DETAILED ACTION
This is an Office action based on application number 18/135,655 filed 17 April 2023, which claims priority to JP2022-068030 filed 18 April 2022 and JP2023-040789 filed 15 March 2023. Claims 1-18 are pending and considered below.
Amendments to the claims, filed 18 May 2026, have been entered into the above-identified application.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-7, 10-15, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Minamibori (US Patent Application Publication No. US 2018/0183017 A1) (Minamibori) in view of Zawada (US Patent No. 5,427,847) (Zawada), Japanese Patent Application No. JP 2019064028A (citations taken from the provided machine translation) (JP028), and Kawasaki et al. (US Patent Application Publication No. US 2014/0329101 A1) (Kawasaki).
Regarding instant claim 1:
Minamibori discloses a packaging material for power storage devices comprising:
a base material;
a sealant layer as an inner layer;
a metal foil arranged between the base material layer and the sealant layer;
and a protective layer laminated on a surface of the base material opposite to a metal foil side layer (Claim 1).
Said “packaging material for power storage devices” reads on the claimed “battery packaging material”.
Minamibori further discloses that the sealant layer is preferably a thermoplastic resin layer made of at least one kind of resin inclusive of polypropylene and an olefin based copolymer. Minamibori makes particular reference to an elastomer-modified olefin based resin (polypropylene block copolymer) containing propylene and ethylene (paragraphs [0110; 0112]).
In his original disclosure, Applicant characterizes that the heat-fusible resin layer is preferably a polyolefin based resin inclusive of ethylene-propylene copolymers (see Specification at paragraph [0085]).
Therefore, there is substantial reason to believe that the “sealant layer” of Minamibori reads on the claimed “heat-fusible layer” because both are made of substantially identical resins. 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). See MPEP §2112.01(I).
Minamibori further discloses that the metal foil layer imparts a gas barrier property (paragraph [0115]); therefore, said “metal foil layer” reads on the claimed “barrier layer”.
Minamibori further discloses that the protective layer contains a polyester resin (Claim 1) (i.e., a binder resin).
Minamibori further discloses that the protective layer further contains solid fine particles (Claim 5). Said solid fine particles are inclusive of inorganic fine particles (e.g., silica, alumina, kaolin, etc.) and acrylic resin beads (paragraph [0061]).
Minamibori teaches that the inclusion of solid fine particles imparts good slipperiness to the surface and improves formability of the packaging material (paragraph [0061]).
Minamibori further discloses that the protective layer comprises a polyethylene wax (paragraph [0063]).
Minamibori further discloses that the content of the solid fine particles is 0.1 mass% to 60 mass% (paragraph [0062]), which includes the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Minamibori teaches that excellent printability is desired in its packaging material (paragraph [0012]).
Minamibori does not explicitly disclose soft resin fine particles having a glass transition temperature of less than 30°C and hard resin fine particles having a glass transition temperature of 30°C or higher. Minamibori does not explicitly disclosed the claimed size relationship between the soft resin fine particles, the hard resin fine particles, and the inorganic fine particles
As to the claimed soft resin fine particles:
Zawada discloses sheets having good print quality with both conventional and high speed printers (col. 4, lines 12-15).
Zawada discloses that said sheets comprise a substrate and a coating with a glass transition temperature below 25°C, wherein the coating is comprised of a wax (col. 3, lines 25-30).
Zawada further discloses that the glass transition temperature of the wax should be below about 25°C, and discloses a preference for a polyethylene wax having a glass transition temperature of about -16°C (col. 4, lines 29-46).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to choose a polyethylene wax having the glass transition temperature described in Zawada as the polyethylene wax desired in the protective layer of Minamibori. The motivation for doing so would have been that Zawada shows that such waxes provide good print quality, wherein print quality is desired by Minamibori.
JP028 discloses protective layers comprising at least one of an olefin-based wax (paragraph [0009]).
JP028 further discloses that the olefin wax is inclusive of polyethylene wax (paragraph [0066]).
JP028 further discloses that the in order to provide excellent scratch resistance and three-dimensional formability, the particle size of the olefin wax is about 1.0 to 10 μm (paragraph [0067]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teaching of the prior art before him or her, to select the particulate polyethylene wax of JP028 as the wax in the protective layer of Minamibori. The motivation for doing so would have been that such a particulate wax provides excellent scratch resistance and three-dimensional formability, wherein formability, at least, is desired by Minamibori.
The prior art combination of a particulate polyethylene wax having a glass transition temperature of less than about 25°C meets the claimed soft resin fine particles.
Further, by selecting a particulate form of polyethylene wax, one of ordinary skill in the art would necessarily incorporate it in amounts such that the desired content of the solid fine particles is 0.1 mass% to 60 mass% is maintained.
As to the claimed hard resin fine particles:
Kawasaki discloses polyester films comprising particles mainly for imparting an easy-slipping property to the film, wherein said particles are inclusive of organic particles composed of an acrylic resin (paragraph [0015]).
Kawasaki teaches that the glass transition temperature of the acrylic resin particles is in the range of 50 to 120°C such that the particles provide sufficient slipping property (paragraph [0045]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to choose acrylic resin beads having the glass transition temperature described by Kawasaki when forming the protective layer of Minamibori. The motivation for doing so would have been that Kawasaki teaches that such acrylic resins provide sufficient slipping properties that are desired by Minamibori.
The prior art combination of acrylic resin beads having a particular glass transition temperature meets the claimed hard resin fine particles.
As to the claimed size relationship:
Minamibori further discloses that the solid fine particles have an average diameter of 1 μm to 10 μm (paragraph [0061]).
Those particles having the size described by Minamibori are construed to read on the claimed hard resin fine particles and inorganic fine particles. Further, it is noted that the range disclosed by Minamibori overlaps the hard resin fine particle size range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
JP028 further discloses that the olefin wax particles (which read on the claimed soft resin fine particles) have a size of about 1.0 to 10.0 μm, which overlaps the claimed soft resin fine particle size range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Given the claimed ranges (i.e., wherein the average size of each of the soft resin fine particles, hard resin fine particles, and inorganic fine particles is 1 to 10 μm), there exist embodiments encompassed by the prior art wherein the average particle diameter of the soft resin fine particles is larger than an average particle diameter of the hard resin fine particles that is larger than an average particle diameter of the inorganic fine particles.
Therefore, it would have been obvious to combine Zawada, JP028, and Kawasaki with Minamibori to obtain the invention as specified by the instant claim.
Regarding instant claims 2 and 12-15:
Minamibori further discloses that the solid fine particles have an average diameter of 1 μm to 10 μm (paragraph [0061]).
Those particles having the size described by Minamibori are construed to read on the claimed hard resin fine particles and inorganic fine particles. Further, it is noted that the range disclosed by Minamibori overlaps the hard resin fine particle size range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
JP028 further discloses that the olefin wax particles (which read on the claimed soft resin fine particles) have a size of about 1.0 to 10.0 μm, which overlaps the claimed soft resin fine particle size range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claims 3 and 17:
Minamibori discloses that the content of the solid fine particles is 0.1 mass% to 60 mass% (paragraph [0062]), which necessarily includes embodiments of each of the claimed amounts of soft resin fine particles and inorganic fine particles.
Further, by selecting a particulate form of polyethylene wax, one of ordinary skill in the art would necessarily incorporate it in amounts such that the desired content of the solid fine particles is 0.1 mass% to 60 mass% is maintained.
While the scope of the prior art encompasses, but does not explicitly disclose, the claimed ranges, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 4:
The prior art combination encompasses soft fine resin particles composed of polyethylene wax as cited in the rejection of claim 1, above.
Regarding instant claim 5:
The prior art combination encompasses hard resin fine particles composed of acrylic resin beads as cited in the rejection of claim 1, above.
Regarding instant claim 6:
Minamibori discloses inorganic fine particles inclusive of silica, alumina, kaolin, calcium carbonate, calcium sulfate, barium sulfate, and calcium silicate fine particles (paragraph [0061]).
Regarding instant claim 7:
Minamibori further discloses that the protective layer contains a polyester resin (Claim 1) (i.e., a binder resin).
Regarding instant claim 10:
Minamibori further discloses that a colored layer is arranged between the base material layer (i.e., the claimed substrate) and the metal foil layer (i.e., the claimed barrier layer) (paragraph [0038]).
Regarding instant claim 11:
Reference is made to FIG. 1 of Minamibori, reproduced below:
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FIG. 1 illustrates packaging material <1> comprising base material layer <2> and metal foil layer <4> that are integrally laminated by adhesive layers <5> and <8> with colored layer <9> therebetween (paragraph [0047-0048]).
Regarding instant claim 18:
Minamibori further discloses that the protective layer further contains solid fine particles (Claim 5). Said solid fine particles are inclusive of inorganic fine particles (e.g., silica, alumina, kaolin, etc.) and acrylic resin beads (paragraph [0061]).
Minamibori teaches that the inclusion of solid fine particles imparts good slipperiness to the surface and improves formability of the packaging material (paragraph [0061]).
JP028 further discloses particulate olefin wax provides excellent scratch resistance and three-dimensional formability (paragraph [0067]).
Since the instant specification is silent to unexpected results, the specific amount of particles relative to each other is not considered to confer patentability to the claims. As the slipperiness, formability, and scratch resistance are variables that can be modified, among others, by the inclusion of the disclosed particles, the precise amounts would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amounts of each component particle relative to one another in the prior art combination to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Minamibori in view of Zawada, JP028, and Kawasaki as applied to claim 1 above, and further in view of Ueda et al. (US Patent Application Publication No. US 2017/0092902 A1) (Ueda).
Regarding instant claims 8-9:
Minamibori in view Zawada, JP028, and Kawasaki discloses the packaging material for power storage devices.
FIG. 1 of Minamibori further illustrates packaging material <1> comprising base material layer <2> and metal foil layer <4> that are integrally laminated by adhesive layers <5> and <8> (paragraph [0047-0048]).
Minamibori in view Zawada, JP028, and Kawasaki does not explicitly disclose that the base material layer, the metal foil layer, or the adhesive layers contain a coloring agent.
However, Ueda discloses a battery packaging material comprising a laminate in which at least a base layer, an adhesive layer, a metal layer, and a sealant layer are laminated, wherein at least one of the base material layer and the adhesive layer contains a dye (Claim 1).
Ueda further discloses an embodiment wherein the battery packaging material comprises a laminate in which at least a decorative layer, a base material layer, a metal layer and a sealant layer are laminated, wherein the decorative layer contains a colorant (Claim 6).
Ueda further discloses that the decorative layer is composed of a polyester resin (paragraph [0090]); therefore, said decorative layer is analogous to the protective layer comprising a polyester resin of Minamibori.
Ueda teaches that the incorporation of colorants allows for, among other things, the battery to be discriminated from the outside by color, which allows the user to determine if a battery is genuine or false (paragraph [0038]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to incorporate the dyes/colorants of Ueda into at least one of the base layer, the adhesive, and the protective layer of Minamibori. The motivation for doing so would have been to incorporate colors into the battery packaging that allows easy identification for the user. Further, the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Therefore, it would have been obvious to combine Ueda with Minamibori in view of Zawada, JP028, and Kawasaki to obtain the invention as specified by the instant claims.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Minamibori in view of Zawada, JP028, and Kawasaki as applied to claim 1 above, and further in view of Eggers at al. (US Patent Application Publication No. US 2002/0168512 A1).
Regarding instant claim 16:
Minamibori in view Zawada, JP028, and Kawasaki discloses the packaging material for power storage devices.
Minamibori teaches that the inclusion of solid fine particles imparts good slipperiness to the surface and improves formability of the packaging material (paragraph [0061]).
Minamibori does not explicitly disclose that the solid fine particles protrude outwardly to form protrusions on an outer surface of the substrate protective layer.
However, Eggers discloses that solid particles that protrude from the outer surface of a layer improve the surface slip behavior of the film (paragraph [0037]).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the solid fine particles of Minamibori protrude from the surface of the substrate protective layer as taught by Eggers. The motivation for doing so would have been to ensure that said particles provide the desired slipperiness.
Therefore, it would have been obvious to combine Eggers with Minamibori in view of Zawada, JP028, and Kawasaki to obtain the invention as specified by the instant claim.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant argues that the applied references do not disclose or suggest the limitation of “an average particle diameter of the soft resin fine particles is larger than an average particle diameter of the hard resin fine particles that is larger than an average particle diameter of the inorganic fine particles,” as recited by claim 1. Applicant argues that the prior art references teach the same average particle diameter range for each of the sot resin, hard resin, and inorganic fine particles. Applicant traverses the Examiner’s position that the prior art encompasses embodiments that meet the claimed relationship by arguing that the claimed relationship provides advantages not recognized by the prior art.
Applicant’s argument is unpersuasive. Though Applicant alleges that the prior art does not recognize the advantages of the claimed size range, such advantages are not recited by the claims. If Applicant alleges that the advantages are unexpected properties attributed to the claimed range, then Applicant should present such arguments in a manner that provides evidence commensurate in scope with the claims that reflect the unexpected nature of the properties.
Applicant further argues that the Kawasaki reference teaches away from the claimed size range by pointing out that the preferred range of those particles of Kawasaki are outside the claimed ranges.
Applicant’s argument is unpersuasive. Though Kawasaki teaches preferred size ranges outside of the claims, Kawasaki is not relied upon to disclose the particle size. Rather, Kawasaki is relied upon to disclose acrylic beads having a specific glass transition temperature to provide sufficient slipping properties. Applicant has not provided persuasive evidence that the smaller particle size described by Kawasaki is required for said particles to provide the provided beneficial slipping properties.
Applicant goes on to argue that the references do not recognize particle size as a result effective variable and that one of ordinary skill in the art would not arrive at the claimed ranges through routine experimentation.
Applicant’s argument is unpersuasive as the prior art rejections do not rely upon routine optimization of the prior art, but rather that the scope of the prior art (i.e., the particle size ranges disclosed by the references) encompasses the claimed relationship. Therefore, a prima facie case of obviousness exists even without routine optimization.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 07/30/2026
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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