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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 23, 2025 has been entered.
Summary
Applicant’s arguments and claim amendments submitted December 23, 2025 have been entered into the file. Currently, claims 2, 6, and 9-22 are cancelled, resulting in claims 1, 3-5, 7-8, and 23 pending for examination.
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.
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.
Claims 1, 3-5 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Luo (Luo et al. Preparation of functionalized graphene/thermal conductive polyurethane films. Journal of Physics: Conference Series. 1759, 012020 (January 2021)) in view of Hansson (Hansson et al. Novel nanostructured thermal interface materials: a review. International Materials Reviews. 63, 1, 22-45 (2018)), Ji (Ji et al. Enhanced thermal conductivity of networked stainless steel/ZnO/PU composite for thermal pad application. Materials Research Express. 6, 076526 (2019)), and Chang (US 2010/0316821 A1).
Regarding claim 1, Luo teaches a thermal interface material structure comprising a layer (lower layer) made of a thermal interface material (graphene-based polyurethane thermal conductive composite, Luo Abstract) comprising a polyurethane matrix and modified graphene oxide and having a top surface and a bottom surface and a body thickness (the structure inherently has a top and bottom surface and a body thickness).
Luo does not teach a multi-layered thermal interface material structure comprising:
an upper layer and a lower layer both made of a first thermal interface material
a middle layer made of a second thermal interface material, wherein the middle layer is stacked between the upper layer and the lower layer;
A first supporting mesh plate being buried in the lower layer, comprising a plate thickness that is smaller than the body thickness, and comprising a plurality of pores;
a second supporting mesh plate being buried in the upper layer, and also comprising the plate thickness and the plurality of pores;
Wherein the middle layer is located between the first supporting mesh plate and the second supporting mesh plate;
Wherein the top surface and the bottom surface both comprise a plurality of concave portions.
Luo does not teach first supporting mesh plate being buried in the lower layer, comprising a plate thickness that is smaller than the body thickness, and comprising a plurality of pores.
Hansson teaches that the softness of thermal interface materials that comprise thermally conductive fillers in a polymer matrix (thermal pads), as taught in Luo, leads to the need for high amount of filler to be added in order to make them stiffer, and that the overall performance is severely limited by the “trade-off between softness and filler fraction” (Hansson pg. 25 left column first paragraph).
Ji teaches the addition of a stainless steel mesh having a plurality of pores (SS sieve, Ji section 2.1. Synthesis) to a thermal interface material (thermal pad, Ji title) comprising polyurethane (Ji abstract), as used in Luo, wherein the stainless steel mesh “acts as an in-plane thermal conductive skeleton”, the mesh has a thickness smaller (mesh, shown in yellow, Fig. 1d, Ji) than the thickness of the total thermal interface material structure (structure includes the polymer matrix and mesh, body thickness), and the mesh is buried in the layer of thermal interface material (Ji, Fig. 1d). Ji further teaches that polymer matrices with conductive fillers have “poor mechanical property” (Ji Introduction paragraph 1).
Since Hansson and Ji both teach that thermal pads have undesirable mechanical properties, Ji and Luo both teach a thermal interface material comprising polyurethane as a polymer matrix, and Ji teaches the addition of a stainless steel mesh to a polyurethane based thermal interface material (thermal pad), it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add a stainless steel mesh to the thermal interface structure of Luo in order to improve the mechanical property of the structure, thus resulting in a supporting mesh plate being buried in the layer, comprising a plate thickness that is smaller than the body thickness, and comprising a plurality of pores.
Luo does not teach an upper and lower layer, wherein there is a second supporting mesh plate in the upper layer.
Chang teaches thermal interface materials that comprise multiple layers (Chang [8-9, 21-23]).
Since it is known in the art, as taught by Chang, that thermal interface materials may comprise multiple layers, one of ordinary skill in the art would have been motivated to provide a second layer (upper layer) comprising the thermal interface material (first thermal interface material) and a second supporting mesh plate (second supporting mesh plate having the plate thickness and plurality of pores), buried in this second layer (upper layer), on top of the lower layer in order to fabricate a thermal interface material structure suitable for a desired application. For example, improvements in thermal conductivity due to the presence of more thermal conductive fillers since another layer comprising the fillers is present. The presence of the second supporting mesh plate would then be necessary to provide a structure with sufficient mechanical properties. The mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See MPEP 2144.04.
Luo does not teach a middle layer made of a second thermal interface material, wherein the middle layer is stacked between the upper layer and the lower layer, and the middle layer is located between the first supporting mesh plate and the second supporting mesh plate.
However, when stacking the upper and lower layer, as described above, the interfacial region wherein the upper and lower layer are in direct physical contact may be interpreted as being the middle layer. This middle layer is inherently stacked between the upper layer and the lower layer and between the first and second supporting mesh plates and has a second thermal interface material, wherein the second thermal interface material is the same as the first thermal interface material. The examiner notes that instant claim 1 does not exclude the first and second thermal interface materials from being the same composition.
Luo does not teach the top surface and the bottom surface both comprising a plurality of concave portions. Chang teaches the use of multi-layered thermal interface material structures in secondary batteries and battery packs in order to achieve thermal management (Chang abstract), and further teaches that these structures take the shape of the battery cell that is being used in a battery pack (Hansson, claim 14), wherein the battery cell may be a cylindrical battery cell (Hansson, claim 19 “inserting prismatic lithium ion battery, cylinder lithium ion battery or supercapacitor”).
Hansson teaches that thermal interface materials are placed between two surfaces to increase thermal conductance and fill voids between the surfaces to increase the effective contact area (Hansson pg. 22 left column last paragraph).
Since Chang teaches that multi-layered thermal interface material structures are used in secondary batteries and battery packs with cylindrical battery cells, and Hansson teaches that thermal interface materials provide thermal conductance and increase effective contact area between two surfaces, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the thermal interface material structure of Luo (modified structure described above) to a battery pack comprising cylindrical battery cells, wherein the top and bottom surfaces of the thermal interface material structure are formed to be in complete contact with the battery cells to provide desirable thermal conductance, thus forming concave portions, in order to obtain a battery pack with thermal management capability.
The recitation "for a stack type battery pack" in claim 1 has not been given patentable weight because it is a recitation of intended use that occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
The limitation of “capable of providing an ability to support a first row of …under the bottom surface” is interpreted by the Examiner as a functional limitation which is feature defined by what is does rather than what it is. The limitation is met as long as the prior art is capable of performing the claimed function. See MPEP 2173.05(g).
The ability to support a first row of battery cells on the top surface for a second row of battery cells under the bottom surface would obviously flow from the modified structure of Luo in view of Hansson, Ji, and Chang since the first and second supporting mesh plates are interposed between the upper and lower layers. Therefore, in the case wherein a first row of battery cells are placed on the top surface and a second row of battery cells are place under the bottom surface, the first and second supporting mesh plates would be located between the rows, thus providing an ability to support.
Additionally, the instant specification recites that the first and second supporting mesh plates may be made of stainless steel (instant specification [11]).
Regarding claim 3, Luo in view of Hansson, Ji, and Chang teaches all features of claim 1. the modified thermal interface material structure of Luo, as described above for claim 1, further teaches the first supporting mesh plate and the second supporting mesh plate being both made of stainless steel (Ji abstract).
Regarding claim 4, Luo in view of Hansson, Ji, and Chang teaches all features of claim 1. Luo further teaches the first thermal interface material (graphene-based polyurethan thermal conductive composite, Luo abstract) comprising a first polymer matrix (polyurethane matrix, Luo Conclusion) and a plurality of first thermal conductive filler distributed in the first polymer matrix (modified graphene oxide, Luo Conclusion).
Regarding claim 5, Luo in view of Hansson, Ji, and Chang teaches all features of claims 1 and 4. Luo further teaches the first polymer matrix being thermoplastic polyurethane (Luo abstract), and the first thermal conductive filler comprising modified graphene oxide (Luo abstract). However, Luo does not teach the first thermal conductive filler comprising a compound recited in instant claim 5.
However, Hansson teaches the filler(s) used in thermal interface materials depends on the application of the material (Hansson pg. 26 right column “Different kinds of fillers”), and that graphite is a known and suitable conductive filler for use in thermal interface materials (Hansson Table 2).
Since Hansson teaches that graphite is a known and suitable filler for thermal interface materials, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the modified graphene oxide of Luo for graphite to achieve the predictable result of a thermal interface material capable of thermal conduction. The simple substitution of one known element for another yields predictable results to someone of ordinary skill in the art. See MPEP 2413(I)(B).
Regarding claim 23, Luo teaches thermal interface material structure comprising a thermal interface material and a plurality of thermal conductive fillers distributed in the layer structure (graphene oxide, Luo abstract). Luo does not teach a supporting mesh plate, buried in the layer structure, comprising a sieve size wherein 40-90% of the thermal conductive fillers is greater than the sieve size.
Hansson teaches that the softness of thermal interface materials that comprise thermally conductive fillers in a polymer matrix (thermal pads), as taught in Luo, leads to the need for high amount of filler to be added in order to make them stiffer, and that the overall performance is severely limited by the “trade-off between softness and filler fraction” (Hansson pg. 25 left column first paragraph).
Ji teaches the addition of a stainless steel mesh having a plurality of pores (SS sieve, Ji section 2.1. Synthesis) to a thermal interface material (thermal pad, Ji title) comprising polyurethane (Ji abstract), as used in Luo, wherein the stainless steel mesh “acts as an in-plane thermal conductive skeleton”, and the mesh is buried in the layer of thermal interface material (Ji, Fig. 1d). Ji further teaches that polymer matrices with conductive fillers have “poor mechanical property” (Ji Introduction paragraph 1).
Since Hansson and Ji both teach that thermal pads have undesirable mechanical properties, Ji and Luo both teach a thermal interface material comprising polyurethane as a polymer matrix, and Ji teaches the addition of a stainless steel mesh to a polyurethane based thermal interface material (thermal pad), it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add a stainless steel mesh to the thermal interface structure of Luo in order to improve the mechanical property of the structure, thus resulting in a layered structure comprising a supporting mesh plate buried in the thermal interface material, wherein the supporting mesh plate comprises a sieve size.
Hansson teaches that adding hybrid fillers to thermal interface materials can increase thermal conductivity at lower filler fractions. These hybrid filler are known to have synergistic effects that may be, for example, attributed to size variations in fillers “help forming percolating networks and improve packing ratio” (Hansson pg. 28 “Hybrid fillers”).
Since Hansson teaches that hybrid fillers used in thermal interface materials exhibit improved thermal conductivity and these hybrid fillers are known to have size variations that contribute to the improvement in thermal conductivity, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add a hybrid conductive filler to the structure of Luo in order to improve thermal conductivity, and to tune the amount of filler and/or amounts of individual filler components, wherein an amount of the fillers greater than the sieve size of the supporting mesh plate includes the claimed range of 40-90%, in order to achieve a thermal interface material with desirable properties, thermal conductivity, and performance for a given application.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Luo in view of Hansson, Ji, and Chang, as applied to instant claim 1, and further in view of Hill (US 2005/0045372 A1).
Regarding claim 7, Luo in view of Hansson, Ji, and Chang teaches all features of claim 1, as described above. Luo does not teach the top and bottom surfaces both provided with a heat conductive protection layer.
However, Hill teaches a thermal interface material structure comprising a plurality of layers (Hill [5]) including a soft filler material composition, such as polymer filled with thermally conductive fillers (Hill [11]) as taught in Luo, and a thin layer of thermally conductive (Hill [10]) phase change material disposed on the surface of the structure in physical contact with the heat source (“mounting against the heat source”, Hill [5]), wherein this layer of phase change material (element 16, Hill Fig. 1) minimizes the thermal contact resistance between the heat source and the thermal interface material (element 14, Hill Fig. 1, [13]).
Since Hill teaches that the addition of a layer comprising a thermally conductive phase change material to a surface of a thermal interface material structure minimizes thermal contact resistance, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add a heat conductive protection layer, as taught by Hill, to the thermal interface material structure of Luo in order to minimize thermal contact resistance between the heat source and the thermal interface material.
Hill teaches the addition of the phase change material layer to a surface in physical contact with a heat source, therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add this layer to both the upper and lower surfaces of the structure to achieve minimal thermal contact resistance depending on the application or configuration in which the structure is used. For example, the application of the thermal interface material structure wherein the structure is in contact with a heat source on more than one side.
Regarding claim 8, Luo in view of Hansson, Ji, Chang, and Hill teaches all features of claims 1 and 7. Luo is silent regarding the harness of the layer structure and heat conductive protection layer.
However, Hill teaches that the layer structure (soft thermal interface layer) is “soft” and “compressible or deflectable when squeezed in order to allow for thickness tolerance differences” (Hill [11]) and the conductive protection layer (phase change material layer) “should be thin” and has the purpose of minimizing thermal contact resistance (Hill [13]). The layer structure and conductive protection layer inherently have “a hardness”. Since the layer structure is compressible or deflectable, there is a reasonable basis to conclude that the heat conductive protection layer has a harness that is greater than the hardness of the layer structure.
Response to Arguments
Response – Claim Rejections 35 USC § 112
The rejection of claim 2 under 35 U.S.C. 112(b) is overcome by Applicant’s cancelation of claim 2 in the response received on December 23, 2025. The rejection of claim 2 is withdrawn.
Response – Claim Rejections 35 USC § 103
Applicant’s arguments filed December 23, 2025 have been fully considered and are not persuasive.
On page 5 of the response, applicant appears to allege that Ji does not teach “capable of providing an ability to support a first row of battery cells on the top surface” since “there is no doubt that the stainless steel (SS) mesh has to be flexible for thermal pad application”.
Applicant appears to further allege that the claimed invention “implies the material properties of the TIM layer structure and the supporting mesh plates are different” and “when the supporting mesh plates provide the ability to support the battery cells on the top surface, the supporting mesh plates are not deformed”. The applicant provides support for these allegation by referring to paragraph [0034] of the instant specification.
These arguments are not persuasive. Ji teaches the mesh being made of stainless steel, and the instant specification recites that the first and second supporting mesh plates may be made of stainless steel (instant specification [11]). Additionally, instant claim 1 does not define or limit “support”. The ability to support a first row of battery cells on the top surface for a second row of battery cells under the bottom surface would obviously flow from the modified structure of Luo in view of Hansson, Ji, and Chang since the first and second supporting mesh plates are interposed between the upper and lower layers. Therefore, in the case wherein a first row of battery cells are placed on the top surface and a second row of battery cells are place under the bottom surface, the first and second supporting mesh plates would be located between the rows, thus providing support.
Applicant does not appear to provide evidence to support the allegation that “it is obvious” that the stainless steel mesh of Ji is not capable of “providing an ability to support” or “supporting the weight of” battery cells. It has been held that arguments presented by applicant cannot take the place of evidence in the record. See MPEP 2145 (I) and 716.01(c)(II).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., material properties being different, supporting mesh plates not deformed when battery cells are on the top surface) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
On page 5 of the response, applicant appears to allege that “there is no motivation to combine Ji’s disclosure with the filler-contained TIM prior art”.
This argument is not persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Hansson teaches that the softness of thermal interface materials that comprise thermally conductive fillers in a polymer matrix (thermal pads), as taught in Luo, leads to the need for high amount of filler to be added in order to make them stiffer, and that the overall performance is severely limited by the “trade-off between softness and filler fraction” (Hansson pg. 25 left column first paragraph).
Ji teaches the addition of a stainless steel mesh having a plurality of pores (SS sieve, Ji section 2.1. Synthesis) to a thermal interface material (thermal pad, Ji title) comprising polyurethane (Ji abstract), as used in Luo, wherein the stainless steel mesh “acts as an in-plane thermal conductive skeleton”, the mesh has a thickness smaller (mesh, shown in yellow, Fig. 1d, Ji) than the thickness of the total thermal interface material structure (structure includes the polymer matrix and mesh, body thickness), and the mesh is buried in the layer of thermal interface material (Ji, Fig. 1d). Ji further teaches that polymer matrices with conductive fillers have “poor mechanical property” (Ji Introduction paragraph 1).
Since Hansson and Ji both teach that thermal pads have undesirable mechanical properties, Ji and Luo both teach a thermal interface material comprising polyurethane as a polymer matrix, and Ji teaches the addition of a stainless steel mesh to a polyurethane based thermal interface material (thermal pad), it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add a stainless steel mesh to the thermal interface structure of Luo in order to improve the mechanical property of the structure, thus resulting in a supporting mesh plate being buried in the layer, comprising a plate thickness that is smaller than the body thickness, and comprising a plurality of pores.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rolland (US 2006/0124892 A1, cited previously in the Non-Final Office Action dated June 2, 2025): appears to disclose a multi-layer thermal interface material ([34-43).
Li (Li et al. Jelly-Inspired Construction of the Three-Dimensional Interconnected BN Network for Lightweight, Thermally Conductive, and Electrically Insulating Rubber Composites. ACS Appl. Electron. Mater. 2020, 2, 6, 1661-1669): appears to disclose a thermal interface material comprising a polymer matrix and a mesh (abstract, Fig. 1).
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/J.S.C./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789