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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/23/25 has been entered.
Status of Claims
Pending:
1, 7, 9, 10, 14, 22, 25-34
Withdrawn:
NONE
Rejected:
1, 7, 9, 10, 14, 22, 25-34
Amended:
1, 14
New:
NONE
Independent:
1, 14
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 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.
Claims 1, 7, 9, 10, 14, 22, 25-34 are rejected under 35 U.S.C. 103 as being unpatentable over Seki (US 2015/0203941), cited on PTO-892 11/08/21, further in view of ASM Handbook Vol 13A, p 720-735 (cited on PTO-892 6/28/24).
Concerning independent claims 1 and 14, Seki teaches an aluminum alloy foil for a battery outer packaging [0020], said alloy containing an average grain size of ≤16µm [0033] which falls within the claimed average grain diameter of 100 grains of 1.0 to 7.0 µm (claim 1), and therefore meets said limitation. Seki does not specify the average grain diameter is in a cross section of the aluminum foil layer in the thickness direction. However, it is reasonable to expect substantially the same average grain diameter for the cross section of the thickness direction for Seki as for the instant invention, as Seki also teaches a substantially identical process of forming the aluminum foil (i.e. homogenizing 400-550°C [0046], hot rolling with exit temp. 250-400°C [0048], cold rolling, intermediate annealing ≥350°C [0046], cold rolling, and final annealing 250-400°C [0053]), as compared to the instant invention (see instant specification at [0135]- homogenizing, hot rolling, intermediate annealing, cold rolling to foil thickness, final annealing). Therefore, because Seki teaches an aluminum alloy foil for battery outer packaging with an overlapping (general) average grain size, together with a substantially identical method of forming and heat treating said alloy foil, then substantially the same average grain size is expected in the thickness direction as for the instant invention.
Concerning claim 1’s limitation of “a thickness of the aluminum alloy foil layer is from 15 µm to 35 µm”, Seki teaches foil 10-100µm thick [0045], which overlaps the claimed thickness and therefore meets said limitation.
Concerning amended claim 1’s limitation of “any 100 second phase particles within a field of view of an optical microscope…an average value of a diameter y of top 20 second phase particles…is from 1.0 µm to 4.0 µm”, Seki teaches that controlling the intermetallic particles (which qualify as second phase particles) to 1.0 to 5.0 µm in a certain density leads to an improvement in formability and strength [0024, 0034-0036, examples]. It would have been obvious to one of ordinary skill in the art, given the disclosure of Seki, to have controlled the average intermetallic particles/second phases to be between 1.0 to 5.0 µm (for the top 20 of any 100 particles within a field of view of an optical microscope), in order to provide an improvement in formability and strength (taught by Seki at [0024, 0034-0036, examples]).
Concerning claim 1’s limitation of the aluminum alloy foil is selected from variations of JIS 8021, or JIS 8079, the alloy of Seki comprises (in wt%): 0.8-2.0% Fe, 0.05-0.2% Si, 0.0025-0.5% Cu, which overlaps or touches the boundary of the alloying ranges Si, Fe, and Cu of 8021 and 8079 (as recited in paragraph [0058.1] of the instant specification), and therefore meets the instant limitation.
Seki does not specify: a) claim 1 and 14’s limitation of “a moldability of the battery packaging material, as defined by a maximum molding depth at which the battery packaging material does not develop pinholes or cracks when subject to cold forming under a pressing force of 0.4 MPa”, or b) the feature of “an acid resistance film… comprising at least one selected from the group consisting of phosphates, chromates, fluorides, trianzine-thiols, and cerium compounds” (cl. 1, 14).
Concerning a), the same moldability would be expected for the aluminum alloy foil of Seki as for the instant invention, as Seki teaches an overlapping foil composition, formed by a substantially identical process of forming (i.e. homogenizing 400-550°C [0046], hot rolling with exit temp. 250-400°C [0048], cold rolling, intermediate annealing ≥350°C [0046], cold rolling, and final annealing 250-400°C [0053]), as compared to the instant invention (see instant specification at [0135]). Therefore, because Seki teaches an overlapping aluminum alloy foil composition, together with a substantially identical method of forming and heat treating said alloy foil, as well as overlapping thickness, then substantially the same moldability (for given parameters of thickness, pressing force, and matching geometry) is expected in the Seki material, as for the instant invention.
Concerning b), it is known to apply conversion coatings (which meet the instant acid resistance film limitation) in order to increase corrosion resistance and improve adhesion of subsequently added layers (ASM Vol. 13A p 720). Said coatings typically comprise chromium, fluoride, and phosphates (ASM Vol. 13A p 720, 3rd column); but also can have cerium as a base (ASM Vol. 13A, p 727). Therefore it would have been obvious to modify Seki by including an acid resistance film comprising at least one material which meets the instant acid film component limitations of instant claims 1, 14, as well as dependent claims 29, 32).
Concerning claims 30 and 33, said conversion coatings can be a chromium phosphate conversion coating, formed by contact with phosphoric acid (H3PO4), chromium, and fluoride (ASM Vol. 13A p 722, 1st column), which meets the instant acid resistance film components.
Concerning claim 31 and 34, ASM Vol. 13A p 727 (3rd column) teaches polymers are further added to improve corrosion resistance and adhesion, such as phenolic resins, and thereby meets the instant acid resistance film components.
It would have been obvious to one of ordinary skill in the art to have applied a conversion coating (i.e. acid resistance film) to the aluminum alloy foil layer of Seki, in order to improve corrosion resistance and improve adhesion of subsequently added layers (ASM Vol. 13A p 720).
Concerning claim 7, Seki teaches said aluminum alloy foil comprises (in wt%):
claim 7
Seki
Fe
0.7-2.5
0.8-2.0
Si
-0.30
0.05-0.2
Cu
-0.05
0.0025-0.5
Table 1: alloying ranges of cl. 7 vs prior art of Seki
which overlaps the claimed alloying ranges, and therefore meets the claimed limitation.
Concerning claim 9, Seki teaches using said aluminum alloy foil for secondary battery outer packaging [0004], which meets the instant packaging material for secondary battery limitation. Concerning claim 10, Seki teaches battery components including electrodes (wherein electrodes can be positive or negative) and an electrolyte [0056], which meets the claimed limitation.
Concerning claims 25 and 27, Seki teaches the Al-Fe-Si alloy foil is 10-100µm thick [0045], which overlaps the claimed thickness, and therefore meets the instant limitations.
Concerning claims 22, 26, and 28, which mentions the thickness of the battery packaging material, Seki teaches the Al-Fe-Si alloy foil is used as a battery packaging material, and said foil is 10-100 µm thick [0045], which overlaps the claimed thickness, and therefore meets the instant limitation.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 7, 9, 10, 14, 22, 25-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-7 of copending Application No. 16/650462 (reference application), further in view of ASM Handbook Vol 13A, p 720-735 (cited herein).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application at claim 1 recites an overlapping Al-Fe-Si alloy foil (instant claim 7) for battery packaging material, said foil exhibiting an average crystal grain diameter ≤10µm, substantially as presently claimed (instant claims 1, 14). Additionally, said reference application at claim 1 recites secondary particles ≤5 µm, substantially as presently claimed (instant claim 1).
Though the claims of the reference application do not mention the application of an acid resistance film, it is known to apply conversion coatings (which meet the instant acid resistance film limitation) in order to increase corrosion resistance and improve adhesion of subsequently added layers (ASM Vol. 13A p 720). Said coatings typically comprise chromium, fluoride, and phosphates (ASM Vol. 13A p 720, 3rd column); but also can have cerium as a base (ASM Vol. 13A, p 727), which meets the instant acid film component limitations of instant claims 1, 14 (as well as dependent claims 29, 32).
Concerning instant claims 30 and 33, said conversion coatings can be a chromium phosphate conversion coating, formed by contact with phosphoric acid (H3PO4), chromium, and fluoride (ASM Vol. 13A p 722, 1st column), which meets the instant acid resistance film components.
Concerning instant claim 31 and 34, ASM Vol. 13A p 727 (3rd column) teaches polymers are further added to improve corrosion resistance and adhesion, such as phenolic resins, and thereby meets the instant acid resistance film components.
It would have been obvious to one of ordinary skill in the art to have applied a conversion coating (i.e. acid resistance film) to the aluminum alloy foil layer defined in the claims of the reference application, in order to improve corrosion resistance and improve adhesion of subsequently added layers (ASM Vol. 13A p 720).
Concerning instant claim 9, though the claims of the reference application do not mention the battery packaging material is used for secondary batteries, it would have been obvious to one of ordinary skill in the art to have used the aluminum alloy foil of claim 1, 5-7 of the reference application for a variety of battery types, such as secondary batteries. Concerning instant claim 10, it would have been within the level of one of skill in the art, to have included a battery element including a positive electrode, a negative electrode, and an electrolyte, for the battery packaging material taught by the claims of the reference application. Concerning the thickness of said Al-Fe-Si foil, though the claims of the reference application do not mention the thickness of the foil, because the reference application is drawn to “foil”, it would have been obvious to have rolled the Al-Fe-Si of the reference application to a suitable foil thickness, such as ≤50µm.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Amendment
In the response filed 12/23/25 applicant amended claims 1 and 14, and submitted various arguments traversing the rejections of record.
Applicant’s argument, that the instant invention is allowable because the prior art of Seki does not specify the amended claimed limitation (cl. 1, 14) of: “any 100 second phase particles within a field of view of an optical microscope…an average value of a diameter y of top 20 second phase particles…is from 1.0 µm to 4.0 µm”, has not been found persuasive. As set forth above, Seki teaches that controlling the intermetallic particles (which qualify as second phase particles) to 1.0 to 5.0 µm in a certain density leads to an improvement in formability and strength [0024, 0034-0036, examples]. Seki teaches controlling second phase particles/ intermetallic particles to a range of 1.0-5.0 µm, which narrowly overlaps the claimed range of 1.0 to 4.0 µm. It would have been obvious to one of ordinary skill in the art, given the disclosure of Seki, to have controlled the average intermetallic particles/second phases to be between 1.0 to 5.0 µm (for the top 20 of any 100 particles within a field of view of an optical microscope), in order to provide an improvement in formability and strength (taught by Seki at [0024, 0034-0036, examples]).
With respect to the narrow overlap taught by the prior art, Applicant has not clearly shown specific unexpected results with respect to the prior art of record, or criticality of the instant claimed range (wherein said results must be fully commensurate in scope with the instantly claimed ranges, etc. see MPEP 716.02 d).
Applicant’s argument that the instant invention is allowable because Seki does not teach or suggest the claimed method of measuring average grain size has not been found persuasive. As set forth above, though Seki does not specify the average grain diameter is in a cross section of the aluminum foil layer in the thickness direction, it is reasonable to expect substantially the same average grain diameter for the cross section of the thickness direction for Seki as for the instant invention, as Seki also teaches a substantially identical process of forming the aluminum foil (i.e. homogenizing 400-550°C [0046], hot rolling with exit temp. 250-400°C [0048], cold rolling, intermediate annealing ≥350°C [0046], cold rolling, and final annealing 250-400°C [0053]), as compared to the instant invention (see instant specification at [0135]- homogenizing, hot rolling, intermediate annealing, cold rolling to foil thickness, final annealing). Therefore, because Seki teaches an aluminum alloy foil for battery outer packaging with an overlapping (general) average grain size, together with a substantially identical method of forming and heat treating said alloy foil, then substantially the same average grain size is expected in the thickness direction as for the instant invention.
Applicant’s argument that the instant invention is allowable because Seki allows for intermetallic compounds/second phase particles above 5.0 µm has not been found persuasive. Seki teaches against intermetallic compounds with a diameter above 5.0 µm, as intermetallic compounds with diameter ≥5.0 µm are a triggering point of pin-holes and cause for cracks during cold rolling [0037].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANELL COMBS MORILLO whose telephone number is (571)272-1240. The examiner can normally be reached on Mon-Thurs 7am-3pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 1/9/26