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 . 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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10, in the reply filed on December 8, 2025, is acknowledged. Claims 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim.
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 1-10 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.
Claims 1 and 6-10 are indefinite because they merely recite a use of a heat-transfer composition without any active, positive steps delimiting how this use is actually practiced. See M.P.E.P. § 2173.05(q). Particularly, claims 1, 6, and 7 recite the fluid Applicant intends to “use” and the location of the battery relative to the fluid; claims 8 and 10 recite when Applicant intends to implement the “use”; and claim 9 recites the object of the intended “use.” None of these claims recite any limitations drawn to how the recited materials are actually used. It is thus unclear if Applicant is claiming a method for cooling a battery, a composition for cooling a battery, or something else entirely. Therefore, claims 1 and 6-10 are indefinite.
Claim Rejections - 35 USC § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 6-10 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because it is unclear if Applicant is claiming a method for cooling a battery, a composition for cooling a battery, or something else entirely. In other words, the claims do not appear to fall within one of the statutory classes set forth under 35 U.S.C. § 101. See M.P.E.P. § 2173.05(q) I.
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 1-10 are rejected under 35 U.S.C. § 103 as being unpatentable over Hulse et al. (US 2020/0205318 A1), hereinafter “Hulse.”
Regarding claim 1, Hulse discloses a method of regulating a battery’s temperature comprising:
using a heat-transfer composition, in this case a thermal management fluid (¶ [0092]), comprising 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 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. 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 teaches that the refrigerant may further comprise 1,2-dichloroethylene in E form, in this case trans-1,2-dichloroethylene (¶ [0067]). Hulse does not specify either the E or Z form of 1,2-dichloroethylene. However, given that there are only two forms, again E and Z, of 1,2-dichloroethylene, one having ordinary skill in the art would have found it obvious to try the E form of 1,2-dichloroethylene with the reasonable expectation of providing heat transfer away from the battery. See M.P.E.P. § 2143 I. E. Therefore, it would have been obvious to have include the E form of 1,2-dichloroethylene.
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 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 claims because the examined application claim is either anticipated by, or would have been obvious over, the reference claims. 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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/246,560 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed ranges of the refrigerant significantly overlap. Particularly, the instant application recites “more than 0% to 40% by weight of a refrigerant comprising a compound chosen from halogenated hydrocarbons, prehalogenated compounds, fluorinated ketones, fluorinated ethers and the combinations thereof, and from 60% to less than 100% by weight of a dielectric fluid” in claim 1 while copending Application No. 18/246,560 recites “20% to less than 100% by weight of a refrigerant comprising a compound chosen from halogenated hydrocarbons, prehalogenated compounds, fluorinated ketones, fluorinated ethers and also their combinations, and from more than 0% to 80% by weight of a dielectric fluid” in claim 1. Applicant is reminded that 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. Here, the copending applications are obvious variants of each other because of the overlap in the claimed ranges.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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.
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, Ula Ruddock can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SCOTT J. CHMIELECKI/Primary Examiner, Art Unit 1729