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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 11, the claim recites “the inorganic fiber-formed article extends continuously from the cover base material to a surface closest to the battery pack.” This is no mention of this feature in the specification or any mention of a special relationship between the inorganic fiber-formed article and the battery pack. It is also of note that the claim does not recite what the surface closest to the battery pack is the surface of. Is the surface the surface of the inorganic fiber-formed article? A portion of the housing? Something else?
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 8-11 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.
Regarding claim 11, 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 the inorganic fiber-formed article extends continuously from the cover base material to a surface closest to the battery pack.
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 fire protection layer is provided on the inner surface of the shell and therefore is the layer closest to the battery pack ([0064], [0072]-[0073]). 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.
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
Applicant’s arguments, see pg. 4, filed 10/27/2025, with respect to the objection to claims 1-10 have been fully considered and are persuasive. The objection to claims 1-10 has been withdrawn.
Applicant’s arguments, see pp. 4-5, filed 10/27/2025, with respect to the rejection(s) of claim(s) 1-10 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US 2022/0069402 A1 (“Winter”).
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.
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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