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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6 October 2025 has been entered.
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 1-3, 5-7, 9, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Number 5,626,982 (hereinafter “Kawai”), and further in view of United States Patent Application Publication No. US 2013/0209854 (hereinafter “Wagstaff”).Regarding claims 1 and 11 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. 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: (1) elastomeric materials; 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 and/or silicone elastomer) (paragraph [0013]). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the materials for the battery case 11 and lock pins 14 (spacer layer 11, 14) of Kawai with the silicon rubber of Wagstaff motivated by the expectation of successfully practicing the invention of materials suitable for use in a battery case application.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, 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 naturally flow from 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 2, 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kawai and Wagstaff 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.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kawai and Wagstaff as applied to claim 1 above, and further in view of JP 2003-146252 A with a machine translation (filed 25 July 2025) being used as the English language equivalent translation (hereinafter “Kimoto”)Regarding claims 16 and 17 The limitations for claim 1 have been set forth above. In addition, Kawai teaches the foam cells may be embossed with a textured pattern (of projections and depressions) (column 2, lines 38-45), and the lock pins 14 secure the pad members 12a-12d to the battery case 11 (column 6, lines 29-39). Kawai does not explicitly teach: (i) the patterned structure on the spacer layer is selected from the group consisting of lattice patterns, diamond patterns, honeycomb patterns, patterns comprising straight or wavy lines running in parallel, checkerboard patterns, brick patterns, and any combination thereof; or (ii) the spacer elements have an overall shape (when seen from a cross-sectional side view) selected from the group consisting of cylindrical, pyramidal, conical, and any combinations thereof. 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 teaches the plurality of wall-like ridges (spacer elements) 25 provides a reinforcement between the core layer and the skin layer, making delamination difficult, and keeping the overall and local rigidity of the formed panel high (paragraphs [0012] and [0027]). Kimoto illustrates: the plurality of wall-like ridges (spacer elements) 25 form a patterned structure on the spacer layer 23, 25, where 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); and the wall-like ridges (spacer elements) 25 have an overall cylindrical shape when seen from a cross-sectional side view (Figures 5-8). It would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the battery case 11 of Kawaii with the wall-like ridges, including the pattern thereof, of Kimoto to provide a multilayer construction exhibiting: delamination resistance; and/or high overall and local rigidity.
Response to Arguments
Applicant’s arguments, see pages 5-6, filed 23 September 2025, with respect to the rejections of the claims under 35 USC §102(a)(1) as being anticipated by either Kawai or Kimoto, as detailed in the previous Office action, have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made under 35 USC §103 in view of the additional consideration of Wagstaff, as detailed in the updated rejection of record.
Applicant's arguments filed 23 September 2025 have been fully considered but they are not persuasive.
The applicant argued Kawai does not teach all the elements recited in independent claim 1, and the additional passages of O’Neil and Wagstaff fail to cure these deficiencies. The examiner respectfully disagrees and contends the entirety of claim 1 has been rendered obvious over the combination of Kawaii and Wagstaff, as detailed in the updated rejection of record.
Conclusion
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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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
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