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 .
Response to Amendment
This Office Action is responsive to the Appeal Brief filed September 22, 2025.
The following rejections are overcome:
Claim(s) 1-17 under 35 U.S.C. 103 as being unpatentable over Ikemi et al. EP 3379602A1 in view of JP 2004523615 A (hereinafter referred to as ‘615).
Claims 1-17 are newly rejected as follows:
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikemi et al. EP 3379602A1 in view of Murakami et al. WO 2016031492A1 and further in view of JP 2004523615 A (hereinafter referred to as ‘615).
With respect to claim 1, Ikemi teaches a composition comprising: i. a continuous matrix phase including an oligomer or polymer (a separator substate including a filler porous layer with a polyalkyleneglycol group-containing thermoplastic polymer; [0063]-[0064]; the separator is continuous with a width of 10 to 500mm and length of 200 to 4,000m; [0224]; the separator configuration is a stretched porous sheet [0188]; wherein the thermoplastic polymer is dip coated [0203]; thus forming a matrix); ii. a dispersed filler phase including one or more fillers dispersed in the matrix phase (the filler porous layer is coated on the substrate using a solvent and dispersing agent [0070]; the thermoplastic layer includes inorganic filler [0072]). With respect to claim 5, the conductive filler includes one or more metal atoms (the filler is aluminum hydroxide [0055]). With respect to claim 6, the conductive filler includes aluminum hydroxide (the filler is aluminum hydroxide [0055]). With respect to claim 9, the oligomer or polymer includes alkoxide groups (the thermoplastic polymer is polyoxyethylene, polyoxypropylene or polyoxybutylene; [0119]). With respect to claim 13, the amount of the one or more fillers is about 86 weight percent or more, based on the total weight of the composition (the filler may be present in an amount of 80 to 99.9 weight%; [0060]).
With respect to claim 14, the amount of the one or more fillers is about 95 weight percent or less (the filler may be present in an amount of 80 to 99.9 weight%; [0060]).
With respect to claim 16, Ikemi teaches a composition comprising: i. a continuous matrix phase including a polymer or polymerizable compound (a separator substate including a filler porous layer with a polyalkyleneglycol group-containing thermoplastic polymer; [0063]-[0064]; the separator is continuous with a width of 10 to 500mm and length of 200 to 4,000m; [0224]; the separator configuration is a stretched porous sheet [0188]; wherein the thermoplastic polymer is dip coated [0203]; thus forming a matrix); ii. about 86 weight percent or more of a dispersed filler phase including one or more conductive fillers dispersed in the matrix phase (the filler may be present in an amount of 80 to 99.9 weight%; [0060]; the filler porous layer is coated on the substrate using a solvent and dispersing agent [0070]; the thermoplastic layer includes inorganic filler [0072]).
Although Ikemi teaches the mean particle size (D50) of the filler is 0.01 to 4.0 µm [0058], the reference does not expressly disclose: the one or more conductive fillers having a broad particle size distribution characterized by a ratio of D90 / D50 of about 3 or more (claims 1 & 16); and wherein the one or more fillers is covered and/or reacted with a surface modifier (claim 1); the composition is a thermal interface material having a thermal conductivity of about 2.0 W/mK or more (preferably about 2.5 W/mK or more, and more preferably about 3.0 W/mK or more) (claim 2); the one or more fillers is a conductive filler, a thermally conductive filler, having a thermal conductivity of about 3 W/mK to about 80 W/mK (claim 3); the conductive filler has a thermal conductivity of about 60 W/mK or less (e.g., about 40 W/mK or less, or about 20 W/mK or less) (claim 4); wherein the concentration of the one or more metal atoms is about 25 percent or less based on the total number of atoms in the conductive filler (claim 5);the conductive filler has a Mohs hardness of about 6 or less, preferably about 5 or less, and more preferably about 4 or less (claim 7); the oligomer or polymer has a weight average molecular weight of about 15,000 g/mol or less, or about 10,000 g/mol or less (claim 8); the surface modifier includes an alkyl group with about 6 or more (preferably about 8 or more, or about 10 or more, or about 12 or more) carbon atoms and a functional group on one end that covalently bonds with the filler (claim 10); the surface modifier is present in an amount from about 0.05 weight percent or more (preferably about 0.2 weight percent or more, and more preferably about 0.5 weight percent or more) based on the total weight of the composition (claim 11); the surface modifier is present in an amount of about 10 weight percent or less, preferably about 8 weight percent or less, more preferably about 6 weight percent or less, and most preferably about 4 weight percent or less (claim 12); the one or more functional groups of the surface modifier includes an alkoxysilane group (claim 15); the composition is characterized by one or any combination of the following: i) the composition mixes as a smooth mass without crumbling; and/or ii) the composition has a viscosity of about 700 N or less (as determined by press-in force at 0.5 mm); and/or iii) the composition has a thermal conductivity of about 3 W/mK or more (claim 17).
Murakami teaches that it is well known in the art to employ a polymer thermosetting resin layer (thermoplastic resin, See <Porous film> section, paragraph 3) including a filler (filler may be aluminum hydroxide, See <Porous layer> section, paragraph 11), the one or more conductive fillers having a broad particle size distribution characterized by a ratio of D90 / D50 of about 3 or more (D90 = 0.5 to 5 µm/ D50= 0.01 to 1= 5/1 to 0.5/0.1= 5 to 50 µm; See <Porous layer> section, paragraph 18; claims 1 & 16).
‘615 teaches that it is well known in the art to employ a polymer thermosetting resin layer including a filler [0101], wherein the thermosetting resin is a matrix [0102], wherein the one or more fillers is covered and/or reacted with a surface modifier (the filler may be aluminum hydroxide [0094], that is surface treated with an adhesion improver; [0101], claim 1); the one or more functional groups of the surface modifier includes an alkoxysilane group (the surface modifier may include a function group including alkoxysilane such as vinyltriethoxysilane, methacryloxypropyltrimethoxysilane, glycidoxypropyltrimethoxysileane; [0102], claim 15).
Ikemi, Murakami and ‘615 are analogous art from the same field of endeavor, namely fabricating a thermoplastic polymer matrix including an aluminum hydroxide filler.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the one or more aluminum hydroxide conductive fillers having a broad particle size distribution characterized by a ratio of D90 / D50 of about 3 or more of Murakami, as the aluminum hydroxide filler of Ikemi, in order to improve the electrical insulating properties. Ikemi teaches that the filler improves electrical insulating properties [0054], and has a mean particle size (D50) of 0.01 to 4.0 µm [0058]. Murakami teaches the one or more conductive fillers having a broad particle size distribution characterized by a ratio of D90 / D50 of D90 = 0.5 to 5 µm/ D50= 0.01 to 1= 5/1 to 0.5/0.1= 5 to 50 µm. Therefore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
With respect to the conductive fillers being covered and/or reacted with a surface modifier; it would have been obvious to employ aluminum hydroxide conductive fillers being covered and/or reacted with a surface modifier as taught by ‘615, in the filler of Ikemi in view of Murakami, in order to promote adhesion of the composition to adjacent battery components including additional separator layers and electrodes. The skilled artisan recognizes in the electrochemical arts that the separator layer must stay securely positioned between the electrodes to obviate short circuiting by preventing contact of the electrodes of opposing polarity.
With respect to the composition having a thermal conductivity of about 2.0 W/mK or more (preferably about 2.5 W/mK or more, and more preferably about 3.0 W/mK or more) (claim 2); it would be reasonable to expect in the composition of Ikemi in view of Murakami and ‘615, because “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the instant case, Ikemi in view of ‘615 teach the same composition, and the thermal conductivity of about 2.0 W/mK or more is necessarily present. See MPEP 2112.01. Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
With respect to the one or more fillers being a conductive filler, a thermally conductive filler, having a thermal conductivity of about 3 W/mK to about 80 W/mK (claim 3); it would be reasonable to expect in the filler of Ikemi in view of Murakami and ‘615, because “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” Ikemi teaches that the filler is aluminum hydroxide [0055]. ‘615 also teaches the filler may be aluminum hydroxide [0094]. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the instant case, Ikemi in view of ‘615 teach the same aluminum hydroxide filler, and the thermal conductivity of about 3 W/mK to about 80 W/mK is necessarily present. See MPEP 2112.01. Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
With respect to the conductive filler having a thermal conductivity of about 60 W/mK or less, about 40 W/mK or less, or about 20 W/mK or less, (claim 4); it would be reasonable to expect in the filler of Ikemi in view of Murakami and ‘615, because “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” Ikemi teaches that the filler is aluminum hydroxide [0055]. ‘615 also teaches the filler may be aluminum hydroxide [0094]. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the instant case, Ikemi in view of ‘615 teach the same aluminum hydroxide filler, and the thermal conductivity of about 40 W/mK or less, or about 20 W/mK or less is necessarily present. See MPEP 2112.01. Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
With respect to the wherein the concentration of the one or more metal atoms is about 25 percent or less based on the total number of atoms in the conductive filler (claim 5); it would be obvious in the composition of Ikemi in view of Murakami and ‘615, in order to improve the electrical insulating properties. Ikemi teaches that the filler improves electrical insulating properties [0054], and is aluminum hydroxide [0055]. ‘615 also teaches the filler may be aluminum hydroxide [0094]. Therefore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
With respect to the conductive filler has a Mohs hardness of about 6 or less, preferably about 5 or less, and more preferably about 4 or less (claim 7); it would be reasonable to expect in the filler of Ikemi in view of Murakami and ‘615, because “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” Ikemi teaches that the filler is aluminum hydroxide [0055]. ‘615 also teaches the filler may be aluminum hydroxide [0094]. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the instant case, Ikemi in view of ‘615 teach the same aluminum hydroxide filler, and a Mohs hardness of about 6 or less, preferably about 5 or less, and more preferably about 4 or less is necessarily present. See MPEP 2112.01. Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
With respect to the oligomer or polymer having a weight average molecular weight of about 15,000 g/mol or less, or about 10,000 g/mol or less (claim 8); it would be reasonable to expect in the filler of Ikemi in view of Murakami and ‘615, because “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” Ikemi teaches that the thermoplastic polymer is polyoxyethylene, polyoxypropylene or polyoxybutylene; [0119]. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the instant case, Ikemi in view of ‘615 teach the same polymer, and thus having a weight average molecular weight of about 15,000 g/mol or less, or about 10,000 g/mol or less, is necessarily present. See MPEP 2112.01. Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
With respect to the surface modifier including an alkyl group with about 6 or more (preferably about 8 or more, or about 10 or more, or about 12 or more) carbon atoms and a functional group on one end that covalently bonds with the filler (claim 10); it would be reasonable to expect in the surface modifier including filler of Ikemi in view of Murakami and ‘615, because ‘615 teaches that the one or more functional groups of the surface modifier includes an alkoxysilane group (the surface modifier may include a function group including alkoxysilane such as vinyltriethoxysilane, methacryloxypropyltrimethoxysilane, glycidoxypropyltrimethoxysileane; [0102]. Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
With respect to the surface modifier being present in an amount from about 0.05 weight percent or more, preferably about 0.2 weight percent or more, and more preferably about 0.5 weight percent or more, based on the total weight of the composition (claim 11); it would be obvious in the composition of Ikemi in view of Murakami and ‘615, in order to promote adhesion of the composition to adjacent battery components including additional separator layers and electrodes. The skilled artisan recognizes in the electrochemical arts that the separator layer must stay securely positioned between the electrodes to obviate short circuiting by preventing contact of the electrodes of opposing polarity. Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
With respect to the surface modifier is present in an amount of about 10 weight percent or less, preferably about 8 weight percent or less, more preferably about 6 weight percent or less, and most preferably about 4 weight percent or less (claim 12); it would be obvious in the composition of Ikemi in view of Murakami and ‘615, in order to promote adhesion of the composition to adjacent battery components including additional separator layers and electrodes. The skilled artisan recognizes in the electrochemical arts that the separator layer must stay securely positioned between the electrodes to obviate short circuiting by preventing contact of the electrodes of opposing polarity. Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
With respect to the composition is characterized by one or any combination of the following: i) the composition mixes as a smooth mass without crumbling; and/or ii) the composition has a viscosity of about 700 N or less (as determined by press-in force at 0.5 mm); and/or iii) the composition has a thermal conductivity of about 3 W/mK or more (claim 17); it would be reasonable to expect in the composition of Ikemi in view of Murakami and ‘615, to have a thermal conductivity of about 3 W/mK or more, because “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the instant case, Ikemi in view of ‘615 teach the same composition, and the thermal conductivity of about 3 W/mK or more is necessarily present. See MPEP 2112.01. Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Response to Arguments
Applicant's arguments in the Appeal Brief filed September 22, 2025 have been fully considered and are partly persuasive. Applicant asserts that Ikemi is not analogous prior art, because the reference is not from the same field of endeavor and instead relates to a separator to separate a positive and negative electrode within a battery. In contrast, the claimed invention is a thermal interface material used outside of the battery cell. This argument is not persuasive, as the claims do not differentiate between where the composition is used. More specifically, the claims are drawn to a “composition” and there are no structural features that differentiate any product inside or outside a battery. So long as the prior art teaches all of the features of the composition, the claims are satisfied irrespective of future use. Stated differently, intended use does not distinguish a composition claim. Intended use is considered, but it does not impart patentability to the device and it is common for identical material to have several different applications including inside and outside of the battery.
Applicant also asserts that “one or more conductive fillers have a broad particle size distribution charactered by a ratio of D90/D50 of about 3 or more” is not taught by Ikemi. JP’615 does not cure the deficiencies of Ikemi. Although Ikemi teaches the mean particle size (D50) of the filler is 0.01 to 4.0 µm [0058], the reference does not expressly disclose: a ratio of D90 / D50 of about 3 or more. Therefore, this assertion is persuasive and the previously pending rejection is overcome.
However, the combined ”electrical device separator” of Ikemi in view of JP ‘615, reads on the remaining limitations of the instant claims, because the claims are drawn to a “composition” and there are no distinguishing structural limitations that differentiate the instant composition from the products used outside the battery. Stated differently, intended use does not distinguish a composition claim. Furthermore, Ikemi and JP ‘615 are analogous art, because Ikemi and ‘615 are from the same field of endeavor, namely fabricating a thermoplastic polymer matrix including an aluminum hydroxide filler.
New Rejection: Although Ikemi teaches the mean particle size (D50) of the filler is 0.01 to 4.0 µm [0058], the reference does not expressly disclose: the one or more conductive fillers having a broad particle size distribution characterized by a ratio of D90 / D50 of about 3 or more (claims 1 & 16). JP’615 does not cure the ratio of D90 / D50 of about 3 deficiency of Ikemi. However, newly added Murakami et al. WO 2016031492A1 teaches D90 = 0.5 to 5 µm/ D50= 0.01 to 1= 5/1 to 0.5/0.1= 5 to 50 µm; See <Porous layer> section, paragraph 18. Ikemi, Murakami and ‘615 are analogous art from the same field of endeavor, namely fabricating a thermoplastic polymer matrix including an aluminum hydroxide filler.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Niiru et al., JP-H06199519A teaches aluminum hydroxide filler 5-25 μm particle diameter D50 in 50% region, 10-50 μm particle diameter D90 in 90% region. See the Constitution. Kawamura WO 2010093060A1 teaches aluminum hydroxide filler ratio D90/D10 of secondary grain diameter D10. See the Abstract.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Monique Wills whose telephone number is (571) 272-1309. The Examiner can normally be reached on Monday-Friday from 8:30am to 5:00 pm.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE M WILLS whose telephone number is (571)272-1309. The Examiner can normally be reached on Monday-Friday from 8:30am to 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the Examiner's supervisor, Tiffany Legette, may be reached at 571-270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Monique M Wills/
Examiner, Art Unit 1722
/TIFFANY LEGETTE/ Supervisory Patent Examiner, Art Unit 1723