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 .
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 & 4-14 of U.S. Application No. 17/279,903, claims 1 & 3-17 of U.S. Application No. 18/486,673, claims 1-10 of U.S. Application No. 18/437,778, and claims 1-8 of U.S. Application No. 18/437,848. Although the claims at issue are not identical, they are not patentably distinct from each other because they substantially overlap all the claim limitations of U.S. Application No. 17/279,903, U.S. Application No. 18/486,673, U.S. Application No. 18/437,778, and U.S. Application No. 18/437,848.
Claim Rejections - 35 USC § 103
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Jin et al. (KR 20170135476 A – cited in and machine translation provide in IDS filed on 09 February 2024) in view of Nakajima et al. (JP 2018206605 A – cited in and machine translation provide in IDS filed on 09 February 2024).
Regarding claim 1 Jin discloses a battery apparatus (1, battery pack) comprising:
a plurality of battery cells (10 or 30, battery module; Fig. 9 shows a plurality of 10) comprising a first cell (first 200), a second cell (second 200), and a third cell (third 200); and
a first structure (first 500, buffer pad) interposed between the first cell (first 200) and the second cell (second 200),
wherein the first structure (first 500) comprises a first layer (560, elastic layer) contacting the first cell (first 200), a second layer (540, elastic layer) contacting the second cell (second 200), and an intervening layer (520) interposed between the first layer (560) and the second layer (540; annotated Figs. 6-7 show first 500 comprising 540, 560, and 520 that are interposed between first 200 and second 200 such that 560 contacting first 200, 540 contacting second 200, and 520 interposed between 560 & 540);
wherein the intervening layer (520) comprises a heat-expansive material (phase change material) capable of absorbing heat from inside the battery apparatus (1) and is configured to minimize heat transfer between the first cell (first 200) and the second cell (second 200; [0046]-[0048], & [0067] regarding phase change material absorbs heat from 200 and cause phase change at a predetermined temperature),
wherein the first layer (560) comprises a first material (first elastic material) other than the heat-expansive material (phase change material), and the second layer (540) comprises a second material (second elastic material) other than the heat-expansive material (phase change material).
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Figure 1 is annotated Figs 6 & 7 of Jin
but Jin does not directly disclose wherein the intervening layer comprises a heat-expansive material capable of expanding in response to heat from inside the battery apparatus.
However, Jin does teach compressing by swelling, wherein the swelling occurs by the generated gas ([0005] regarding swelling phenomenon). Jin further teaches the first layer and second layer (buffer pads) with high thermal conductivity ([0008] regarding cooling structure to remove heat generated during charging and discharging process of battery; [0014]-[0015] regarding controlling temperature).
Instant Specification states the first layer and second layer (121, swelling absorption pads) may be made of a material with elasticity, and may include, for example, at least one of expanded polypropylene and urethane (Pg. 10 Lines 4-6).
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. See MPEP 2112.01.
Therefore, the limitation “wherein the intervening layer comprises a heat-expansive material capable of expanding in response to heat from inside the battery apparatus” is presumed to be inherent.
Additionally, Nakajima discloses a battery module (10), comprising:
at least one composite (1) includes:
an intervening layer (2, endothermic material layer; [0029]-[0031] regarding 2 can contain at least one type of matrix resin selected from epoxy resin, poly(1-)butene resin, and polyvinyl chloride resin), wherein the intervening layer (2) comprises a heat-expansive material ([0039]-[0040] & [0050] regarding expandable material) capable of expanding in response to heat from inside the battery apparatus ([0050] regarding material expands when heated).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the intervening layer material of Jin to the intervening layer material of Nakajima, in order to suppress the heat transfer between the battery cells to ensure safety.
Regarding claim 2, modified Jin further discloses the battery apparatus of claim 1, wherein the first and second materials (first and second elastic materials) are the same ([0042] & [0067] regarding material containing a soft elastic material such as polyurethane or ethylene propylene diene monomer).
Regarding claim 3, modified Jin further discloses the battery apparatus of claim 1, wherein each of the first and second materials (first and second elastic material) is an elastic material ([0042] & [0067] regarding material containing a soft elastic material such as polyurethane or ethylene propylene diene monomer).
Regarding claim 4, modified Jin further discloses the battery apparatus of claim 1, further comprising a second structure (second 500) interposed between the second cell (second 200) and the third cell (third 300), wherein the second structure (second 500) comprises a third layer (second 560) comprising a third material (third elastic material) other than the heat-expansive material (phase change material).
Regarding claim 5, modified Jin further discloses the battery apparatus of claim 4, wherein the first, second and third materials (first, second, and third elastic materials) are the same ([0042] & [0067] regarding material containing a soft elastic material such as polyurethane or ethylene propylene diene monomer).
Regarding claim 6, modified Jin further discloses the battery apparatus of claim 4, wherein at least one of the first, second and third materials (first, second, and third elastic materials) is an elastic material ([0042] & [0067] regarding material containing a soft elastic material such as polyurethane or ethylene propylene diene monomer).
Regarding claim 7, modified Jin further discloses the battery apparatus of claim 1, further comprising a second structure (second 500) interposed between the second cell (second 200) and the third cell (third 200), wherein the second structure (second 500) comprises a heat-shielding layer (phase change material) configured to shield transfer of heat between the second cell (second 200) and the third cell (third 200; [0046]-[0048], & [0067] regarding phase change material absorbs heat from 200 and cause phase change at a predetermined temperature).
Regarding claim 8, modified Jin further discloses the battery apparatus of claim 1, but does not directly disclose wherein the intervening layer is configured to maintain a gap between and minimize heat transfer between the first cell and the second.
However, Jin does teach compressing by swelling, wherein the swelling occurs by the generated gas ([0005] regarding swelling phenomenon). Jin further teaches the first layer and second layer (buffer pads) with high thermal conductivity ([0008] regarding cooling structure to remove heat generated during charging and discharging process of battery; [0014]-[0015] regarding controlling temperature).
Instant Specification states the first layer and second layer (121, swelling absorption pads) may be made of a material with elasticity, and may include, for example, at least one of expanded polypropylene and urethane (Pg. 10 Lines 4-6).
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. See MPEP 2112.01.
Therefore, the limitation “wherein the intervening layer is configured to maintain a gap between and minimize heat transfer between the first cell and the second” is presumed to be inherent.
Regarding claim 9, modified Jin further discloses the battery apparatus of claim 1, wherein each of the first layer (560) and the second layer (540) comprises a shrinkable material ([0042] & [0067] regarding material containing a soft elastic material such as polyurethane or ethylene propylene diene monomer) configured to be damaged to shrink (compress; [0069] regarding compression of 540 & 560 by swelling of battery cell),
but Jin does not directly disclose wherein a shrinkable material configured to be damaged to shrink when exposed to a temperature higher than a critical temperature ranging between 100° C and 300° C such that thickness of at least one of the first layer and the second layer becomes almost zero when exposed to a temperature higher than the critical temperature for an extended period of time.
However, Jin does teach compressing by swelling, wherein the swelling occurs by the generated gas ([0005] regarding swelling phenomenon). Jin further teaches the first layer and second layer (buffer pads) with high thermal conductivity ([0008] regarding cooling structure to remove heat generated during charging and discharging process of battery; [0014]-[0015] regarding controlling temperature).
Instant Specification states the first layer and second layer (121, swelling absorption pads) may be made of a material with elasticity, and may include, for example, at least one of expanded polypropylene and urethane (Pg. 10 Lines 4-6).
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. See MPEP 2112.01.
Therefore, the limitation “wherein a shrinkable material configured to be damaged to shrink when exposed to a temperature higher than a critical temperature ranging between 100° C and 300° C such that thickness of at least one of the first layer and the second layer becomes almost zero when exposed to a temperature higher than the critical temperature for an extended period of time” is presumed to be inherent.
Response to Arguments
Applicant's arguments filed 5/15/2025 have been fully considered but they are not persuasive.
Applicant argues that the examiner did not establish the inherency of the limitation “wherein the intervening layer comprises a heat expansive material capable of expanding in response to heat from inside the battery apparatus” because the non-final action does not provide discussion of the structure being provided by identical or substantially identical processes.
This argument is unpersuasive. The limitation at issue is a property of the material itself, not the structure, and the properties or conditions of the expansion are not quantified. The examiner notes that the materials identified by Jin, such as paraffin, have a positive coefficient of thermal expansion, and thus are capable of expanding in response to head”, and thus the breadth of claim 1 is provided by the combination above.
Applicant additionally argues that the proposed modification would defeat Jin’s purpose. This is also unpersuasive, as the combination is presented to show suitable materials for a multilayer buffer structure, and the selection of know materials is within the ambit of one of ordinary skill in the art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW T MARTIN whose telephone number is (571)270-7871. The examiner can normally be reached 9:30-6:00.
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/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728