DETAILED ACTION
This is an Office action based on application number 17/624,708 filed 23 March 2022, which is a national stage entry of PCT/JP2020/027120 filed 10 July 2020, which claims priority to JP2019-184084 filed 4 October 2019 and JP2019-128632 filed 10 July 2019. Claims 1-6, 9, 12-13, and 16-19 are pending. Claims 7-8, 10-11, and 14-15 are canceled.
Amendments to the claims, filed 20 March 2026, have been entered into the above-identified application.
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 .
Examiner’s Note
Applicant’s arguments in the after-final response filed 26 June 2026 are persuasive to overcome the prior art rejections of record. This Office action is a second non-final rejection.
Withdrawn Rejections
The prior art rejections made of record in the previous Office action are withdrawn due to Applicant’s persuasive arguments.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-6, 9, 12-13, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraki et al. (WIPO International Publication No. WO 2018/110702 A1 with citations taken from the provided machine translation) (Hiraki) in view of Matsuura et al. (US Patent Application Publication No. US 2017/0033330 A1) (Matsuura) and Takada (US Patent Application Publication No. US 2015/0311483 A1) (Takada).
Regarding instant claims 1-6 and 12-13:
Hiraki discloses an adhesive film for a metal, wherein the adhesive film is interposed between a metal terminal electrically connected to an electrode of a battery and a packaging element that seals the battery. Hiraki further discloses that the adhesive film comprises at least one polypropylene layer and at least one acid-modified polypropylene layer forming a surface layer on at least one side of said adhesive film (Claim 1).
FIG. 5, reproduced below, illustrates adhesive film <1> having at least one polypropylene layer <11> and two layers of acid-modified polypropylene <12> on opposing surfaces of the polypropylene layer <11> (paragraph [0017]).
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Said polypropylene layer <11> meets the claimed polypropylene base material.
Said acid-modified polypropylene layers <12> meet the claimed first and second polyolefin layer containing an acid-modified polypropylene.
Said “packaging element that seals the battery” meets the claimed exterior material for power storage device that seals the power storage device element.
Hiraki further discloses that the acid-modified polypropylene is graft modified with an unsaturated carboxylic acid or an anhydride thereof (paragraph [0050]), preferably a maleic anhydride-modified polypropylene (paragraph [0053]).
Hiraki discloses that the thickness of polypropylene layer <11> is 15 to 80 μm (paragraph [0046]); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Hiraki further discloses that the thickness of the acid-modified polypropylene layers <12> is 10 μm to 40 μm (paragraph [0054]).
Given the thickness ranges and an adhesive film structure comprising a polypropylene layer <11> and 2 acid-modified polypropylene layers <12>, one of ordinary skill would recognize that the range of the total thickness of the adhesive film disclosed by Hiraki overlaps the range recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Hiraki further discloses that the method for laminating the at least one polypropylene layer can be carried out using an extrusion method (paragraph [0066]).
Hiraki does not explicitly disclose the melt flow rates of the acid-modified polypropylene layer and the polypropylene layer.
However, Matsuura discloses a heat-sealable adhesive insulating film disposed on electrodes of a secondary battery, wherein the film comprises a base material composed of a polyolefin resin and an adhesive layer composed of a polyolefin resin modified with an unsaturated carboxylic acid or a derivative thereof (Claim 1).
Matsuura further discloses that the base layer is made of polypropylene (paragraph [0023]).
Matsuura further discloses that the met flow rate of the resin that forms the base layer is 1-20 g/10 min determined at 230° C for propylene series polymers from the viewpoint of film-forming stability (paragraph [0046]). It is noted that the melt flow rate of the polypropylene disclosed by Matsuura includes the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the polypropylene of Matsuura to form the base layer of Hiraki. The motivation for doing so would have been that such a polypropylene contributes to film-forming stability. Furthermore, the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Further, Takada discloses a secondary battery metal terminal coating resin having improved shape retention properties and adhesive properties when it is heated and being capable of securing insulation properties (paragraph [0002]).
Reference is made to FIG. 3B of Takarada, reproduced below:
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Takada discloses tab <20> that is configured such that sealant <24> which has a three-layer configuration and a lead <27> are bonded, wherein said three-layer sealant <24> comprises sealant skin layers <21> and <23> and a sealant core layer <22> (paragraph [0037]).
Takada further discloses that the sealant skin layers <21, 23> are formed from acid modified polyolefin resins in which polyolefin resin is graft modified with maleic anhydride or the like (paragraph [0039]).
The three-layer structure of Takada is analogous to that of Hiraki in that they are each composed of similar compositions and have a similar intended use.
Takada further discloses that the MFR of the skin layers <21, 23> is from 5.1 g/10 min to 32.5 g/10 min to sufficiently fill the lead end during welding and to optimize viscosity to prevent pin hole formation (paragraph [0041]). It is noted that the melt flow range disclosed by Takada is inclusive of the range recited by claim 12; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Further, Takarada discloses that when a three-layer structure wherein the skin layers are the same type, extrusion molding having 2 types and 3 layers is used, wherein said extrusion molding is inclusive of a T-die method (paragraph [0051]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the acid-modified polypropylene layers of Hikari have the melt flow rates prescribed by Takada. The motivation for doing so would have been to achieve sufficient welding properties, and prevent pin hole formation. Furthermore, it would have been obvious to use the T-die extrusion molding method using 2 types and three layers of Takarada to produce the structure of Hiraki. The motivation for doing so would have been that Takarada provides a specific, art-recognized extrusion method desired by Hiraki. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(C).
As to the property limitations recited by claims 1-6:
Hiraki in view of Nishijima and Takada does not explicitly disclose the claimed properties recited by claims 1-6.
Reference is made to Applicant’s FIG. 6, reproduced below:
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In FIG. 6, Applicant illustrates an adhesive film <1> comprising polyolefin layers <12a> and <12b> each containing an acid-modified polyolefin and base material <11> containing a polyolefin (see Specification at paragraph [0021]).
Applicant further discloses that the material for the base layer is preferably polypropylene (see Specification at paragraphs [0040-0041]).
Further, Applicant further discloses that the polyolefin in the acid-modified polyolefin is polypropylene (see Specification at paragraph [0054]), and the polyolefin is graft-modified with an unsaturated carboxylic acid or anhydride thereof inclusive of maleic acid and maleic anhydride (see Specification at paragraph [0053; 0057]).
Further, at paragraph [0112], Applicant discloses that the physical properties are adjusted by, for example, the melting point, the MFR, the thickness of the PPa layer and the PP layer, the thickness ratio between the layers, and conditions inclusive of extrusion using a T-die.
While Hiraki does not explicitly disclose the claimed properties, one of ordinary skill in the art would readily conclude that the preferred composition of Applicant’s adhesive film falls within the scope of the disclosure of Hiraki in view of Takada (i.e., the same three-layer structure comprising a polypropylene core and acid-modified polypropylene skin layers having specified melt flow rates, similar thicknesses, and the use of a t-die extrusion method). As such, the prior art combination must encompass an embodiment that is substantially identical to that of Applicant’s invention, and that the substantially identical embodiment must have the same properties as Applicant’s adhesive film (i.e., those properties recited by claims 1-6). 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Therefore, it would have been obvious to combine Takada and Matsuura with Hiraki to obtain the invention as specified by the instant claims.
Regarding instant claim 9:
Hiraki further discloses that the thickness of the polypropylene layer <11> is in the range of 0.7 to 3.5 when the total thickness of the acid-modified polypropylene layer <12> is 1.
Regarding instant claim 16:
Hiraki further discloses that the packaging material is composed of a laminate having at least a base material, a barrier layer, and a heat-sealing resin layer, laminated in this order; further, Hiraki discloses that the adhesive film is interposed between the heat-sealing resin and the metal terminal (Claim 8).
Regarding instant claim 17:
Reference is made to FIG. 2 of Hiraki, reproduced below:
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Hiraki illustrates an adhesive film for a metal terminal <1> provided to enhance adhesion between the metal terminal <2> and packaging material <3> (paragraph [0016]).
Regarding instant claims 18-19:
Hiraki discloses a battery comprising:
at least a battery element having a positive electrode, a negative electrode and an electrolyte;
a packaging material for sealing the battery element;
metal terminals electrically connected to the positive electrode and the negative electrode, respectively, and protruding outside the packaging material;
and an adhesive film for metal terminals interposed between the metal terminals and the packaging material (Claim 9).
Such a battery is construed to be made by a method comprising a step of interposing the adhesive film between the metal terminals and the packaging material, and sealing the battery with the packaging material.
Answers to Applicant’s Arguments
Applicant’s arguments in the response filed 26 August 2026 are fully considered and are persuasive. The previous grounds of rejection are withdrawn and replaced by new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at (571)272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAM/Examiner, Art Unit 1788 09/02/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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