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 .
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 15-20 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.
Amended claim 15 recites “the inverter exhaust duct configured to output heated air from the inverter cabinet and circulate the heated air along an upper surface of the interior of the container, in a direction towards the at least one baffle, the heated air having absorbed heat from the inverter; and a return duct configured to draw in heated air having passed through one or more of the plurality of energy storage units, and having been output by the inverter exhaust duct, and to return the heated air to the air temperature control unit” (emphasis added). The claim is indefinite as to whether: 1) the ”heated air” from the “return duct” is intended to be the same “heated air” from the “inverter exhaust duct” or a distinct ‘heated air’ thereof; and 2) “the heated air” from the “return duct” is intended to be the same as “the heated air” from the “inverter exhaust duct” or a distinct ‘heated air’ thereof. Claims 16-20 are also rejected as depending on claim 15.
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 and 2 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Goldman et al (US 12,322,776).
With respect to claim 1, Goldman discloses in fig. 15C an energy storage assembly and a cooling system thereof (Abstract; col. 13, lines 57-67; col. 14, lines 1-15; col. 19, lines 26-40), wherein fig. 15C depicts the energy storage assembly comprises: an “Aesthetic Cover” (i.e. claimed “container”) having: a “battery block” of “Cells” (e.g. claimed “energy storage units”) (col. 19, lines 64-67; col. 20, lines 1-23), the energy storage units mounted to a wall of the container via “frames” [1202],[1204] and/or “bracket” (e.g. claimed “racks”) as shown in figs. 12A-B (col. 11, lines 19-62); the battery block physically attached to an inverter cabinet [1304] containing an inverter as shown in fig. 13 (col. 11, lines 66-67; col. 12, lines 1-18), with fig. 13 further showing the inverter cabinet having an inlet and an exhaust duct both approximate to detail [1304]; the cooling system comprising a “Heat Sink” (i.e. claimed “air temperature control unit”) configured to circulate treated or conditioned air to the container via a supply duct with fan and receive heated air from the container from “Recirculation Duct” (i.e. claimed “return duct”) configured to draw in air having passed by the Cells and output by the exhaust duct, and then return the air to the air temperature control unit, and the exhaust duct configured to output air from the inverter cabinet in a direction towards the at least one baffle (col. 12, lines 6-67; col. 13, lines 1-14 and 58-67; col. 14, lines 20-61); and “Manifold” with “Side Channels” (e.g. claimed “at least one baffle”) configured to reduce air flow (via 90o angles) and receive the conditioned air from the air temperature control unit and to distribute the conditioned air to an interior of the container and to the inverter cabinet via the inlet after circulating past the Cells (col. 3, lines 45-67; col. 4, lines 1-12; col. 17, lines 7-18; col. 18, lines 64-68; col. 19, lines 1-25 and 64-67; col. 20, lines 1-23).
With respect to claim 2, Goldman further depicts in fig. 15C the at least one baffle (e.g. “Manifold” with “Side Channels”) comprises at least one horizontal baffle represented by “Manifold” and at least one vertical baffle represented by “Side Channels”, wherein the conditioned air from the Heat Sink is circulated to the container via the at least one horizontal and vertical baffles as represented via arrows (col. 19, lines 64-67; col. 20, lines 1-18).
Claims 15-16 and 21-22 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Okazaki et al (US 2023/0006283).
With respect to claims 15 and 21, Okazaki discloses in figs. 1-5 a cooling system for a power supply (i.e. claimed “energy storage system”) [1] (Abstract; para 0022-0026), wherein figs. 1-5 teach the energy storage system [1] having: a case (i.e. claimed “container”) [5] (para 0051); plural battery modules (i.e. claimed “racks”) [20A],[20B] for supporting cells (i.e. claimed “energy storage units”) [21] (para 033-0036); and an inverter [31] within “integrally formed” portions (i.e. claimed “inverter cabinet”) [71]-[73] having an inverter inlet via direction [D1] and an inverter exhaust duct via direction [D8] (para 0044 and 0065-0086). Figs. 1-3 teach the cooling system having: an “air-cooler” (i.e. claimed “air temperature control unit”) [4] configured to generate conditioned air (para 0031 and 0047); a “blowing portion” (i.e. claimed “supply duct”) [41a] configured to output at least a portion of the conditioned air via directions [D1],[D2] by the air temperature control unit [4] along sides of an interior of at least the inverter cabinet [71]-[73] of the container [5] (para 0048, 0066-0069, and 0081-0086); the inverter cabinet inlet configured to draw in the conditioned air via direction [D1] to the inverter cabinet [71]-[73] (para 0065-0066 and 0081-0086); a “guide plate” (i.e. claimed “at least one baffle”) [7] capable of reducing a flow of air, including the conditioned air, via direction [D2] from the air temperature control unit [4] and to distribute the conditioned air to the interior of the container [5] and to the inverter cabinet [71]-[73] via the inverter cabinet inlet via at least directions [D1],[D2] (para 0047-0049, 0059-0063, and 0069-0088); the inverter exhaust duct configured to output heated air from the inverter cabinet [71]-[73] and capable of circulating at least a portion of the heated air along an upper surface of the interior of the container [5] (such as approximate to details [511],[523], and/or [52] in at least figs. 2-3) in a direction towards the at least one baffle [7], wherein the heated air having absorbed heat from the inverter [31] (para 0047-0049 and 0081-0084); and a return duct via direction [D9] configured to draw in heated air from the energy storage units [21] of the racks [20A],[20B] and output by the inverter exhaust duct via direction [D8] to return the heated air to the air temperature control unit [4] (para 0081-0086).
With respect to claims 16 and 22, Okazaki further discloses in figs. 2-3 the at least one baffle [7] comprises a “first portion” [71] “constituted as a flat plate disposed in a horizontal plane” (i.e. [71] is the claimed “horizontal baffle”) and a “second portion” [72] “inclined with an upward gradient” (i.e. [72] is the claimed “vertical baffle”) (para 0063-0067, 0072, and 0081-0084), wherein the conditioned air is circulated along the sides of the container [5] via direction [D5] from the vertical baffle [72] (para 0072 and 0081-0083).
Claim Rejections - 35 USC § 103
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.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Goldman et al (US 12,322,776) as applied to claims 2 and 16 above, and further in view of Kwon (US 7,017,361).
With respect to claims 3 and 4, the reference is cited as discussed for claim 2.
However Goldman is limited in that the at least one horizontal and vertical baffles having perforations or mesh are not suggested.
Kwon teaches a cooling system for batteries that uses air circulation (Abstract), similar to the energy storage assembly and air circulation of Goldman. Kwon further teaches providing a “mesh assembly including a plurality of holes mounted within the air duct” (e.g. claimed “perforations” in a duct, channel, and/or manifold) (Abstract; col. 2, lines 42-45), wherein figs. 1-2 depict the mesh assembly (i.e. perforations) [24] spanning an entire diameter (e.g. upper and lower portions) of the air duct (col. 2, lines 31-45). Kwon cites the advantage of the mesh assembly as effectively reducing condensation (col. 1, lines 58-61).
It would have been obvious to one of ordinary skill in the art to incorporate the mesh assembly (i.e. perforations) spanning upper and lower portions of a duct as taught by Kwon for each of the at least one horizontal and vertical baffles of Goldman to gain the advantage of effectively reducing condensation.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Goldman et al (US 12,322,776) as applied to claim 1 above, and further in view of Siracki et al (US 8,325,478).
With respect to claims 5-7, the reference is cited as discussed for claim 1.
However Goldman is limited in that while the exhaust duct of the inverter directs at least a portion of the heated air towards the at least one baffle (i.e. the Manifold and/or Side Channels) via Heat Sink (figs. 13 and 15C; col. 12, lines 6-67; col. 13, lines 1-14 and 58-67; col. 14, lines 61), the exhaust duct having an opening that is angled upwards is not suggested.
Siracki teaches a cooling duct attachment for an “inverter section” (i.e. inverter cabinet) housing a heat sink (Abstract), similar to the inverter cabinet and heat sink of Goldman. Siracki further depicts in figs. 4 and 6 the inverter section comprises an “inverter duct” (i.e. exhaust duct) [66] that exhausts air via air flow [108] to channels [112],[114] (col. 7, lines 3-38; col. 10, lines 28-46), wherein fig. 6 depicts the exhaust duct [66] has ‘channels’ (i.e. claimed “opening”) [104],[106] that is angled relative to horizontal and vertical axes (col. 10, lines 28-65). Fig. 6 further depicts the opening [104],[106] having a width that appears approximately three times greater than a height, with it being held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04, IV, A). In this case, the opening [104],[106] would function similarly to exhaust air from the exhaust duct [66] of the inverter section regardless of having the width be three times greater than the height, or the width being the claimed “at least 340 mm” and the height being the claimed “at least 80 mm”. Siracki cites the advantage of the opening [104],[106] being angled relative to the horizontal and vertical axes as optimizing a sealing between walls of the exhaust duct [66] (col. 10, lines 53-65).
It would have been obvious to one of ordinary skill in the art to incorporate the opening of the exhaust duct being angled as taught by Siracki for the exhaust duct of Goldman to gain the advantage of optimizing sealing between walls of the exhaust duct.
Claims 17-18 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Okazaki et al (US 2023/0006283) as applied to claim 16 and 22 above, and further in view of Kwon (US 7,017,361).
With respect to claims 17-18 and 23-24, the reference is cited as discussed for claims 16 and 22.
However Okazaki is limited in that the horizontal and vertical baffles [71],[72] having perforations or mesh are not suggested.
Kwon teaches a cooling system for batteries that uses air circulation (Abstract), similar to the energy storage assembly and cooling system of Okazaki. Kwon further teaches providing a “mesh assembly including a plurality of holes mounted within the air duct” (e.g. claimed “perforations” in a duct, channel, and/or manifold) (Abstract; col. 2, lines 42-45), wherein figs. 1-2 depict the mesh assembly (i.e. perforations) [24] spanning an entire diameter (e.g. upper and lower portions) of the air duct (col. 2, lines 31-45). Kwon cites the advantage of the mesh assembly as effectively reducing condensation (col. 1, lines 58-61).
It would have been obvious to one of ordinary skill in the art to incorporate the mesh assembly (i.e. perforations) spanning upper and lower portions of a duct as taught by Kwon for each of the horizontal and vertical baffles of Okazaki to gain the advantage of effectively reducing condensation.
Claims 19-20 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Okazaki et al (US 2023/0006283) as applied to claims 16 and 21 above, and further in view of Siracki et al (US 8,325,478).
With respect to claims 19-20 and 25-27, the reference is cited as discussed for claims 16 and 21.
However Okazaki is limited in that while the inverter exhaust duct of the inverter cabinet [71]-[73] directs at least a portion of the heated air towards the upper surface of the interior of the container [5] to the horizontal baffle [71] via directions [D8],[D9],[D1] (figs. 2-3; para 0081-0086), the inverter exhaust duct having an opening that is angled upwards is not suggested.
Siracki teaches a cooling duct attachment for an “inverter section” (i.e. inverter cabinet) (Abstract), similar to the inverter cabinet [71]-[73] of Okazaki. Siracki further depicts in figs. 4 and 6 the inverter section comprises an “inverter duct” (i.e. exhaust duct) [66] that exhausts air via air flow [108] to channels [112],[114] (col. 7, lines 3-38; col. 10, lines 28-46), wherein fig. 6 depicts the exhaust duct [66] has ‘channels’ (i.e. claimed “opening”) [104],[106] that is angled relative to horizontal and vertical axes (col. 10, lines 28-65). Fig. 6 further depicts the opening [104],[106] having a width that appears approximately three times greater than a height, with it being held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04, IV, A). In this case, the opening [104],[106] would function similarly to exhaust air from the exhaust duct [66] of the inverter section regardless of having the width be three times greater than the height, or the width being the claimed “at least 340 mm” and the height being the claimed “at least 80 mm”. Siracki cites the advantage of the opening [104],[106] being angled relative to the horizontal and vertical axes as optimizing a sealing between walls of the exhaust duct [66] (col. 10, lines 53-65).
It would have been obvious to one of ordinary skill in the art to incorporate the opening of the exhaust duct being angled as taught by Siracki for the inverter exhaust duct of Okazaki to gain the advantage of optimizing sealing between walls of the exhaust duct.
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 1-7 and 15-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 15-20 of U.S. Patent No. 12,646,768. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the US Patent are narrower in scope than the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-7 and 15-20 of the US Patent would also meet the requirements set forth in claims 1-7 and 15-27 of the current invention.
Response to Arguments
Applicant’s Remarks on p. 1-6 filed 6/24/2026 are addressed below.
112 Rejections
Claims 5 and 6 have each been amended to clarify “at least a portion of the heated air” as is consistent with amended claim 1; the previous 112(b) rejections have been withdrawn.
Claim 15 has been amended to clarify the “plurality of energy storage units”; the previous 112(b) rejection has been withdrawn.
Claim 15 has been amended to clarify the various instances of “air”; the previous 112(b) rejection has been withdrawn.
Claim 19 has been amended to clarify “the heated air”; the previous 112(b) rejection has been withdrawn.
102 Rejections
On p. 2-4, Applicant argues that Goldman does not teach as recited by amended claim 1: 1) “the inverter cabinet having an inverter cabinet inlet and an inverter exhaust duct”; and 2) “an exhaust duct that outputs air from the inverter cabinet towards a baffle”.
The Examiner respectfully disagrees.
Regarding 1), Goldman teaches in fig. 1 an embodiment of an inverter [102] within an inverter cabinet, with fig. 13 showing the inverter cabinet and inverter [102] to be interchangeable with the inverter [1304] of fig. 13 (col. 12, lines 6-30); fig. 13 shows the inverter [1304] (and thus the inverter cabinet of fig. 1) having an exhaust duct and inlet approximate to the detail [1304] (col. 12, lines 6-67; col. 13, lines 1-14 and 58-67; col. 14, lines 20-61).
Regarding 2), claim 1 does not recite this limitation.
Applicant’s arguments on p. 4-5 with respect to claim 15 have been considered but are moot because the arguments do not apply to the new reference Okazaki being applied in the current rejection.
103 Rejections
All other arguments on p. 5 to associated dependent claims are directed towards the subject matter addressed in the 102 Rejections above and therefore have been addressed accordingly.
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 MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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