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 .
Election/Restrictions
Applicant’s election without traverse of Species A (noted by Applicant to be encompassed by 1-3, 5, 8-11, and 15-20) in the reply filed on 06/30/2026 is acknowledged.
The Examiner notes that claim 17 depends from claim 12, and claim 12 is not set forth to be one of the claims that is encompassed by Species A. Therefore, Species A would be encompassed by claims 1-2, 5, 8-11, 15-16, and 18-20.
Claims 4, 6-7, 12-14, and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/30/2026.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1-3, 5, 8-11, 15-16, and 18 are objected to because of the following informalities:
Claims 1-3, 8-11, 15-16, and 18 are objected to for failure to invoke full and proper antecedent basis and should correct “the regulation component” to “the cooling fluid flow regulation component” wherever it occurs. The Examiner also notes the first recitation of “a cooling fluid flow regulation component” could instead be changed to simply “a regulation component”.
Claims 1-3, 5, 16, and 18 are objected to for failure to invoke full and proper antecedent basis and should correct “the restriction component” to “the regulation component deformation restriction component” wherever it occurs. The Examiner also notes the first recitation of “a regulation component deformation restriction component” could instead be changed to simply “a restriction component”.
Claim 1 states “…allow flowing of cooling fluid and restrict a flowing direction of the cooling fluid…” when it should recite “…allow flowing of a cooling fluid and restrict a flowing direction of the cooling fluid…” for grammatical purposes.
Claim 3 states “restriction components” when it should state “restriction component” given only one “regulation component deformation restriction component” is set forth in claim 1.
Claims 8 and 10 state “regulation components” when it should state “regulation component” given only one “cooling fluid flow regulation component” is set forth in claim 1.
Claims 9 and 16 are objected to for failure to invoke full and proper antecedent basis and should correct “the inner wall” to “the inner wall of the cooling channel” wherever it occurs.
Claim 10 states “…the fixed portion of the regulation components is positioned in such a manner that a surface thereof exposed to the cooling channel is roughly flush with an inner wall around the surface”. The last recitation of “the surface” should be “said surface” to indicate that “the surface” is the “a surface thereof”.
Claim 18 states “…the restriction component and/or the regulation component comprises shape memory alloy…” when it should state “…the restriction component and/or the regulation component comprises a shape memory alloy…” for grammatical purposes.
Claim 18 states “… the cooling channel comprise a plurality of cooling channels…” when it should state “… the cooling channel comprises a plurality of cooling channels…” for grammatical purposes.
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 1-3, 8-10, 15-16, and 18, and thus their dependent claims, 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 claims 1, 2, and 15, MPEP 2181, Section III states:
“A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph may be appropriate in the following situations when examining means-plus-function claim limitations under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(1) when it is unclear whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
…
A claim may be indefinite when the 3-prong analysis for determining whether the claim limitation should be interpreted under 35 U.S.C. 112(f) is inconclusive because of ambiguous words in the claim. After taking into consideration the language in the claims, the specification, and how those of ordinary skill in the art would understand the language in the claims in light of the disclosure, the examiner should make a determination regarding whether the words in the claim recite sufficiently definite structure that performs the claimed function. If the applicant disagrees with the examiner’s interpretation of the claim limitation, the applicant has the opportunity during the examination process to present arguments, and amend the claim if needed, to clarify whether 35 U.S.C. 112(f) applies.”
Claim 1 recites in part “…a cooling fluid flow regulation component arranged inside the shell, wherein the regulation component is deformed from a first opening degree to a second opening degree when the temperature rises, or is deformed from the second opening degree to the first opening degree when the temperature drops, and the fluid flow at the first opening degree is less than the fluid flow at the second opening degree…”. Claim 2 recites in part “…wherein: the regulation component is deformed from the second opening degree to a third opening degree when the temperature rises, or is deformed from the third opening degree to the second opening degree when the temperature drops, and the fluid flow at the second opening degree is less than the fluid flow at the third opening degree…”. Claim 15 recites in part “…wherein: increasing the opening degree comprises: reducing the proportion of the projected area, relative to the overall area of the section of the cooling channel that is perpendicular to the flowing direction of the cooling fluid, of the movable portion of the regulation component in the section at the position of the regulation component”.
The USPTO must apply 35 U.S.C. 112(f) in appropriate cases, and give claims their broadest reasonable interpretation (BRI), in light of and consistent with the written description of the invention in the application. In determining the BRI, examiners should establish the meaning of each claim term consistent with the specification as it would be interpreted by one of ordinary skill in the art, including identifying and construing functional claim limitations. If a claim limitation recites a term and associated functional language, the examiner should determine whether the claim limitation invokes 35 U.S.C. 112(f). Application of invokes 35 U.S.C. 112(f) is driven by the claim language, not by applicant’s intent or mere statements to the contrary included in the specification or made during prosecution. See In re Donaldson Co., 16 F.3d at 1194, 29 USPQ2d at 1850.
Accordingly, examiners will apply invokes 35 U.S.C. 112(f) to a claim limitation if it meets the following 3-prong analysis:
(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.
In the instant scenario, “a cooling fluid flow regulation component” is considered a substitute for “means” that is a generic placeholder or nonce term having no specific structural meaning for performing the claimed function (i.e., prong A). The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function (i.e. prong C). Thus, prongs A and C are met; however, it is unclear given the manner in which the claim is presented whether prong B is met or not. The claim lacks “configured to” language and instead recites a separate functional wherein statement from the nonce term that does not appear to adequately delineate whether the cooling fluid flow regulation component is configured to achieve the functional wherein statement that follows, or whether some other entity/entities is/are required to achieve the functional wherein statement. For example, there could be a “cooling fluid flow regulation component” that is an inflatable-valve connected to a controller that utilizes a sensor, and when the temperature rises, the temperature rise is detected by the sensor and the controller causes the valve to be deformed in shape by inflation to alter the opening degree of the inflatable valve. Accordingly, what is or is not required to meet the claim is entirely unclear given the lack of clarity with respect to whether 35 U.S.C. 112(f)/sixth paragraph is or is not being invoked.
It is highly recommended the claims either properly set forth 35 U.S.C. 112(f)/sixth paragraph means plus function language, or recite sufficient structure and positively link said structure to the functional limitations.
Claim 1 further recites in part “…a regulation component deformation restriction component arranged inside the shell; wherein: the restriction component is deformed from a first configuration to a second configuration when the temperature rises, or is deformed from the second configuration to the first configuration when the temperature drops; the restriction component is positioned next to the regulation component, so that in the first configuration of the restriction component, deformation of the regulation component for increasing the opening degree is at least partially hindered by the restriction component, and in the second configuration of the restriction component, deformation of the regulation component is basically not hindered by the restriction component; and with the regulation component deforming from the first opening degree to the second opening degree, the restriction component is changed from the first configuration to the second configuration, and with the regulation component deforming from the second opening degree to the first opening degree, the restriction component is changed from the second configuration to the first configuration…”. Claim 2 further recites in part “…and with the regulation component deforming from the second opening degree to the third opening degree and with the regulation component deforming from the third opening degree to the second opening degree, the restriction component basically keeps the second configuration”.
The USPTO must apply 35 U.S.C. 112(f) in appropriate cases, and give claims their broadest reasonable interpretation (BRI), in light of and consistent with the written description of the invention in the application. In determining the BRI, examiners should establish the meaning of each claim term consistent with the specification as it would be interpreted by one of ordinary skill in the art, including identifying and construing functional claim limitations. If a claim limitation recites a term and associated functional language, the examiner should determine whether the claim limitation invokes 35 U.S.C. 112(f). Application of invokes 35 U.S.C. 112(f) is driven by the claim language, not by applicant’s intent or mere statements to the contrary included in the specification or made during prosecution. See In re Donaldson Co., 16 F.3d at 1194, 29 USPQ2d at 1850.
Accordingly, examiners will apply invokes 35 U.S.C. 112(f) to a claim limitation if it meets the following 3-prong analysis:
(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.
In the instant scenario, “a regulation component deformation restriction component” is considered a substitute for “means” that is a generic placeholder or nonce term having no specific structural meaning for performing the claimed function (i.e., prong A). The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function (i.e. prong C). Thus, prongs A and C are met; however, it is unclear given the manner in which the claim is presented whether prong B is met or not. The claim lacks “configured to” language and instead recites a separate functional wherein statement from the nonce term that does not appear to adequately delineate whether the regulation component deformation restriction component is configured to achieve the functional wherein statement that follows, or whether some other entity/entities is/are required to achieve the functional wherein statement. For example, there could be a “a regulation component deformation restriction component” that is an inflatable-valve connected to a controller that utilizes a sensor, and when the temperature drops, the temperature drop is detected by the sensor and the controller causes the valve to be deformed in shape by inflation to hinder the opening degree of the cooling fluid flow regulation component the regulation component deformation restriction component is claimed to be positioned next to. Accordingly, what is or is not required to meet the claim is entirely unclear given the lack of clarity with respect to whether 35 U.S.C. 112(f)/sixth paragraph is or is not being invoked.
It is highly recommended the claims either properly set forth 35 U.S.C. 112(f)/sixth paragraph means plus function language, or recite sufficient structure and positively link said structure to the functional limitations.
Claims 2-3, 5, 8-11, and 15-20 depend from claim 1, therefore, they are rejected for the same reasons. Claim 16 depends from claim 15, therefore, it is rejected for the same reasons.
Regarding claim 1, claim 1 further recites in part “…a cooling channel arranged inside the shell, wherein the cooling channel is configured to allow flowing of cooling fluid and restrict a flowing direction of the cooling fluid along the cooling channel…”.
It’s not clear from the claim terms whether the subsequent structure is what meets the “configured to” statement, or if the cooling channel is required to have additional structure to meet this “configured to” statement.
Claims 2-3, 5, 8-11, and 15-20 depend from claim 1, therefore, they are rejected for the same reasons.
Regarding claim 1, claim 1 further recites in part “…in the second configuration of the restriction component, deformation of the regulation component is basically not hindered by the restriction component…”.
MPEP 2173.05(a) states “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.” In re Packard, 751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir. 2014)”.
The term “basically” renders claim 1 unclear. At what point does something switch from “hindered” versus “not hindered” to “basically not hindered”?
Claims 2-3, 5, 8-11, and 15-20 depend from claim 1, therefore, they are rejected for the same reasons.
Regarding claims 1-2:
Claim 1 recites “…a cooling fluid flow regulation component arranged inside the shell, wherein the regulation component is deformed from a first opening degree to a second opening degree when the temperature rises…”.
There is insufficient antecedent basis for the limitation “the temperature” in the claim.
It is unclear what temperature is being referred to. Is it the temperature of the cooling fluid flow regulation component? Is it the temperature of the shell? Is it the temperature of the cooling fluid in the cooling channel? It is not clear what temperature is being referred to.
The limitation “the temperature” also appears in claim 2.
Claims 2-3, 5, 8-11, and 15-20 depend from claim 1, therefore, they are rejected for the same reasons.
Regarding claim 1, the claim recites the limitation "the opening degree". There is insufficient antecedent basis for this limitation in the claim.
Claims 2-3, 5, 8-11, and 15-20 depend from claim 1, therefore, they are rejected for the same reasons.
Regarding claim 2, claim 2 further recites in part “…and with the regulation component deforming from the second opening degree to the third opening degree and with the regulation component deforming from the third opening degree to the second opening degree, the restriction component basically keeps the second configuration”.
MPEP 2173.05(a) states “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.” In re Packard, 751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir. 2014)”.
The term “basically” renders claim 2 unclear. At what point does something switch from “keeping” a configuration versus “not keeping” a configuration to “basically keeping” a configuration?
Regarding claim 3, the claim recites the limitation "the temperature of the restriction component". There is insufficient antecedent basis for this limitation in the claim.
Claim 5 depends from claim 3, therefore, it is rejected for the same reasons.
Regarding claim 3, the claim recites the limitation "the movable portion of the restriction component". There is insufficient antecedent basis for this limitation in the claim. It is unclear which movable portion of the “at least one movable portion” of the restriction component is “the movable portion of the restriction component”.
Claim 5 depends from claim 3, therefore, it is rejected for the same reasons.
Regarding claim 8, the claim recites the limitation "the temperature of the regulation component". There is insufficient antecedent basis for this limitation in the claim.
Claims 9-11 depend from claim 8, therefore, they are rejected for the same reasons.
Regarding claim 8, the claim recites the limitation "the movable portion of the regulation component". There is insufficient antecedent basis for this limitation in the claim. It is unclear which movable portion of the “at least one movable portion” of the regulation component is “the movable portion of the regulation component”.
Claims 9-11 depend from claim 8, therefore, they are rejected for the same reasons.
Regarding claim 9, the claim recites the limitation "the movable portion thereof". There is insufficient antecedent basis for this limitation in the claim. It is unclear which movable portion of the “at least one movable portion” of the regulation component is “the movable portion thereof”.
Claim 10 depends from claim 9, therefore, it is rejected for the same reasons.
Regarding claim 10, the claim recites “…the fixed portion of the regulation components is positioned in such a manner that a surface thereof exposed to the cooling channel is roughly flush with an inner wall around the surface”.
It is unclear if this “an inner wall” is the same “inner wall of the cooling channel” previously set forth that the fixed portion of the regulation component is at least partially positioned in, or if it is an inner wall of another structure in the battery cooling device.
Regarding claim 15, the claim recites the limitations “the proportion”, “the projected area”, “the overall area”, “the section of the cooling channel that is perpendicular to the flowing direction of the cooling fluid”, and “the section at the position of the regulation component”. There is insufficient antecedent basis for these limitations in the claim.
Claim 16 depends from claim 15, therefore, it is rejected for the same reasons.
Regarding claim 15, the claim recites the limitation "the movable portion of the regulation component". There is insufficient antecedent basis for this limitation in the claim. It is unclear which movable portion of the “at least one movable portion” of the regulation component is “the movable portion of the regulation component”.
Claim 16 depends from claim 15, therefore, it is rejected for the same reasons.
Regarding claim 16, claim 16 recites in part “…and the width of each movable portion of the regulation component for a given cooling channel is constructed to be basically the same with one of the two following sizes…” and “…and the rear surface is constructed to abut against a tail end of the movable portion of the restriction component so as to basically hinder the deformation of the regulation component for increasing the opening degree in the case of abutting”.
MPEP 2173.05(a) states “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.” In re Packard, 751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir. 2014)”.
The term “basically” renders claim 16 unclear. At what point does something switch from “the same” versus “not the same” to “basically the same”? At what point does something switch from “not hinder” versus “hinder” to “basically hinder”?
Regarding claim 16, the claim recites the limitation "the movable portion of the regulation component". There is insufficient antecedent basis for this limitation in the claim. It is unclear which movable portion of the “at least one movable portion” of the regulation component is “the movable portion of the regulation component”.
Regarding claim 16, the claim recites the limitations “the width of each movable portion of the regulation component”, “the sum of the lengths of all movable portions of the regulation component”, “the width of the inner wall”, “the inner wall”, and “the incoming cooling fluid”. There is insufficient antecedent basis for these limitations in the claim.
Regarding claim 18, the claim recites “the restriction component and the regulation component in each of the plurality of cooling channels are positioned near the downstream ends or at the highest-temperature positions which each of the plurality of cooling channels pass through”.
However, this is unclear, as claim 18 depends from claim 1, and claim 1 states that the cooling fluid flow regulation component and the regulation component deformation restriction component are arranged inside the shell, not that they are arranged inside the cooling channel that is arranged inside the shell.
Regarding claim 18, the claim recites the limitation “the highest-temperature positions”. There is insufficient antecedent basis for this limitation in the claim.
Claim Analysis
Per MPEP § 2143.03:
"All words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). (The Board erred because it ignored claim language that it considered to be indefinite, and reached a conclusion that the claim would have been obvious based only on the rest of the claim.). However, an examiner should not simply speculate about the meaning of the claim language and then enter an obviousness rejection in view of that speculative interpretation. In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (The "considerable speculation" by the examiner and the Board as to the scope of the claims did not provide a proper basis for an obviousness rejection.)
MPEP § 2173.06 further notes that when there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
The claims are indefinite to the point of precluding prior art examination as detailed above for the multiple reasons set forth under 35 U.S.C. 112(b)/second paragraph. A prior art rejection is not made based on what would be considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Conclusion
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/MARY GRACE HARRIS/Examiner, Art Unit 1729
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