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 . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The rejection of claims 1 and 6-10 under 35 U.S.C. § 112(b) as being indefinite is withdrawn because Applicant amended claims 1 and 6-10.
Claim Rejections - 35 USC § 101
The rejection of claims 1 and 6-10 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is withdrawn because Applicant amended claims 1 and 6-10.
Claim Rejections - 35 USC § 103
The rejection of claims 1-10 under 35 U.S.C. § 103 as being unpatentable over Hulse et al. (US 2020/0205318 A1), hereinafter “Hulse,” is maintained as set forth below.
Regarding claim 1, Hulse discloses a method of regulating a battery’s temperature comprising:
immersing the energy storage cells, in this case the electronic device (¶ [0142], Fig. 2A, ref. 10), in a heat-transfer composition in a liquid state (¶ [0146], Fig. 2A, ref. no. 11A);
wherein the heat-transfer composition, in this case a thermal management fluid (¶ [0092]), comprises from more than 0% to 40% by weight of a halogenated hydrocarbon refrigerant, in this case at least 15% by weight of 1-trifluoromethyl-1,2,2-trifluorocyclobutane (TFMCB) (¶ [0007] & [0111]); and
from 60% to less than 100% by weight of a dielectric fluid, in this case a heat transfer co-fluid selected from HFE-7000, HFE-7200, HFE-7100, HFE-7300, HFE-7500, HFE-7600, trans-1,2-dichloroethylene, n-pentane, cyclopentane, methanol, ethanol, perfluoro(2-methyl-3-pentanone), cis-HFO-1336mzz, trans-HFO-1336mzz, HF-1234yf, HFO-1234ze(E), HFO-1233zd(E), and HFO-1233zd(Z) that would make up the balance of the whole fluid (¶ [0067] & [0111]);
wherein the battery comprising energy storage cells is immersed in the heat-transfer composition in the liquid state such that the heat-transfer composition does not undergo change of state, in this case the thermal management fluid enters a battery pack enclosure containing a number of cells and exits the enclosure having taken up heat from the battery pack (¶ [0154]; See Fig. 4).
Hulse does not specify that the refrigerant is 1-chloro-3,3,3-trifluoropropene1 (R1233zd(E)). However, Hulse does teach that R1233zd(E) performs similarly to and may be used in lieu of TFMCB (see ¶ [0232]-[0234], Table 1). One having ordinary skill in the art would have understood that substituting R1233zd(E) for TFMCB would have yielded the predictable result of providing adequate cooling of the battery. See M.P.E.P. § 2143 I. B. Therefore, it would have been obvious to have substituted R1233zd(E) for TFMCB in order to yield the predictable result of providing adequate cooling.
Hulse does not specify that that the refrigerant is greater than 0% to 40% by weight of the composition and that the dielectric fluid is 60% to less than 100% by weight of the composition. However, a prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art. M.P.E.P. § 2144.05. Hulse teaches overlapping ranges as discussed above. Furthermore, Hulse further provides performance data for TFMCB and R1233cd(E) including thermal efficiency (¶ [0232]-[0234], Table 1), heat transfer and pressure drop (¶ [0235]-0238], Table 2), thermodynamic performance (¶ [0239]-[0263], Tables 3-11), and miscibility (¶ [0264]-[0266]). Given the provided performance data available in Hulse, one having ordinary skill in the art would have been able to determine the workable loading of the refrigerant necessary to provide the desired cooling through routine experimentation. Therefore, it would have been obvious to have provided a composition comprising the refrigerant and dielectric fluid within the claimed ranges.
Regarding claim 2, Hulse further discloses that the heat-transfer composition circulates in a heat-transfer circuit, in this case the thermal management fluid enters a battery pack enclosure containing a number of cells and exits the enclosure having taken up heat from the battery pack (¶ [0154]; see Fig. 4).
Regarding claim 3, Hulse further discloses that the battery comprises one or more modules each comprising an enclosure in which energy storage cells are arranged where the enclosures form part of the heat-transfer circuit, in this case the thermal management fluid flows through the enclosure that holds a plurality of battery cells (¶ [0154]; see Fig. 4).
Regarding claim 4, Hulse further discloses that the heat-transfer circuit is thermally coupled to a secondary circuit containing an additional transfer composition, in this case a cool liquid may flow to and from an enclosed heat sink (¶ [0149]; Fig. 2B, ref. nos. 40A, 40B, 45, & 46).
Regarding claim 5, Hulse further discloses that the secondar circuit may be an air conditioning circuit of a vehicle (¶ [0211]).
Regarding claim 6, Hulse does not specify that the refrigerant is 1-chloro-3,3,3-trifluoropropene2 (R1233zd(E)). However, Hulse does teach that R1233zd(E) performs similarly to and may be used in lieu of TFMCB (see ¶ [0232]-[0234], Table 1). One having ordinary skill in the art would have understood that substituting R1233zd(E) for TFMCB would have yielded the predictable result of providing adequate cooling of the battery. See M.P.E.P. § 2143 I. B. Therefore, it would have been obvious to have substituted R1233zd(E) for TFMCB in order to yield the predictable result of providing adequate cooling
Regarding claim 7, Hulse further discloses that the dielectric fluid is chosen from mineral dielectric oils and synthetic dielectric oils, in this case HFE-7000, HFE-7200, HFE-7100, HFE-7300, HFE-7500, HFE-7600, trans-1,2-dichloroethylene, n-pentane, cyclopentane, methanol, ethanol, perfluoro(2-methyl-3-pentanone), cis-HFO-1336mzz, trans-HFO-1336mzz, HF-1234yf, HFO-1234ze(E), HFO-1233zd(E), and HFO-1233zd(Z) that would make up the balance of the whole fluid (¶ [0067] & [0111]).
Regarding claim 8, Hulse further discloses cooling the battery, in this case the thermal management fluid enters a battery pack enclosure containing a number of cells and exits the enclosure having taken up heat from the battery pack (¶ [0154]; see Fig. 4).
Regarding claim 9, Hulse further discloses an electric vehicle (e.g. ¶ [0003]).
Regarding claim 10, Hulse further discloses cooling during charging (¶ [0004] & [0235]).
Double Patenting
The provisional nonstatutory double patenting rejection of claims 1-10 over claims 1-9 of copending Application No. 18/246,560 is withdrawn because Applicant filed a terminal disclaimer.
Response to Arguments
Applicant’s arguments filed April 2, 2026 with regards to the claim rejections under 35 U.S.C. §§ 101 and 112(b) and the provisional non-statutory double patenting rejection are moot because the rejections have been withdrawn.
Applicant's arguments filed April 2, 2026 with regards to the claim rejections under 35 U.S.C. § 103 have been fully considered but they are not persuasive. Applicant argues that the claimed method is not taught by Hulse. The Office disagrees.
In response to Applicant’s argument, Hulse explicitly discloses that the heat transfer fluid is used in conjunction with a dielectric co-fluid (¶ [0067] & [0111]). Furthermore, Hulse teaches that R1233zd(E) may be substituted for TFMCB as discussed in the rejection of claim 1, above. Lastly, Hulse does not merely set forth broad loading ranges of TFMCB as Applicant alleges. Rather, Hulse explicitly recites performance data of this cooling fluid, which would have allowed one having ordinary skill in the art to determine the workable loadings of TFMCB and its substitutes within the disclosed ranges necessary to provide the desired battery cooling through routine experimentation, also as discussed in the rejection of claim 1. Therefore, Applicant’s arguments are unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 SCOTT J CHMIELECKI whose telephone number is (571)272-7641. The examiner can normally be reached M-F 9 am to 5 pm.
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/SCOTT J. CHMIELECKI/Primary Examiner, Art Unit 1729
1 Also known as R1233zd(E) as evidenced by Liu et al. (US 2022/0107138 A1) ¶ [0211].
2 Also known as R1233zd(E) as evidenced by Liu et al. (US 2022/0107138 A1) ¶ [0211].
Prosecution Insights