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 § 102
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 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.
Claims 1-3, 5-7, 9 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Number 5,626,982 (hereinafter “Kawai”).Regarding claim 1 Kawai teaches a heat insulating assembly (multilayer construction) comprising a heat insulating pad (polymeric foam layer) 12 comprising pad members 12a-12d made of a molded foam (column 6, lines 22-29), the molded foam comprising a polymer (column 4, line 66 through column 5, line 13). Kawai teaches the heat insulating assembly also comprises a battery case 11 and lock pins 14 (11 and 14 correspond to the at least one spacer layer) comprising a plurality of lock pins (spacer elements) 14, wherein each lock pin (spacer element) 14 comprises a protruding portion and two opposite terminal portions, and wherein at least one terminal portion of each spacer element is fully embedded into the heat insulating pad (polymeric foam layer) 12: 12a-12d (Figures 4A-4B, and column 6, lines 22-39). Kawai teaches the lock pins (plurality of spacer elements) 14 are located in areas where the pad members 12a-12e are secured to the battery case 11 (column 6, lines 29-39), which corresponds to the plurality of spacer elements form a patterned structure on the spacer layer.Regarding claims 2, 3, and 5 In addition, Kawai teaches a resin forming the molded foam of the heat insulating pad (polymeric foam layer) 12 includes thermoplastics (thermoplastic materials, thermoplastic elastomer materials, or thermoplastic non-elastomer materials) (column 4, line 66 through column 5, line 13). Regarding the heat insulating pad (polymeric foam layer) 12, in general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Therefore, although the prior art does not explicitly disclose: the heat insulating pad (polymeric foam layer) 12 comprises a material having a weight loss after 3 min at 600°C of no greater than 70%; or the heat insulating pad (polymeric foam layer) 12 reaches a compression value of at least 60% when using a compression force of no greater than 700 kPa, the claimed properties are deemed to be inherent to the structure in the prior art since the Kawai reference teaches an invention with an identical and/or substantially identical structure and/or chemical composition as the claimed invention. See MPEP §2112.Regarding claim 6 In addition, Kawai illustrates the protruding portion of each lock pin (spacer element) 14 is fully embedded into the heat insulating pad (polymeric foam layer) 12a, 12e (Figure 4B).Regarding claim 7 In addition, Kawai illustrates the overall shape of the lock pins (spacer elements) 14 is a combination of: a circular and rectangular shape; or a circular and square shape (Figure 4B).Regarding claim 9 In addition, Kawai illustrates the battery case 11 and lock pins 14 (11 and 14 correspond to the at least one spacer layer) further comprises a base layer 11, wherein the plurality of lock pins (spacer elements) 14 extend out of the base layer 11 (Figure 4B).Regarding claim 12 The use of product-by-process limitations has been noted in claim 12, for example, "the spacer layer is obtainable by a technique selected from the group consisting of (micro)replication techniques, embossing techniques, and any combinations thereof." "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process", In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, "although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product", In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.
Claims 1, 3, 6, 7, 9, 10, 12, 16 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2003-146252 A with a machine translation (concurrently submitted) being used as the English language equivalent translation (hereinafter “Kimoto”).Regarding claim 1 Kimoto teaches a multilayer construction 21, 31 comprising a core layer 22 of foam (polymeric foam layer) and a skin layer and ridges (at least one spacer layer) 23, 25 comprising a plurality of wall-like ridges (spacer elements) 25, wherein each wall-like ridge (spacer element) 25 comprises a protruding portion and two opposite terminal portions, and wherein at least one terminal portion of each ridge (spacer) 25 is fully embedded into the core layer 22 (polymeric foam layer) (Figures 5-8, and paragraphs [0024] – [0027]). Kimoto illustrates the plurality of wall-like ridges (spacer elements) 25 form a patterned structure on the spacer layer 23, 25 (Figure 5).Regarding claim 3 In addition, Kimoto teaches the core layer (polymeric foam layer) 22 may be an acrylic foam (thermoplastic material) (paragraph [0026]).Regarding claim 6 In addition, Kimoto teaches the protruding portion of each ridge (spacer element) 25 is fully embedded into the core layer 22 (polymeric foam layer) (Figures 5-8).Regarding claim 7 In addition, Kimoto illustrates the wall-like ridges (spacer elements) 25 have an overall shape of linear stripes (Figure 5).Regarding claim 9 In addition, Kimoto teaches the spacer layer 23, 25 further comprises a skin layer (base layer) 23, wherein the plurality of wall-like ridges (spacer elements) 25 extends out of the skin layer (base layer) 23 (Figures 5-8 and paragraph [0024]).Regarding claim 10 In addition, Kimoto teaches the skin layer and ridges (spacer layer) 23, 25 comprises an epoxy resin (thermoset material) (paragraph [0026]). Regarding claim 12 The use of product-by-process limitations has been noted in claim 12, for example, "the spacer layer is obtainable by a technique selected from the group consisting of (micro)replication techniques, embossing techniques, and any combinations thereof." "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process", In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, "although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product", In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.Regarding claim 16 In addition, Kimoto illustrates the patterned structure of the plurality of wall-like ridges (spacer elements) 25 on the spacer layer 23, 25 is a pattern of straight lines running in parallel (Figure 5).Regarding claim 17 In addition, Kimoto illustrates the wall-like ridges (spacer elements) 25 have an overall cylindrical shape when seen from a cross-sectional side view (Figures 5-8).
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.
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.
Claims 2, 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kawai as applied to claim 1 above, and further in view of United States Patent Application Publication No. US 2018/0223069 (hereinafter “O’Neil”).Regarding claims 2, 4 and 5 The limitations for claim 1 have been set forth above. In addition, Kawai teaches a resin forming the molded foam of the heat insulating pad (polymeric foam layer) 12 may be any resins capable of in-mold expansion molding (column 4, lines 66-67). Kawai does not explicitly teach the heat insulating pad (polymeric foam layer) 12 comprises a material selected from the group consisting of silicone elastomers. O’Neil teaches a silicone rubber syntactic foam useful in battery pack applications, where the silicone rubber syntactic foam includes an organopolysiloxane (silicone elastomer) and addresses problems linked to uncontrolled thermal excursions, will present efficient low temperature insulation properties, and will provide a damping control strategy to minimize drivetrain oscillations (abstract and paragraphs [0022] – [0024]). O’Neil also teaches the silicone rubber syntactic foam is capable of in-mold expansion molding (paragraphs [0057] – [0059] and [0063]). Kawai and O’Neil are analogous inventions in the field of insulating foams useful in battery applications. It would have been obvious to one skilled in the art at the time of the invention to modify the material of the molded foam of the heat insulating pad (polymeric foam layer) 12 of Kawai with the silicone rubber syntactic foam of O’Neil to reduce problems associated with uncontrolled thermal excursions, exhibit efficient low temperature insulation properties, and/or exhibit a damping control strategy to minimize drivetrain oscillations. Regarding the heat insulating pad (polymeric foam layer) 12, although the prior art does not explicitly disclose: the heat insulating pad (polymeric foam layer) 12 comprises a material having a weight loss after 3 min at 600°C of no greater than 70%; or the heat insulating pad (polymeric foam layer) 12 reaches a compression value of at least 60%, the claimed properties are deemed to naturally flow from the structure in the prior art since the combination of Kawai and O’Neil teaches an invention with an identical and/or substantially identical structure and/or chemical composition as the claimed invention. See MPEP §2112.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kawai, as applied to claim 1 above.Regarding claim 10 The limitations for claim 1 have been set forth above. In addition, Kawai illustrates the battery case 11, holding locks 13, and lock pins 14 are made of the same material, by a lack of an interface therebetween (Figure 4B). Kawai teaches, in a separate embodiment, the holding locks 13 are replaced by spacer members 15, which outwardly protrude from the corners of the battery case 11 and secure the pad members 12a-12d (column 6, lines 39-53). Kawai teaches the spacer member 15 is preferably made of a polyolefin resin (thermoplastic material) (column 6, lines 54-57). Kawai also generally defines a polyolefin resin as a type of thermoplastic resin (column 7, lines 39-41). Kawai does not explicitly teach the spacer layer 11, 14 comprises a material selected from the group consisting of elastomeric materials, thermoplastic materials, thermoplastic elastomer materials, thermoplastic non-elastomer materials, thermoset materials, and any combinations or mixtures thereof. It would have been obvious to a person having ordinary skill in the art to modify the material of the holding locks 13 with the preferred thermoplastic material of the spacer members 15 to use a material which is capable of performing its intended function of securing the pad members and/or being useful as a material for a battery case.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kawai as applied to claim 1 above, and further in view of United States Patent Application Publication No. US 2013/0209854 (hereinafter “Wagstaff”).Regarding claims 10 and 11 The limitations for claim 1 have been set forth above. In addition, Kawai illustrates the battery case 11, holding locks 13, and lock pins 14 are made of the same material, by a lack of an interface therebetween (Figure 4B). Kawai does not explicitly teach the battery case 11 and lock pins 14 (spacer layer 11, 14) comprises a material selected from the group consisting of either: (1) elastomeric materials, thermoplastic materials, thermoplastic elastomer materials, thermoplastic non-elastomeric materials, thermoset materials, and any combinations or mixtures thereof; or (2) silicone elastomers. Wagstaff teaches a battery case comprising a body defining cavity configured to receive a battery (abstract). Wagstaff teaches the battery case body may be formed of silicon rubber (elastomeric material, silicone elastomers, and/or silicone rubber) (paragraph [0013]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to make the battery case 11 and lock pins 14 (spacer layer 11, 14) of Kawai from the silicon rubber of Wagstaff motivated by the expectation of successfully practicing the invention of materials suitable for use in a battery case application.
Response to Arguments
Applicant’s arguments, see page 5, filed 5 June 2025, with respect to the rejection of claims 2, 4, 5 and 11 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection of claims 2, 4, 5 and 11 under 35 U.S.C. 112(b) has been withdrawn.
Applicant's arguments filed 5 June 2025 have been fully considered but they are not persuasive. The applicant argued Kawai does not teach the newly added limitation in claim 1, which was originally presented in dependent claim 8, requiring “the plurality of spacer elements form a patterned structure on the spacer layer.” The examiner respectfully disagrees and contends, as admitted by the applicant, Kawai teaches the structure of the lock pins (spacer elements) 14 are located in areas where a pad member 12 is secured to the battery case 11. Therefore, the pattern disclosed by Kawai is in regards to the lock pins being present in areas where the pads 12 are secured to the battery case 11. There is no requirement, from the language of newly amended claim 1, that the claimed “pattern structure” must be of any organized pattern, such as the specific patterns presented in new claim 16. It is further noted that Kawai teaches a separate embodiment where a discernable pattern for the structure of the location of projections (spacer elements) 17 are present on a locking band (spacer layer) 16 (Figure 8B). Regarding claim 7, the applicant argued Kawai discloses a mushroom shaped lock pin and does not meet the limitation from claim 7 which requires “the spacer elements have an overall shape selected from the group consisting of circular, semi-circular, oval, square, triangular, rectangular, diamond, polygonal, linear stripes, non-linear stripes, curved stripes, C-shape stripes, S-shape stripes, and any combinations thereof.” The examiner respectfully submits that the mushroom shaped lock pin from Kawai does meet the scope of claim 7 because a mushroom shape has an overall shape of either: a combination of a circular and a rectangular shape; or combination of a circular and square shape. Regarding claim 9, the applicant argued the battery case 11 is the device that is protected by a pad member and therefore is not part of the multilayer construction; therefore, Kawai does not meet the limitations of claim 9. This argument is not persuasive. There is no requirement in the claims that the multilayer construction does not include materials which are protected by the pad member (or polymeric foam layer as claimed). Furthermore, Kawai teaches their heat insulating assembly is for a battery. Therefore, the battery case 11 and the lock pins 14 (corresponding to the claimed at least one spacer layer 11, 14), and the pad (corresponding to the polymeric foam layer) 12 are considered to be a multilayer construction by the definition provided by the applicant, albeit a definition not commensurate in scope with the claims, because such a multilayer construction is considered to protect a battery. The remaining arguments provided by the applicant are directed to dependent claims, where the applicant states that these dependent claims are also not taught by Kawai based on their ultimate dependency from claim 1, and should be withdrawn for the same reasons noted above. The examiner respectfully notes that Kawai appropriately anticipates at least claim 1, as discussed above, and the dependent claims in question are also considered to be met for at least the same reasons.
Conclusion
Applicant's amendment necessitated a new ground of rejection presented in this Office action. Additionally, Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 8 May 2025 prompted a new ground of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP §§ 609.04(b) and 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
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