DETAILED ACTION
Claims 1-20 are pending as amended on 7 September 2026
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments have been entered and fully considered.
Response to Amendment and Arguments
Applicant’s amendment does not distinguish from CN210325862U (Kawakita).
Applicant’s arguments in light of the amendment have been fully considered but are not persuasive.
Applicant argues that Kawakita does not teach a configuration “wherein the wax is low in crosslink density and low in heat-resistant temperature such that the wax can soften during a degassing process and deform from a spherical shape to a flat shape, wherein the resin beads are higher in crosslink density and are higher in heat resistant temperature than the wax such that the resin beads maintain a spherical shape during the degassing process, and wherein the inorganic fine particles are higher in melting point than the resin beads and hard such that the inorganic fine particles do not deform during the degassing process”, as amended. However, the examiner notes that Kawakita teaches the same wax, resin beads and inorganic particles as claimed in the same particle diameter, absent evidence to the contrary, one of ordinary skill would have reasonable basis to expect that the wax, resin beads and inorganic particles of Kawakita exhibit the same crosslink density, heat resistant temperature and melting point, respectively, as the instantly claimed, and consequently the same deformation profile as claimed. "Products of identical chemical composition can not 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Applicant argues that instant Table 1 provides evidence of the criticality of the claimed content rate commensurate in the scope with new claim 20. The examiner disagrees that data in Table 1 shows the criticality of the claimed total content rate. For example, Table 1 shows that Instant Example 4 of a total content 49% results in superior performance to that of instant Example 7 of a total content rate of 50%, however, different resin beads and wax were utilized for Examples 4 and 7, respectively, thus it is not clear whether the effect is caused by the 1% content rate difference or by the different type of wax and resin beads.
Claim Rejections - 35 USC § 103
Claims 1-6 and 11-12 stand, and new claims 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakita.
Regarding claims 1, 3-6, 11-12, 14, 17-18 and 20, Kawakita teaches a battery packaging material comprises a heat resistant resin layer 2, which meets the claimed substrate layer, laminated with a metal foil layer 4, which meets the claimed barrier layer, via a first adhesive layer (outer adhesive layer ) 5, a heat fusible resin layer (inner layer) 3 laminated on the metal foil layer 4 via a second adhesive layer (inner adhesive layer) 6, and a protective layer 7 laminated on the outer surface of the heat resistant layer 2 ([0012]-[0013], [0059] and Fig. 1), wherein the heat resistant layer 2 is arranged between the protective layer 7 and the metal foil barrier layer 4 (Fig. 1 and abstract).
Kawakita teaches the protective layer comprises a resin material such as polyester and polyurethane resin ([0065] and [0069]), , which meets the claimed binder resin ([0065), a release agent 8 comprising a wax such as a polyethylene wax ([0069] and [0071]), which meets the claimed wax, acrylic resin beads and inorganic fine particles such as silica and barium sulfate ([0076] and [0112])
Kawakita teaches the releasing agent 8 of the protective layer protrudes outward from the surface of the protective resin layer 7 with a protrusion height of 1 μm or more ([0067] and Fig. 2), and the area of the protruding portion of the release agent 8 and/or the release agent aggregates 8 protruding outward from the surface of the protective resin layer 7 and having a protruding height of 1 μm or more is preferably 6% to 15%, and particularly preferably 5% to 10% of the total area of the protective resin layer 7 in a plane view([0068]), which meets the claimed ratio.
Kawakita exemplifies a protective layer comprise a wax of a particle diameter of 9 μm, barium sulfate of 0.8 μm and an acrylic resin bead of 2 μm ([0100] and [0112]), thus the particle size of wax is more than two times larger than that of both the inorganic fine particles and acrylic resin bead.
Kawakita further teaches that the protective layer comprises 60-98 mass% of the resin material([0075]), thus the combined content of wax, resin and resin beads is 2 to 40%, estimated by the examiner (i.e., (100-98)% to 9100-40)%), which overlaps with the claimed combined content and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding the crosslink density, heat-resistant temperature, melting point or hardness as well as the deformation profile during a degassing process of the wax, the resin beads, the inorganic fine particles and the resin, since Kawakita teaches the same wax, resin beads and inorganic particles as claimed in the same particle diameter, absent evidence to the contrary, one of ordinary skill would have reasonable basis to expect that the wax, resin beads and inorganic particles of Kawakita exhibit the same crosslink density, heat resistant temperature and melting point, respectively, as the instantly claimed, and consequently the same deformation profile as claimed. "Products of identical chemical composition can not 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. See MPEP § 2112.01.
Regarding claim 2, Kawakita further exemplifies a protective layer comprise 100 parts by mass of a polyester resin, 15 parts by mass of a polyurethane resin, 15 parts by mass of wax, 12 parts by mas of an acrylic resin bead and 3 parts by mas of barium sulfate ( [0112] and [0121]), thus the content of the wax is about 10.3% (i.e., 15/(100+15+15+12+3)), the content of acrylic resin bead is about 8.3% (i.e., 12/((100+15+15+12+3)), and the content of barium sulfate is about 2.0% (i.e., 3/(100+15+15+12+3)), which meets the claimed content of wax, resin beads and inorganic fine particles, respectively.
Kawakita teaches that the wax has a particle size of 5 to 10 μm([0066]), the acrylic resin bead has a particle size of 3 to 5 μm ([0076]), and barium sulfate has a particle size of 0.3 to 3 μm ([0076]), which meets the claimed particle size of wax and resin bead, and overlaps with the claimed particle size of inorganic fine particles, respectively.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include inorganic fine particles (i.e., barium sulfate) of the claimed size since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claims 13 and 16, Kawakita exemplifies barium sulfate of a particle diameter of 0.8 μm and an acrylic resin bead of particle diameter of 2 μm ([0100] and [0112]), i.e., the particle size of the acrylic beads is larger than that of the inorganic particles.
Regarding claims 15 and 19, Kawakita illustrates that the protrusions are formed on an outer surface by the releasing agent 8 of the protective resin layer 7 ([0067] and Fig. 2), which contains wax, acrylic resin beads and inorganic fine particles thus different hardness exists.
Claims 7-10 stand rejected under 35 U.S.C. 103 as being unpatentable over Kawakita as applied to claims 1-6 and 11-20 in view of Minamibori.
The teachings of Kawakita are set forth above.
Kawakita does not teach the presence of a coloring agent in one of the protective layer, heat resistant resin (substrate) layer and/or adhesive layer, neither the presence of a colored layer arranged between the substrate layer and the metal foil (barrier) layer, or adhesive layer and the barrier layer.
Minamibori teaches a packaging material for power storage devices comprise a colored layer arranged between a metal foil layer (i.e., barrier layer) and a base material layer (heat resistant resin layer) on the inner side with respect to the base material layer ([0039] and [0086] and Fig. 1), wherein a colored ink composition comprising a color pigment is printed on the lower surface of the base material/heat-resistance resin layer ([0103]-[0106]), wherein the color of the colored layer can be seen through the base material layer (heat resistant resin layer), which can improve the design of the packaging material, prevent scratching and color separation therefore improve durability ([0038]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the colored layer/ a colored ink composition of Minamibori in the heat resistant substrate layer and/or between a metal foil layer (i.e., barrier layer) and the heat resistant resin layer of Kawakita. The rationale to do so would have been the motivation provided by the teachings of Minamibori that to do so would predictably improve the design of the packaging material, prevent scratching and color separation therefore improve durability ([0038]).
Conclusion
THIS ACTION IS MADE FINAL. 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 AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
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