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 .
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.
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.
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (US 2008/0008883 A1, hereinafter Miller, previously cited) in view of Zhou et al. (CN 111162218 A, hereinafter Zhou, previously cited), and evidence provided by Sakaguchi et al. (US 2019/0006642 A1, hereinafter Sakaguchi, cited by applicant).
Re Claim 10. Miller teaches an article (Fig. 1) comprising:
a. first and second flexible graphite sheets (para. 57), each flexible graphite sheet having a thermal conductivity of at about 1300 W/mK (Sakaguchi, para. 20, inherent property of flexible graphite sheet);
b. a foam core (item 12, para. 55) comprising one or more fire retardant elements (para. 60), wherein the first and second sheets of flexible graphite disposed on opposing surfaces of the core (para. 57), wherein the first and second sheets have no more than minimal direct contact with each other (Fig. 1, para. 57).
Miller fails to specifically teach that each flexible graphite sheet has a thickness of at least 0.25 mm.
The invention of Zhou encompasses heat insulating sheet. Zhou teaches that graphite sheet has a thickness of 0.5 to 1.5 mm (P3).
In view of Zhou, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Miler to make each flexible graphite sheet with a thickness of 0.5 to 1.5 mm, since Zhou teaches the advantage of doing it, which is to achieve high insulating effect (P6).
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). "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Re Claim 11. The combination teaches a metallic backing layer (Miller, Fig. 1, items 14 & 16, para. 56).
Claim(s) 10, 30, and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oikawa et al. (CN 105283037 A, hereinafter Oikawa, cited by applicant) in view of Zhou et al. (CN 111162218 A, hereinafter Zhou, previously cited) and Mommer et al. (WO 2011/084804 A2, hereinafter Mommer).
Re Claim 10. Oikawa teaches an article (Fig. 7) comprising:
a. first and second flexible graphite sheets (item 102), each flexible graphite sheet having a thermal conductivity of more than 1000 W/mK (P6);
b. a foam core (item 103, P7), wherein the first and second sheets of flexible graphite disposed on opposing surfaces of the core (Fig. 7), wherein the first and second sheets have no more than minimal direct contact with each other (Fig. 7).
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). "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Oikawa fails to specifically teach that each flexible graphite sheet has a thickness of at least 0.25 mm, and that a foam core comprises one or more fire retardant elements.
The invention of Zhou encompasses heat insulating sheet. Zhou teaches that graphite sheet has a thickness of 0.5 to 1.5 mm (P3).
In view of Zhou, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Oikawa to make each flexible graphite sheet with a thickness of 0.5 to 1.5 mm, since Zhou teaches the advantage of doing it, which is to achieve high insulating effect (P6).
The invention of Mommer encompasses thermally conductive foam material. Mommer teaches that a foam core comprises one or more fire retardant elements (P9).
In view of Mommer, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Oikawa in view of Zhou to have the foam core including one or more fire retardant elements, since Mommer teaches the advantage of doing it, which is to improve electric storage unit (P1).
Re Claim 30. The combination teaches wherein the one or more fire retardant elements comprise an intumescent element (Mommer, P9).
Re Claim 36. The combination teaches wherein the thickness of the foam core ranges from 50 microns to 1 mm (Oikawa, P7).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oikawa in view of Zhou and Mommer as applied to claim 10 above, and further in view of Miller.
The teachings of Oikawa in view of Zhou and Mommer have been discussed above.
Oikawa in view of Zhou and Mommer fails to specifically teach a metallic backing layer.
The invention of Miller encompasses carbon foam structural insulated panel. Miller teaches a metallic backing layer (items 14 & 16, para. 56).
In view of Miller, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Oikawa in view of Zhou and Mommer to employ a metallic backing layer, since it would provide strength and support.
Claim(s) 31-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oikawa in view of Zhou and Mommer as applied to claim30 above, and further in view of Chen et al. (CN 107437631 A, hereinafter Chen).
Re Claim 31. Oikawa in view of Zhou and Mommer fails to specifically teach that the intumescent element comprises expandable graphite.
The invention of Chen encompasses battery module. Chen teaches that the intumescent element comprises expandable graphite (P3).
In view of Chen, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Oikawa in view of Zhou and Mommer to employ expandable graphite, since using a well-known intumescent material is within purview of one skill in the art.
Re Claim 32. The combination teaches wherein the expandable graphite has an onset temperature of 100 to 250 [Symbol font/0xB0]C (Chen, P4).
Re Claim 33. The combination teaches wherein the expandable graphite has a particle size between 325 mesh and 30 mesh (Chen, P4).
Re Claim 34. Mommer teaches wherein a loading level of the fire retardants in the foam core is 1 to 40 % by weight based on the total weight of the foam core, but fails to specifically teach the expandable graphite of at least 2 % by weight based on the weight of the overall article.
However, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Oikawa in view of Zhou, Mommer, and Chen, to perform routine experimentation to find out optimum amount of expandable graphite.
“[W]here 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 MPEP 2144.05, II.
Re Claim 35. The combination teaches wherein the intumescent element further comprises Mg(OH)3 (Mommer, P9).
Response to Arguments
Applicant's arguments filed 1/2/26 have been fully considered but they are not persuasive.
On page 5, regarding claim 10, applicant argued that Miller does not teach a foam core comprising one or more fire retardant elements, since the fire retardant elements of Miler is coated to the foam core.
The examiner disagrees with this because once coated, fire retardant elements is part of the foam core of Miller.
Applicant’s arguments with respect to claim(s) 10 have been considered but are moot because the new ground of rejection does not rely on reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Newly applied reference, Oikawa, and newly cited reference Mommer address the new limitations.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
The rejections above rely on the references for all the teachings expressed in the text of the references and/or one of ordinary skill in the art would have reasonably understood from the texts. Only specific portions of the texts have been pointed out to emphasize certain aspects of the prior art, however, each reference as a whole should be reviewed in responding to the rejection, since other sections of the same reference and/or various combinations of the cited references may be relied on in future rejections in view of amendments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN E YOON whose telephone number is (571)270-5932. The examiner can normally be reached Monday-Friday 9 AM- 5 PM.
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/KEVIN E YOON/Primary Examiner, Art Unit 1735
1/14/2026