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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/22/26 has been entered.
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, 11, 32, and 33 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 Chen et al. (CN 107437631 A, hereinafter Chen, 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, and the one or more fire retardant elements comprises expandable graphite.
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.
The invention of Chen encompasses battery module. Chen teaches that the fire retardant element comprises expandable graphite (P3 & 4).
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 Miller in view of Zhou to employ expandable graphite, since using a well-known fire retardant is within purview of one skill in the art.
Re Claim 11. The combination teaches a metallic backing layer (Miller, Fig. 1, items 14 & 16, para. 56).
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).
Claim(s) 10 and 32-36 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 Wayne et al. (US 2014/0248515 A1, hereinafter Wayne, cited by applicant), Mommer et al. (WO 2011/084804 A2, hereinafter Mommer, previously cited), and Chen.
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, that a foam core comprises one or more fire retardant elements, and that the one or more fire retardant elements comprises expandable graphite.
The invention of Wayne encompasses battery pack assembly. Wayne teaches that graphite sheet has a thickness of less than 0.5 mm (para. 31).
In view of Wayne, 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 less than 0.5 mm, since Wayne teaches the advantage of doing it, which is to achieve desired effect (para. 32).
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 Wayne 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).
The invention of Chen encompasses battery module. Chen teaches that the fire retardant element comprises expandable graphite (P3 & 4).
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 Miller in view of Zhou to employ expandable graphite, since using a well-known fire retardant 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 Wayne, 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).
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 Wayne, Mommer, and Chen as applied to claim 10 above, and further in view of Miller.
The teachings of Oikawa in view of Wayne, Mommer, and Chen have been discussed above.
Oikawa in view of Wayne, Mommer, and Chen 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 Wayne, Mommer, and Chen to employ a metallic backing layer, since it would provide strength and support.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 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, Chen and Wayne address the new limitations.
Applicant's arguments filed 4/22/26 have been fully considered but they are not persuasive.
On pages 6 and 7 of remark, regarding claim 1, applicant argued that Oikawa teaches away from using a flexible graphite sheet have a thickness of at least 0.25 mm, since Oikawa discloses that films with a thickness exceeding 0.1 mm are difficult to integrate into the device housing.
The examiner disagrees with this because Oikawa clearly discloses that the film with a thickness less than 0.1 mm is a preferred embodiment (P6), not a requirement.
In response to applicant's argument that one cannot use thicker graphite sheet in Oikawa, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
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
5/28/2026
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