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.
Specification
The specification and drawings have been reviewed and no clear informalities or objections have been noted.
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 6-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-10 of copending Application No. 18/292737 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to near identical metallic plates that are utilized in batteries. The difference between the reference applicant and the instant application is merely a mode of using the claimed plate (cover vs cooling plate) and one of ordinary skill in the art, given the corrosion benefits of the instantly claimed plate, would have been motivated to utilize the plate in other areas of the battery, including the cover to prevent corrosion.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choi (US 2004/0018316).
Regarding claims 6 and 7, Choi discloses a cooling system of battery pack comprising (this preamble is directed to an intended use of the claimed apparatus and does not further limit the claim, see MPEP §2111.02):
a metallic coated steel sheet including a steel sheet and a metallic coating, the metallic coating being based on aluminum (see abstract which discloses a steel sheet coated in an aluminum alloy comprising silicon) and including optionally silicon and unavoidable impurities (these italicized limitations, along with all limitations of claim 7, are optional and therefore do not further limit the claim).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang (KR 20140025001 A with references made to the machine translation).
Regarding claims 6 and 7, Yang discloses a cooling system of battery pack comprising (this preamble is directed to an intended use of the claimed apparatus and does not further limit the claim, see MPEP §2111.02):
a metallic coated steel sheet including a steel sheet and a metallic coating, the metallic coating being based on aluminum (see abstract which discloses a steel sheet coated in an aluminum alloy comprising silicon) and including optionally silicon and unavoidable impurities (these italicized limitations, along with all limitations of claim 7, are optional and therefore do not further limit the claim).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ArcelorMittal (Leaflet published 01/2018, http://amiresources.arcelormittal.com/strapidata/uploads/Alusi_leaflet_EN_6b663fc682.pdf).
Regarding claims 6 and 7, ArcelorMittal discloses a cooling system of battery pack comprising (this preamble is directed to an intended use of the claimed apparatus and does not further limit the claim, see MPEP §2111.02):
a metallic coated steel sheet including a steel sheet and a metallic coating, the metallic coating being based on aluminum (see leaflet intro which discloses a steel sheet coated in an aluminum alloy comprising silicon) and including optionally silicon and unavoidable impurities (these italicized limitations, along with all limitations of claim 7, are optional and therefore do not further limit the claim).
Regarding claim 8, ArcelorMittal further discloses the metallic coating has a coating thickness of 10 to 40 μm on a side in contact with a liquid coolant (see 2nd page of leaflet on the right-hand side which discloses several thicknesses of the coating that fall within this range).
Regarding claim 9, ArcelorMittal further discloses the metallic coated steel sheet has a coating weight of 50 to 200 g/m.sup.2 in total on both sides (see 2nd page of leaflet on the right-hand side which discloses several coating weights that fall within this range).
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.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang (KR 20140025001 A with references made to the machine translation).
Regarding claim 8, Yang further discloses the metallic coating has a coating thickness of the coating is between 3-10 microns on a side in contact with a liquid coolant (such a feature is directed toward a manner of operating the claimed steel sheet and does not further limit the claimed apparatus). This disclosure is not identical to the claimed range, but it does overlap the claimed range of 10-40 microns. As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Regarding limitations recited in claim 8 which are directed to a manner of operating disclosed system, neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim (in this case, stating that steel plate is in contact with a liquid does not further define the claimed steel plate but rather discloses a material that is worked upon by the steel plate). Said limitations do not differentiate apparatus claims from prior art. See MPEP §2114 and 2115. Further, process limitations do not have a patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states "Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi (US 2004/0018316).
Regarding claim 9, Choi does not explicitly teach the claimed range of the coating weight on both sides, but does teach hot dipping the plate, which will coat the steel plate on both sides and teaches a coating weight (20-300 g/m-2, see paragraph 26) which overlaps the claimed range. As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi (US 2004/0018316) in view of Weber (US 2011/016820).
Regarding claim 10, Choi teaches a coated steel sheet that exhibits excellent corrosion resistance in high temperature service (see abstract). Choi, however, does not teach a battery pack which includes the aluminum coated plate.
Weber also discloses a steel coated sheet (paragraph 24).
Weber teaches utilizing the coated steel as a cooling plate due to its corrosion resistance (see paragraph 24).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to combine the coated steel sheet of Choi with the battery pack cooling plate of Weber in order to take advantage of the corrosion resistance of Choi in a battery pack.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable by ArcelorMittal (Leaflet published 01/2018, http://amiresources.arcelormittal.com/strapidata/uploads/Alusi_leaflet_EN_6b663fc682.pdf) in view of Weber (US 2011/016820).
Regarding claim 10, ArcelorMittal teaches a coated steel sheet that exhibits excellent corrosion resistance in high temperature service (see leaflet) and teaches utilizing the coated plate in heat exchange service (see bottom of 2nd page). ArcelorMittal, however, does not teach a battery pack which includes the aluminum coated plate.
Weber also discloses a steel coated sheet (paragraph 24).
Weber teaches utilizing the coated steel as a cooling plate due to its corrosion resistance (see paragraph 24).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to combine the coated steel sheet of ArcelorMittal with the battery pack cooling plate of Weber in order to take advantage of the corrosion resistance of ArcelorMittal in a battery pack and utilize its effectiveness in heat exchange.
Relevant Prior Art
US 2017/0331086 - Discloses an aluminum/silicon coating on steel (paragraph 39), similar to that of the instant invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J MERKLING whose telephone number is (571)272-9813. The examiner can normally be reached Monday - Thursday 8am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW J MERKLING/ Primary Examiner, Art Unit 1725
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