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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 7, 8, 10, 12-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Muraki et al.(US2021/0091435A1, with foreign priority of 06/27/2018).
As to claim 1, Muraki discloses an adhesive film for metal terminal ((40) [0056]) which is interposed between a metal terminal electrically connected to an electrode of an electrical storage device element [0051] and an exterior material for electrical storage devices (packaging material (20) [0030]) [0055] which seals the electrical storage device element [0046], the adhesive film for metal terminal comprising at least one resin layer [0014], wherein the at least one resin layer has a melting point of 150°C or higher and 270°C or lower (Resins having a melting point in the range of 170° C. to 280° C [0015]), and the at least one resin layer contains an elastomer. (The thermoplastic resin may be at least one selected from the group consisting of polyester resins [0013]. As exemplified in paragraph [0031-0032] of the instant specification).
It should be noted, 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Examiner notes, the phrase, “for metal terminal,” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitation are able to stand alone. See In re Hirao, 535 F2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v Robie, F.2d 15, 152, 88 USPQ 478, 481 (CCPA 1951).
As to claim 2, Muraki discloses the at least one resin layer contains polybutylene terephthalate. [0013]
As to claim 3, Muraki discloses the elastomer includes at least one thermoplastic elastomer selected from polyester-based elastomers [0013], polyamide-based elastomers [0013], polyurethane-based elastomers, polyolefin-based elastomers, polystyrene-based elastomers, and polyether-based elastomers, or a thermoplastic elastomer which is a copolymer of any of the foregoing elastomers.
As to claim 7, Muraki discloses a surface on a side of the exterior material (substrate layer (11) of packing material (20), fig. 2 [0032]) for electrical storage (0030] devices includes the at least one resin layer (inner layer (18) [0034]).
As to claim 8, he rejection of claim 7 is incorporated, Muraki discloses a resin forming the surface on the side of the exterior material for electrical storage devices (Substrate layer (11) may be PET film [0036] fig. 2) and a resin forming a surface on a side of the metal terminal which faces the adhesive film are the same resin. ((18b) contains PET [0038] fig. 3(c) which meets the limitation.)
As to claim 10, Muraki discloses a laminate (film (40) [0060]) including at least a first resin layer ((40c) fig. 5(c)), an intermediate layer ((40a) fig. 5(c)) and a second resin layer in this order ((40b) fig. 5(c)), wherein at least one of the first resin layer, the intermediate layer and the second resin layer includes the at least one resin layer(polyethylene terephthalate (PET) [0060], and a melting point of the intermediate layer is 250°C or higher. (First layer 40a in this case comprises PET and/or a PET resin having a peak melting temperature in the range of 170° C. to 270° C. [0060] fig. 5(c))
It should be noted, 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to claim 12, Muraki discloses a laminate (40) including at least a first resin layer ((40a) [0060]) and a second resin layer ((40b) [0060]) in this order (fig. 5b), wherein at least one of the first resin layer and the second resin layer includes the at least one resin layer (PET resin [0060]).
As to claim 13, Muraki discloses a total thickness of the adhesive film (40) for metal terminal is 50 m or more and 500 m or less. ((40a) thickness is 5 µm to 500 µm, (40b) thickness is 5 µm to 500 µm [0061], (40c) thickness is 5 µm to 500 µm [0064], and as shown in fig. 5(c) the total thickness for terminal coating film (40) is a summation of all layers or a range of 15 µm to 1500 µm which overlaps the claimed range.)
It should be noted, 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to claim 14, Muraki discloses the exterior material for electrical storage devices (Packaging material (20) fig. 2 [0032]) includes a laminate including at least a base material layer (substrate (11)), a barrier layer (15) and a heat-sealable resin layer (PET (18) [0034] [0037]) in this order from an outside (fig. 5(c)), and a melting point of the heat-sealable resin layer is 150°C or higher and 250°C or lower. (Inner layer 18 may be in the range of 160° C. to 280° C [0035])
It should be noted, 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to claim 15, Muraki discloses the exterior material (20) for electrical storage devices includes a laminate including at least a base material layer (11), a barrier layer (15) and a heat-sealable resin layer (18) in this order from the outside (fig. 2), and the heat-sealable resin layer contains polybutylene terephthalate. (It should be noted that the copolymer of PET in the present disclosure refers to a copolymer containing units of polyethylene terephthalate and units of another resin. This other resin may be polybutylene terephthalate, for example. [0032]… The inner layer 18 contains polyethylene terephthalate (PET) and/or a copolymer [0033])
As to claim 16, Muraki discloses the exterior material for electrical storage devices is an exterior material for an all-solid-state battery [0065].
As to claim 17, Muraki discloses the adhesive film for metal terminal according to claim 1 is attached to a metal terminal. ((40) tab sealant [0030], fig. 4 [0055], [0056])
As to claim 18, Muraki discloses an electrical storage (The power storage device 100 as a fully solid-state battery [0030] fig. 1) device comprising: the electrical storage device element (power storage device body 10 [0030]) including at least a positive electrode, a negative electrode [0051] and an electrolyte [0006]; the exterior material (20) for electrical storage devices that seals the electrical storage device element [0030]-[0033] [0103]; and the metal terminal electrically connected to each of the positive electrode and the negative electrode [0051] and protruding to outside of the exterior material for electrical storage devices (fig. 1), wherein the adhesive film for metal terminal according to claim 1 is interposed between the metal terminal and the exterior material for electrical storage devices ([0055] fig. 1).
As to claim 19, Muraki discloses a method for manufacturing an electrical storage device (FIGS. 6(a) to 6(e) are schematic diagrams illustrating a method of producing evaluation samples of examples and comparative examples. [0025]) including the electrical storage device element (Power storage device body 10 [0030]) including at least a positive electrode, a negative electrode [0051] and an electrolyte [0006]; the exterior material for electrical storage devices (20) that seals the electrical storage device element [0030]-[0033] [0103]; and the metal terminal electrically connected to each of the positive electrode and the negative electrode [0051] and protruding to outside of the exterior material for electrical storage devices (fig. 1), the method comprising a step of interposing the adhesive film for metal terminal according to claim1 between the metal terminal and the exterior material for electrical storage devices ([0055] fig. 1), and sealing the electrical storage device element with the exterior material for electrical storage devices [0103].
The product-by-limitations of claim 19 are not given patentable weight since the courts have held that patentability is based on a product itself, even if the prior art product is made by a different process (In re Thorpe, 227 USPQ 964, 1985). Moreover, a product-by-process limitation is held to be obvious if the product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman, 180 USPQ 324). Claim 19 as written does not distinguish the product of the instant application from the product of the prior art.
Claim(s) 4, 5, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Muraki et al.(US2021/0091435A1, with foreign priority of 06/27/2018), as applied to claim 1 above, and further in view of Kim et al. (KR101366217B1).
As to claim 4, Muraki does not explicitly disclose, “the elastomer is a thermoplastic elastomer including a block copolymer of polybutylene terephthalate and polyether,” however in the same field of endeavor Kim discloses an adhesion layer [0047], and teaches the elastomer is a thermoplastic elastomer including a block copolymer of polybutylene terephthalate and polyether ([0049], PBT, and polyether [0051]). Kim further teaches (An olefin series resin having a melting point of 130 ° C or more and a melt index (MI) The polymer can be mixed to improve the adhesive strength and flexibility [0053]).
It would have been obvious to one of ordinary skill in the art before the time the application was filed to modify Muraki with the elastomers of Kim to improve the adhesive strength and flexibility of the film.
As to claim 5, the rejection of claim 4 is incorporated, modified Muraki discloses the polyether component is a copolymer of terephthalic acid and polytetramethylene ether glycol. [Kim, 0051]
As to claim 9, modified Muraki discloses comprising an acid-modified homopolypropylene layer or an acid-modified block polypropylene layer [0055].
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Muraki et al.(US2021/0091435A1, with foreign priority of 06/27/2018), as applied to claim 1 above, and further in view of Yamashita et al. (JP2003092089A).
As to claim 6, Muraki does not explicitly disclose “the elastomer is a thermoplastic elastomer including an a-olefin copolymer of polymethylpentene.” In the same field of endeavor Yamashita discloses an adhesive layer and teaches the elastomer is a thermoplastic elastomer including an a-olefin copolymer of polymethylpentene (4-methyl-1-pentene [0265-0277]) Yamashita further teaches 4-methyl-1-pentene-based polymer with a polyolefin used as a sealant layer may prevent short circuit between the barrier layer and the lead wire [0320-0327]
It would have been obvious to one of ordinary skill in the art before the time the application was filed to modify Muraki with the film of Yamashita to prevent a short circuit of the battery thereby improving safety.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Muraki et al.(US2021/0091435A1, with foreign priority of 06/27/2018), as applied to claim 1 above, and further in view of Takei et al. (US2019/0245189A1)).
As to claim 11, Muraki discloses comprising a laminate (40) including at least a first resin layer (40c), an intermediate layer (40a) and a second resin layer (40b) in this order (fig. 5(c)), wherein at least one of the first resin layer, the intermediate layer and the second resin layer includes the at least one resin layer (PET [0060]), but does not explicitly disclose “the intermediate layer is formed of an imine-modified polyolefin-based resin.”
In the same field of endeavor Takei discloses an electrode lead wire comprising a sealing film [0008] which has an adhesive resin layer [0009], and teaches the sealing film (33) may be a laminated with an adhesive resin layer (30) and (32) [0027]. The adhesive agent composition used in the present embodiment contains imine-modified polyolefin [0066]. Imine-modified polyolefin is a imine-modified polypropylene obtained by graft-treating polypropyleneimine [0068], as exemplified in paragraph [0026] of the instant specification.
Takei further teaches, according to the present invention, there can be provided an electrode lead wire member comprising a sealing film having high adhesive strength and resistance to an electrolytic solution, and a battery comprising the electrode lead wire member. [0010]
It would have been obvious to one of ordinary skill in the art before the time the application was filed to modify Muraki with the Imine-modified polyolefin of Takei to improve the adhesion strength and resistance to electrolyte.
Response to Arguments
Applicant argues, page 8-9, that Muraki does not necessarily contain an elastomer. This is unpersuasive, because paragraphs 12 and 13 of Muraki disclose elastomers. Including urethane resins and silicone resins. Additionally, inherency is not being relied upon for the rejection of claim 1.
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 prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.
Hwang et al. (US2015/0086863A1) Multilayer heat-resistant film for electrode
terminals.
Mochizuki et al. (US2008/0182097A1) Adhesive sheet for sealing metal terminals with acid-modified polyolefin based resin layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BART A HORNSBY whose telephone number is (313)446-6637. The examiner can normally be reached 9:00-6:00 EST.
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BART HORNSBY
Examiner
Art Unit 1728
/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728
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