DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 10 and 11-19 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.
4. Claim 10 recites the limitation " the one or more Li-ion battery cells " in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as " one or more Li-ion battery cells ".
5. Claims 11-19 are rejected as depending from claim 10.
Claim Rejections - 35 USC § 102
6. 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.
7. Claim(s) 1, 2, 8-11, 17, 18, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nicoson (US2014/0079959) as cited in IDS dated 5/31/24.
Regarding claim 1, Nicoson discloses a battery management system (BMS) for use in a rechargeable battery([0004], [0013]-[0014]), the BMS comprising: a printed circuit board (PCB) (electronic circuit board 400, Figs. 1 & 3, [0014], [0017]) having two or more electrically conductive metal plates(copper thermal pads 420, Fig. 3, [0018]), the two or more electrically conductive metal plates located adjacent to and spaced apart from each other on the PCB providing an electrically isolating gap between the two or more electrically conductive metal plates(Fig. 3); and multiple electronic components of the BMS electrically connected between the two or more electrically conductive metal plates(MOSFETs 430, Fig. 4, [0017]).
Regarding claim 2, Nicoson discloses the multiple electronic components bridge the electrically isolating gap between the two or more electrically conductive metal plates(Figs. 3 & 4).
Regarding claim 8, Nicoson discloses the two or more electrically conductive metal plates are arranged in electrical series (Figs. 3 & 4).
Regarding claim 9, Nicoson discloses the two or more electrically conductive metal plates are made of copper plate([0018]).
Regarding claim 10, Nicoson discloses a rechargeable battery([0013]-[0014]), comprising: one or more battery cells(500, Figs. 1 & 4, [0014]); and a battery management system (BMS) connected with one or more Li-ion battery cells ([0004], [0013]-[0014]), the BMS comprising: a printed circuit board (PCB) (electronic circuit board 400, Figs. 1 & 3, [0014], [0017]) having two or more electrically conductive metal plates (copper thermal pads 420, Fig. 3, [0018]), the two or more electrically conductive metal plates located adjacent to and spaced apart from each other on the PCB providing an electrically isolating gap between the two or more electrically conductive metal plates (Fig. 3), and multiple electronic components of the BMS electrically connected between the two or more electrically conductive metal plates (MOSFETs 430, Fig. 4, [0017]).
Regarding claim 11, Nicoson discloses the multiple electronic components bridge the electrically isolating gap between the two or more electrically conductive metal plates(Figs. 3 & 4).
Regarding claim 17, Nicoson discloses the two or more electrically conductive metal plates are arranged in electrical series (Figs. 3 & 4).
Regarding claim 18, Nicoson discloses the two or more electrically conductive metal plates are made of copper plate([0018]).
Regarding claim 19, Nicoson discloses the rechargeable battery is a Lithium-Ion (Li-ion) battery and the one or more battery cells are Li-ion battery cells([0013], [0021]).
Claim Rejections - 35 USC § 103
8. 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.
9. Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nicoson (US2014/0079959) as cited in IDS dated 5/31/24 as applied to claim 1 above, and further in view of Shrader et al. (US 2015/0118523) as cited in IDS dated 5/31/24.
Regarding claim 3, Nicoson discloses the multiple electronic components include multiple MOSFETS (Fig. 4) that are coupled between the two or more electrically conductive metal plates (Fig. 4) but does not explicitly disclose multiple resistors.
Shrader teaches adaptive current-collector electrochemical system (title). Shrader teaches two coupled elements may be directly connected by way of a metal line, or indirectly connected by way of an intervening circuit element (e.g., a capacitor, resistor, inductor, or by way of the source/drain terminals of a transistor) or by inductance ([0019]).
It would have been obvious to one of ordinary skill in the art to include in the BMS of Nicoson, multiple resistors that are coupled between the two or more electrically conductive metal plates as art recognized equivalence for the same purpose. See MPEP 2144.06 I.
10. Claim(s) 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nicoson (US2014/0079959) as cited in IDS dated 5/31/24 as applied to claim 1 above, and further in view of Li et al. (CN208399042U) with citations from machine translation provided with this Office Action.
Regarding claim 4, Nicoson does not explicitly disclose the two or more electrically conductive metal plates are soldered to electrically conductive metal pads of the PCB for securing the two or more electrically conductive metal plates to the PCB.
Li teaches a thin-film NTC temperature sensor that can be soldered into a circuit board includes an NTC thermistor sensor located on the same side of the circuit board and two metal connecting pieces ([0010]). Li teaches the two or more electrically conductive metal plates (metal connecting pieces 2 and 2’, Fig. 1, [0034]) are soldered to electrically conductive metal pads (bottom pads of the metal connectors [0036], [0031]) of the PCB (6, Figs 1 & 2, [0033]) for securing the two or more electrically conductive metal plates to the PCB (Fig. 1). The instant claim includes a recitation describing the manner in which the two or more electrically conductive metal plates are secured: soldered. Said recitation appears to be product-by-process language. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. MPEP 2113.
It would have been obvious to one of ordinary skill in the art to include in the BMS of Nicoson, the two or more electrically conductive metal plates are soldered to electrically conductive metal pads of the PCB for securing the two or more electrically conductive metal plates to the PCB as taught by Li as applying a known technique to a known device ready for improvement to yield predictable results. MPEP 2143.
Regarding claim 5, modified Nicoson does not explicitly disclose the electrically conductive metal pads are located on the PCB so that edges of the two or more electrically conductive metal plates connect with the electrically conductive metal pads to secure the two or more electrically conductive metal plates to the PCB.
It would have been obvious to one of ordinary skill in the art to modify the BMS of modified Nicoson with the electrically conductive metal pads are located on the PCB so that edges of the two or more electrically conductive metal plates connect with the electrically conductive metal pads to secure the two or more electrically conductive metal plates to the PCB, since it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP 2144.04 (VI-C).
Regarding claim 6, modified Nicoson discloses the electrically conductive metal pads are located on the PCB so that the two or more electrically conductive metal plates connect by a lower surface with the electrically conductive metal pads to secure the two or more electrically conductive metal plates to the PCB (Li, Fig. 1).
Regarding claim 7, modified Nicoson discloses the electrically conductive metal pads connect to one or more of the multiple electronic components (Li, see two electrodes of the NTC thermistor sensor 1 are resistively soldered to the pads at the conductive holes 5 and 5’ in Figs. 1 & 2, [0034]) .
11. Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nicoson (US2014/0079959) as cited in IDS dated 5/31/24 as applied to claim 10 above, and further in view of Shrader et al. (US 2015/0118523) as cited in IDS dated 5/31/24.
Regarding claim 12, Nicoson discloses the multiple electronic components include multiple MOSFETS (Fig. 4) that are coupled between the two or more electrically conductive metal plates (Fig. 4) but does not explicitly disclose multiple resistors.
Shrader teaches adaptive current-collector electrochemical system (title). Shrader teaches two coupled elements may be directly connected by way of a metal line, or indirectly connected by way of an intervening circuit element (e.g., a capacitor, resistor, inductor, or by way of the source/drain terminals of a transistor) or by inductance ([0019]).
It would have been obvious to one of ordinary skill in the art to include in the BMS of Nicoson, multiple resistors that are coupled between the two or more electrically conductive metal plates as art recognized equivalence for the same purpose. See MPEP 2144.06 I.
12. Claim(s) 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nicoson (US2014/0079959) as cited in IDS dated 5/31/24 as applied to claim 10 above, and further in view of Li et al. (CN208399042U) with citations from machine translation provided with this Office Action.
Regarding claim 13, Nicoson does not explicitly disclose the two or more electrically conductive metal plates are soldered to electrically conductive metal pads of the PCB for securing the two or more electrically conductive metal plates to the PCB.
Li teaches a thin-film NTC temperature sensor that can be soldered into a circuit board includes an NTC thermistor sensor located on the same side of the circuit board and two metal connecting pieces ([0010]). Li teaches the two or more electrically conductive metal plates (metal connecting pieces 2 and 2’, Fig. 1, [0034]) are soldered to electrically conductive metal pads (bottom pads of the metal connectors [0036], [0031]) of the PCB (6, Figs 1 & 2,[0033]) for securing the two or more electrically conductive metal plates to the PCB (Fig. 1). The instant claim includes a recitation describing the manner in which the two or more electrically conductive metal plates are secured: soldered. Said recitation appears to be product-by-process language. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. MPEP 2113.
It would have been obvious to one of ordinary skill in the art to include in the BMS of Nicoson, the two or more electrically conductive metal plates are soldered to electrically conductive metal pads of the PCB for securing the two or more electrically conductive metal plates to the PCB as taught by Li as applying a known technique to a known device ready for improvement to yield predictable results. MPEP 2143.
Regarding claim 14, modified Nicoson does not explicitly disclose the electrically conductive metal pads are located on the PCB so that edges of the two or more electrically conductive metal plates connect with the electrically conductive metal pads to secure the two or more electrically conductive metal plates to the PCB.
It would have been obvious to one of ordinary skill in the art to modify the BMS of modified Nicoson with the electrically conductive metal pads are located on the PCB so that edges of the two or more electrically conductive metal plates connect with the electrically conductive metal pads to secure the two or more electrically conductive metal plates to the PCB, since it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP 2144.04 (VI-C).
Regarding claim 15, modified Nicoson discloses the electrically conductive metal pads are located on the PCB so that the two or more electrically conductive metal plates connect by a lower surface with the electrically conductive metal pads to secure the two or more electrically conductive metal plates to the PCB (Li, Fig. 1).
Regarding claim 16, modified Nicoson discloses the electrically conductive metal pads connect to one or more of the multiple electronic components (Li, see two electrodes of the NTC thermistor sensor 1 are resistively soldered to the pads at the conductive holes 5 and 5’ in Figs. 1 & 2, [0034]) .
Double Patenting
13. 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.
14. Claims 10, 12, and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of U.S. Patent No. 11,251,507. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 10, 12, and 18 recite a battery management system that is similar in structure to the battery management system recited in claims 1 and 17 of U.S. Patent No. 11,251,507.
15. Claims 1, 8, and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10 and 11 of U.S. Patent No. 12,567,607. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a battery management system that is similar in structure to the battery management system recited in claim 1 of U.S. Patent No. 12,567,607. Instant claims 8 and 9 recite the limitations of the arrangement of the two or more electrically conductive metal plates and material similar to claims 10 and 11 of U.S. Patent No. 12,567,607.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA HOM LYNCH whose telephone number is (571)272-0489. The examiner can normally be reached 7:30 AM - 4:30 PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at 571-270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VICTORIA H LYNCH/Primary Examiner, Art Unit 1724
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