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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-9 and 13-21 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda (US 2019/0036086 A1) in view of Fenn (WO 2019/035099). American Elements (American Elements Specific Gravity Reference Sheet, p. 1-12) is included as an evidentiary reference,
Regarding claim 1, Ueda teaches a protective layer within the laminate of a battery packaging material (Abstract), which is formed from an isocyanate resin composition comprising polyols and polyisocyanates ([0057], [0038], [0050], and [0060]), and which optionally contains additives including fillers ([0063]) which may be combinations of two or more fillers ([0063]) and which may include both aluminum hydroxide (which reads on the claimed “filler having a specific gravity of less than 3” because the instant Specification states that aluminum hydroxide fits this criteria, see instant Specification at p. 21, lines 2-3) and alumina (which reads on the claimed “filler having a specific gravity of 3 or more” because the instant Specification states that alumina fits this criteria, see instant Specification at p. 21, line 2).
Ueda differs from claim 1 because it is silent with regard to the claimed amount of filler within the composition. However, Ueda specifically states that the amounts of additives (which includes filler) within the composition is not particularly limited ([0064]).
In the same field of endeavor, Fenn teaches thermosetting compositions (Abstract), comprising polyurethanes formed from polyisocyanates and polyols ([75], [116], and [117]). Fenn further teaches the formation of its inventive materials from polyisocyanates which overlap those of Ueda including inter alia IPDI and HMDI (c.f. [119] of Fenn and [0060] of Ueda). Fenn teaches that the inventive compositions may have high filler contents, and that these filler contents are useful to modify the mechanical, thermal, and/or electrical properties of the cured product ([209]). Fenn specifies that filler contents ranging from 0.1 wt% to 95 wt% are suitable ([211]), and teaches a series of fillers that overlap those of Ueda, including inter alia aluminum hydroxide, silica, and calcium carbonate (c.f. [0063] of Ueda and [219] of Fenn). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the fillers of Ueda in amounts ranging from 0.1 to 95 wt%, as taught by Fenn, for the purpose of modifying the mechanical, thermal, and/or electrical properties of the inventive polyurethane products. Furthermore, it would have been obvious to choose ranges of said fillers towards the higher end of said range, as doing so would have a further pronounced effect with respect to said properties. These improvements are germane to the inventive formulation of Ueda which, as stated before, is a protective battery coating. A more mechanically/thermally resilient protective layer would be expected to perform better as a protective coating. The range of fillers taught by Fenn overlap the claimed range of “80 wt% or more,” establishing a prima facie case of obviousness.
Ueda further differs from claim 1 because it is silent with regard to the composition having a specific gravity of less than 3. However, as described above, Ueda as modified by Fenn results in a composition which meets all of the compositional limitations of the claimed composition, having all of the same components in all of the claimed amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed specific gravity characteristic will therefore necessarily be present in Ueda as modified by Fenn, as applied above.
Regarding claim 2, as described above, the resin composition taught by Ueda is a urethane resin, comprising polyols and isocyanates, which reads on “polyol,” “isocyanate compound,” and “urethane resin” from the claimed list. Ueda also teaches the resin as including methacrylate materials ([0056]), which reads on the claimed “acrylic resin.”
Regarding claim 3, Ueda teaches that the isocyanates within the formulation may include, inter alia, HMDI and IPDI, as well as trimers of these compounds, and that these materials may be used in combinations of two or more ([0060]). Ueda therefore teaches compositions containing difunctional isocyanates and trifunctional isocyanates, which read on the claimed “difunctional isocyanate” and “polyfunctional isocyanate” compounds.
Regarding claim 4, Ueda is silent with regard to the claimed “functional group value” characteristic. Nevertheless, as described above, Ueda teaches the incorporation of IPDI (among others, [0060]). The instant Specification states that this material is a suitable difunctional isocyanate for the purportedly inventive composition (c.f. instant Specification at p. 8, line 28 – p. 9, line 7). Therefore, it is expected that this material possesses the claimed “functional group value” characteristic, as claimed.
Furthermore, the molecular weight of IPDI is 222.3 g/mol. This material is a difunctional isocyanate, and so the “functional group value” of IPDI as claimed is approximately equal to 0.9, which falls within the claimed range of “0.5 to 1,” establishing a prima facie case of obviousness.
Regarding claim 5, as described above, Ueda teaches the incorporation of IPDI and HMDI (among others, [0060]). These materials have molecular masses of 222.3 g/mol and 168.2 g/mol, respectively, both of which fall within the claimed range of “100 to 500 g/mol,” establishing prima facie cases of obviousness.
Regarding claim 6, as described above, Ueda teaches the incorporation of IPDI (among others, [0060]), which is an aliphatic cyclic isocyanate compound.
Regarding claim 7, Ueda is silent with regard to the claimed “functional group value” characteristic. Nevertheless, as described above, Ueda teaches the incorporation HMDI trimer as a polyfunctional isocyanate component (among others, [0060]). The instant Specification states that this material is a suitable trifunctional isocyanate for the purportedly inventive composition (c.f. instant Specification at p. 21, lines 26-27). Therefore, it is expected that this material possesses the claimed “functional group value” characteristic, as claimed.
Furthermore, the molecular weight of HMDI trimer is 504.6 g/mol. This material is a trifunctional isocyanate, and so the “functional group value” of HMDI trimer as claimed is approximately equal to 0.59, which falls within the claimed range of “0.01 to 0.7,” establishing a prima facie case of obviousness.
Regarding claim 8, as described above, Ueda teaches the incorporation HMDI trimer as a polyfunctional isocyanate component (among others, [0060]). The molecular weight of HMDI trimer is 504.6 g/mol, which falls within the claimed range of “300 to 1500 g/mol,” establishing a prima facie case of obviousness.
Regarding claim 9, as described above, Ueda teaches the incorporation HMDI trimer as a polyfunctional isocyanate component (among others, [0060]). This material reads on the claimed “formula 3” because it is identical to “formula 3” when “L7” – “L9” are all linear alkylene groups having 6 carbons (i.e., an HMDI trimer).
Regarding claim 13, Fenn teaches that the filler particles may have mean particle diameters ranging from 0.25 to 100 microns ([223]), which encompasses the claimed ranges of “50 to 200 µm” and “0.5 to 5 µm,” establishing prima facie cases of obviousness.
Regarding claims 14 and 15, Ueda as modified by Fenn does not expressly disclose the claimed ratios of fillers within the filler composition. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Ueda as modified by Fenn discloses alumina and aluminum hydroxide as equally suitable alternatives to one another and therefore recognizes the equivalence of the two. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine alumina and aluminum hydroxide in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This 1:1 ratio results in 50% of each filler within the filler composition, which falls within the claimed ranges of “25 to 50 wt%,” and “10 to 50 wt%,” establishing prima facie cases of obviousness.
Regarding claim 16, Ueda teaches that the filler particles may be plate-shaped ([0063]), which reads on the claimed “rectangular shape” because the instant Specification specifically states that plate-shaped fillers are rectangular (p. see instant Specification at p. 15, line 2).
Regarding claim 17, Fenn further teaches the incorporation of electrically conductive fillers such as copper ([237]), which presumably meets the claimed specific gravity criteria because the instant Specification states that metal filing materials are suitable fillers for the purportedly inventive composition (see instant Specification at p. 11, first paragraph), and because copper is known in the art to have a specific gravity within the claimed range (c.f. American Elements p. 3). The electrically conductive fillers of Fenn therefore read on the claimed “third filler having a specific gravity of 3 or more.” Furthermore, as described above, Fenn teaches that the filler particles may have mean particle diameters ranging from 0.25 to 100 microns ([223]), which encompasses the claimed range of “10 to 30 µm,” establishing a prima facie case of obviousness.
Regarding claim 18, Ueda as modified by Fenn is silent with regard to the claimed ratio. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Ueda as modified by Fenn discloses the inventive fillers as equally suitable alternatives to one another and therefore recognizes their equivalence. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine alumina, aluminum hydroxide, and the electrically conductive filler in equal amounts (i.e. in a 1:1:1 ratio) based on the fact that they are disclosed in parallel as being equally suitable for use in this capacity. This 1:1:1 ratio overlaps the claimed limitation wherein the weight ratio of the third and second fillers is 1 or less, establishing a prima facie case of obviousness.
Regarding claim 19, as described above, Fenn teaches that the filler particles may have mean particle diameters ranging from 0.25 to 100 microns ([223]), which encompasses the claimed range of “50 to 90 µm,” establishing a prima facie case of obviousness.
Regarding claim 20, Ueda as modified by Fenn is silent with regard to the claimed thermal conductivity characteristic. Nevertheless, Ueda as modified by Fenn results in a formulation which is structurally identical to the claimed composition, which contains all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed thermal conductivity characteristic will therefore necessarily be present in Ueda as modified by Fenn and as applied above.
Regarding claim 21, Ueda teaches the formation of a batter packaging material comprising the inventive composition (Abstract), and teaches that the inventive composition is disposed as one of the outer layers of the battery package ([0110], Figures 1 and 2). Claims are given their broadest reasonable interpretation, in light of the Specification, form the perspective of one having ordinary skill in the art (See MPEP 2111). In this case, the instant Specification states that the purportedly inventive composition is suitable for use in battery manufacturing, and plays a role in dissipating heat emitted from the batteries (p. 19, line 15- p. 20, line 2). Therefore, the battery taught by Ueda reads on the claimed “heating element,” and the disposition of the protective layer of Ueda onto the battery reads on the claimed limitation requiring “a cured product… in thermal contact with the heating element.”
Allowable Subject Matter
Claims 10 and 11 are 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.
Regarding claims 10 and 11, Ueda as modified by Fenn teaches the incorporation of aluminum hydroxide and alumina, but fails to stipulate on the specific amounts of each of these components. Furthermore, the amounts of each filler material claimed are not rendered obvious via a rationale of combining equivalents as described e.g. in the rejection of claim 18, above.
Conclusion
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762