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 .
Status of Application
Applicant’s amendments and remarks filed 2/28/2026 have been acknowledged. Claims 1-3, 5, 10, and 11 are pending.
Claim Objections
Claim 1 is objected to because of the word “the” should be added before “third” at the end of line 20. Appropriate correction is required.
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 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0091428 to Naito et al., in view of US 2010/0028758 to Eaves et al.
Regarding claim 1, the limitation reciting “wherein the second region is folded along a first boundary with the first region to cover half of a second surface of the first sheet opposite to the first surface, and third region is folded along a second boundary with the first region to cover the other half of the second surface of the first sheet and to seal the first sheet” makes the instant claim a product-by-process claim. Product-by-product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01. In this case, as long as the second region and the third region each cover about half of the same surface of the first sheet, the claim is met.
Naito et al. teaches an energy storage module or power supply device 100 comprising:
a plurality of battery cells 1 arranged in a first direction such that long side surfaces of adjacent ones of the battery cells face one another, the long side surfaces of the battery cells extending in a second direction normal to the first direction and a third direction normal to the first direction and the second direction, the long side surfaces being larger in the second direction than in the third direction, each of the battery cells comprising a vent as seen in Figs. 1 and 2 ([0031]);
a plurality of insulation spacers or thermal insulation sheet 2, at least one of the insulation spacers being between the long side surfaces of each adjacent pair of the battery cells (Figs. 2 and 3; [0022]; [0040]); and
a cover member including fixing member 6 and end plates 7 comprising an internal receiving space and accommodating the battery cells and the insulation spacers,
wherein each of the insulation spacers or thermal insulation sheet 2 comprises a first sheet including a heat-insulating material, e.g. inorganic fiber sheet 2X where gaps between the inorganic fibers are filled with inorganic particles ([0023-25]; [0040-42]), and protective sheets 4 adhered to opposite surfaces of the first sheet by one or more adhesive members and sealing the heat-insulating material ([0026]; [0027]; [0045-48]).
Naito et al. does not expressly teach that the protective sheets 4 are one second sheet including a first region on which a first surface of the first sheet is seated, a second region extending from a first side of the first region in the second direction, and a third region extending from a second side of the first region opposite to the first side in the second direction, and wherein the second region is folded along a first boundary with the first region to cover half of a second surface of the first sheet opposite to the first surface, and third region is folded along a second boundary with the first region to cover the other half of the second surface of the first sheet and to seal the first sheet.
Eaves et al. also relates to a packaged component placed between battery cells in a battery pack for thermal management (abstract; Figs. 2 and 4; [0030]; [0032]; [0036]) and teaches three alternative constructions of a pouch: 1) a “pillow seal” construction, wherein a sheet of material is folded at two opposed edges then heat-bonded to one another to form a middle seam, and the end seams are then also sealed (Fig. 1; [0032]); 2) a “folding table” technique, where a flat sheet is folded and heat sealed to form a closed edge (Fig. 3; [0033]); and 3) sealing of two separate sheets of film material to one another along four sides ([0034]). The third alternative corresponds with Naito et al. ([0026]; [0027]; [0045-48]), while the first the claimed invention.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to used one cover sheet similarly to the “pillow seal” construction as shown by Eaves et al. rather than the two cover sheets as suggested by Naito et al., motivated by the fact that Eaves et al. demonstrates that these two were known alternative procedures to package a content and the skilled artisan would have obtained expected results using one or the other. Furthermore, it would have been within the skills of the ordinary artisan to fold the claimed second region and third region of the second sheet along the short side of the first sheet rather than the long side as shown in Fig. 1 of Eaves to arrive at the claimed invention, as both directions would have formed a pouch enclosing the content with expected results.
Regarding claim 5, the first sheet would have been covered and sealed by the second sheet as Naito et al. suggests that the protective sheet 4 is adhered to the surface of inorganic fiber sheet 2X via an adhesive ([0045]).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Naito et al. and Eaves as applied to claim 1 above, in view of US 2021/0163303 to Evans et al.
Regarding claims 2 and 3, Naito et al. does not expressly teach that the first sheet comprises a partition wall having a honeycomb structure, and the heat-insulating material accommodated in the partition wall per claim 2 or that the heat-insulating material comprises at least one of an aerogel or an oxide having a high heat-insulating property per claim 3.
Evans et al. also relates to a heat control member (insulation spacer) placed between battery cells in a battery module (abstract; [0002]; [0022]; [0023]) and teaches an exemplary heat control member 40 including reinforced aerogel compositions 42, 43 containing a reinforcing material, e.g. honeycomb reinforcement material, supporting an aerogel material, and layers of thermally conductive or thermally capacitive material 46, 47 covering surfaces of the reinforced aerogel compositions 42, 43 (Fig. 9; [0067]; [0149]; [0150]). The reinforced aerogel composition having the honeycomb reinforcement material reads on the claimed first sheet comprising a partition wall having a honeycomb structure, the heat insulating aerogel material accommodated in the partition wall.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the reinforced aerogel composition of Evans et al. as the first sheet in the insulation spacers of Naito et al., motivated by the fact that Evans et al. teaches that aerogel materials are known to possess about two to six times the thermal resistance of other common types of insulation ([0007]), that the reinforced aerogel compositions are durable and easy to handle, have favorable resistance to heat propagation and fire propagation while minimizing thickness and weight of materials used, and also have favorable properties for compressibility, compressional resilience, and compliance ([0014]), and that the heat control members (insulation spacers) including the reinforced aerogel composition provide thermal barriers for batteries, have favorable insulation properties, and have favorable reaction to fire, combustion and flame-resistance properties (abstract). The skilled artisan would have obtained expected results applying a known element to a similar product.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Naito et al. and Eaves et al. as applied to claim 1 above, in view of US 2023/0275289 to Middendorf et al.
Regarding claim 10, the limitation reciting “spray coating is performed on the top and bottom portions of the first sheet and the second sheet” makes the instant claim a product-by-process claim. Product-by-product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01. In this case, a coating on the top and bottom portions of the first sheet and the second sheet is considered.
Naito et al. and Eaves et al. render obvious the structure that both sides of the first sheet facing each other are covered by the second sheet, but do not expressly teach a coating on the top and bottom portions of the first sheet and the second sheet.
Middendorf et al. also relates to an energy storage module or battery module 20 comprising: a plurality of battery cells 22 and a plurality of insulation spacers or thermal runway barriers 24 therebetween (Fig. 2; [0037]) and teaches that each insulation spacer or thermal runway barrier 24 comprises a first sheet, e.g. one or more fiber matrix layers 10 containing nonwoven inorganic (i.e., nonmetallic) or otherwise heat resistant fibrous insulation material, thermally insulative ceramic or otherwise nonmetallic inorganic particles, and an organic or inorganic binder (Figs. 1 and 6-8; [0036]; [0067]), and a second sheet, e.g. an encapsulating film 12, covering opposite surfaces of the first sheet (Figs. 1-8; [0039]; [0040]; [0067]), wherein the second sheet or encapsulating film 12 may be a spray coated layer or a laminated layer and the layer of nonwoven fibrous thermal insulation has a peripheral edge, and the organic encapsulation layer is sealed around the peripheral edge ([0110]; [0111]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have coated the top and bottom portions of the first sheet and the second sheet of the prior art insulation spacers, motivated by the fact that Middendorf et al. demonstrates that covering the peripheral edge of the thermal insulation layer prevents or significantly reduces the shedding or loss of inorganic fibers or particles ([0039]; [0070]; [0071]). The skilled artisan would have appreciated securing the edges of the prior art insulation spacers to prevent or significantly reduce the shedding or loss of inorganic fibers or particles and would have obtained expected results.
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The instant claim requires that a thickness of each of the insulation spacers in the first direction is less than 50% of a first distance between long side surfaces of adjacent battery cells. However, the insulation spacers or thermal insulation sheets 2 of Naito et al. are sandwiched between stacking surfaces of battery cells and thermally insulates the adjacent battery cells (Figs. 1 and 2; abstract). There was no teaching or suggestions found in other prior arts that would have led one of ordinary skill in the art before the effective filing date of the claimed invention to make the thickness of the insulation spacers less than 50% of the distance between adjacent cells as claimed.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant amended claim 1 to specify the arrangement of the battery cells and the insulation spacers in the first, second, and third directions. In response, the Examiner has applied a new ground of rejection, wherein, in brief, Naito provides the plurality of battery cells and insulation spacers therebetween, each insulation spacer having two second sheets covering the opposite surfaces of a first sheet, and Eaves demonstrates different alternative methods including one using one second sheet.
On Page 7 of the remarks, Applicant argued about the Office Action identifying claim 1 as a product-by-process claim as the “folded” nature refers to the distinct structural characteristics of the product. The Examiner reassures Applicant that the structural characteristics are considered and given patentable weight.
Second, Applicant argued that the pouch of Figure 1 of Eaves has second and third portions extending from the first portion in a different direction than claimed and requires an overlap in the pouch to be heat-bonded. However, when folding an outer sheet to cover an inner sheet, it would have been obvious to fold the outer sheet along the short side or the long side of the inner sheet and it would have been within the skills of the ordinary artisan to do one or the other; the results would have been predictable. Further, the prior art construction meets the claimed structure where portions of the outer sheet each cover about half of the same side surface of the first sheet and the claim does not expressly exclude the middle seal.
Finally, the new claim 11 was found to contain allowable subject matter.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENG M CHAN whose telephone number is (571)270-5859. The examiner can normally be reached 9 am - 5:30 pm on Monday, 9 am - 3 pm on Tuesday, and 9 am to 1 pm on Wednesday and Thursday.
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/Heng M. Chan/Examiner, Art Unit 1725
/Sean P Cullen, Ph.D./Primary Examiner, Art Unit 1725