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 1-18 are pending and presented for examination on the merit.
Claim Objections
Claim 11 is objected to because “(CF)” and “cPs” in line 10 should be changed to “(cP)” and “cP” respectively. 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 1-18 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. Independent claim 1 recites a viscosity range and a bonding shear strength and bonding tensile strength range and independent claim 11 recites a viscosity range and working life for the thermally conductive adhesive without specifying the measurement methods and conditions. These claims thus do not clearly define the invention because properties including viscosity, bonding shear strength, and bonding tensile strength change according to temperature and other measurement parameters. The same applies to dependent claims that recite properties. Claims 2-10 and 12-18 are rejected for depending on the indefinite claims 1 and 11. For examination purposes, these properties are considered in light of the specification, for example, paragraphs [0046] and [0053].
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.
Claims 11, 17, and 18 are rejected under 35 U.S.C. 103(a) as obvious over US 2012/0263988 to Obasih et al.
Regarding claim 11, the instant claim is a product-by-process claim and a product-by-product claim is 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 process of applying and curing a thermally conductive adhesive results in a cured thermally conductive adhesive at the interface between the plurality of electrochemical cells and the heat sink. The claimed properties of viscosity and working life are lost after curing. The claimed battery module is considered to comprise a plurality of electrochemical cells secured to a heat sink coupled to a housing of the battery module by a cured thermally conductive adhesive, wherein the heat sink extends in at least one direction to an outermost dimension of the housing.
Obasih et al. teaches a battery module comprising: a plurality of electrochemical cells 88 secured to a heat sink coupled to a housing 28 (Fig. 3; [0030-32]), lower housing 94 (Fig. 4; [0041]; [0046]), housing 154 or brackets 188 (Figs. 7-9; [0060]; [0066]; [0067]) of the battery module by a thermally conductive adhesive, the adhesive being a thermal conducting paste, resin, or epoxy in place of the thermal conducting pad 90 in Fig. 4, wherein the heat sink is a heat transferring bottom of housing and/or heat sink 92 and extends in at least one direction to an outermost dimension of the housing (Figs. 3, 4, and 7-9; [0005]; [0006]; [0030-32]; [0041]; [0046]; [0060]; [0064-67]).
Obasih et al. does not expressly teach a cured thermally conductive adhesive.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention, because Obasih et al. teaches that the adhesive at the interface between the electrochemical cells and the heat sink may be a thermally conducting epoxy ([0064-66]) and the epoxy adhesive would have been cured for use. The skilled artisan would have obtained expected results applying a known adhesive to a known product.
Regarding claim 17, a thickness of the thermally conductive adhesive along the interface would have been substantially uniform after curing because the plurality of electrochemical cells is uniformly applied and adhered to the heat sink as suggested by Figs. 4, 7, and 9 of Obasih et al.
Regarding claim 18, the instant limitation refers to a property of the adhesive before curing. However, the property is lost after curing so it does not structurally define the product. The prior art thermally conductive adhesive adheres the plurality of electrochemical cells to the heat sink uniformly as suggested by Figs. 4, 7, and 9 of Obasih et al., the structure of which would be indistinguishable from the claimed product having a self-leveling adhesive.
Claims 1-4, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0263988 to Obasih et al., in view of US 2010/0059179 to Tribelhorn et al.
Claims 12, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Obasih et al. as applied to claim 11 above, in view of US 2010/0059179 to Tribelhorn et al.
Regarding claim 1, the limitation regarding viscosity of the adhesive before curing does not structurally define the claimed battery module because the viscosity property is lost after curing. However, since the prior art happens to teach this limitation, the rejection is written in parallel to the claim for convenience.
Obasih et al. teaches a battery module 186 comprising:
a housing, e.g. housing 28 (Fig. 3; [0030-32]), lower housing 94 (Fig. 4; [0041]; [0046]), housing 154 or brackets 188 (Figs. 7-9; [0060]; [0066]; [0067]), comprising a first material, e.g. a metal such as aluminum, an alloy such as an aluminum alloy, steel, or any other suitable material ([0032]);
an electrochemical cell 98 disposed in the housing, the electrochemical cell comprising a first cell surface having electrode terminals and a second cell surface substantially opposite the first cell surface as seen in Fig. 5;
a heat sink 92 integral with a portion of the housing (Figs. 4 and 7-9; [0041]; [0066]; [0067]) and comprising a second material different from the first material selected from a metal such as aluminum (or aluminum alloy), copper (or copper alloy) or steel (e.g. sheet steel) ([0032]; [0072]), the heat sink having a heat sink surface facing the second cell surface (Figs. 5 and 7-9); and
a thermally conductive adhesive configured to bond the second cell surface and the heat sink surface, e.g., a thermal conducting paste, resin, or epoxy in place of a gap pad or thermal conducting pad 90 ([0064]; [0065]).
Obasih et al. does not expressly teach the thermally conductive adhesive comprising: a viscosity of between approximately 40,000 centipoise (cP) and approximately 50,000 cP before curing; and a bonding shear strength and bonding tensile strength between the electrochemical cell and the heat sink of between approximately 5 megapascals (MPa) and 50 MPa.
Tribelhorn et al. also relates to an adhesive and teaches that a mixed two-part composition prior to cure have a viscosity of about 10 Pa.S (10,000 centipoises) or greater, more preferably about 20 Pa.S (20,000 centipoises) or greater and most preferably about 40 Pa.S (40,000 centipoises) or greater ([0057]). Further, Tribelhorn et al. teaches that the polymerizable adhesive system preferably exhibits a tensile strength after complete cure of about 5 MPa or greater, more preferably about 10 MPa or greater and most preferably about 15 MPa or greater. The polymerizable adhesive system preferably exhibits a lap shear strength after complete cure of about 5 MPa or greater, more preferably about 10 MPa or greater and most preferably about 15 MPa or greater, wherein the lap shear strength is determined according to DIN 53283 ([0063]).
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 an adhesive such as that of Tribelhorn et al. in the battery module of Obasih et al., motivated by the fact that Tribelhorn et al. teaches that the adhesive is especially useful for bonding metal to metal ([0033]) and bonds directly to the substrate surface without a primer layer ([0021]). The skilled artisan would have obtained expected results applying a known adhesive to a known product. Regarding the numerical ranges, a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05[R-5].
Regarding claim 4, Obasih et al. teaches that the portion of the housing is a base portion disposed substantially opposite an opening of the housing (Figs. 4, 7, and 8).
Regarding claim 7, the instant limitation refers to a property of the adhesive before curing. However, the property is lost after curing so it does not structurally define the product. The prior art thermally conductive adhesive adheres the plurality of electrochemical cells to the heat sink uniformly as suggested by Figs. 4, 7, and 9 of Obasih et al., the structure of which would be indistinguishable from the claimed product having a self-leveling adhesive.
Regarding claim 8, the instant claim refers to a property of the adhesive before curing. However, the property is lost after curing so it does not structurally define the product. The prior art thermally conductive adhesive adheres the plurality of electrochemical cells to the heat sink uniformly as suggested by Figs. 4, 7, and 9 of Obasih et al., the structure of which would be indistinguishable from the claimed product with an adhesive having the claimed working life.
Regarding claim 12, Obasih et al. does not expressly teach that the thermally conductive adhesive has a metal-to-metal bonding shear strength and bonding tensile strength between approximately 5 megapascals (MPa) and approximately 50 MPa.
Tribelhorn et al. also relates to an epoxy adhesive ([0006]; [0029]) and teaches that a mixed two-part composition prior to cure have a viscosity of about 10 Pa.S (10,000 centipoises) or greater, more preferably about 20 Pa.S (20,000 centipoises) or greater and most preferably about 40 Pa.S (40,000 centipoises) or greater ([0057]). Further, Tribelhorn et al. teaches that Preferably, the curable adhesive system is formulated to provide an open time (working life) of at least about 3 minutes or greater and more preferably about 5 minutes or greater ([0060]) and that the polymerizable adhesive system preferably exhibits a tensile strength after complete cure of about 5 MPa or greater, more preferably about 10 MPa or greater and most preferably about 15 MPa or greater. The polymerizable adhesive system preferably exhibits a lap shear strength after complete cure of about 5 MPa or greater, more preferably about 10 MPa or greater and most preferably about 15 MPa or greater, wherein the lap shear strength is determined according to DIN 53283 ([0063]).
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 an adhesive such as that of Tribelhorn et al. in the battery module of Obasih et al., motivated by the fact that Obasih et al. teaches using a thermally conductive conducting paste, resin, or epoxy in place of the thermal conducting pad 90 in Fig. 4 ([0065]) and Tribelhorn et al. teaches that the epoxy-based adhesive is especially useful for bonding metal to metal ([0033]) and bonds directly to the substrate surface without a primer layer ([0021]). The skilled artisan would have obtained expected results applying a known adhesive to a known product. Regarding the numerical ranges, a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05[R-5].
Regarding claims 2, 3, 14 and 15, Tribelhorn et al. teaches that the two-part adhesive comprises a mixture of an epoxy resin component and a hardener component including the curative ([0029]) at a common mix ratios of, for example, 1:1 ([0056]).
Claims 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Obasih et al. as applied to claim 11 above, in view of “3M Thermally Conductive Epoxy Adhesive TC-2707” published online in August 2014, hereinafter 3M (provided by Applicant).
Regarding claims 13-16, Obasih et al. teaches using a thermally conductive conducting paste, resin, or epoxy in place of the thermal conducting pad 90 in Fig. 4 ([0065]), but does not teach the claimed properties or composition of the thermally conductive adhesive.
3M also relates to a curable thermally conductive epoxy adhesive and teaches that thermally conductive epoxy adhesive TC-2707 is a two-component system comprising an epoxy resin and a hardener, e.g. an epoxy base and an amine accelerator, at a ratio of, e.g. 2:1 epoxy resin to hardener (“Typical Uncured Properties” on Page 1) per claims 14 and 15. Further, the thermally conductive epoxy adhesive TC-2707 has a thermal conductivity of 0.72 W/m-K per claim 13 and a hardness of approximately 84 Shore D per claim 16 (“Typical Cured Properties” on Page 2).
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 a thermally conductive adhesive such as that of 3M in the battery module of Obasih et al., motivated by the fact that the skilled artisan would have looked into the prior arts for a known thermally conductive adhesive and would have chosen the 3M product that has high adhesive strength, good surface wet out, low viscosity for potting application, good gap filling, thin bonding line, good thermally conductivity (0.72 W/m-K), and low CI ion content and outgassing (“Product Description” and “Features and Benefits” on Page 1).
Regarding claim 17, a thickness of the thermally conductive adhesive along the interface would have been substantially uniform after curing because the plurality of electrochemical cells is uniformly applied and adhered to the heat sink as suggested by Figs. 4, 7, and 9 of Obasih et al.
Regarding claim 18, the instant limitation refers to a property of the adhesive before curing. However, the property is lost after curing so it does not structurally define the product. The prior art thermally conductive adhesive adheres the plurality of electrochemical cells to the heat sink uniformly as suggested by Figs. 4, 7, and 9 of Obasih et al., the structure of which would be indistinguishable from the claimed product.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Obasih et al. and Tribelhorn et al. as applied to claim 1 above, in view of US 2005/0061429 to Hosaka.
Regarding claim 5, Obasih et al. does not expressly teach that the thermally conductive adhesive comprises a radiation-activated epoxy resin.
Hosaka also relates to an adhesive and teaches a photocurable adhesive comprising an epoxy compound, the adhesive activated by irradiation with UV rays or visible light (abstract; [0009]; [0019]; [0067]; [0069]; [0070]; [0078-81]).
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 a radiation-activated epoxy resin in the battery module of Obasih et al., motivated by the fact that Obasih et al. teaches that the adhesive at the interface between the electrochemical cells and the heat sink may be epoxy ([0064]; [0065]) and Hosaka demonstrates a known radiation-activated epoxy-containing adhesive (abstract; [0009]; [0019]; [0067]; [0069]; [0070]; [0078-81]). The skilled artisan would have obtained expected results substituting one adhesive for another.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Obasih et al. and Tribelhorn et al. as applied to claim 1 above, in view of US 2013/0337310 to Omura et al. (cited by Applicant).
Regarding claim 10, Obasih et al. teaches an additional electrochemical cell disposed in the housing, wherein the additional electrochemical cell comprises a third cell surface having electrode terminals and a fourth cell surface substantially opposite the third cell surface as the battery module 186 comprises a plurality of electrochemical cells 98 (Fig. 9).
Obasih et al. does not expressly teach that a gap is formed between the electrochemical cell and the additional electrochemical cell in the housing, and wherein the thermally conductive adhesive extends into the gap such that the thermally conductive adhesive is configured to conform to the electrochemical cell and the additional electrochemical cell to compensate for variability in dimensions of the electrochemical cell and the additional electrochemical cell.
Omura et al. also relates to a battery module comprising 10 a plurality of electrochemical cells 30 and teaches an intervening layer 80 formed of a cold-curing adhesive agent including epoxy resin, for example ([0044]), arranged between cell stack 20 and heat dissipating member 70, wherein the intervening layer 80 has heat conductivity ([0046]) and extends into a gap between the electrochemical cells such that the thermally conductive adhesive is configured to conform to the electrochemical cells to compensate for variability in dimensions of the electrochemical cell and the additional electrochemical cell (Figs. 1, 2, 6A, and 6B; [0059]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed structure in the battery module of Obasih et al., motivated by the fact that Omura et al. demonstrates that the thermally conductive adhesive or intervening layer 80 suppresses a relative displacement between the cell stack 20 and the heat dissipating member 70, reduces the risk of collision of the cell stack 20 and the heat dissipating member 70 even if vibration occurs in the cell module 10 due to an external factor, in addition to providing improved heat dissipation performance of the cell stack 20 by means of the heat dissipating member 70. As a result, such an arrangement suppresses the occurrence of damage at the cell stack 20, thereby providing the cell module 10 with a long service life. Furthermore, such an arrangement is capable of relaxing vibrations propagating from the heat dissipating member 70 to the cell stack 20. Thus, such an arrangement prevents damage of the cells 30 ([0060]).
Allowable Subject Matter
Claims 6 and 9 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. The instant claims are directed to the thermal conductivity and hardness of the thermally conductive adhesive. No prior art was found to teach the combination of properties as recited in claim 1 and the respective dependent claims.
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 11, 13, 16, 14, 15, 18, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, and 8 of U.S. Patent No. 10,700,317 in view of US 2012/0263988 to Obasih et al. Claim 1 of the conflicting patent recites a process comprising: applying a thermally conductive adhesive to an interface between an electrochemical cells and a heat sink, wherein the thermally conductive adhesive comprises a viscosity of between approximately 40,000 centipoise (cP) and approximately 50,000 cP and a working life of between approximately 1 hour and approximately 3 hours, and curing the thermally conductive adhesive to secure the plurality of electrochemical cells to the heat sink at the interface. This process results in a battery module comprising the electrochemical cell secured to the heat sink coupled to the housing of the battery module. As seen in Obsih et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a plurality of electrochemical cells in the battery module and secured the plurality of electrochemical cells to a heat sink that extends in at least one direction to an outermost dimension of the housing (Figs. 3, 4, and 7-9; [0005]; [0006]; [0030-32]; [0041]; [0046]; [0060]; [0064-67]). The resulting battery module meets claim 11 of the present invention.
The subject matters of claims 2-5, 7, and 8 of the conflicting patent essentially match those in claims 13, 16, 14, 15, 18, and 12 of the instant application, respectively.
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
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725