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 .
Election/Restrictions
Claims 1-6 are under examination (Group 1). Claim 7 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention (Group 2), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/29/2025.
Applicant’s traversal is on the ground(s) that there would not be a search burden to examine the groups together. This is not found persuasive because a search burden was not the basis for the restriction. The basis for restricting the claims on this 371 National Stage application is that the two groups lack unity of invention. In the Requirement for Restriction mailed on 11/6/2025, Examiner cited prior art (Shiomi et al., JP 2017177412 A) to demonstrate the technical feature shared among the groups did not make a contribution over the prior art, and the groups therefore lacked unity.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The disclosure is objected to because of the following: Applicant’s Table 3 is not readable in its current format (see [0176] of the instant specification). To resolve the objection, please submit a legible version of Table 3. Examiner notes Table 3 in the corresponding WIPO publication WO 2022071547 A1 is presented very clearly (see [0176] of the WIPO doc), but cannot be relied upon, as it is not in English.
Appropriate correction is required.
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18/027,262 – Table 3
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WO2022071547 A1 – Table 3
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 comprises the limitation “an intrinsic viscosity of 0.66 or more and 0.95 or less” on lines 7-8 of the claim. The viscosity range is indefinite, because the claim does not set forth the unit of measurement. Examiner notes the instant specification discloses the units are deciliters per gram (see [0155] of the instant specification). Please amend Claim 1 to recite “an intrinsic viscosity of 0.66 dL/g or more and 0.95 dL/g or less.”
Claims 2-6 are also rejected, as they depend upon Claim 1.
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.
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.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Shiomi et al., JP 2017177412 A (previously cited by Examiner), and further in view of Osaki et al., JP 2018184508 A (see enclosed PTO-892).
Regarding Claim 1, Shiomi discloses a power storage device packaging material comprising a laminate (laminate material used for battery exterior packaging [0006]) comprising at least a base material layer (polyester film [0006]), a barrier layer (metal foil [0006]), and a heat-sealable resin layer in this order (sealant layer is heat laminated [0006, 0020], order of layers [0020, 0032]),
wherein the base material layer contains a polyester film (polyester film [0006-0014]), and the polyester film has a work hardening exponent of 1.6 or more and 3.0 or less in both longitudinal and width directions (work hardening index in the longitudinal direction and the transverse direction perpendicular thereto is 2.5 to 3.0 [0006]),
with a difference of 0.5 or less between the work hardening exponents in the longitudinal and width directions (inherent; both directions have a permitted variance of 0.5 [0006]).
Shiomi does not disclose the polyester film has “an intrinsic viscosity of 0.66 or more and 0.95 or less,” and also does not disclose the polyester film has “a rigid amorphous fraction of 28% or more and 60% or less.” However, these limitations are taught by Osaki et al.
Osaki teaches a polyester film as a packaging material for lithium ion batteries ([0002, 0017]). Osaki teaches when a rigid amorphous fraction of the polyester is 33% or more and 60% or less, the polyester will have “excellent toughness and can be suitably used in applications requiring toughness” ([0006-0009, 0027, 0042]). Osaki teaches if the rigid amorphous content exceeds 60%, the polyester film will have decreased dimensional stability, and a rigid amorphous content below 33% leads to insufficient impact absorption capabilities of the polyester film ([0008]). Osaki teaches the rigid amorphous fraction can be controlled by varying the intrinsic viscosity of the polyester film, and teaches an optimal range of intrinsic viscosity as “0.60 or more and 1.2 or less” (range [0008]; Polyester B: 0.7 [0031]; Polyester C: 0.75 [0032]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the current invention to have the polyester film of Shiomi possess a rigid amorphous fraction and an intrinsic viscosity within the claimed ranges, and would have been motivated to do so, as Osaki teaches rigid amorphous fractions and an intrinsic viscosities within the claimed ranges contribute to a battery packaging film with excellent toughness.
Additionally, before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to find an optimal rigid amorphous content of Shiomi’s polyester film, as Osaki teaches the content should be high enough (at least 33%) to enable sufficient impact absorption capabilities, but not so high (not higher than 60%) to decrease the dimensional stability of the film.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) [MPEP § 2144.05, II].
Regarding Claim 2, modified Shiomi discloses all limitations as set forth above. Modified Shiomi discloses the polyester film has a thickness of 5 µm or more and 40 µm or less (Shiomi, 4 µm to 30 µm [0006-0013]).
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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
Regarding Claim 3, modified Shiomi discloses all limitations as set forth above. Modified Shiomi discloses the polyester film has a melting point of 235°C or more (Shiomi, melting point of 235°C [0006]; Examples: Polyester was melted at 280°C [0036, 0040]).
Regarding Claim 4, modified Shiomi discloses all limitations as set forth above. Modified Shiomi does not disclose “the polyester film has a degree of crystallinity of 15% or more and 40% or less.” However, this limitation is also taught by Osaki.
Osaki teaches the mechanical strength of the polyester film can be controlled by varying the degree of crystallinity ([0006-0010]). Osaki teaches if the crystallinity is less than 25%, the impact absorption energy of the polyester film may be too low, and a crystallinity of more than 35% will negatively impact the amount of rigid amorphous content in the film ([0010]). Osaki teaches in order to maximize the impact energy absorption of the polyester film, the proportion of rigid amorphous content in the film should be higher than the degree of crystallinity ([0009]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the current invention to have the polyester film of modified Shiomi possess a degree of crystallinity within the claimed range, and would have been motivated to do so, as Osaki teaches polyester films having a degree of crystallinity between 25% and 35% allow for a sufficient proportion of rigid amorphous content, thereby maximizing the impact energy absorption of the film.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) [MPEP § 2144.05, II].
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over modified Shiomi as applied to Claim 1 above, and further in view of Takahagi et al., US 20160301040 A1 (see enclosed PTO-892).
Regarding Claim 5, modified Shiomi discloses all limitations as set forth above. Modified Shiomi does not disclose the polyester film has “a rupture elongation of 100% or more in at least one of the longitudinal and width directions.” However, this limitation is taught by Takahagi et al.
Takahagi teaches a polyester resin layer for battery packaging, wherein a tensile rupture elongation in each of the MD direction and the TD direction is set in the range of 85% to 130% ([0017]). Takahagi teaches the tensile rupture elongation is even more preferably in the range of 90% to 120%, in order to reduce pinholes and cracks during molding, and to impart excellent electrolytic solution resistance to the battery packaging material ([0092-0093]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the current invention to have the polyester film of modified Shiomi possess a rupture elongation in the longitudinal and/or width direction within the claimed range, and would have been motivated to do so, as Takahagi teaches polyester films having a tensile rupture elongation in each of the MD direction and the TD direction in the range of 90% to 120% will have reduced pinholes and cracks, improved moldability, and excellent electrolytic solution resistance.
Regarding Claim 6, modified Shiomi discloses all limitations as set forth above. Modified Shiomi discloses a power storage device (Shiomi, lithium battery [0001-0003]) comprising the packaging material of Claim 1 (Shiomi, [0014, 0046]). Modified Shiomi does not disclose “a power storage device element comprising at least a positive electrode, a negative electrode, and an electrolyte,” wherein the power storage device element is “housed in a package formed of the power storage device packaging material.” However, these limitations are also taught by Takahagi.
Takahagi teaches a power storage device element comprising a positive electrode, a negative electrode, and an electrolyte (a battery element including at least a positive electrode, a negative electrode and an electrolyte [0077-0079]). Takahagi also teaches the power storage device element is housed in a package formed of a polyester laminate packaging material ([0080-0098]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the current invention to have the power storage device of modified Shiomi further comprise a power storage device element comprising at least a positive electrode, a negative electrode, and an electrolyte, wherein the device element is housed in a package formed of the power storage device packaging material, as Takahagi teaches this configuration is appropriate for a battery packaging material comprising a polyester film.
The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY C GARCIA whose telephone number is (571)272-2475. The examiner can normally be reached Mon-Fri, 0800 - 1730 MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY C GARCIA/Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721