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 .
Response to Amendment
The amendment dated 3/12/2026 has been considered and entered into the record. Claim 1 has been amended to require layers of an article to be secured to each other via stitching. This latest amendment overcomes the previous prior art rejections which fail to teach the use of stitching to secure layers together. Accordingly, the previous rejections based upon Ha et al. have been withdrawn. Claims 1, 4, 9, 15, 17–24, 29, 31–35, 38, and 39 remain pending and are examined below.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4, 15, 17–19, 21, 24, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Ha (US 2022/0227100 A1) in view of Baroux (US 2016/0031180 A1).
Ha discloses a multilayer fabric comprising first and second needle-punched nonwoven layers of oxidized polyacrylonitrile fibers 120, 130 adapted to provide insulation for a battery. Ha abstract, ¶¶ 1, 3, 6, 43–46, Fig. 1. The nonwoven layers further comprise layers of aluminum foil. Id. ¶ 66. One or more of the needle-punched layers may be cross-lapped. Id. ¶ 40.
Ha fails to teach the layers of the multilayer fabric are secured to each other via stitching and the use of glass fibers.
Baroux teaches the formation of a flexible, fire-resistant and thermal-resistant sheet product comprising layers of various insulative fibers including E-glass or E-CR glass fibers. Baroux abstract, ¶ 15–16. The glass fibers may be use with or in place of oxidized polyacrylonitrile fibers. Id. ¶ 29. In order to form a cohesive insulative fibrous article, the layers of the sheet product may be stitched together. Id. ¶¶ 25–26
Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have stitched together the layers of the Ha fabric motivated by the desire to form a cohesive article. Additionally, it would have been obvious to substitute the some or all of the oxidized polyacrylonitrile fibers in the layers of Ha because Baroux teaches the functional equivalence of the different fibers types for use in insulative articles. Simple substitution of one known element for another to obtain predictable results is obvious. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Claim 4 is rejected as the nonwoven layers may comprise oxidized polyacrylonitrile fibers, which are organic. See Spec. ¶ 51, Ha ¶ 59. Claim 15 is rejected as the multilayer fabric with aluminum foil facings makes the fabric a five-layer fabric. Claim 17 is rejected as the first and second nonwoven fabrics may be placed on either side of a flame retardant nonwoven fabric. See Ha ¶¶ 30–34. Claim 18 is rejected as the layers of Ha each comprise layers from the claimed list. Claim 19 is rejected as nonwoven fabric layer 110 may be needle-punched and comprise oxidized polyacrylonitrile fibers. Ha ¶ 31, Fig. 1.
Although Ha does not explicitly teach the claimed feature nonwoven layer having temperature resistance of about 450oC or greater and about 800oC or less, it is reasonable to presume that said property is inherent to Ha. Support for said presumption is found in the use of like materials (i.e. needle-punched oxidized polyacrylonitrile fibers). The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed property of temperature resistance of about 450oC or greater and about 800oC or less would obviously have been present one the Ha product is provided. Note In re Best, 195 USPQ at 433, footnote (CCPA 1977) as to the providing of this rejection made above under 35 USC 102. Reliance upon inherency is not improper even though rejection is based on Section 103 instead of Section 102. In re Skoner, 517 F.2d 947 (CCPA 1975).
Claim 29 is rejected as the insulation material of Ha may be used to insulate an electric vehicle battery. Ha ¶¶ 6–10.
Claim(s) 9, 31–35, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Ha and Baroux as applied to claims 1 and 29 above, and further in view of Bush (WO 2018/156691 A1).
Ha and Baroux fail to teach the use of inorganic fibers or the structure of the insulative material to include a top cover and/or sides.
Bush teaches a fibrous structure including nonwoven fibrous material, comprising one or more layers, wherein the fibrous material is adapted to at least partially surround and thermally insulate an electric vehicle’s battery. Bush abstract, ¶¶ 16, 17, 36. The nonwoven layer may also be made from glass fibers. Id. ¶ 22.
Bush teaches that the one or more of the nonwoven layers may comprise either organic fibers (e.g., oxidized polyacrylonitrile) or inorganic fibers (e.g., mineral, ceramic). Bush ¶ 7. As such, it would have been obvious to one having ordinary skill in the art at the time the invention was made to either substitute one of the nonwoven oxidized polyacrylonitrile fiber layers with inorganic fiber because Bush teaches the functional equivalency of said fiber types in creating electric battery insulation. Simple substitution of one known element for another to obtain predictable results is obvious. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Additionally, it would have been obvious to one of ordinary skill in the art to have modified the battery insulation of Ha to include structure set forth in Bush in order to successfully use the invention of Ha. Accordingly, claims 31, 32, and 34 are rejected as the thermal insulation may cover the top of a battery in the form of a box, such that it extends generally with a face or side of the battery. See Bush ¶ 66. Claim 33 is rejected as it would have been obvious to include one or more cutouts in the Ha insulation material to accommodate the features of an electric vehicle battery as the insulation material may be molded for installation in a desired assembly. Bush ¶¶ 42, 49, 66. The combined teachings of Ha and Bush render claim 35 obvious because when taken together they yield a passive insulation product and as such is capable of being used in combination with an active temperature control system.
Furthermore, it would have been obvious to have used reinforced foil in Ha motivated by the desire to improve the foil’s strength and selected fiberglass mesh as the reinforcement based upon its use in Bush. See id. ¶¶ 17–18, 38.
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Ha and Baroux as applied to claim 18 above, and further in view of de Rovere (US 2022/0178061 A1).
Ha and Baroux fail to teach that one or more of the nonwoven layers are ceramic blanket layers and one or more of the needlepunched layers include silica fibers.
De Rovere teaches the formation of a nonwoven web comprising ceramic filaments (e.g., silica) entangled to form a cohesive mat for use in thermal insulation materials. de Rovere abstract, ¶¶ 12, 24, 76. The nonwoven webs may be formed using wet-laying or air-laying and have a basis weight in the range of 100–250 gsm, wherein the webs may be subsequently subjected to mechanical consolidation, such as needle-punching. Id. ¶¶ 6, 86–87, 106, 111–113.
It would have been obvious to the ordinarily skilled artisan to have included silica fibers in the needlepunched layers of Ha motivated by the desire to add highly insulative materials to protect the battery.
Claim(s) 22 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Ha, Baroux, and Gonczy (US 5,308,421).
Ha discloses a multilayer fabric comprising first and second needle-punched nonwoven layers of oxidized polyacrylonitrile fibers 120, 130 adapted to provide insulation for a battery. Ha abstract, ¶¶ 1, 3, 6, 43–46, Fig. 1. The nonwoven layers further comprise layers of aluminum foil. Id. ¶ 66. One or more of the needle-punched layers may be cross-lapped. Id. ¶ 40.
Ha fails to teach the use of glass fiber layers.
Baroux teaches the formation of a flexible, fire-resistant and thermal-resistant sheet product comprising layers of various insulative fibers including E-glass or E-CR glass fibers. Baroux abstract, ¶ 15–16. The glass fibers may be use with or in place of oxidized polyacrylonitrile fibers. Id. ¶ 29. Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to substitute the some or all of the oxidized polyacrylonitrile fibers in the layers of Ha because Baroux teaches the functional equivalence of the different fibers types for use in insulative articles. Simple substitution of one known element for another to obtain predictable results is obvious. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Ha and Baroux fail to teach an insulative article including one or more black glass cloth layers.
Gonczy teaches an improved protective layer for insulating bodies that includes the use of a composite, wherein the composite includes refractory fiber fabrics in a matrix of black glass ceramic. Gonczy abstract. The composite material protects underlying brittle ceramic fibers for use in thermal insulation applications. Id. at 2:20–38, 7:55–68.
The ordinarily skilled artisan would have found it obvious to have include the black glass fabric layer of Gonczy in the Ha insulation to protect its other layers.
Claim 38 is rejected as it would have been obvious to configure the insulative article of Bush accommodate the features of an electric vehicle battery as the insulation material may be molded for installation in a desired assembly. Id. ¶¶ 42, 49, 66.
Allowable Subject Matter
Claim 23 is allowed.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to disclose, teach, or suggest an article consisting of the specific layers required in claim 23.
Response to Arguments
Applicant's arguments filed 3/12/2026 have been fully considered but they are not persuasive.
Applicant argues that claims 17, 18, 24, and 29 have not been addressed by the Examiner in making their rejection. While each of the disputed claims may not have been recited in previous rejection individually, their limitations were addressed. For further clarity, claims 17, 18, 24, and 29 are addressed individually here and above. Claim 17 is rejected as the first and second nonwoven fabrics may be placed on either side of a flame retardant nonwoven fabric. See Ha ¶¶ 30–34. Claim 18 is rejected as the layers of Ha each comprise layers from the claimed list. Although Ha does not explicitly teach the claimed feature nonwoven layer having temperature resistance of about 450oC or greater and about 800oC or less, it is reasonable to presume that said property is inherent to Ha, thereby rendering claim 24 unpatentable. Support for said presumption is found in the use of like materials (i.e. needle-punched oxidized polyacrylonitrile fibers). The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed property of temperature resistance of about 450oC or greater and about 800 oC or less would obviously have been present one the Ha product is provided. Note In re Best, 195 USPQ at 433, footnote (CCPA 1977) as to the providing of this rejection made above under 35 USC 102. Reliance upon inherency is not improper even though rejection is based on Section 103 instead of Section 102. In re Skoner, 517 F.2d 947 (CCPA 1975). Claim 29 is rejected as the insulation material of Ha may be used to insulate an electric vehicle battery. Ha ¶¶ 6–10.
Applicant next argues that Ha fails to teach the incorporation of one or more needlepunched layers of oxidized polyacrylonitrile fibers. Claim 19 recites “one or more needlepunched layers including oxidized polyacrylonitrile fibers.” The use of the term “including” allows for other materials to be present in the one or more needlepunched layers as long as oxidized polyacrylonitrile fibers are also present. Ha discloses a multilayer fabric comprising first and second needle-punched nonwoven layers of oxidized polyacrylonitrile fibers 120, 130 adapted to provide insulation for a battery. Ha abstract, ¶¶ 1, 3, 6, 43–46, Fig. 1. As such, Ha teaches the incorporation of one or more needlepunched layers of oxidized polyacrylonitrile fibers into the insulation article.
Applicant then argues that stating a fiber matrix “may include” certain features does not mean Bush teaches nonwoven layers consisting of one or the other and does not establish functional equivalence, in this instance oxidized polyacrylonitrile fibers and inorganic fibers. Here, Bush specifically teaches “[t]he fiber matrix may include fibers selected from polyester fibers, polybutylene terephthalate (PBT), polyethylene terephthalate (PET), co-polyester/polyester (CoPET/PET) adhesive bicomponent fibers, polyacrylonitrile (PAN), oxidized polyacrylonitrile (Ox-PAN, OPAN, or PANOX), aramid, olefin, polyamide, imide, polyetherketone (PEK), polyetheretherketone (PEEK), polyethersulfone (PES), mineral, ceramic, natural or another polymeric fiber, or any combination thereof. The fiber matrix and/or other layers of the material may include inorganic fibers.” Bush ¶ 7. In other words oxidized polyacrylonitrile fibers and inorganic fibers may be used interchangeably within a fibrous nonwoven structure to insulate a battery. See id. Additionally, Bush establishes the benefits of using oxidized polyacrylonitrile and inorganic fibers for use in making battery insulators. Id. ¶¶ 21–22. As such, it would have been obvious to one having ordinary skill in the art at the time the invention was made to either substitute one of the nonwoven oxidized polyacrylonitrile fiber layers with inorganic fiber because Bush teaches the functional equivalency of said fiber types in creating electric battery insulation. Simple substitution of one known element for another to obtain predictable results is obvious. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Applicant’s argument as to establishing the functional equivalence between the oxidized polyacrylonitrile and glass fibers in Baroux is similarly unpersuasive. See Baroux ¶ 29.
Applicant next contends that the Office Action makes an unsupported conclusory statement that the alleged combination of Ha and Bush is “capable of being used in combination with an active temperature control system,” in claim 35. Claim 35 recites “wherein the insulation material is a passive insulation product adapted to be used in combination with an active temperature control system.” As such, to meet the claim limitation, the prior art needs merely to be capable of performing the intended function of being used in combination with an active temperature control system as Applicant’s Specification fails to provide a “means” or “step” for such an adaptation. See 35 U.S.C. 112 (f); Spec. passim. Here, both Ha and Bush are directed to passive insulation products to be used to insulate electric vehicle batteries. Ha ¶¶ 1, 6–8; Bush ¶¶ 2, 5–7, 17. As such, because the insulative materials are designed to be passive insulation products for use with electric vehicle batteries, it is reasonable to presume that the prior art is capable of being used in combination with an active temperature control system based upon Applicant’s lack of additional requirements set forth in either the Specification or instant claims.
Applicant then argues that it is unclear why one of ordinary skill in the art would have been motivated to look to de Rovere to modify the insulation of Ha when the disclosure of de Rovere pertains to pollution control devices. This argument is unpersuasive as the invention of de Rovere may be used as a thermal insulation article as well as a pollution control device. See de Rovere ¶ 12.
Applicant next contends that it is unclear why an ordinarily skilled artisan would have been motivated to look to Gonczy, which is directed to protective layers to ceramic bodies. Gonczy teaches an improved protective layer for insulating bodies that includes the use of a composite, wherein the composite includes refractory fiber fabrics in a matrix of black glass ceramic. Gonczy abstract. The composite material protects underlying brittle ceramic fibers for use in thermal insulation applications. Id. at 2:20–38, 7:55–68. The ordinarily skilled artisan would have found it obvious to have include the black glass fabric layer of Gonczy in the Ha insulation to protect its other layers.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 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 MATTHEW D MATZEK whose telephone number is (571)272-5732. The examiner can normally be reached M-F 9:30-6.
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, Jennifer Boyd can be reached at 571.272.7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW D MATZEK/Primary Examiner, Art Unit 1786
Prosecution Insights