CTNF 18/581,713 CTNF 88756 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-34 AIA Claim s 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-14 of U.S. Patent No. 11942617 . Although the claims at issue are not identical, they are not patentably distinct from each other because Although the conflicting claims are not identical, the scope of the claimed limitations of the instant application as claimed in claims 1-15 is similar to that of the claimed limitations of U.S. Patent No. 11942617as claimed in claims 1-14. Therefore, the claims are not patentably distinct from each other . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim (s) 1, 2, 3, 5, 6, 7, 8, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oda et al. (US 2002/0051340) in view of Kim (KR 100852727) . With respect to claim 1 & 15, Oda et al. discloses a battery module, comprising: a plurality of battery cells 6 [Figure 5; 0030-0040]; a module case 2 configured to accommodate the plurality of battery cells 6; [Figure 3-Figure 7] an air intake unit 15/9 provided to one side of the module case 2 and configured to guide an air into the module case 2 to cool the plurality of battery cells 6; [Figure 3; 0051] an air discharge unit 16 provided to the other side of the module case 2 and configured to discharge the air introduced into the module case 2 through the air intake unit 15/9 to the outside of the module case 2; [Figure 3] a main flow path between the air intake unit 15 and air discharge unit 16 [Figure 3] an inner sheet disposed on the inner wall of 2A/2B (at least one sheet member attached to an inner wall of the module case). [Figure 3] a pair of air circulation guide members 2a/2b disposed at inner portions of both sides of the module case 2 to face the air intake unit 15/9 and the air discharge unit 16, respectively, and each air circulation guide member having an air circulation flow path forming part of the main flow path. [Figure 3; 0039-0043] Oda et al. does not disclose at least one sheet member attached to an inner wall of the module case between the air discharge unit and the air intake unit and configured to expand at a predetermined temperature or above to seal an inner space of the module case. Kim discloses a battery module comprising a plurality of battery cells 120; a module case 110 configured to accommodate the plurality of battery cells 120, fire resistant paint 150/insulating material 145 such as foam (at least one sheet member) attached to an inner wall of the module case 110, [Page 3; Figure 3 and 4] configured to expand at a predetermined temperature or above to seal an inner space of the module case. [Page 3] Therefore it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to have modified the battery module of Oda et al. to include at least one sheet member attached to an inner wall of the module case between the air discharge unit and the air intake unit and configured to expand at a predetermined temperature or above to seal an inner space of the module case, as disclosed in Kim, in order to allow for increased safety while not increasing manufacturing costs. With respect to claim 2, Oda et al. does not disclose wherein the at least one sheet member is a plurality of sheet members, and the plurality of sheet members are attached to a front inner wall, a rear inner wall, both side inner walls, an upper inner wall and a lower inner wall of the module case, respectively. Kim discloses wherein the fire resistant paint 150/insulating material 145 (plurality of sheet member) is provided in plural, and the plurality of sheet members are attached to a front inner wall, a rear inner wall, both side inner walls, an upper inner wall and a lower inner wall of the module case, respectively. [Figure 3 and 4; Page 3] Therefore it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to have modified the battery module of Oda et al. to include wherein the sheet member is provided in plural, and the plurality of sheet members are attached to a front inner wall, a rear inner wall, both side inner walls, an upper inner wall and a lower inner wall of the module case, respectively, as disclosed in Kim, in order to allow for increased safety while not increasing manufacturing costs. With respect to claim 3, Oda et al. does not disclose wherein the plurality of sheet members are sealed to each other at each edge. Kim discloses wherein the fire resistant paint 150/insulating material 145 (plurality of sheet member) is applied to the inner surface of the case 110. Given that the fire resistant paint 150/insulating material 145 (plurality of sheet member) are applied to the inner surface of the case 110 potentially as a single piece, one of ordinary skill in the art would expect them to be sealed to each other at each edge. Furthermore, Kim discloses a sealing member 160 sealing the fire resistant paint 150/insulating material 145 (sheet members). [Page 3; Figures 1-3] Therefore it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to have modified the battery module of Oda et al. wherein the plurality of sheet members are sealed to each other at each edge, as disclosed in Kim, in order to allow for increased safety while not increasing manufacturing costs. With respect to claim 5, Oda et al. discloses wherein the pair of air circulation guide members 2a/2b are disposed to face each other with the plurality of battery cells being interposed therebetween. [Figure 3; 0039-0043] With respect to claim 6, Oda et al. discloses wherein the pair of air circulation guide members 2a/2b include a plurality of guide slits 13 provided to one side thereof to face the plurality of battery cells and spaced apart from each other by a predetermined distance. [0050; Figure 3] With respect to claim 7, Oda et al. discloses wherein the pair of air circulation guide members 2a/2b include a plurality of guide barriers 3 provided adjacent to the plurality of guide slits 13 and inclined at a predetermined angle inside the air circulation flow path. [Figure 3; 0041] 07-21-aia AIA Claim (s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oda et al. (US 2002/0051340) in view of Kim (KR 100852727) as applied to claim 1 above in further view of Oh et al. (US 2014/0072844) . With respect to claim 8, Oda et al. does not disclose a battery rack, comprising: at least one battery module as defined in claim 1; and a rack case configured to accommodate the at least one battery module. Oh et al. discloses a battery rack, comprising: at least one battery module 700; and a rack case configured to accommodate the at least one battery module 700. [Figure 2; 0028] Therefore it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to have modified the battery module of Oda et al. to include a battery rack, comprising: at least one battery module as defined in claim 1; and a rack case configured to accommodate the at least one battery module, as disclosed in Oh et al., in order to allow for a variety of uses of the battery such as for use in a vehicle. With respect to claim 9, Oda et al. does not disclose an energy storage system, comprising: at least one battery rack as defined in claim 9. Oh et al. discloses a vehicle battery (energy storage system), comprising: at least one battery rack. [0025] Therefore it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to have modified the battery module of Oda et al. to include an energy storage system, comprising: at least one battery rack, as disclosed in Oh et al., in order to allow for a variety of uses of the battery such as for use in a vehicle. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIRAN QURAISHI AKHTAR whose telephone number is (571)270-7589. The examiner can normally be reached Monday-Thursday 9AM-7PM. 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, Jonathan Leong can be reached at 571-270-1292. 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. /KIRAN QURAISHI AKHTAR/Primary Examiner, Art Unit 1751 Application/Control Number: 18/581,713 Page 2 Art Unit: 1751 Application/Control Number: 18/581,713 Page 3 Art Unit: 1751 Application/Control Number: 18/581,713 Page 4 Art Unit: 1751 Application/Control Number: 18/581,713 Page 5 Art Unit: 1751 Application/Control Number: 18/581,713 Page 6 Art Unit: 1751 Application/Control Number: 18/581,713 Page 7 Art Unit: 1751 Application/Control Number: 18/581,713 Page 8 Art Unit: 1751 Application/Control Number: 18/581,713 Page 9 Art Unit: 1751 Application/Control Number: 18/581,713 Page 10 Art Unit: 1751
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