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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2-18 of copending Application No. 18/007,276 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim scope of the reference application encompasses the claim scope of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/007,194 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim scope of the reference application encompasses the claim scope of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 6-9, and 13-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Olchawski et al. (US 2018/0309095 A1, hereinafter Olchawski, cited by applicant).
Re Claim 1. Olchawski teaches a thermal runaway barrier (para. 59) operatively adapted for being disposed between battery cells of a battery assembly and for at least significantly slowing down a thermal runaway event within the battery assembly (functional limitation), said thermal runaway barrier comprising:a layer of a nonwoven fibrous thermal insulation comprising a fiber matrix of inorganic fibers (para. 75);thermally insulative inorganic particles of irreversibly or permanently expanded expandable inorganic material (para. 24) evenly dispersed within the fiber matrix (para. 76), and a binder (para. 73) evenly dispersed within the fiber matrix so as to hold together the fiber matrix;an optional organic encapsulation layer (para. 52) enclosing the layer of nonwoven fibrous thermal insulation; andan optional (not a required component) inorganic encapsulation layer enclosing the layer of nonwoven fibrous thermal insulation.
While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114.
Re Claim 6. Olchawski does not expressly disclose that the layer of nonwoven fibrous thermal insulation has a basis weight in the range of from as low as about 250 g/m2 and up to as high as about 1000 g/m2.
However, since Olchawski and the claimed layer of nonwoven fibrous thermal insulation employ substantially similar materials (earth silicate fibers), it is reasonable to believe that the claimed properties (the layer of nonwoven fibrous thermal insulation having a basis weight in the range of from as low as about 250 g/m2 and up to as high as about 1000 g/m2) would have naturally flowed following the teachings of Olchawski. See MPEP 2112.01 & In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2145 & Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)
Re Claim 7. Olchawski does not expressly disclose that the layer of nonwoven fibrous thermal insulation has an uncompressed basis weight in the range of from about 250 g/m2 up to about 400 g/m2.
However, since Olchawski and the claimed layer of nonwoven fibrous thermal insulation employ substantially similar materials (earth silicate fibers), it is reasonable to believe that the claimed properties (the layer of nonwoven fibrous thermal insulation having an uncompressed basis weight in the range of from about 250 g/m2 up to about 400 g/m2) would have naturally flowed following the teachings of Olchawski.
Re Claim 8. Olchawski teaches wherein the thermally insulative inorganic particles further comprise particles of one or any combination of the materials selected from the group consisting of titania (para. 23).
Re Claim 9. Olchawski teaches wherein the layer of nonwoven fibrous thermal insulation is encapsulated by the organic encapsulation layer (para. 52).
Re Claim 13. Olchawski teaches wherein the layer of nonwoven fibrous thermal insulation has a peripheral edge, and the organic encapsulation layer is sealed around the peripheral edge (para. 52).
Re Claim 14. Olchawski does not expressly disclose that the layer of nonwoven fibrous thermal insulation passes at least the V-2 level of the UL94 Flammability Test.
However, since Olchawski and the claimed layer of nonwoven fibrous thermal insulation employ substantially similar materials (earth silicate fibers), it is reasonable to believe that the claimed properties (passing at least the V-2 level of the UL94 Flammability Test) would have naturally flowed following the teachings of Olchawski.
Re Claim 15. Olchawski teaches wherein the thermally insulative inorganic particles comprise particles of irreversibly or permanently expanded intumescent material (para. 24).
Re Claim 16. Olchawski teaches wherein the thermally insulative inorganic particles comprise particles of irreversibly or permanently expanded vermiculite (para. 24).
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) 5 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Olchawski.
Re Claim 5. Olchawski does not expressly teach that the layer of nonwoven fibrous thermal insulation has an installed thickness in the range of from about 0.5 mm up to less than 5.0 mm.
However, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Olchawski to make the layer of nonwoven fibrous thermal insulation having an installed thickness in the range of from about 0.5 mm up to less than 5.0 mm, to meet the dimensional requirement of the final product.
Re Claim 17. Olchawski does not expressly teach that the expanded vermiculite has been irreversibly or permanently expanded in the range of from at least about 10% up to 100% of its expandability.
However, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Olchawski to have the expanded vermiculite irreversibly or permanently expanded in the range of from at least about 10% up to 100% of its expandability, to meet the dimensional and thermal conductivity requirement of the final product.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Olchawski as applied to claim 1 above, and further in view of ASTM C553-13 (“Standard Specification for Mineral Fiber Blanket Thermal Insulation for Commercial and Industrial Applications, 2019, hereinafter ASTM, previously cited).
The teachings of Olchawski have been discussed above.
ASTM discloses that the layer of nonwoven fibrous thermal insulation contains an amount of fiber shot in the range of up to about 25% by weight of the amount of inorganic fibers in the layer of nonwoven fibrous thermal insulation.
In view of ASTM, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Olchawski to make the layer of nonwoven fibrous thermal insulation contain an amount of fiber shot in the range of up to about 25% by weight of the amount of inorganic fibers in the layer of nonwoven fibrous thermal insulation, as the fiber shots are less efficient at thermal insulation.
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.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Olchawski as applied to claim 1 above, and further in view of Bowersock et al. (US 2017/0098806 A1, hereinafter Bowersock, cited by applicant).
Olchawski fails to specifically teach the composition of the layer of nonwoven fibrous thermal insulation.
The invention of Bowersock encompasses passive insulation materials. Bowersock teaches a thermal runaway barrier comprising a layer of a nonwoven fibrous thermal insulation comprising a fiber matrix of inorganic fibers (para. 51); thermally insulative inorganic particles (para. 52) dispersed within the fiber matrix (para. 76), and a binder (para. 57) dispersed within the fiber matrix so as to hold together the fiber matrix. Bowersock teaches thermally insulative inorganic particles up to 60% by weight and an amount of organic binder up to 10% by weight of the layer of nonwoven fibrous thermal insulation (Table 3).
In view of Bowersock, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Olchawski to have thermally insulative inorganic particles up to 60% by weight and an amount of organic binder up to 10% by weight of the layer of nonwoven fibrous thermal insulation, since using a well-known composition of thermal barrier is within purview of one skill in the art.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Olchawski as applied to claim 9 above, and further in view of Evans et al. (US 2021/0167438 A1, hereinafter Evans, previously cited).
Re Claim 10. Olchawski fails to specifically teach that the organic encapsulation layer has at least one vent hole formed therethrough.
The invention of Evans encompasses components to manage thermal runway issues in batteries. Evans teaches that the encapsulation layer has at least one vent hole (para. 150 & 151).
In view of Evans, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Olchawski to employ at least on vent hole on the organic encapsulation layer; since Evans teaches the advantage of using it, which is to allow air to flow in and out of the component (para. 150 & 151).
Re Claim 11. The combination teaches wherein the thermal runaway barrier has a top edge, a bottom edge and opposite side edges (Olchawski, para. 59 & Evans, Fig. 7), and the at least one vent hole is located along the periphery of edges (Evans, para. 150 & 151).
The combination does not explicitly teaches that the edge is one or both of the side edges. However, as Evans teaches to locate the vent on edges, there are only limited options (a top, a bottom, or side edges). Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Olchawski in view of Evans to place the vent on one or both of the side edges, since person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at 421, 82 USPQ2d at 1397. See MPEP 2143.
Re Claim 12. The combination fails to specifically teach that the at least one vent hole provides an exit opening through the organic encapsulation layer having an opening area in the range of from about 2 mm2 up to about 15 mm2.
However, as the opening area of the vent hole determines the amount of air flow, one would perform routine experimentation to find optimum opening area.
“[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.
Response to Arguments
Applicant's arguments filed 2/23/26 have been fully considered but they are not persuasive.
On page 6, regarding claim 1, applicant argued that Olchawski fails to teach thermally insulative inorganic particles of irreversibly or permanently expanded expandable inorganic material evenly dispersed within the fiber matrix, and a binder evenly dispersed within the fiber matrix, since Olchawski teaches a multiple layer composite comprising the inorganic platelet layer on the support layer.
The examiner disagrees with this because Olchawski teaches that that inorganic platelet layer is applied to the support layer and permitted to impregnate and saturate into the thickness of the support layer, which means that thermally insulative inorganic particles of irreversibly or permanently expanded expandable inorganic material are evenly dispersed within the fiber matrix, and a binder is evenly dispersed within the fiber matrix.
On page 7, regarding claims 6 and 14, applicant argued that neither the basis weight nor the UL 94 properties are inherently disclosed in Olchawski.
The examiner disagrees with this because the basis weight and the UL 94 properties are inherent to Olchawski, since Olchawski and the claimed barrier employ substantially similar materials (earth silicate fibers), it is reasonable to believe that the claimed properties (the layer of nonwoven fibrous thermal insulation having a basis weight in the range of from as low as about 250 g/m2 and up to as high as about 1000 g/m2 or passing at least the V-2 level of the UL94 Flammability Test) would have naturally flowed following the teachings of Olchawski. See MPEP 2112.01 & In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2145 & Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)
When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP 2112- 2112.02.
On page 8, regarding Double Patenting Rejections, applicant argued that the examiner did not provide any arguments explaining why the instant claims would not be patentably distinct from the claims of the reference applications.
The examiner disagrees with this because the examiner explained in the previous office action that the claim scope of the reference applications encompasses the claim scope of the instant application.
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN E YOON/Primary Examiner, Art Unit 1735
2/25/2026