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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
The Examiner notes that claims 19-20 recite(s) nominal methods of making limitations, in combination with product limitations encompassing those of claims 1 and 16. As such, there is presently no undue burden in examining these, technically, divergent statutory classes of invention. Should Applicants' amend these claims to include non-nominal method limitations, these newly added claims may be subject to restriction by original presentation
Regarding the limitation(s) "adjacent" in claims 16, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants' specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes that "adjacent" still allows for other layers to be therebetween (i.e. "adjacent" is taken to be synonymous with "near” Should Applicants desire to exclude other layers from being located therebetween, the Examiner suggests using the wording "directly adjacent" or "in contact with". It is noted that claims 11 and 12 includes the term “adjacent” and “in contact”. Therefore, “adjacent” in claims 11 and 12 would be interpreted as “near”.
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 1-8 and 11-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 10-14, and 16 of copending Application No. 18/115,870 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims substantially encompasses the claims of application 18/115,870 and/or obvious variant of one another with slight optimization of ranges.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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)(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.
Claims 1-2, 5-6, 11-16, and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Xiao et al. (US 2023/0087017).
Regarding claims 1, 16, and 19, Xiao discloses a battery pack and a method of making thereof, comprising a battery array including a first battery cell (106) spaced-apart from a second battery cell (106) by a separator (200), wherein the separator includes a first layer (110) of material in contact with the first battery cell and a second layer (110) of a material in contact with the second battery cell, wherein the first and second layers of material are made of a thermally insulative material [0051-0078], wherein the separator includes a third layer (206) of a material and a fourth layer (206) of material between the first and second layers of material, and wherein the third and fourth layers of material are made of a metallic material [0080] (Figs. 1-2).
Regarding claim 2, Xiao discloses that the first and second layers of material are made of a non-metallic material [0051-0078].
Regarding claim 5, Xiao discloses a fifth layer (204) of material between the third and fourth layer of material, wherein the fifth layer of material is made of a thermally insulative material [0080].
Regarding 6, Xiao discloses the fifth layer (204) is a middle-most layer of the separator with respect to a thickness dimension of the separator (Fig. 2).
Regarding claims 11-12, Xiao discloses a thermal exchange plate (102) as claimed (Fig. 1-2). Although Xiao fails to disclose that the “housing” is a “thermal exchange plate”, Xiao discloses that it has a functionality of a cooling system [0050]. Given that Xiao discloses that it dissipates heat or keeps the battery from getting too hot, the “housing” of Xiao therefore would correspond to the claimed thermal (exchange) plate or cold plate.
Regarding claim 13, Xiao discloses that the separator consists of two layers of metallic material (Fig. 2).
Regarding claim 14, Xiao discloses that the battery pack is configured such that a compressive force applied a long a length of the array holds the separator in place relative to the first battery cell and the second battery cell (All Figs, [0050]).
Regarding claim 15, Xiao discloses an electrified vehicle [0003].
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.
Claims 3-4, 7-10, 17-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et al. (US 2023/0087017) in view of Hu et al. (US 8,785,026).
Regarding claims 3-4, 7, 17, and 20, Xiao discloses a separator comprising a thermally insulative material first, second, and fifth layers and a metallic material third and fourth layers set forth above, however, Xiao fails to explicitly disclose that the thermally insulative material is aerogel and the metallic material is steel as presently claimed.
Hu discloses a battery comprising plurality battery cells (302) that is spaced apart from a separator comprising a thermally insulative material (214) layer and a metallic material layer (212). Therefore, Hu is an analogous art to that of Xiao.
Xiao discloses the claimed invention except that it uses polyethylene, epoxy, phenolic resin, or fiber insulating board instead of aerogel as the material of the thermally insulative material. Xiao further discloses that it uses aluminum as the metallic material [0080] instead of steel.
Hu shows that aerogel is an equivalent structure known in the art as a thermally insulative material (Table 2) and steel is an equivalent structure known in the art for a metallic material (Table 1).
Therefore, because these two materials were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute (polyethylene, epoxy, phenolic resin, or fiber insulating board) as the insulative material for aerogel in the invention of Xiao.
Likewise, because steel and aluminum materials were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute aluminum for steel as the metallic material in the invention of Xiao.
Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would further have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Xiao’s thermally insulative material comprise of aerogel and metallic material comprise of steel, as demonstrated by Hu, to provide a suitable separation that prevents thermal runaway diffusion (Abstract).
Because Hu uses aerogel and other known material for a thermally insulative material and steel and other known metal material as the metallic material for a separator between two cells, and both Xiao and Hu teach that these materials help reduce thermal runaways (Xiao: (Title, Abstract; Hu: Title, Abstract), a preponderance of the evidence supports the Examiner’s conclusion that it would have been obvious to have substituted as set forth above with a reasonable expectation of success.
Regarding claim 8, Xiao discloses that the first, second, and fifth layers of material exhibit a common thickness, and the third and fourth layers of material exhibit a common thickness different than the thickness of the first, second, and fifth layers (Fig. 2).
Regarding claims 9-10 and 18, although Xiao discloses thicknesses of the separator [0056], Xiao fails to disclose the thicknesses of all the layers as presently claimed.
Hu discloses a separator between the cells wherein, the separator having a total thickness of 0.05-2.0 cm (0.5-20 mm), the first, second, and fifth layers of material has a thickness of 30-97% of the total thickness, (or 0.15-19.4 mm), and the third and fourth layers is 3-70% of the total thickness, (or 0.015-14 mm) (col. 5, line 56 – col. 6, line 9). Therefore, all values within the range appears to be functionally equivalent. It would have been obvious to choose any thickness from that ranged based on the desired thermal conductivity properties (col. 5, lines 56-60) and that choosing thickness values would have rendered the claimed relationship between layer thicknesses obvious in the absence of showing criticality.
Therefore, it would have been obvious before the effective filing date of the claimed invention to modify Xiao’s separator, including first, second, third, fourth, and fifth layer, to have the thicknesses as claimed, as suggested by Hu, in order to obtain an appropriate thermal conductivity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785