extinguishment of the flame'' in lines 27-29 of claim 1. However, it is suggested to amend to -thereby extinguishing the flame, terminating thermal runaway, and preventing reignition following the extinguishment of the flame-. Appropriate correction is required.
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, 50-51, 53-55, 57 and 59-62 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 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 3, 6, 50-51, 53-55, 57 and 59-62 depend on claim 1, therefore claims 3, 6, 50-51, 53-55, 57 and 59-62 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Claim Rejections - 35 USC § 103
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
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) 1, 3, 6, 50, 53-55, 57, 60-62 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li (WO 2022012453) in view of NFPA 2001: Standard on clean agent fire extinguishing systems (2018 ed.), hereinafter NFPA-2001.
(Note 1: cross-out limitations in this office action indicates the lack of explicit teaching in the primary reference; the limitation is addressed by the teaching reference(s) below).
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 the device (Para. 0134 – “energy storage system includes several energy storage modules”) positioned within the enclosure, wherein the device the 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) powering the device with the lithium ion battery (The device (energy storage system) is powered by the lithium ion battery.; Para. 0115, 0134)
(d) 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”; Heptafluoropropane is HFC-227ea.);
(e) 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
(f) 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.)
Li does not disclose the discharge time is 18 to 180 seconds, the hold time is 10 to 60 minutes, the hold time is 10 to 60 minutes, thereby preventing reignition following the extinguishment of the flame, wherein the thermal runaway termination agent comprises HFC-227ea in an amount sufficient to provide a concentration of at least 17% v/v (volume/volume) HFC-227ea when delivered to the enclosure.
However, NFPA-2001 teaches providing an enclosure (Fig. A.5.4.3, Pg. 2001-61) providing a source of a thermal runaway termination agent a thermal runaway termination agent concentration (A.5.5.1, Pg. 2001-61 to 2001-62), wherein the thermal runaway termination agent comprises HFC-227ea (Table A.5.5.1(i), Pg. 2001-70), wherein the delivery of the thermal runaway termination agent is characterized by a discharge time (A.5.7.1.1, pg. 2001-70), a thermal runaway termination agent concentration (A.5.7.1.1, pg. 2001-75; Table A.5.5.1(i), Pg. 2001-70; The thermal runaway termination agent concentration is shown as 100% HFC-227ea), and hold time (A.5.6, pg. 2001-69), thereby extinguishing a flame (A.5.7.1.1.1, pg. 2001-75 – “flame extinguishment”) preventing reignition following the extinguishment of the flame (A.5.7.1.1.1, pg. 2001-75 – “prevent re-ignition”), wherein the thermal runaway termination agent comprises HFC-227ea in an amount sufficient to provide a concentration HFC-227ea when delivered to the enclosure (“Design Concentration”; Table A.5.5.1(i), Pg. 2001-70; A.5.5.1, Pg. 2001-61 to 2001-62).
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 the teachings of NFPA-2018, (the discharge time and the hold time and certain values, thereby preventing reignition following the extinguishment of the flame, wherein the thermal runaway termination agent comprises HFC-227ea in an amount sufficient to provide a concentration when delivered to the enclosure.), into the device of Li, to comply with the governing clean agent standard (NFPA-2018 – Ti. , “Standard on Clean Agent Fire Extinguishing Systems”), with a reasonable expectation of success, namely suppressing a fire and preventing reignition.
Li in view of NFPA-2001 does not teach the discharge time is 18 to 180 seconds, the hold time is 10 to 60 minutes, the hold time is 10 to 60 minutes, and the concentration of at least 17% v/v (volume/volume) HFC-227ea when delivered to the enclosure.
However, NFPA-2001 teaches that the discharge time (A.5.7.1.1), the hold time (A.5.6, pg. 2001-69), and the concentration of HFC-227ea when delivered to the enclosure (A.5.7.1.1, pg. 2001-75; Table A.5.5.1(i), Pg. 2001-70) are result-effective variables, and the applicant’s specification has not described criticality for the discharge time of 18 to 180 seconds (Applicants Specification Para. 0088, 0090), the hold time of 10 to 60 minutes (Para. 0089), and the concentration of at least 17% v/v (volume/volume) HFC-227ea when delivered to the enclosure (Applicants Specification, Para. 0056, 0087). With regards to criticality the applicant asserts that HFC-227ea is incapable of terminating thermal runaway (Applicants Specification, Para. 0003) However, Li expressly discloses using HFC-227ea to terminate thermal runaway and thus the use of HFC-227ea to terminate thermal runaway is not unexpected or significant (Li. Para. 0119, 0129; Heptafluoropropane is HFC-227ea). Therefore, 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 18 to 180 seconds, the hold time is 10 to 60 minutes, the hold time is 10 to 60 minutes, and the concentration of at least 17% v/v (volume/volume) HFC-227ea when delivered to the enclosure, 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.
Annotated Figure(s)
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Regarding claim 3, Li in view NFPA-2001 teaches the method of claim 1.
Li further disclose 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 in view NFPA-2001 teaches the method of claim 1.
Li further discloses wherein the two-way control valve has at least three ports (Fig. 10, {24, 25, & 33}).
Regarding claim 50, Li in view NFPA-2001 teaches the method of claim 1.
Li further 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 53, Li in view NFPA-2001 teaches the method of claim 1, but does not teach 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 54, Li in view NFPA-2001 teaches the method of claim 1.
Li 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 lithium ion battery overheating due to a mechanical event or electrical event or a defect event (The internal source is the lithium ion battery 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.).
Regarding claim 55, Li in view NFPA-2001 teaches the method of claim 1, but does not teach wherein the thermal runaway termination agent comprises HFC-227ea in an amount sufficient to provide a concentration of 17% to 30% v/v HFC-227ea when delivered to the enclosure.
However, NFPA-2001 teaches that the concentration of HFC-227ea when delivered to the enclosure (A.5.7.1.1, pg. 2001-75; Table A.5.5.1(i), Pg. 2001-70) is a result-effective variable, and the applicant’s specification has not described criticality for the thermal runaway termination agent comprises HFC-227ea in an amount sufficient to provide a concentration of 17% to 30% v/v HFC-227ea when delivered to the enclosure (Applicant’s Specification, Para. 0087). Therefore, 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 applicant’s specification has not described criticality for the thermal runaway termination agent comprises HFC-227ea in an amount sufficient to provide a concentration of 17% to 30% v/v HFC-227ea when delivered to the enclosure, 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.
Regarding claim 57, Li in view NFPA-2001 teaches the method of claim 1, but does not teach wherein the hold time ranges from 10 to 15 minutes.
However, NFPA-2001 teaches the hold time (A.5.6, pg. 2001-69) is a result-effective variable, and the applicant’s specification has not described criticality for the hold time ranges from 10 to 15 minutes (Para. 0089). Therefore, 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.
Regarding claim 60, Li in view NFPA-2001 teaches the method of claim 1, but does not teach wherein the hold time comprises one of 15 minutes to 30 minutes or 30 minutes to 60 minutes.
However, NFPA-2001 teaches the hold time (A.5.6, pg. 2001-69) is a result-effective variable, and the applicant’s specification has not described criticality for wherein the hold time comprises one of 15 minutes to 30 minutes or 30 minutes to 60 minutes (Para. 0089). Therefore, 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 15 minutes to 30 minutes or 30 minutes to 60 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.
Regarding claim 61, Li in view NFPA-2001 teaches the method of claim 1, but does not teach wherein the discharge time comprises about 2 minutes.
However, NFPA-2001 teaches the discharge time (A.5.7.1.1) is a result-effective variable, and the applicant’s specification has not described criticality for the discharge time comprises about 2 minutes (Para. 0105-0106). Therefore, 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 comprises about 2 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.
Regarding claim 62, Li in view NFPA-2001 teaches the method of claim 1, but does not teach wherein the discharge time comprises about 25 to about 120 seconds.
However, NFPA-2001 teaches the discharge time (A.5.7.1.1) is a result-effective variable, and the applicant’s specification has not described criticality for the discharge time comprises about 25 to about 120 seconds (Para. 0088). Therefore, 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 comprises about 25 to about 120 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.
Claim(s) 51 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of NFPA-2001 and Hwang (US 2022/0231286).
Regarding claim 51, Li in view of NFPA-2001 teaches the method of claim 1 but does not teach 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) taught by Li in view of NFPA-2001 yielding the predictable result, namely storing electrical energy.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 6, and 50-58 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
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW DOMENIC ONDREJCAK whose telephone number is (571)270-5465. The examiner can normally be reached Mon - Fri 8:00-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur Hall can be reached at (571)270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW DOMENIC ONDREJCAK/Examiner, Art Unit 3752 June 30, 2026
/TUONGMINH N PHAM/Primary Examiner, Art Unit 3752
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