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 1-19 are pending.
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 .
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 1-19 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 Takada (US Patent Application Publication No. US 2015/0311483 A1) (Takada).
Regarding instant claims 1-6, 8, and 12-15:
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 base material containing a resin having a polyolefin backbone recited by claims 8 and 14.
Said acid-modified polypropylene layers <12> meet the claimed first and second polyolefin layer containing an acid-modified polyolefin recited by claims 8 and 15.
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 does not explicitly disclose the melt flow rates of the acid-modified polypropylene layer and the polypropylene layer.
However, 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 core layer <22> is formed by polypropylene (paragraph [0043]).
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 melt flow rate (MFR) of the core <22> is preferably within a range from 0.1 g/10 min to about 2.5 g/10 min to optimize the film forming viscosity, secure insulation properties, and to maintain shape (paragraph [0045]).
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 when during welding and to optimize viscosity to prevent pin hole formation (paragraph [0041]).
The MFR ranges of the core and skin layers disclosed by Takada overlap the ranges recited by claims 12 and 13; 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 ensure that the layers of Hiraki have the melt flow rates prescribed by Takada. The motivation for doing so would have been to optimize film forming viscosity, secure insulation properties, maintain shape, achieve sufficient welding properties, and prevent pin hole formation.
As to the property limitations recited by claims 1-6:
Hiraki in view of 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]).
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). 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 with Hiraki to obtain the invention as specified by the instant claims.
Regarding instant claim 7:
Hiraki discloses that the thickness of polypropylene layer <11> is 15 to 80 μm (paragraph [0046]).
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.
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 10:
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.
Regarding instant claim 11:
Hiraki further discloses that the thickness of the acid-modified polypropylene layers <12> is 10 μm to 40 μm (paragraph [0054]).
Regarding instant claim 16:
Hiraki further discloses that the packaging material is compose 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 regarding the prior art rejection of record are fully considered, but are unpersuasive.
Applicant argues that the prior art combination does not teach or suggest the tensile elastic modulus A of 490 MPa or more, as recited by claim 1. Applicant traverses the Examiner’s position that the claimed feature would have been inherent in Hiraki in view of Takarada because the 3-layer adhesive of the applied references is substantially similar to the 3-layer adhesive film 1 disclosed in the present application, which includes a polypropylene base layer 11 sandwiched by polyolefin layers, 12a and 12b, each containing an acid-modified polyolefin, with layers having similar melt flow rates. Instead, Applicant argues that similarities in materials and melt flow rate properties of the layers of the adhesive are not sufficient to establish inherency of the claimed tensile elastic modulus A of 490 MPa or more. In support of their position, Applicant points to their Examples and Comparative Examples in the original disclosure showing that there exist some embodiments having the three layer construction and melt flow rates that do not exhibit the elastic modulus A of the claims. Applicant further points to paragraph [0112] of their original application wherein they disclose that het properties of elastic modulus A are adjustable, for example, by the selection of melting point the, MFR, the thickness of the PPa and PP layers, the thickness ratio between the layers, and further conditions (e.g., extrusion method). Further, Applicant submits a Declaration under 37 C.F.R. §1.132 by Ai Okano (June 2025 Declaration), which states that when similar materials are used, several conditions can affect the tensile modulus of the film (i.e., molding temperature, cooling rate, stretching speed, use of additives, film thickness).
Applicant’s argument is unpersuasive. Though Applicant alleges that there exist embodiments made of similar structure and composition that do not exhibit the claimed properties, Applicant has not persuasively shown that the scope of the prior art does not encompass an embodiment that is substantially identical to Applicant’s claimed invention and must have the same properties inclusive of those claimed. As mapped in the rejections of record, the prior art discloses the same three layer structure comprising the same polypropylene layer base and acid-modified polypropylene outer layers. The prior art rejection further discloses the same melt flow rates for each of the polypropylene and acid-modified polypropylene layers. Further, the prior art obviates the claimed overall thickness of the three layer structure, the thickness of the individual layers. Therefore, there is substantial reason to believe that the prior art combination would encompass and embodiment that is substantially identical to those embodiments of Applicant’s invention that do exhibit the claimed properties.
The June 2025 Declaration is insufficient to show that the prior art does not encompass an embodiment substantially identical to that of Applicant’s invention because it merely states those factors that might impact the tensile modulus a layered structure without providing evidence that that the construction of the prior art does not encompass an embodiment that is substantially identical to that of Applicant’s invention.
Conclusion
THIS ACTION IS MADE FINAL. 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 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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/TAM/Examiner, Art Unit 1788 09/02/2025
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788