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 .
Status of the Claims
The amendment/remarks submitted 02/15/2023 have been entered and fully considered. Claims 1-4 and 6-11 are pending. Claims 3-8 and 10 are amended. Claims 1-10 are examined herein.
Claim Objections
Claims 3-4, 6-8, and 10 are objected to because of the following informalities: Claims 3-4, 6-8, and 10 have incorrect status identifiers. In the claims filed 10/27/2025, the status identifier for 3-4, 6-8, and 10 is listed as “Original.” However, these claims were amended in the preliminary amendment filed 02/15/2023. The appropriate status identifier for these claims is “Previously Presented.” See MPEP 714(II)(C). This should be corrected in the next response. Appropriate correction is required.
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.
Claims 1-4, 6, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0074960 A1 (“Stude”) in view of US 2022/0069402 A1 (“Winter”).
Regarding claim 1, Stude discloses a heat insulation element 1 (“battery pack cover”) for use in a battery pack (Abstract; Figs. 3-5). The heat insulation element 1 comprises cover layers 2, 3 and interlayer 6 (any of cover layers 2, 3 and interlayer 6 correspond to the “cover base material”), and fiber layers 5.
Stude does not expressly disclose an inorganic fiber-formed article composed of inorganic fibers having an average fiber length of 3 mm or more and 7.9 mm or less. The transitional phrase “composed of” is interpreted herein consistent with “consisting essentially of.” See MPEP 2111.03(IV).
Winter discloses a fire protection device comprising a composite system used in battery packs. The composite system includes a carrier layer, an adhesive layer, and a fire protection layer containing at least one ablative-acting compound, and a shell inside which the composite system is arranged (Abstract). The fire protection layer (“inorganic fiber-formed article”) preferably comprises a fleece or woven glass fiber fabric coated with a fire protection composition comprising the at least one ablative-acting compound ([0036]). The glass fibers have a length of 4 to 7 mm ([0041]). The system protects battery cells from external temperatures and/or the effects of fire and prevents heat and/or fire from spreading to other components of the vehicle and/or the passenger cell in the event of thermal runaway of battery cells ([0021]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to apply the teachings of Winter including the fire protection layer to Stude to protect battery cells from external temperatures and/or the effects of fire and prevent heat and/or fire from spreading to other components of the vehicle and/or the passenger cell in the event of thermal runaway of battery cells.
While modified Stude is silent regarding the tensile strength of 20 N or more according to the recited method, it is deemed that the tensile strength is an inherent characteristic and/or property of the specifically disclosed inorganic fiber-formed article. In this respect, MPEP 2112 sets forth the following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Regarding claim 2, modified Stude discloses the battery pack cover of claim 1. Stude further discloses the cover layers 2, 3 comprise a metal ([0022], [0024], [0083]-[0084]) and the interlayer 6 comprises a metal ([0030], [0079]).
Regarding claim 3, modified Stude discloses the battery pack cover of claim 1. As shown in Figs. 1A-1C, the heat insulation element 1 is a laminate of the cover layers 2, 3, interlayer 6, and fiber layers 5.
Regarding claim 4, modified Stude discloses the battery pack cover of claim 1. While Stude is silent regarding the battery pack cover not penetrating through a flame shielding test at a flame temperature of 1000°C for 5 minutes, it is deemed that this is an inherent characteristic and/or property of the specifically disclosed battery pack cover. See the sections of MPEP 2112 cited above.
Regarding claim 6, modified Stude discloses the battery pack cover of claim 1. Winter discloses the fire protection layer comprises a fleece or woven glass fiber fabric ([0036]).
Regarding claim 8, modified Stude discloses the battery pack cover of claim 1. Stude further discloses a battery 8 (“battery pack unit”) comprising the battery pack cover and at least one group of battery cells 12 (“battery pack”) (Fig. 2; [0111], [0116]).
Regarding claim 9, modified Stude discloses the battery pack unit of claim 8. As shown in Figs. 1A-1C, at least one of the fiber layers 5 is formed on a battery pack side.
Regarding claim 10, modified Stude discloses the battery pack unit of claim 8. Stude further discloses a vehicle 14 (“electric mobility”) comprising the battery pack unit.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0074960 A1 (“Stude”) in view of US 2022/0069402 A1 (“Winter”) as applied to claim 1 above, and further in view of US 2006/0068278 A1 (“Bloom”).
Regarding claim 7, modified Stude discloses the battery pack unit of claim 1. Modified Stude does not expressly disclose the inorganic fiber-formed article is a needled blanket.
Bloom discloses a vehicular battery pack insulator (Abstract). The insulating element 11 comprises one or more sheets, mats or other thin-walled fiber-containing structures, each of which contains inorganic fibers ([0025]). The insulating element is desirably formed from inorganic fibers that have been constrained to control the bulkiness of the fibers, i.e., to minimize the thickness of the insulating element, while providing sufficient insulation to desirably allow a temperature of the battery pack to be controlled within a narrow temperature range during operation ([0039]). Methods of constraining the fibers include needle punching a fiber batt of inorganic fibers ([0039]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to needle punch the fire protection layer to control the bulkiness of the fibers as taught by Bloom.
Response to Arguments
In view of the change to the status identifiers, the objection to the claims has been withdrawn.
In view of the amendment to claim 11 and applicant’s remarks, the rejection of claim 11 under 35 USC 112(a) has been withdrawn.
Applicant's arguments filed 06/09/2026, regarding the rejection of claims 1-4 and 6-10 under 35 USC 103, have been fully considered but they are not persuasive.
In response to applicant's argument that Winter’s composite system is designed to function as a complete, self-contained unit, with the carrier layer, adhesive layer, and fire-protection layer working together as an integrated whole, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, it is the position of the Office that Stude would appreciate the benefits of the fire protection layer of Winter, namely fire protection and a cooling effect when exposed to heat ([0021], [0045]).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Regarding applicant’s argument to a proposed modification impairing the intended function of the reference, it is noted that Winter is the secondary reference. The Office is not suggesting modifying Winter by removing layers and incorporating features from Stude; rather, the Office is proposing modifying Stude by incorporating a feature of Winter. The proposed modification would not render Stude (the primary reference) inoperable for its intended purpose.
Applicant argues that Winter’s fire protection layer is incompatible with Stude’s structure (pp. 7-8). The Office acknowledges the difference in fiber length between layers in Stude and Winter; however, Stude does not teach away from inclusion of other layers for other purposes, such as the fire-resistant fiber layer of Winter. A teaching in Stude of a particular fiber length for a high pressure and tear resistance of the fiber layer does not preclude the addition of other layers including the fire-resistant fiber layer of Winter.
Applicant argues that the fire-resistant fiber layer of Winter is incompatible with the system of Stude (pp. 8-9). It is noted that claim 1 does not recite a positioning of the inorganic fiber-formed article nor is the Office suggesting incorporating the fire-resistant fiber layer of Winter as an interior layer. Though it is noted that it appears the fire-resistant fiber layer of Winter can function as a layer near the surface of the composite (see layers 2 and 6 of 7 at [0073]).
Allowable Subject Matter
Claim 11 is allowed.
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance and for the indication of allowable subject matter:
Claims 10 and 11 use the closed transitional phrase “consists of” which excludes any element, step, or ingredient not specified in the claim. The prior art does not disclose or render obvious the battery pack cover which consists of the elements recited in claims 11 or 12.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Scott Carrico whose telephone number is (571)270-5504. The examiner can normally be reached Monday-Friday 9:15AM-6PM ET.
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, Barbara Gilliam can be reached at 571-272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Robert Scott Carrico
Primary Examiner
Art Unit 1727
/Robert S Carrico/Primary Examiner, Art Unit 1727
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