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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/29/2025 has been entered.
Response to Arguments
Applicant's arguments filed 4/29/2025 have been fully considered but they are not persuasive.
Applicant argues that the figures of Nguyen et al. (US 20100134974) do not disclose at least one ultracapacitor that contacts a perimeter of an opening.
It is submitted that Nguyen et al. disclose in fig. 2-6 and [0045] ultracapacitors are rested on annular flanges (380) of a top enclosure member (280). The ultracapacitors (150) would contact the outer perimeter of the openings (390).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the at least one ultracapacitor is in direct contact with the interior diameter of the opening, or the at least one ultracapacitor comprises a housing wherein the housing passes through the at least one individual opening) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that elements (280, 430) and elements (290, 420) do not enclose the ultracapacitor elements.
It is submitted fig. 2 shows ultracapacitor elements that are enclosed in at least elements (280 – top enclosure member) and element (290 – bottom enclosure member).
Applicant is encourage to contact the examiner to discuss possible amendments to overcome the current rejection of record. The examiner can normally be reached Monday-Friday, 6:00 AM-2:30 PM.
Claim Rejections - 35 USC § 102
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.
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) 28-31, 33-34, 36, 38-39, 41, 43, 45-46, 49-54 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nguyen et al. (US 2010/0134974).
PNG
media_image1.png
309
439
media_image1.png
Greyscale
PNG
media_image2.png
118
362
media_image2.png
Greyscale
Regarding claim 28, Nguyen et al. disclose an ultracapacitor module (fig. 6A-6B, 7) comprising: an enclosure (280, 290; or 420, 430) including a top enclosure member (280, 430) and a bottom enclosure member (290, 420), connected to each other via at least one interlocking mechanism (bolt / fastener @ 310, [0039], [0045]), and a plurality of ultracapacitors (150) housed within the enclosure (280, 290, or 420,430), wherein at least one of the top enclosure member (280, 430) and the bottom enclosure member (290, 420) includes at least one individual opening through which at least one ultracapacitor (150) is provided, further wherein the at least one opening has a diameter (see fig. 6A-6B), the ultracapacitor has a diameter, the diameter of the least one individual opening is smaller than the diameter of ultracapacitor (see fig. 6A-6B) wherein the at least one ultracapacitor (150) contacts the perimeter of such opening (at least the outside perimeter (rim), fig. 6A-6B, fig. 7).
Regarding claim 29, Nguyen et al. disclose the top enclosure member (280, 430) and bottom enclosure member (290, 420) are connected to each other via at least two interlocking mechanisms (@310, [0045]) along each side surface of the enclosure.
Regarding claim 30, Nguyen et al. disclose both the top enclosure member (280) and the bottom enclosure member (290) include at least one individual opening through which the at least one ultracapacitor (150) is provided.
Regarding claim 31, Nguyen et al. disclose each of the ultracapacitors (150) of the plurality of ultracapacitors is provided through an individual opening in at least one of the top enclosure member (280) and the bottom enclosure member (290).
Regarding claim 33, Nguyen et al. disclose the ultracapacitors (150) include external terminals (240 and opposite 240) on opposing ends of the ultracapacitors (150).
Regarding claim 34, Nguyen et al. disclose adjacent ultracapacitors (150) are electrically connected to each other using an interconnect (270).
Regarding claim 36, Nguyen et al. disclose the interconnect (270) includes a hole for receiving a fastener (see fig. 10).
Regarding claim 38, Nguyen et al. disclose the enclosure includes a first cover layer (190 or 460) on the top surface, the bottom surface (200), or both of the ultracapacitor module.
Regarding claim 39, Nguyen et al. disclose the first cover layer (460) includes holes, wherein a fastener (470) connects the first cover layer (460) to an interconnect (170) electrically connecting adjacent ultracapacitors (150).
Regarding claim 41, Nguyen et al. disclose the first cover layer (460) is secured to respective top enclosure member (280)or bottom enclosure member using a fastener (470 – [0048]).
Regarding claim 43, Nguyen et al. disclose a second cover layer (200 or 460) is provided on the first cover layer (190).
Regarding claim 45, Nguyen et al. disclose the second cover layer (460) includes an interlocking mechanism (470) for interlocking with the bottom enclosure member (290).
Regarding claim 46, Nguyen et al. disclose the second cover layer (460) is secured to the bottom enclosure member using a fastener (470).
Regarding claim 49, Nguyen et al. disclose the ultracapacitor module satisfies one or more of the following conditions upon being subjected to a vibration profile in accordance with ISO 16750-3- 2012, Table 12 and IEC 60068-2-64: a capacitance within a rated capacitance value as determined in accordance IEC 62391-1, Method 1A, an equivalent series resistance within a rated equivalent series resistance value as determined in accordance IEC 62391-1, a leakage current within a rated leakage current value as determined in accordance IEC 62391-1, an operating voltage with a rated operating voltage value.
Claim 49 recites a feature that has to be certified with specialized testing equipment, not at the disposal of the Office. However, as noted in the rejection of claim 28 above, the Nguyen et al. reference teaches the claimed ultracapacitor module.
When the structure recited in the references is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. MPEP 2112.01 I states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.). See also In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (Claim 1 was directed to a parachute canopy having concentric circumferential panels radially separated from each other by radially extending tie lines. The panels were separated "such that the critical velocity of each successively larger panel will be less than the critical velocity of the previous panel, whereby said parachute will sequentially open and thus gradually decelerate." The court found that the claim was anticipated by Menget. Menget taught a parachute having three circumferential panels separated by tie lines. The court upheld the rejection finding that applicant had failed to show that Menget did not possess the functional characteristics of the claims.); Northam Warren Corp. v. D. F. Newfield Co., 7 F. Supp. 773, 22 USPQ 313 (E.D.N.Y. 1934) (A patent to a pencil for cleaning fingernails was held invalid because a pencil of the same structure for writing was found in the prior art.).
Regarding claims 50-51, Nguyen et al. disclose the claimed invention.
While Nguyen et al. do not specifically state that “one or more of the conditions is satisfied after subjecting the ultracapacitor module to the vibration profile in two different orientations” nor “one or more of the conditions is satisfied after subjecting the ultracapacitor module to the vibration profile in three different orientations”, it is understood to be an inherent feature. (when the structure recited in the references is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent)
Regarding claim 52, Nguyen et al. disclose the ultracapacitor module can be used in a transportation vehicle [0008]-[0009].
Regarding claim 53, Nguyen et al. disclose the claimed invention. The limitation, “a robot incorporating the ultracapacitor of module of claim 28” is an intended use for the ultracapacitor module. lt has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding claim 54, Nguyen et al. disclose the at least one ultracapacitor directly contacts the perimeter (outside perimeter of the at least one opening).
Claim Rejections - 35 USC § 103
6. 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.
7. 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US 2010/0134974) in view of Geshi et al. (WO 2021/039551).
Regarding claim 32, Nguyen et al. disclose the claimed invention except for an example where the perimeter of the opening includes an adhesive such that the ultracapacitor contacts the adhesive (Nguyen et al. — [0054]).
Geshi et al. disclose an adhesive (13) that is applied between a holding portion(11) and a capacitor (50, 51).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to form the device of Nguyen et al. so that perimeter of the opening (holding portion) includes an adhesive such that the ultracapacitor contacts the adhesive, since such a modification would further increase the adhesion between the enclosure and at least one ultracapacitor.
Claim(s) 35, 37, 40, 42, 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US 2010/0134974) in view of Thrap et al. (US 2006/0203429).
Regarding claim 35, Nguyen et al. disclose the claimed invention except for the interconnect is laser welded to the ultracapacitor.
Thrap discloses an ultracapacitor module that comprises ultracapacitors (1405), wherein the ultracapacitors are connected to each other using an interconnect (1410), wherein the interconnect is welded to the ultracapacitor [0154].
It would have been obvious to a person of ordinary skill in the ultracapacitor interconnect art to weld the interconnect to the ultracapacitor, since such a modification would further secure the ultracapacitors together.
The limitation, “laser welded” is directed to the method of forming the device. The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Regarding claim 37, Nguyen et al. disclose the claimed invention except for an adhesive is proved between the interconnect and the ultracapacitor.
Thrap et al. disclose an ultracapacitor module that comprises ultracapacitors (1405);
wherein the ultracapacitors are connected to each other using an interconnect (1410); and
an adhesive [0154] is provided between the interconnect (1410) and the ultracapacitor.
It would have been obvious to a person of ordinary skill in the ultracapacitor interconnect art to form an adhesive between the interconnect and the ultracapacitor, since such a modification would further secure the ultracapacitors together.
Regarding claim 40, Nguyen et al. disclose the claimed invention except for the first cover layer is a circuit board including a balancing circuit.
Thrap et al. disclose an ultracapacitor module comprising a first cover (2670), wherein the first cover is a circuit board with a balancing circuit.
It would have been obvious of a person of ordinary skill the art before the effective filing dale of the invention to form the ultracapacitor module of Nguyen using a cover layer which is a circuit board with a balancing circuit, since such a modification would form an ultracapacitor module where the voltages across the ultracapacitors are balanced.
Regarding claim 42, Nguyen et al. disclose the claimed invention except for an adhesive that is provided along the perimeter of the first cover layer such that the adhesive is present between the first cover layer and the top enclosure member.
Thrap et al. disclose an ultracapacitor comprising an adhesive [0149] that is provided along the perimeter of a first cover layer such that the adhesive is present between the first caver layer (2670) and the top enclosure member [0149].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to form an adhesive that is provided along the perimeter of the first cover layer such that the adhesive is present between the first cover layer and the loo enclosure member, since such a modification would secure the top enclosure member to the first cover layer.
Regarding claim 44, Nguyen et al. disclose the claimed invention except for the second cover layer includes at least one strengthening member.
Thrap et al. disclose a cover layer (1635) that includes at least one strengthening member (see fig. 16 ~ side portion).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to form the capacitor of Nguyen et al. so that the second cover layer includes at least one strengthening member, since such a modification would further support the ultracapacitors.
Regarding claim 47, Nguyen et al disclose the claimed invention except for a cushioning member is present between the ultracapacitors and the second cover layer.
Thrap et al. disclose a cushioning member ([0149] – TC100U) is present between the ultracapacitors (1405) and the second cover layer (1635).
It would have been obvious to a person of ordinary skill in the art before the effective filing dale of the invention to form a cushioning member that is present between the ultracapacitors and the second cover layer, since such a modification would further stabilize the components within the module.
Claim(s) 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US 2010/0134974) in view of applicant’s admitted prior art (AAPA).
Regarding claim 48, Nguyen et al. disclose the enclosure member include side enclosure member (see fig. 2).
Nguyen et al. disclose the claimed invention except for the side enclosure member is formed from a metal material.
AAPA teaches that metal enclosures are well known in the art.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to form the side enclosure member of Nguyen et al. from a metal material, since such a modification would form a ultracapacitor housing having excellent heat dissipation and increased durability (protection against physical impact).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC THOMAS whose telephone number is (571)272-1985. The examiner can normally be reached Monday-Friday, 6:00 AM-2:30 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, Timothy Dole can be reached at 571-272-2229. 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.
/ERIC W THOMAS/Primary Examiner, Art Unit 2848
ERIC THOMAS
Primary Examiner
Art Unit 2848