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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/24/2025 has been entered.
Response to Amendment
The amendment filed on 10/24/2025 does not place the application in condition for allowance.
In view of the cancellation of claim 4 the rejection under 35 U.S.C. 112(d) of claim 4 has been withdrawn.
The rejection of claims 1 and 3-13 under 35 U.S.C. 103 are maintained.
The addition of claims 21-22 is acknowledged.
New analysis follows.
Response to Arguments
Applicant argues the criticality of the weight ratio of the binder to plasticizer of 1:0.22 to 1:0.28 in the newly amended claim 1, citing data and examples from the instant specification. However, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP §716.02(d).
In this case the presented results are not commensurate in scope and therefore not persuasive.
For example, there are no results for the weight of the plasticizer below the 1:0.22 other than with no plasticizer added, which one of ordinary skill in the art would expect some different results. Even in the case with no plasticizer added at all, the reported resistance is very similar to that of the lowest point in the claimed range and the number of fires only increases by 1. Furthermore claim 1 includes any possible binder and a list of 20 possible plasticizers yet in the data presented uses just an single binder (PVdF-HFP) and a single plasticizer(dibutyl phthalate, which is not included in claim 1) were tested. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
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.
Claims 1, 3, 5-7, and 10-13 are rejected under 35 U.S.C. § 103 as being unpatentable over Hille (WO0132798A1, reference made to English translation) in view of Bauer (US6632561). Additional evidence provided by attached Schneider Electric list of dielectric constants (zinc powder) and McKinley et. al. Journal of Power Sources (red lead).
Regarding claim 1, Hille discloses a coating tape comprising:
A film ( i.e. protective layer, page 3 line 119); and
An inorganic layer (i.e. adhesive layer, page 3 line 126) comprising an inorganic material (i.e. anti-corrosion pigment, page 3 line 126 and page 3 lines 107-116), a binder (i.e. polymer material, page 3 line 126) and a plasticizer (page 4 line 151)
wherein the inorganic layer is attached to one surface of the film (see protective layer is in contact with adhesive layer, page 4 lines 164)
but does not disclose wherein the plasticizer comprises at least one or more selected from the group consisting of benzyl alcohol, n-butyl alcohol, isopropyl alcohol, diethyl phosphate, triethyl phosphate, trimethyl phosphate, tributyl phosphate, isoamyl acetate, ethyl lactate, methyl lactate, ethyl butylate, diethyl carbonate, tributyl propionate, amyl methyl acetate, isopropyl acetate, diisobutyl ketone, methyl ethyl ketone, dipropyl ketone, ethyl butyl ketone, and methyl amyl ketone or wherein a weight ratio of the binder to the plasticizer is 1:0.22 to 1:0.28
Bauer, related to films in electrochemical cells, discloses a polymer such as acrylate and methacrylate (col. 24, lines 61-54) with added plasticizers including diethyl carbonate, trimethyl phosphate, triethyl phosphate, and tributyl phosphate (col. 25, lines 22-33).
It would have been obvious to modify Hille by using diethyl carbonate, trimethyl phosphate, triethyl phosphate, or tributyl phosphate as a plasticizer because Bauer teaches the use of these plasticizers with acylate based polymers similar to those used in Hille (page 4, line 141 of Hille).
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, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Bauer further discloses wherein a weight ratio of the binder to the plasticizer is 1:0.22 to 1:0.28, in this case the plasticizer is 0.1-100% by weight of the composition (col. 25, lines 18-21) and the polymer is 1-95% of the weight (col. 4, lines 15-19).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP §2144.05.
Regarding claim 3, modified Hille discloses a coating tape according to claim 1, and Bauer further discloses wherein the plasticizer is included in an amount greater than 17 parts by weight to less than 50 parts by weight based on 100 parts by weight of the binder, in this case 0.1-100% by weight of the composition (col. 25, lines 18-21) of which the polymer is 1-95% of the weight (col. 4, lines 15-19)
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP §2144.05.
Regarding claim 5, modified Hille discloses a coating tape according to claim 1, and Hille further discloses wherein the inorganic material comprises an inorganic material having a dielectric constant of greater than 1 (i.e. Zinc dust, page 5 line 199 and red lead, page 6, line 231 and 232). Zinc dust/powder has a dielectric constant of 4.4 (Schneider Electric list of dielectric constants page 2, column 5, last line) and red lead has a dielectric constant 20 (McKinley et. al. Journal of Power Sources, page 181, table 1).
Regarding claim 6, modified Hille discloses a coating tape according to claim 5, and Hille further discloses wherein the inorganic material is in particle form and has a diameter of >46 µm (page 5 line 199).
Regarding claim 7, modified Hille discloses a coating tape according to claim 1, and Hille further discloses wherein the binder comprises at least one selected from the group polyethylene (page 4, line 147-148), elastomer of propylene (page 4 line 138), and flurorubber (page 4 line 139).
Regarding claim 10, modified Hille discloses a coating tape according to claim 1, and Hille further discloses wherein the film is a release film having a different adhesion on both surfaces (see removeable protective layer page 4, lines 164-167 with one side treated with silicone to provide reduced adhesion release characteristics).
Regarding claim 11, modified Hille discloses a coating tape according to claim 10, and Hille further discloses wherein an adhesion of a surface of the release film attached to the inorganic layer is equal to or lower than an adhesion of a surface of the release film opposite to the surface of the release film attached to the inorganic layer (see removeable protective layer page 4, lines 164-167 with one side treated with silicone to provide reduced adhesion on the side in contact with the adhesive layer to provide removal of the film).
Regarding claim 12, modified Hille discloses a coating tape according to claim 1, and Hille further discloses wherein an adhesion between the surface of the release film attached to the inorganic layer and the inorganic layer is greater than a strength capable of withstanding a weight of the inorganic layer (see the ability of the release film to support the adhesive layer after application of the adhesive layer and before addition of additional layers, page 5, lines 193-195) and lower than an adhesion between the inorganic layer and an electrode (see removeable protective layer page 4, lines 164-167 with one side treated with silicone to provide reduced adhesion on the side in contact with the adhesive layer to provide removal of the film and further sustained application of the adhesive layer over 4 weeks to a metal piece, such as an electrode).
Regarding claim 13, modified Hille discloses a coating tape according to claim 10, and Hille further discloses wherein the surface of the release film attached to the inorganic layer is coated or surface-treated (see removeable protective layer page 4, lines 164-167 treated with silicone, and protective layer as “treated paper” page 4, line 168).
Claims 8 and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Hille (WO0132798A1, reference made to English translation) in view of Bauer (US6632561). Additional evidence provided by attached Schneider Electric list of dielectric constants (zinc powder) and McKinley et. al. Journal of Power Sources (red lead) and further in view of Morita (US20090050268A1).
Regarding claim 8, modified Hille discloses a coating tape according to claim 1, and Hille further discloses the film is a release film an adhesion between the inorganic layer and the film is less than the adhesion between the inorganic layer and the electrode (see removeable protective layer page 4, lines 164-167 with one side treated with silicone to provide reduced adhesion on the side in contact with the adhesive layer to provide removal of the film and further sustained application of the adhesive layer over 4 weeks to a metal piece, such as an electrode), but does not disclose an adhesion between the inorganic layer and an electrode is 20 gf/cm or more.
Morita, related to adhesive materials, teaches wherein an adhesion between the inorganic layer and an electrode (¶[0164] metal sheets and plates) is 20 gf/cm or more (¶[0019] see 500 gf/40 mm or more).
One of ordinary skill in the art would have recognized setting the adhesion strength of the tape of Hille to 500 gf/40 mm or more would prevent the material from delaminating of the layer (¶[0014] of Morita).
Therefore, it would have been obvious to have modified the adhesive strength of the coating tape if Hille to 500 gf/40 mm or more as taught by Morita to prevent delamination.
Regarding claim 9, modified Hille discloses a coating tape according to claim 1, but does not disclose wherein the inorganic layer further comprises any one of an additive for inhibiting a side reaction occurring in a battery.
Morita teaches an adhesive layer comprises any one of an additive for inhibiting a side reaction occurring in a battery (i.e. pH adjusters, ¶[0094]), an additive for improving thermal stability (i.e. supercooling agents, ¶[0094] and ¶[0098]).
One of ordinary skill in the art would have recognized adding the additive of Morita to the adhesive layer of Hille would have improved thermal stability and maintained adhesiveness at low temperatures.
Therefore it would have been obvious to one of ordinary skill in the art to have modified the adhesive layer of Hille to include the additives of Morita to improve thermal stability.
Claims 21 and 22 are rejected under 35 U.S.C. § 103 as being unpatentable over Hille (WO0132798A1, reference made to English translation) in view of Finnerty (US20050181253A1)
Regarding claim 21, Hille discloses a coating tape comprising:
A film ( i.e. protective layer, page 3 line 119); and
An inorganic layer (i.e. adhesive layer, page 3 line 126) comprising an inorganic material (i.e. anti-corrosion pigment, page 3 line 126 and page 3 lines 107-116), a binder (i.e. polymer material, page 3 line 126) and a plasticizer (page 4 line 151)
Wherein the inorganic layer is attached to one surface of the film (see protective layer is in contact with adhesive layer, page 4 lines 164)
but does not disclose wherein the plasticizer comprises dibutyl phthalate.
Finnerty, related to films in electrochemical cells, teaches an inorganic layer including a binder and plasticizer(¶[0084) including dibutyl phthalate(¶[0089]).
It would have been obvious to modify Hille by using dibutyl phthalate as a plasticizer because Finnerty teaches the use of these plasticizers such as polyethylene glycol similar to those used in Hille (page 6, line 232 of Hille).
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, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding claim 22, modified Hille discloses the coating tape according to claim 21, and Finnerty additionally teaches wherein a weight ratio of the binder to the plasticizer is 1:0.22 to 1:0.28, in this case the binder may be 1-15 wt.% and the plasticizer may be 1-15% resulting in overlapping ranges (¶[0084]).
[A] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”. MPEP §2144.05.I.
Conclusion
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/K.J.A./Examiner, Art Unit 1726
/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 28 January 2026