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 .
Status of Application
Claims 1-20 are pending and presented for examination on the merit.
Claim Objections
Claim 19 is objected to because the word “a” should be inserted before “thermally” in line 3. Appropriate correction is required.
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 4-6 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. Claim 4 recites “the upper ends” and “the lower ends” in lines 4-5. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the instant claim is considered that the cell cavities each include an upper end proximate a top of the battery cells and a lower end proximate a bottom of the battery cells and the claimed upper ends and lower ends refer to the ends of the cell cavities, respectively.
Claims 5 and 6 are rejected for depending on the indefinite claim 4.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2017/0077468 to Gerundt et al.
Regarding claim 1, the instant claim recites “a preformed insert” in line 4 and that makes the claim a product-by-process claim as the term suggests that the insert is made beforehand. Product-by-product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. 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). See MPEP § 2112.01. In this case, the preformed insert is considered to be a structure disposed relative to the cell holder and the battery cells and include a potting material shaped to define a plurality of coolant channels for the battery cells.
Gerundt et al. teaches a battery module 10, comprising:
a plurality of battery cells 11 configured for storing and supplying electrical power; and
an encapsulation compound or an injection molding material (corresponding to the claimed potting material) forming a cell holder including cell module housing 14 configured for supporting the battery cells and at least one electrical insulation 12 (preformed insert) disposed relative to the cell holder and the battery cells and defining a plurality of coolant channels or cooling tubes 16 for the battery cells (Figs. 1-3; [0006-11]; [0013]; [0015]; [0016]; [0035]). The structure formed by the encapsulation compound or injection molding material of the prior art is indistinguishable from the claimed preformed insert.
Below is Fig. 3 of Gerundt et al.
PNG
media_image1.png
423
354
media_image1.png
Greyscale
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.
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 18 is rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0077468 to Gerundt et al., in view of US 2015/0207186 to Schmidt et al. and US 2011/0135975 to Fuhr et al.
Regarding claim 18, the term “a preformed insert” in line 10 makes the instant claim a product-by-process claim as the term suggests that the insert is made beforehand. Product-by-product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. In this case, the preformed insert is considered to be a structure formed of a potting material shaped to define a plurality of cell cavities and plurality of coolant channels.
Gerundt et al. teaches an energy module or battery module 10, comprising:
a plurality of energy cells or battery cells 11 configured for storing and supplying electrical power; and
an encapsulation compound or an injection molding material (corresponding to the claimed potting material) forming a cell holder including cell module housing 14 configured for supporting the battery cells and at least one electrical insulation 12 (preformed insert), defining a plurality of cell cavities for receiving the energy cells and a plurality of coolant channels or cooling tubes 16 for defining passageways for coolant (Figs. 1-3; [0006-11]; [0013]; [0015]; [0016]; [0035]). The structure formed by the encapsulation compound or injection molding material of the prior art is indistinguishable from the claimed preformed insert.
Gerundt et al. does not expressly teach a plurality of coolant channels between the cell cavities relative to the energy cells.
Schmidt et al. also relates to a battery module and teaches that the battery module 19 comprises a plurality of battery cells 10 and ducts 30 through which a temperature control fluid flows extending in walls between individual battery cells 10 (Figs. 1, 3, and 4; [0027-31]; [0036-40]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the battery module of Gerundt et al. or added a plurality of coolant channels between the cell cavities, motivated by the fact that Schmidt et al. teaches that, among other advantages, flow passes around the side surfaces of the individual battery cells, which are generally considerably larger, in particular more than four times larger, than the base surfaces of the battery cells, and making possible to remove significant heat ([0016]). The skilled artisan would have obtained expected results applying a known feature to a similar product.
Finally, Gerundt et al. teaches that the battery module is applied to a vehicle ([0015]), but does not expressly teach the claimed vehicle.
Fuhr et al. also relates to a battery module and teaches an electric vehicle (Figs. 1 and 2; [0034-39]) comprising: an electric motor 16 configured for converting electrical power to mechanical power suitable for use in propelling the vehicle (Fig. 2; [0037]); and a rechargeable energy storage system (RESS) or battery system 20 having one or more energy modules configured for storing and supplying the electrical power (Figs. 1 and 2; [0036-38]); a busbar 36 configured for electrically interconnect the energy cells (Figs. 3 and 4; [0045]); and a coolant system configured for cycling the coolant through coolant channels to facilitate conducting thermal energy away from the energy cells (Figs. 32-39; [0085]; [0088]; [0096]; [0100]; [0103]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the prior art battery module to a vehicle as demonstrated by Fuhr et al. and obtained expected results. Furthermore, the busbar would have connected to a portion of the energy cells extending beyond a top surface of the preformed insert because the terminals of the energy cells of Gerundt et al., to which busbars are conventionally connected, extend beyond the top of the preformed insert including insulations 12 as seen in Fig. 3.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Gerundt et al., Schmidt et al., and Fuhr et al. as applied to claim 18 above, in view of US 20110192564 to Mommer et al.
Regarding claim 19, the instant claim recites “the potting material is molded from thermally conductive material having a closed-cell foam structure” which makes the claim a product-by process claim. Product-by-product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. In this case, a thermally conductive material having a closed-cell foam structure is used as the potting material forming the preformed insert.
Gerundt et al. does not expressly teach that the energy cells are cylindrical shaped battery cells.
Fuhr et al. also relates to a battery module and teaches that the cells are generally cylindrical and could have other physical configurations such as prismatic or polygonal (Figs. 3 and 4; [0044]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used cylindrical shaped battery cells in the battery module of Gerundt et al., as prior arts demonstrate different physical shapes of the battery cells in the battery module and the skilled artisan would have obtained expected results using one shape or another.
Finally, Gerundt et al. teaches that polyurethane and epoxy resins are suitable as an encapsulation compound ([0015]), but does not expressly teach that the claimed thermally conductive material having a closed-cell foam structure.
Mommer et al. also relates to a thermally conductive material used in batteries for electric vehicles ([0004]; [0005]; [0054]) and teaches a foam layer made of, for example, polyurethane ([0017]; [0018]), and it can be a closed cell foam or an open cell foam ([0045]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the thermally conductive material having a closed foam structure as the potting material or encapsulation compound in the battery module of Gerundt et al., motivated by the fact that Mommer et al. teaches that the foam has a thermal conductivity of at least 0.1 W/mK and a desirable thermal stability ([0013]) and can have a desirable flexibility, compression deflection and hardness ([0046]), which makes the material useful for surrounding batteries in a typical automotive application in order to provide improved heat transfer ([0054]). The skilled artisan would have obtained expected results applying a known material to a similar product.
Allowable Subject Matter
Claims 13-17 are allowed.
Claims 2, 3, 7-12 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 4-6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: claim 13 is allowable because, while the claimed method requires a preformed insert into which a plurality of battery cells are pressed, the closest prior art to Gerundt et al. teaches encapsulating previously positioned battery cells ([0021-26]). Furthermore, the coolant channels of Gerundt et al. are below the battery cells (Fig. 3); moving or adding the claimed coolant channels interspersed relative to the cell cavities would have required substantial modifications to the prior art method. Accordingly, dependent claims 14-17 are allowable as well.
Claim 2 recites a plurality of cell cavities fluidly interconnected with the coolant channels. No prior art was found to teach this feature and modification to the applied prior arts would not have been obvious. Claims dependent on claim 2 contain this allowable subject matter.
Finally, claim 20 recites the cell cavities forming the specified shape defining the coolant channels. No prior art was found to teach this feature and modification to the applied arts would not have been obvious.
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 1, 2, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 19 of copending Application No. 18/409864 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claim 1 corresponds to the present claim 1, both requiring a battery module, comprising: a plurality of battery cells configured for storing and supplying electrical power; a cell holder configured for supporting the battery cells; and a preformed insert disposed relative to the cell holder and the battery cells, the preformed insert including a potting material shaped to define a plurality of coolant channels for the battery cells.
The conflicting claim 6 and the present claim 2 both recite that the preformed insert includes a plurality of cell cavities fluidly interconnected with the coolant channels, wherein the cell cavities are shaped within the potting material to receive a respective one of the battery cells.
The conflicting claim 19 and the present claim 18 both claim a vehicle comprising: an electric motor configured for converting electrical power to mechanical power suitable for use in propelling the vehicle; a rechargeable energy storage system (RESS) having one or more energy modules configured for storing and supplying the electrical power, wherein the energy modules respectively include: a plurality of energy cells configured for storing and supplying electrical power; a preformed insert including a potting material shaped to define a plurality of cell cavities and a plurality of cooling channels, wherein the cell cavities are configured for receiving the energy cells and the cooling channels are configured for directing a coolant flow relative to the cell cavities; and a busbar configured for electrically interconnecting the energy cells thereof, wherein the busbars respectively connect to a portion of the energy cells above the preformed insert. Further, the coolant container in parent claim 18 of the reference application corresponds to the cell holder of the present claim 18, and the immersive flow control system corresponding to the claimed coolant system of the present invention.
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 HENG M CHAN whose telephone number is (571)270-5859. The examiner can normally be reached 9 am - 5:30 pm on Monday, 9 am - 3 pm on Tuesday, and 9 am to 1 pm on Wednesday and Thursday.
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, 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.
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.
/Heng M. Chan/Examiner, Art Unit 1725
/Sean P Cullen, Ph.D./Primary Examiner, Art Unit 1725
Prosecution Insights