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 .
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-5, 7, 10-11 and 14-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tennessen et al. (US 20110206969 A1).
Regarding claim 1, Tennessen, drawn to battery cooling system, discloses a battery system for a vehicle (para 29), the battery system comprising a battery module (para 33, “battery subsystem 107”) and a cooling system (claim 1, “cooling manifold assembly”), wherein the battery module comprises a battery unit with one or more battery cell (claim 1), and wherein the cooling system comprises: a cooling circuit comprising tubing (claim 1, “coolant tube”) capable of distributing a cooling fluid and cooling of the one or more battery cell, the tubing comprising a battery cooling section (claim 1, “coolant channel”) routed along the battery unit, and one or more heat conduction elements (claim 1, “thermal interface layer 703”) arranged to at least partially wrap around the battery cooling section and be in contact with at least a portion of the battery unit (fig. 9 and 10).
Regarding claim 2, Tennessen discloses the cooling system comprises a heat exchanger (para 51 “radiator 1603”) arranged in the cooling circuit downstream from the battery cooling section (fig 16).
Regarding claim 4, Tennessen discloses heat conduction element arranged to extend along a first surface of the battery unit (see annotated fig. 10 below).
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Regarding claim 5, Tennessen discloses one or more heat conduction elements are arranged adjacent to the first surface of the battery unit (fig.10) and the one or more heat conduction elements are arranged to be in contact with a surface of the battery cooling section facing away from the first surface of the battery unit such that the tubing is arranged between the battery unit and the one or more heat conduction elements (see annotated fig. 10 below).
Regarding claim 7, Tennessen discloses the battery module comprises a battery housing adapted to accommodate the battery unit (para 38).
Regarding claim 10, Tennessen discloses heat conduction element (“thermal interface layer”) comprises alumina (para 49).
Regarding claim 11, Tennessen discloses battery cooling section comprises a meandering tube portion or labyrinth tube portion routed along the battery unit (fig 2).
Regarding claim 14, Tennessen discloses a pump arranged in the cooling circuit, the pump being capable of controlling the flow of the cooling fluid through the cooling circuit (para 51; fig 10).
Regarding claim 15, Tennessen discloses a vehicle comprising a battery system according to claim 1 (claim 19).
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.
Claim(s) 3, 6 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tennessen et al. (US 20110206969 A1), as applied to claim 1, 4 and 7 above, and further in view of Yoon (US 2012009455 A1).
Regarding claim 3, Tennessen discloses heat conduction element (“pliable fingers”) interposed between the cooling tubes and the battery unit (Abstract).
Tennessen does not explicitly disclose heat conduction elements are arranged to wrap around at least a portion of the battery unit.
Yoon, also drawn to battery cooling system, discloses heat conduction elements (fig 2, “heat conductive sheets 123”) arranged to wrap around at least a portion of the battery unit (fig. 2). It would have obvious to one of ordinary skill in the art, before the effective filing date of the invention, to arrange heat conduction elements to wrap around at least a portion of the battery unit as taught by Yoon as doing such efficiently dissipates heat generated by the batteries (para 108).
Regarding claim 6, Tennessen discloses the battery unit has a second and third surface arranged opposite to each other and extending in a direction substantially orthogonal to the first surface (see annotated fig.10 above). Tennessen does not explicitly disclose one or more heat conduction elements are arranged to extend along and be in contact with the second and/or third surface.
Yoon discloses second and third surface arranged opposite to each other and extending in a direction substantially orthogonal to the first surface and one or more heat conduction elements (para 55, “heat-conductive sheets 123“) are arranged to extend along and be in contact with the second and/or third surface (fig. 2). It would have obvious to one of ordinary skill in the art, before the effective filing date of the invention, to arrange heat conduction elements to extend along and be in contact with the second and/or third surface as taught by Yoon as doing such efficiently dissipates heat generated by the batteries (para 108).
Regarding claim 8, Tennessen discloses a battery housing (para 38) but does not explicitly disclose one or more heat conduction elements are arranged to be in contact with the battery housing for dissipating heat from the battery unit to said battery housing.
Yoon discloses one or more heat conduction elements (heat conductive sheets 123) are arranged to be “in close contact or thermal co-operation with an exterior of the bottom 121a of the housing” (para 55). It would have obvious to one of ordinary skill in the art, before the effective filing date of the invention, to arrange heat conduction elements to be in contact with the battery housing such that heat conduction elements are capable of dissipating heat from the battery unit to said battery housing as taught by Yoon as doing such efficiently dissipates heat generated by the batteries (para 108).
Regarding claim 9, Tennessen fails to disclose one or more heat conduction elements are provided as a film or a foil. Yoon discloses heat-conductive sheets 123 with “a thickness of about 0.1 mm to about 1 mm” (para 54). Accordingly, Yoon discloses one or more heat conduction elements provided as a film or a foil. It would have obvious to one of ordinary skill in the art, before the effective filing date of the invention, to provide one or more heat conduction elements as a film or a foil as taught by Yoon as heat generated in the battery cells may be effectively radiated or dissipated without an excessive increase in overall volume of the battery module (para 54).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tennessen et al. (US 20110206969 A1), as applied to claim 7 above, and further in view of Hirano et al. (WO 2011105256 A1).
Regarding claim 12, Tennessen fails to disclose the battery unit is at least partially submerged in a cooling liquid inside the battery housing.
Hirano, also drawn to battery cooling, discloses battery cell “immersed in the insulating coolant (para 7). It would have obvious to one of ordinary skill in the art, before the effective filing date of the invention, to at least partially submerge battery unit in a cooling liquid inside the battery housing as taught by Hirano “to maintain the battery cell at a substantially uniform temperature” (para 7).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tennessen et al. (US 20110206969 A1), as applied to claim 1 above, and further in view of Zhu et al. (US 20220117116 A1).
Regarding claim 13, Tennessen discloses the cooling system “may be completely passive” (para 51) but does not explicitly disclose the cooling system forms a heat pipe cooling system, wherein the tubing has an inner wick structure for causing flow of the cooling fluid by means of capillary force.
Zhu, drawn to thermal management system for battery, discloses management system with heat pipes in thermal contact with battery packs to draw heat from batteries and heat sinks to dissipate heat away from the heat pipes (Abstract). Accordingly, Zhu discloses the cooling system forms a heat pipe cooling system. Zhu further discloses the heat pipes have inner wick structure capable of causing flow of the cooling fluid by means of capillary force (para 3). It would have obvious to one of ordinary skill in the art, before the effective filing date of the invention, for the cooling system of Tennessen to form a heat pipe cooling system, wherein the tubing has an inner wick structure capable of causing flow of the cooling fluid by means of capillary force as taught by Zhu as doing such maintains appropriate temperatures within the battery system” (para 3).
Response to Arguments
Applicant's arguments filed 8/24/2026 have been fully considered but they are not persuasive.
On page 7 of the Remarks, the applicant argues “Tennessen fails to disclose the structural relationship required by the final element of Claim 1”. Applicant points out a POSITA “would understand "arranged to...wrap around" to require a separate component capable of being positioned around another structure, not an inseparable coating applied during manufacturing”. This argument is not persuasive because it is not commensurate with the scope of the claim. The claim does not require the heat conduction elements to be a “a separate component capable of being positioned around another structure”. The over molded thermal interface layer 703 disclosed by Tennessen satisfies the limitation as its structure extends around at least partially wraps around the battery cooling section.
The applicant subsequently contends that the limitations of claim 9 recites that "the one or more heat conduction elements are provided as a film or a foil" which demonstrates the heat conduction elements are “a distinct, transferable article of manufacture”. This argument is not persuasive because the application is examined under claim-by-claim basis. The limitations recited in dependent claim 9 is not imported into independent claim 1 absent a basis in claim language or specification.
On page 8 of the Remarks, the applicant argues the heat conduction elements “do not encircle, loop, or wrap around the circumference of the cooling tube”; “covers only flat side surfaces; [and] it does not traverse around the tube” and thus, Tennessen’s “geometry does not satisfy the "at least partially wrap around" requirement”. This argument is not persuasive because it is not commensurate with the scope of the claim. The claim does not require the heat conduction elements to be “wrap around the circumference”, “traverse around the tube” or other limitations states in the remarks. The present claims require partially wrapping around, which is interpreted by the examiner to be one surface, absent further quantification in the claims. Accordingly, the rejection is maintained.
On page 9 of the Remarks, the applicant disagrees the heat conduction elements disclosed by Tennessen does not contact the battery unit. The applicant states “the same heat conduction element must both (a) "wrap around the battery cooling section" and (b) "be in contact with...the battery unit" and “Tennessen's over molded layer cannot satisfy both requirements because it is fused to the tube surface and its fingers merely project outward to touch the cells”. This argument is not persuasive because Tennessen discloses battery unit comprises plurality of battery cells (claim 1). Tennessen also discloses the thermal interface elements contact plurality of battery cells (fig. 10). This satisfies the claimed requirement that the heat conduction elements contact “at least a portion of the battery unit”. Accordingly, the rejection is maintained.
On page 10 of the Remarks, regarding rejection of claims 3,6 and 8-9 under 35 U.S.C §103 over Yoon, the applicant argues the references describe structurally incompatible thermal management architectures. The applicant states “Tennessen and Yoon address fundamentally different battery geometries and employ incompatible heat-transfer mechanisms”. The applicant add that “Tennessen's system is designed for cylindrical cells” whereas “Yoon's system is designed for prismatic, flat-sided cells”. This argument is not persuasive because Yoon discloses the “the embodiments are applicable to various types of batteries, e.g., a lithium polymer battery and/or a cylindrical battery” (para 50). Additionally, Yoon is not relied upon for teaching heat conducting elements wrapped around cooling tube.
The applicant argues “Yoon does not teach wrapping” and states “bending a single bottom tab to touch a housing floor is not "wrapping" around a cooling tube and a battery unit”. This argument is not persuasive because the claim requires heat conduction elements “arranged to wrap around at least a portion of the battery unit” and “bending the single bottom tab” as alleged, wraps a portion of the battery unit. Thus, the rejection is maintained.
On page 11 of the Remarks, the applicant argues “POSITA would have no motivation to combine these teachings because doing so would undermine the operational principles of both references”. The applicant states “if one attempted to wrap Yoon's flat sheets around Tennessen's wavy tube, the resulting assembly would create insulating air gaps at every curve and corrugation of the tube, eliminating the conformal contact that Tennessen's design requires”. This argument is not persuasive. As stated above, Yoon discloses cylindrical cell geometry. Additionally, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Furthermore, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, teaching, suggestion, or motivation to combine is disclosed by the reference. Accordingly, the rejection is maintained.
On page 12 of the Remarks, regarding rejection of claim 12 under 35 U.S.C §103 over Hirano, the applicant argues “Hirano does not disclose, teach, or suggest a discrete heat conduction element-let alone one that is "arranged to at least partially wrap around the battery cooling section and be in contact with at least a portion of the battery unit" as required by Claim 1”. This argument is not persuasive because it is not germane to the basis of the rejection. Hirano is not relied upon to teach heat conduction element. As such, the rejection is maintained.
Regarding rejection of claim 12 under 35 U.S.C §103 over Zhu, the applicant states “Zhu discloses a flat, planar heat pipe array configured for prismatic battery packs” which is “structurally incompatible with Tennessen's wavy, three-dimensional cooling tube 701 designed to nest between rows of cylindrical cells”. This argument is not persuasive because Zhu does not limit the heat-pipe cooling to prismatic battery cells. The applicant also argues “A POSITA would have no reason to substitute Zhu's flat heat-pipe array for Tennessen's wavy tube, because doing so would eliminate the geometric nesting that enables Tennessen's packing-density advantage and would require a complete redesign of the battery module architecture “. This argument is not persuasive because it is not germane to the basis of the rejection. The cooling system of Tennessen is not being substituted. Rather, the principles of the teachings of Zhu is relied upon to modify the cooling system of Tennessen. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Concludingly, the applicant argues “Zhu does not disclose a separate heat conduction element that wraps around a cooling section and contacts a battery unit”. As stated above, this argument is not persuasive because Zhu is not relied upon to teach heat conduction element.
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.
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/A.K./Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
