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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed with WIPO on 21 June 2023. It is noted, however, that applicant has not filed a certified copy of the PCT/CN2023/101944 application as required by 37 CFR 1.55.
Claim Objections
Claims 1, 6, 9, and 11 are objected to because of the following informalities:
Claim 1: in L13, “the height direction of the casing” should read “a height direction of the casing” as this claim element had not been recited previously.
Claim 6: in L2, “a length direction of the casing” should read “the length direction of the casing” because this claim element was previously recited in Claim 1.
Claim 9: in L2, “a width direction of the casing” should read “the width direction of the casing” because this claim element was previously recited in Claim 1.
Claim 11: in L2, “a height direction of the casing” should read “the height direction of the casing” because this claim element was previously recited in Claim 1.
Appropriate correction is required.
Election/Restriction and Claim Status
Applicant's election with traverse of Species 7, Claims 1–12, 14, 16, 18, and 20 (Claims 1–11 and 20 being generic) in the reply filed on 8 December 2025 is acknowledged. The traversal is on the ground(s) that the Examiner has not established that examination of the non-elected species would impose an undue search or examination burden, specifically it is argued that all species belong to the same technological field and are classified together, no species introduces a unique structural component, subsystem, or mechanical mechanism that would require different searches, The Office has not identified any different field, class/subclass, or search strategy required for any species, and that the various species of the present application pertain to the same general purpose and shared utility. This is not found persuasive because Species 1–8 are drawn to mutually exclusive embodiments of an energy storage device, which necessarily have different arrangements and dimensions of batteries accommodated within them. It is therefore the case that finding one species of the energy storage device does not guarantee finding another, and different search queries would need to be employed; therefore, a serious search and/or examination burden would exist if restriction were not required.
The requirement is still deemed proper and is therefore made FINAL.
However, in light of the search made of record in this Office Action, Species 3 is no longer considered to be a search burden. Thus, Species 3 has been rejoined and consequently Claim 17 is no longer considered to be withdrawn.
In summary, Claims 13, 15 and 19 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. Applicant timely traversed the restriction (election) requirement in the reply filed on 8 December 2025.
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 1, 2, 6, 7, 9, 12, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Pierri et al. (Pierri, E.; Cirillo, V.; Vietor, T.; Sorrentino, M. Adopting a Conversion Design Approach to Maximize the Energy Density of Battery Packs in Electric Vehicles, Energies, vol. 14, article 1939, published 30 March 2021) in view of Nigel (Nigel, “BMW i3”, Battery Design: from chemistry to pack, https://www.batterydesign.net/bmw-i3/, published 9 June 2023), herein referred to as Nigel #1, as evidenced by Lima (Lima, P. “Samsung SDI 94 Ah battery cell full specifications”, PushEVs, https://pushevs.com/2018/04/05/samsung-sdi-94-ah-battery-cell-full-specifications/, published 5 April 2018) and Ke et al. (US 2025/0079627 A1).
Regarding Claim 1, Pierri discloses an energy storage device (see original scheme of the BMWi3 battery pack, p. 11 ¶ “Figure 3 shows…” and FIG. 3), comprising:
a battery compartment (FIG. 3 illustrates the battery compartment delineated by the outermost rectangular boxes in top and side views; see also pack boundary, p. 12 ¶ “The distance between…”); and
batteries (see eight rectangular modules, p. 10 ¶ “The BMWi3 was…”, Table 2, and FIG. 3) accommodated within the battery compartment, wherein the batteries comprise p*q battery cells (see prismatic cells, p. 10, ¶ “The BMWi3 was…”, Table 2, and FIG. 3), the p*q battery cells are arranged in p rows and q columns (each battery is shown in FIG. 3 to comprise 12 cells total in a 6 row by 2 column configuration; i.e. p = 6, q = 2, p*q = 12), each row of battery cells is arranged along a length direction of the battery compartment (see x-direction in FIG. 3; note this mapping ensures that the “length” dimension is largest), each column of battery cells is arranged along a width direction of the battery compartment (see y-direction in FIG. 3), and p and q are both positive integers.
Pierri does not explicitly disclose that the energy storage device comprises a casing in which the battery compartment is included. However, the energy storage device of Pierri is based on the BMWi3 high-voltage battery system (p. 10 ¶ “A conversion design…” and “The BMWi3 was…”). Nigel #1 teaches (p. 2 photo and schematic) that the BMWi3 high-voltage storage system comprises a casing which accommodates batteries in a battery compartment (i.e. the space shown in the figures of Nigel #1 p. 2 dedicated to storing the batteries) in addition to other components such as a cooling system and electrical and control system.
Pierri and Nigel #1 are analogous to the claimed invention as they are in the same field of energy storage device optimization and design. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the energy storage device of Pierri such that it comprises the casing of the BMWi3 high-voltage battery system as taught by Nigel #1, for the purpose of housing the battery compartment and other components such as a cooling system and electrical and control system. One of ordinary skill in the art will understand that such a modification will necessarily result in the rows and columns of the battery cells being arranged along the length and width directions of the casing, respectively, given that the casing and the battery compartment of modified Pierri will share the same length and width directions. Note that the casing and battery compartment of modified Pierri will also necessary share the same height direction.
Pierri discloses that the battery cells are prismatic Samsung SDI 94 Ah lithium-ion battery cells (p. 10 ¶ “The BMWi3 was…”, Table 2) which, as evidenced by Lima (p. 2), comprise a housing and electrode terminals, the electrode terminals are disposed on the housing, and the housing is a right parallelepiped in shape. One of ordinary skill in the art will further understand given the above that the battery cell necessarily also comprises an electrode assembly, the electrode assembly is accommodated within the housing, as a housed electrode assembly is a well-understood component of any prismatic battery cell. Furthermore, one of ordinary skill in the art will understand that any prismatic battery cell can be defined as follows: a dimension of the housing in a first direction is denoted as W1, a dimension of the housing in a second direction is denoted as T1, a dimension of the housing in a third direction is denoted as K1, and the housing comprises a first wall and a second wall opposite each other along the first direction, a third wall and a fourth wall disposed opposite each other along the second direction, and a fifth wall and a sixth wall disposed opposite each other along the third direction, a sum of thicknesses of the first wall and the second wall is denoted as a, a sum of thicknesses of the third wall and the fourth wall is denoted as b, and a sum of thicknesses of the fifth wall and the sixth wall is denoted as c. One of ordinary skill in the art will further understand that the energy storage device of modified Pierri can further be defined such that a volume of the battery compartment is denoted as V1, and a sum of volumes of the housings of all the battery cells within the battery compartment is denoted as V2. Modified Pierri further discloses (Pierri FIG. 3) that one of the first direction, the second direction, and the third direction is parallel to the length direction of the casing, another is parallel to the width direction of the casing, and the remaining one is parallel to the height direction of the casing.
Regarding the limitation wherein the energy storage device satisfies (W1 – a) * (T1 – b) * (K1 – c) / (W1 * T1 * K1) ≥ 0.9, Pierri discloses (Table 2) that W1 * T1 * K1, i.e. the dimensions of the battery cell, are 173 * 125 * 45 mm. However, Pierri does not disclose the values of a, b, and c.
However, one of ordinary skill in the art will understand that the above equation is essentially determined by the thickness of the housing walls in relation to the volume of the battery cell, i.e. the internal volume of the battery cell to the overall volume of the battery cell, and furthermore, it is well-known in the field of energy storage device optimization and design that the above relation affects the battery cell’s volume utilization rate and resistance to damage, as evidenced by Ke ([0013]).
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II). In the instant case, the ratio (W1 – a) * (T1 – b) * (K1 – c) / (W1 * T1 * K1) can be considered a variable that achieves the recognized result of affecting the battery cell’s volume utilization rate and resistance to damage, as evidenced by Ke, thus making the ratio (W1 – a) * (T1 – b) * (K1 – c) / (W1 * T1 * K1) a result-effective variable. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the (W1 – a) * (T1 – b) * (K1 – c) / (W1 * T1 * K1) of modified Pierri such that (W1 – a) * (T1 – b) * (K1 – c) / (W1 * T1 * K1) ≥ 0.9 via routine experimentation, for the purpose of achieving suitable battery cell volume utilization rates and resistance to damage.
Regarding the limitation a volume of the battery compartment is denoted as V1, a sum of volumes of the housings of all the battery cells within the battery compartment is denoted as V2, and 0.4 ≤ V2/V1 ≤ 0.95, Pierri discloses (FIG. 3) that the length (x-direction in the top view of FIG. 3), width (y-direction in the top view of FIG. 3), and height (the vertical dimension shown in the side view of FIG. 3) of the battery compartment are 1.230 m, 0.782 m, and 0.160 m, respectively (calculated by summing together the individual dimensions shown for each direction in FIG. 3, then converting to meters), and thus V1 is calculated to be 0.154 m3 (calculated by multiplying together each of the dimensions of the battery compartment above). Based on the dimensions of the battery cell disclosed by Pierri (Table 2), V2 is calculated to be 0.0934 m3 (calculated by multiplying together each of the dimensions of the battery cell above and converting to cubic meters, then multiplying by the total number of battery cells, which is 96). Thus, V2/V1 of modified Pierri is 0.607.
Regarding Claim 2, modified Pierri discloses the energy storage device of Claim 1. Pierri further discloses wherein a volume of the housing of each of the battery cells is denoted as V3, wherein V3 = W1 * T1 * K1, and the number of the battery cells within the battery compartment is denoted as N1, satisfying V2 = V3 * N1, as this limitation will necessarily be satisfied when all of the battery cells comprised in the energy storage device have the same volume, as is the case for modified Pierri (see e.g. Pierri Table 2 for battery cell parameters).
Regarding Claim 6, modified Pierri discloses the energy storage device of Claim 1. Modified Pierri further discloses wherein the battery compartment accommodates a plurality of the battery cells arranged along the length direction of the casing (Pierri FIG. 3 illustrates a plurality of battery cells arranged along the x-direction of the battery compartment, which as set forth in the rejection of Claim 1 above, is analogous to a length direction of the casing of modified Pierri). Regarding the limitation along the length direction, a dimension of the battery compartment is denoted as L1, and a sum of dimensions of the housings of the plurality of battery cells arranged within the battery compartment is denoted as L2, satisfying 0.6 ≤ L2/L1 ≤ 0.95, L1 is calculated to be 1.230 m (calculated by summing together the individual dimensions shown for the x-direction in the top view shown in FIG. 3, then converting to meters). For modified Pierri, the dimension of a single battery cell in the same direction is understood to be 0.045 m (Pierri FIG. 3 shows that the shortest side of each battery cell is arranged along the x-direction, and Table 2 shows that the shortest dimension of the battery cell is equal to 45 mm or 0.045 m). Furthermore, Pierri discloses (FIG. 3) that 24 battery cells are accommodated along the length direction of the battery compartment. As such, L2 is calculated to be 1.08 m (calculated by multiplying 0.045 m by 24), and L2/L1 of modified Perri is calculated to be 0.878.
Regarding Claim 7, modified Pierri discloses the energy storage device of Claim 6. Modified Pierri further discloses wherein along the length direction, a dimension of the housing of each of the battery cells is denoted as L3, and N2 battery cells are arranged within the battery compartment, satisfying L2 = L3 * N2, as this limitation will necessarily be satisfied when all of the battery cells comprised in the energy storage device have the same dimensions, as is the case for modified Pierri (see e.g. Pierri Table 2 for battery cell parameters).
Regarding Claim 9, modified Pierri discloses the energy storage device of Claim 1. Modified Pierri further discloses wherein the battery compartment accommodates a plurality of the battery cells arranged along the width direction of the casing (Pierri FIG. 3 illustrates a plurality of battery cells arranged along the y-direction in the top view of the battery compartment, which as set forth in the rejection of Claim 1 above, is analogous to a width direction of the casing of modified Pierri). Regarding the limitation along the width direction, a dimension of the battery compartment is denoted as D1, and a sum of dimensions of the housings of the plurality of battery cells arranged within the battery compartment is denoted as D2, satisfying 0.6 ≤ D2/D1 ≤ 0.95, D1 is calculated to be 0.782 (calculated by summing together the individual dimensions shown for the y-direction in the top view shown in FIG. 3, then converting to meters). For modified Pierri, the dimension of a single battery cell in the same direction is understood to be 0.173 m (Pierri FIG. 3 shows that the two battery cells in the y-direction measure a total of 346 mm, and thus one battery cell in the y-direction measures 173 mm or 0.173 m, which matches what is shown in Table 2). Furthermore, Pierri discloses (FIG. 3) that 4 battery cells are accommodated along the width direction of the battery compartment. As such, D2 is calculated to be 0.692 m (calculated by multiplying 0.173 by 4), and D2/D1 of modified Pierri is calculated to be 0.885.
Regarding Claim 12, modified Pierri discloses the energy storage device of Claim 1. Modified Pierri further discloses wherein the battery compartment accommodates a plurality of the batteries arranged along the length direction of the casing (Pierri FIG. 3 illustrates a plurality of batteries (i.e. modules of battery cells) arranged along the x-direction in the top view of the battery compartment, which as set forth in the rejection of Claim 1 above, is analogous to a length direction of the casing of modified Pierri). Regarding the limitation along the length direction, the dimension of the battery compartment is denoted as L1, and a sum of dimensions of the plurality of batteries arranged within the battery compartment is denoted as L4, satisfying 0.7 ≤ L4/L1 ≤ 0.96, L1 is calculated to be 1.230 m (calculated by summing together the individual dimensions shown for the x-direction in the top view shown in FIG. 3, then converting to meters). Pierri discloses that the internal length of each battery is 270 mm (FIG. 3 shows the internal dimension of each battery along the x-direction in the top view, which as set forth in the rejection of Claim 1 above is considered to be the length direction of the battery compartment, is 270 mm) and that the battery casing has a width of 5 mm (p. 11 ¶ “A width of…”). As such, it can be calculated that the dimension of one battery in the length direction is 280 mm or 0.280 m (calculated by summing together the 270 mm internal length and two sides of the casings which are 5 mm each). Furthermore, Pierri discloses (FIG. 3) that 4 batteries are accommodated along the length direction of the battery compartment. As such, L4 is calculated to be 1.12 m (calculated by multiplying 0.280 by 4), and L4/L1 of modified Pierri is calculated to be 0.911.
Regarding Claim 14, modified Pierri discloses the energy storage device of Claim 1. Modified Pierri further discloses wherein the battery compartment accommodates a plurality of the batteries arranged along the width direction of the casing (Pierri FIG. 3 illustrates a plurality of batteries (i.e. modules of battery cells) arranged along the y-direction in the top view of the battery compartment, which as set forth in the rejection of Claim 1 above, is analogous to a width direction of the casing of modified Pierri). Regarding the limitation along the width direction, the dimension of the battery compartment is denoted as D1, and a sum of dimensions of the plurality of batteries arranged within the battery compartment is denoted as D4, satisfying 0.7 ≤ D4/D1 ≤ 0.96, D1 is calculated to be 0.782 m (calculated by summing together the individual dimensions shown for the y-direction in the top view shown in FIG. 3, then converting to meters). Pierri discloses that the internal width of each battery is 346 mm (FIG. 3 shows the internal dimension of each battery along the y-direction in the top view, which as set forth in the rejection of Claim 1 above is considered to be the width direction of the battery compartment, is 346 mm) and that the battery casing has a width of 5 mm (p. 11 ¶ “A width of…”). As such, it can be calculated that the dimension of one battery in the width direction is 356 mm or 0.356 m (calculated by summing together the 346 mm internal width and two sides of the casing which are 5 mm each). Furthermore, Pierri discloses (FIG. 3) that 2 batteries are accommodated along the width direction of the battery compartment. As such, D4 is calculated to be 0.712 m (calculated by multiplying 0.356 by 2), and D4/D1 of modified Pierri is calculated to be 0.910.
Regarding Claim 17, modified Pierri discloses the energy storage device of Claim 1. Modified Pierri further discloses wherein along the height direction of the casing, the battery compartment accommodates only one of the batteries (Pierri FIG. 3 illustrates only one battery (i.e. module of battery cells) arranged along the vertical direction of the side view of the battery compartment, which as set forth in the rejection of Claim 1 above, is analogous to a height direction of the casing of modified Pierri). Regarding the limitation the dimension of the battery compartment is denoted as H1, and a dimension of the battery is denoted as H5, satisfying 0.8 ≤ H5/H1 ≤ 0.99, H1 is disclosed by Pierri (FIG. 3 shows the total dimension of the battery compartment in the vertical direction in side view to be 160 mm) to be 160 mm or 0.160 m. Pierri discloses that the internal height of each battery is 125 mm (FIG. 3 shows the internal dimension of each battery along the vertical direction in the side view is 125 mm) and that the battery casing has a width of 5 mm (p. 11 ¶ “A width of…”). As such, it can be calculated that the dimension of one battery in the height direction, i.e. H5, is 135 mm or 0.135 m (calculated by summing together the 125 mm internal height and two sides of the casing which are 5 mm each). Thus H5/H1 of modified Pierri is calculated to be 0.844.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Pierri et al. (Pierri, E.; Cirillo, V.; Vietor, T.; Sorrentino, M. Adopting a Conversion Design Approach to Maximize the Energy Density of Battery Packs in Electric Vehicles, Energies, vol. 14, article 1939, published 30 March 2021) in view of Nigel (Nigel, “BMW i3”, Battery Design: from chemistry to pack, https://www.batterydesign.net/bmw-i3/, published 9 June 2023), herein referred to as Nigel #1, as evidenced by Lima (Lima, P. “Samsung SDI 94 Ah battery cell full specifications”, PushEVs, https://pushevs.com/2018/04/05/samsung-sdi-94-ah-battery-cell-full-specifications/, published 5 April 2018) and Ke et al. (US 2025/0079627 A1) as applied to Claim 2 above, as further evidenced by Besnard et al. (US 2023/0021008 A1) and Bradwell et al. (US 2025/0183488 A1).
Regarding Claim 3, modified Pierri discloses the energy storage device of Claim 2, but does not disclose wherein 0.0001 ≤ V3/V1 ≤ 0.00025.
However, it is well-known in the field of energy storage device design and optimization that increasing the relative volume V3/V1 of the battery cell to the battery compartment decreases the amount of non-active materials which must be included in the energy storage device, as evidenced by Besnard ([0007]). However, it is also understood that increasing the dimension(s) of a battery cell relative to the battery compartment, i.e. increasing V3/V1, can also decrease packing efficiency, as evidenced by Bradwell ([0127]).
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II). In the instant case, the ratio V3/V1 is a result-effective variable that affects the amount of non-active materials which must be included in the energy storage device, as evidenced by Besnard, and the packing efficiency, as evidenced by Bradwell, thus making V3/V1 a result-effective variable. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify V3/V1 of modified Pierri such that 0.0001 ≤ V3/V1 ≤ 0.00025 via routine experimentation, for the purpose of achieving suitable amounts of non-active materials which must be included in the energy storage device and packing efficiency.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Pierri et al. (Pierri, E.; Cirillo, V.; Vietor, T.; Sorrentino, M. Adopting a Conversion Design Approach to Maximize the Energy Density of Battery Packs in Electric Vehicles, Energies, vol. 14, article 1939, published 30 March 2021) in view of Nigel (Nigel, “BMW i3”, Battery Design: from chemistry to pack, https://www.batterydesign.net/bmw-i3/, published 9 June 2023), herein referred to as Nigel #1, as evidenced by Lima (Lima, P. “Samsung SDI 94 Ah battery cell full specifications”, PushEVs, https://pushevs.com/2018/04/05/samsung-sdi-94-ah-battery-cell-full-specifications/, published 5 April 2018) and Ke et al. (US 2025/0079627 A1) as applied to Claim 2 above, as further evidenced by Kwag et al. (US 2010/0143785 A1) and Børsheim et al. (US 2020/0403282 A1).
Regarding Claim 4, modified Pierri discloses the energy storage device of Claim 2, but does not disclose wherein 0.0026 m3 ≤ V3 ≤ 0.008 m3.
However, it is well-known in the field of energy storage device design and optimization that increasing the volume of a battery cell increases its capacity, as evidenced by Kwag ([0007]), but also makes it harder to cool evenly over the complete volume, as evidenced by Børsheim ([0029]).
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II). In the instant case, V3 is a result-effective variable that affects the capacity, as evidenced by Kwag, and ease of even cooling over the complete volume of the battery cell, as evidenced by Børsheim, thus making V3 a result-effective variable. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify V3 of modified Pierri such that 0.0026 m3 ≤ V3 ≤ 0.008 m3 via routine experimentation, for the purpose of achieving suitable levels of capacity and ease of cooling over the complete volume of the battery cell.
Claims 5, 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Pierri et al. (Pierri, E.; Cirillo, V.; Vietor, T.; Sorrentino, M. Adopting a Conversion Design Approach to Maximize the Energy Density of Battery Packs in Electric Vehicles, Energies, vol. 14, article 1939, published 30 March 2021) in view of Nigel (Nigel, “BMW i3”, Battery Design: from chemistry to pack, https://www.batterydesign.net/bmw-i3/, published 9 June 2023), herein referred to as Nigel #1, as evidenced by Lima (Lima, P. “Samsung SDI 94 Ah battery cell full specifications”, PushEVs, https://pushevs.com/2018/04/05/samsung-sdi-94-ah-battery-cell-full-specifications/, published 5 April 2018) and Ke et al. (US 2025/0079627 A1) as applied to Claims 1, 6, and 9 above, as further evidenced by Nigel (Nigel, “2013 BMW i3”, Battery Design: from chemistry to pack, https://www.batterydesign.net/bmw-i3-2/, published 12 December 2023), herein referred to as Nigel #2.
Regarding Claim 5, modified Pierri discloses the energy storage device of Claim 1. Regarding the limitation wherein a volume of the casing is denoted as V, satisfying 0.45 ≤ V1/V ≤ 0.75, as set forth above in the rejection of Claim 1, V1 is calculated to be 0.154 m3. Nigel #2 (p. 2) evidences that the volume of the casing V of the BMWi3 high-voltage battery system, which is the casing of modified Pierri as also set forth in the rejection of Claim 1 above, is 278.4 L, which is equivalent to 0.2784 m3. As such, V1/V of modified Pierri is calculated to be 0.55.
Regarding Claim 8, modified Pierri discloses the energy storage device of Claim 6. Regarding the limitation wherein along the length direction, a dimension of the casing is denoted as L, satisfying 0.65 ≤ L1/L ≤ 0.95, as set forth in the rejection of Claim 6 above, L1 is calculated to be 1.230 m. Nigel #2 (p. 1 and 2) evidences that the length L of the casing of the BMWi3 high-voltage battery system, which is the casing of modified Pierri as also set forth in the rejection of Claim 1 above, is 1660 mm or 1.660 m. As such, L1/L of modified Pierri is calculated to be 0.741.
Regarding Claim 10, modified Pierri discloses the energy storage device of Claim 9. Regarding the limitation wherein along the width direction, a dimension of the casing is denoted as D, satisfying 0.65 ≤ D1/D ≤ 0.99, as set forth in the rejection of Claim 9 above, D1 is calculated to be 0.782 m. Nigel #2 (p. 1 and 2) evidences that the width D of the casing of the BMWi3 high-voltage battery system, which is the casing of modified Pierri as also set forth in the rejection of Claim 1 above, is 964 mm or 0.964 m. As such, D1/D of modified Pierri is calculated to be 0.811.
Claims 11 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Pierri et al. (Pierri, E.; Cirillo, V.; Vietor, T.; Sorrentino, M. Adopting a Conversion Design Approach to Maximize the Energy Density of Battery Packs in Electric Vehicles, Energies, vol. 14, article 1939, published 30 March 2021) in view of Nigel (Nigel, “BMW i3”, Battery Design: from chemistry to pack, https://www.batterydesign.net/bmw-i3/, published 9 June 2023), herein referred to as Nigel #1, as evidenced by Lima (Lima, P. “Samsung SDI 94 Ah battery cell full specifications”, PushEVs, https://pushevs.com/2018/04/05/samsung-sdi-94-ah-battery-cell-full-specifications/, published 5 April 2018) and Ke et al. (US 2025/0079627 A1) as applied to Claim 1 above, as further evidenced by Cederlöf et al. (WO 2022/231498 A1).
Regarding Claims 11 and 16, modified Pierri discloses the energy storage device of Claim 1, but does not explicitly disclose wherein the battery compartment accommodates a plurality of the battery cells arranged along the height direction of the casing; and along the height direction, a dimension of the battery compartment is denoted as H1, and a sum of the dimensions of the housings of the plurality of battery cells arranged within the battery compartment is denoted as H2, satisfying 0.6 ≤ H2/H1 ≤ 0.95 (Claim 11), nor wherein the battery compartment accommodates a plurality of the batteries arranged along the height direction of the casing; and along the height direction, the dimension of the battery compartment is denoted as H1, and a sum of dimensions of the plurality of batteries arranged within the battery compartment is denoted as H4, satisfying 0.6 ≤ H4/H1 ≤ 0.99 (Claim 16).
Modified Pierri instead discloses wherein the battery compartment accommodates only one battery and therefore one battery cell arranged along a height direction of the casing (Pierri FIG. 3 illustrates only one battery and one battery cell arranged along the vertical direction in the side view of the battery compartment, which as set forth in the rejection of Claim 1 above, is analogous to a height direction of the casing of modified Pierri). Furthermore, the dimension of the battery compartment along the height direction of the casing H1 is disclosed by modified Pierri (Pierri FIG. 3 shows the total dimension of the battery compartment in the vertical direction in side view to be 160 mm) to be 160 mm or 0.160 m, and the dimension of the housing of the only one battery cell arranged within the battery compartment along the height direction of the casing H2 is disclosed by modified Pierri (Pierri FIG. 3 shows that the dimension of the battery cell in the vertical direction of the side view is 125 mm, which matches what is shown in Table 2) to be 125 mm or 0.125 m. Finally, Pierri discloses that the battery casing has a width of 5 mm (p. 11 ¶ “A width of…”), and as such, it can be calculated that the dimension of the one battery arranged within the battery compartment along the height direction H4 is 135 mm or 0.135 m (calculated by summing together the 125 mm battery cell height and two sides of the casing which are 5 mm each). As such, H2/H1 of modified Pierri wherein the battery compartment accommodates only one battery cell arranged along a height direction of the casing is calculated to be 0.781, and H4/H1 of modified Pierri wherein the battery compartment accommodates only one battery arranged along a height direction of the casing is calculated to be 0.844.
However, Pierri also discloses that dimensions of the energy storage device and arrangement of batteries within the energy storage device are factors that depend on the vehicle configuration and available space (p. 9 ¶ “A well-designed…” through p. 10 ¶ “Specific optimization strategies…”). Furthermore, it is well-known in the field of energy storage device design and optimization to arrange a plurality of batteries accommodated in a battery compartment along a height direction of a casing to provide an energy storage device with dimensions suitable for e.g. a semi-truck, as evidenced by Cederlöf (P8L33–37, P9L29–P10L18, FIG. 1, 2, and 7).
It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the energy storage device of modified Pierri such that the battery compartment accommodates a plurality of the batteries arranged along the height direction of the casing, which would necessarily result in the battery compartment accommodating a plurality of battery cells along a height direction of the casing, for the purpose of providing an energy storage device with an arrangement of batteries and dimensions that are suitable for a specific vehicle configuration (like a semi-truck) and available space. Furthermore, as this modification is essentially a matter of changing the arrangement of the batteries and therefore battery cells within the battery compartment, it would be expected by one of ordinary skill in the art that the dimensions of the batteries, battery cells, and battery compartment would be kept the same upon modification, and thus H2/H1 and H4/H1 of modified Pierri would remain as calculated above, i.e. retain values of 0.781 and 0.844, respectively.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Pierri et al. (Pierri, E.; Cirillo, V.; Vietor, T.; Sorrentino, M. Adopting a Conversion Design Approach to Maximize the Energy Density of Battery Packs in Electric Vehicles, Energies, vol. 14, article 1939, published 30 March 2021) in view of Nigel (Nigel, “BMW i3”, Battery Design: from chemistry to pack, https://www.batterydesign.net/bmw-i3/, published 9 June 2023), herein referred to as Nigel #1, as evidenced by Lima (Lima, P. “Samsung SDI 94 Ah battery cell full specifications”, PushEVs, https://pushevs.com/2018/04/05/samsung-sdi-94-ah-battery-cell-full-specifications/, published 5 April 2018) and Ke et al. (US 2025/0079627 A1) as applied to Claim 1 above, in further view of Gang et al. (US 2022/0376355 A1).
Regarding Claim 18, modified Pierri discloses the energy storage device of Claim 1, but does not disclose wherein the battery compartment comprises a plurality of sub-compartments, the plurality of sub-compartments are arranged along the length direction of the casing, and each of the sub-compartments accommodates at least one of the batteries.
Gang teaches an energy storage device (see battery module 200, [0041], FIG. 1 and 2) comprising a plurality of batteries (see cell assemblies 100, [0041], FIG. 1 and 2) accommodated in a battery compartment (see space formed between base insulation member 230, [0041], and top insulation member 240, [0062], shown in FIG. 2), each battery comprising a plurality of battery cells (see secondary batteries 110, [0042], FIG. 2). Gang further teaches wherein the battery compartment comprises a plurality of sub-compartments (see receiving portions 232, [0092], FIG. 7, which are spaces formed between partitions 238, [0090], FIG. 7, in base insulation member 230B, [0090], FIG. 7) arranged along a length direction of the energy storage device (FIG. 7 shows that the sub-compartments are arranged along the longest dimension of the device, i.e. the length direction of the battery compartment), each of the sub-compartments accommodating one of the batteries ([0091]). Gang teaches ([0092]) that the sub-compartments allow for guiding the location at which the plurality of batteries will be mounted in the battery compartment.
Gang is analogous to the claimed invention as it is in the same field of energy storage device design and optimization. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the energy storage device of modified Pierri such that the battery compartment comprises a plurality of sub-compartments, the plurality of sub-compartments are arranged along the length direction of the battery compartment (which is the length direction of the casing of modified Pierri, as set forth in the rejection of Claim 1 above), each of the sub-compartments accommodating at least one of the batteries, as taught by Gang, for the purposes of allowing for guiding of the location at which the plurality of batteries will be mounted in the battery compartment.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Pierri et al. (Pierri, E.; Cirillo, V.; Vietor, T.; Sorrentino, M. Adopting a Conversion Design Approach to Maximize the Energy Density of Battery Packs in Electric Vehicles, Energies, vol. 14, article 1939, published 30 March 2021) in view of Nigel (Nigel, “BMW i3”, Battery Design: from chemistry to pack, https://www.batterydesign.net/bmw-i3/, published 9 June 2023), herein referred to as Nigel #1, as evidenced by Lima (Lima, P. “Samsung SDI 94 Ah battery cell full specifications”, PushEVs, https://pushevs.com/2018/04/05/samsung-sdi-94-ah-battery-cell-full-specifications/, published 5 April 2018) and Ke et al. (US 2025/0079627 A1) as applied to Claim 1 above, as further evidenced by Ota et al. (US 2023/0133464 A1).
Regarding Claim 20, modified Pierri discloses the energy storage device of Claim 1, but does not disclose wherein a volume of the battery is denoted as V6, and a sum of volumes of the housings of the plurality of battery cells of the battery is denoted as V7, satisfying 0.5 ≤ V7/V6 ≤ 0.8.
However, it is well-known in the field of energy storage device design and optimization that increasing the volume ratio of battery cells to battery V7/V6 increases the volumetric capacity of the battery, as evidenced by Ota ([0003]). However, it is also well-known in the field that additional components required for proper functioning of the battery must be included in its volume, as evidenced by Ota ([0003]). Thus, one of ordinary skill in the art will understand that increasing the volume ratio of battery cells to battery V7/V6 will also decrease the space available for these additional components.
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II). In the instant case, the ratio V7/V6 is a result-effective variable that affects the volumetric capacity of the battery and the space available for additional battery components necessary for proper functioning, as evidenced by Ota, thus making V7/V6 a result-effective variable. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify V7/V6 of modified Pierri such that 0.5 ≤ V7/V6 ≤ 0.8 via routine experimentation, for the purpose of achieving a suitable balance of volumetric capacity of the battery and space available for additional battery components necessary for proper functioning.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 16 of copending Application No. 19/280,150 in view of Ota et al. (US 2023/0133464 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because both Claim 1 of the Instant Application and Claim 16 of the reference application teach an energy storage device, comprising: a casing having a battery compartment; and a plurality of battery cells accommodated within the battery compartment, wherein the battery cell comprises a housing and electrode terminals, the electrode terminals being disposed on the housing; wherein a volume of the battery compartment is denoted as V1, a sum of volumes of the housings of the plurality of battery cells within the battery compartment is denoted as V2, and 0.4 ≤ V2/V1 ≤ 0.95, wherein the battery cell further comprises at least one electrode assembly, the electrode assembly being accommodated within the housing; the housing is a right parallelepiped in shape, a dimension of the housing in a first direction is denoted as W1, a dimension of the housing in a second direction is denoted as T1, and a dimension of the housing in a third direction is denoted as K1, wherein one of the first direction, the second direction, and the third direction is parallel to the length direction of the casing, another is parallel to the width direction of the casing, and the remaining one is parallel to the height direction of the casing; the housing comprises a first wall and a second wall disposed opposite each other along the first direction, a third wall and a fourth wall disposed opposite each other along the second direction, and a fifth wall and a sixth wall disposed opposite each other along the third direction, wherein a sum of thicknesses of the first wall and the second wall is denoted as a, a sum of thicknesses of the third wall and the fourth wall is denoted as b, and a sum of thicknesses of the fifth wall and the sixth wall is denoted as c, satisfying (W1 – a) * (T1 – b) * (K1 – c) / (W1 * T1 * K1) ≥ 0.9.
While Claim 16 of the reference application does not teach batteries accommodated within the battery compartment that comprise p*q battery cells, the p*q battery cells are arranged in p rows and q columns, each row of battery cells is arranged along a length direction of the casing, each column of battery cells is arranged along a width direction of the casing, it is well-known in the field of energy storage device design and optimization to group battery cells into battery modules, i.e. batteries, in order to achieve large voltages and/or capacities for a desired purpose and minimize risk, as taught by Ota. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Claim 16 of the reference application such that batteries are accommodated within the battery compartment that comprise the battery cells, as it is well-known in the field to group battery cells into batteries in order to achieve large voltages and/or capacities for a desired purpose and minimize risk, as taught by Ota; it is noted that this modification would necessarily result in the energy storage device of Claim 16 of the reference application satisfying the limitations that the batteries comprise p*q battery cells, the p*q battery cells are arranged in p rows and q1 columns, and each row of battery cells is arranged along a length direction of the casing, and each column of battery cells is arranged along a width direction of the casing, as claimed in Claim 1 of the Instant Application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725