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 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.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is: configured to in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 1-9 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.
Regarding claim 1 the claim limitation “configured to” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
The specification does not set forth a volume expansion the material has to be configured to expand until. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Furthermore, the recitation of "the region" in the 4th line is indefinite. Proceeding the recitation of region, no region of channel has been set forth. Furthermore, the specification does not provide sufficient detail to construe what “region” is referring to in regards to the channel. For purposes of examination "the region of the channel" is construed to mean any part of the channel, regardless of size, shape, or orientation.
Claims 2 – 9 are rejected for virtue of dependency from claim 1, thus including the subject matter at issue noted above and for failing to solve the identified reasons for the parent claim’s rejection(s). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirement.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-2 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Soukhojak et al. (US 9,151,545 B2, hereafter “Soukhojak”) in further view of Soukhojak et al. (US 2009/0250189 A1, hereafter “Soukhojak ‘189”). Langheim (US 2012/20315518 A1; “Langheim”) is further included as an evidentiary reference.
Regarding claim 1, Soukhojak disclose an apparatus for cooling a battery [see e.g. battery temperature regulating device in col. 11 ln. 57], wherein the apparatus comprises:
a body comprising (i) [see e.g. thermal energy storage material compartments in col. 11 ln. 60].
a surface upon which a battery cell of the battery can be cooled, (ii) [see e.g. electrochemical cell compartment in col. 12 ln. 19 and see e.g. area of contact in col. 12 ln. 20].
a channel for channeling a cooling medium, [see e.g. heat transfer fluid compartment in col. 11 ln. 65-66].
wherein the channel is open at least in sections towards the surface [see e.g. a portion of the space between the heat transfer fluid compartment and the electrochemical cell compartment 22 is substantially or entirely free of thermal energy storage material in col. 11 ln. 61-62].
and (iii) a material at least in the region of the channel, [see e.g. thermal energy storage material compartment in col. 11 ln. 60-61].
Soukhojak does not explicitly disclose which material is configured to expand at least in sections into the channel and up to the battery cell when a temperature of the material lies above a limit value.
Soukhojak references Soukhojak ‘189 in col. 9 ln. 55-57. Soukhojak ‘189 discloses the composition of the thermal energy storage material compartment of Soukhojak and states the thermal energy storage compartments can have a volume expansion of 10% to increase the amount of heat storage [see e.g. volume of the capsules to increase by at least about 10% (e.g. at least about 15%, or even at least about 20%) without opening the capsule in Par. 56]. Since no volume expansion is set forth for the structure in claim 1, for purposes of examination the limitation is satisfied with any volume expansion.
While Soukhojak ‘189 does not explicitly disclose a temperature at which this volume expansion would take place, the motivation for allowing the capsule to expand is to improve the heat transfer rate [see e.g. surfaces of the capsules which are to be in contact with any heat transfer or other working fluid may also have features which improves the rate at which heat is stored or removed from the capsules in Par. 56 of Soukhojak ‘189]. Therefore, the volume expansion is caused when the material reaches a temperature to help remove heat. This fully meets the limitation of claim 1.
Soukhojak ‘189 is in the same field of endeavor, which is thermal energy storage devices as evidenced by the abstract. See MPEP 214.01(a). Therefore, it would be prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the thermal energy storage material compartment disclosed by Soukhojak ‘189 with the arrangement set forth in Soukhojak for the purposes of improving the heat transfer rate and have a reasonable expectation of success since Soukhojak explicitly states the thermal storage compartments of Soukhojak ‘189 will work in their arrangement.
Regarding claim 2, Soukhojak additionally teaches wherein the material is thermally insulating [see e.g. typically the thermal energy storage material has a relatively low thermal conductivity in col. 5 ln. 36 - 38].
Regarding claim 3, Soukhojak additionally teaches the thermal energy storage material may include an organic material in col. 9 ln. 59 and organic compounds that may be employed include paraffins in col. 9 ln. 61. Paraffins are known electrical insulators in the battery art, as shown by evidentiary reference Langheim in Par. 48. Therefore, Soukhojak discloses wherein the material is electrically insulating.
Regarding claim 5, Soukhojak additionally teaches wherein the surface comprises the material [see e.g. The area of contact 26 between the thermal energy storage material compartment and the electrochemical cell compartment may be relatively high in col. 12 ln. 20 - 23]. Namely, Soukhojak disclose that the blister packs comprising the phase change material are on the electrochemical cell compartments.
Regarding claim 6, Soukhojak additionally teaches the thermal energy storage compartments may consist of a plurality of capsules, such a plurality of blister packs in col. 12 ln. 31-33. Furthermore, Soukhojka discloses a generally flat first surface 29 of the first blister pack and a generally flat surface 29′ of a second blister pack facing the first surface may be separated to allow a space for flowing a heat transfer fluid in col. 12 ln. 39 - 43. Namely, there is a space between electrochemical cells for a fluid to flow and blister packs that line this space, causing the blisters pack to be in continues contact with the cooling media.
Soukhojak does not disclose wherein the surface comprises a liner configured to separate the material from the cooling medium. Soukhojak ‘189 discloses one approach herein envisions a sub-assembly that includes a pair of array portions (e.g., a pair of blister packs), each having a ply having a plurality of troughs therein that carry TESM (the "trough ply") and a ply that overlies and preferably seals the trough ply (the "cover ply") in Par. 49. Namely, Soukhojak ‘189 discloses that the thermal energy storage compartments are covered in a ply, both the thermal energy storage compartment and ply make up the blister pack. Therefore, it would be prima facie obvious to one of ordinary skill in the art before the effective filing date to modify the blisters packs of Soukhojka with the blisters packs covered in a ply of Soukhojka ‘189 for the purposes of having improving the heat transfer rate.
Regarding claim 7, Soukhojak additionally teaches wherein the material is arranged between two surfaces of the body in a full surface manner or in defined regions between the surfaces [see e.g. Fig. 4]. Fig. 4 of Soukhojak shows that the blister pack arrangement is between two electrochemical cells, each with a surface, across the entire electrochemical cell.
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Figure 1: Annotated Fig. 4 from US 9,151,545 B2
Regarding claim 8, Soukhojak additionally teaches a battery [see e.g. electrochemical cell may be any art known electrochemical cell that produces electricity in col. 13 ln. 13 - 14], wherein the battery comprises the apparatus [see e.g. the electrochemical cell compartment preferably is in thermal communication with both the thermal energy storage material compartment and the heat transfer fluid compartment in col. 13 ln. 9 - 11] according to claim 1 [see 35 U.S.C. 103 rejection of claim 1] and at least one battery cell, wherein the at least one battery cell is arranged on the surface [see e.g. the electrochemical cell compartment preferably is capable of receiving or otherwise containing one or more electrochemical cells in col. 13 ln. 7 -9].
Regarding claim 9, Soukhojak additionally teaches a vehicle comprising the battery according to claim 8 [see e.g. battery temperature regulating system may be employed in a vehicle in col. 28 ln. 4 - 5].
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Soukhojak et al. (US 9,151,545 B2) in further view of Soukhojak et al. (US 2009/0250189 A1) in further view of Garg et al. (US 2021/0257689 A1; “Garg”).
Regarding claim 4, Soukhojak does not disclose wherein the material is a foam. Garg discloses the addition of aluminum foam to phase change materials for the purposes of improving thermal conductivity [see e.g. in order to improve the thermal conductivity of the phase change material (PCM), one or more thermal conductivity enhancer additives, example: carbon fibres, graphite, aluminum foam etc., are added to the phase change material (PCM) in Par. 13].
Garg discloses that increasing a phase change material thermal conductivity is advantageous because it allows the phase change material to return to a solid form quicker and thus, can improve the rate of charging [see e.g. however, due to low thermal conductivity and poor heat dissipating properties, said phase change material takes long time to regain original solid state, with a resulting difficulty in providing immediate charging to said energy storage device. in Par. 13]. Garg is in the same field of endeavor as Soukojak, which is cooling a vehicle battery as evidenced by Par. 3. See MPEP 214.01(a).
Therefore, it would be prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take the phase change material of Soukhojka (US 9,151,545 B2) and add the aluminum foam thermal conductivity enhancer additive disclosed by Garg for the purposes of improving battery charging. Thereby, creating the material of claim 1 comprising foam as asserted in claim 4.
Double Patenting
Dominik Grass and Oliver Steiner, the inventors in the instant application, have multiple co-pending applications in which they are the inventor that use similar claim language and figures as the instant application. While these co-pending applications are similar, none rise to the level of double patenting. The following is a list of co-pending applications with similar language and figures.
Schmidt et al. US 2025/0015387 A1 claims a battery cell with a cooling element.
Grass US 2024/0413456 A1 claims compression pads between battery cells in a battery assembly.
Grass US 2024/0097269 A1 claims a housing with cooling passages that are lined with an expanding material.
Grass et al. US 2024/0145812 A1 claims an apparatus for cooling a battery with a cooling plate, a channel, and a spacer element in the channel.
Dr. Ing h.c. F. Porsche Akitiengesellschaft, the applicant in the instant application, have multiple co-pending applications in which they are the assignee that use similar claim language and figures as the instant application. While these co-pending applications are similar, none rise to the level of double patenting. The following is a list of co-pending applications with similar language and figures.
Glavaski et al. US 2024/0413477 A1 claims a battery with cooling channels comprising a coolant that is converted to extinguishing foam in a triggering event.
Göhring et al. US 2024/0145818 A1 claims a battery cell with spacers for the purposes of channeling a cooling liquid.
Pertinent Prior Art
The following constitutes a list of prior art which are not relied upon herein, but are considered pertinent to the claimed invention and/or written description thereof. The prior art are purposely made of record hereinafter to facilitate compact/expedient prosecution, and consideration thereof is respectfully suggested.
US 2021/0188128 A1 Chopard et al. discloses the invention relates to a structure comprising at least one thermal management element comprising : a composite body containing at least one phase change material (PCM) in a structuring rigid matrix, so that the composite body is self-supporting regardless of the phase of the phase change material contained, and/or a plastic or metal bag, gas-tight and under partial internal vacuum, having a shape maintained by the internal vacuum, the composite body and/or the bag being shaped so as locally to present externally at least one elongated cavity which by itself defines a channel wall suitable for the circulation of a fluid.
US 2014/0093751 A1 Schaefer et al. discloses a housing assembly for a secondary battery, comprising a receiving space designed to receive at least one secondary cell, a wall designed to delimit, in particular protect, the receiving space, particularly with respect to the environment, wherein the wall comprises at least: one functional device, which is designed to enable and/or assist the release of energy from the at least one secondary cell.
US 2014/0090824 A1 Hirsch et al. discloses an apparatus for conducting a fluid, in particular a cooling fluid for cooling components to be cooled, in particular for cooling electronics components and/or battery cells and/or battery modules, having a first covering plate and a second covering plate and having a structural mesh between the two covering plates for defining a spatial region, through which flow can pass, a division being provided by reshaping of the structural mesh and/or by introduction of a sealant for at least partially sealing the spatial region with respect to an outer space and/or for dividing the spatial region into definable flow channels.
US 2009/0142628 A1 Okada et al. discloses a battery system cooled via coolant has a battery block with a plurality of rectangular batteries retained in a stacked configuration by a battery holder; a cooling plate disposed in thermal contact with the bottom surface of the battery block and having a hollow region inside; cooling pipe disposed inside the hollow region of the cooling plate; and a coolant supply device to supply coolant to the cooling pipe. The hollow cooling plate has a surface plate that makes thermal contact with the bottom surface of the battery block, and cooling pipe is disposed within the hollow region in contact with the inside of the surface plate. Further, the cooling plate hollow region is filled with plastic foam.
Conclusion
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/J.R.S./Examiner, Art Unit 1782
/AARON AUSTIN/Supervisory Patent Examiner, Art Unit 1782
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