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.
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 1-5, 7-10, 12-15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Schiller (US 4405425 A) in view of Tomoda (US 10280304 B2). All references have been cited in a prior Office action.
Regarding claims 1-5, 7-10, 12-15, and 17-19, Schiller teaches a flame-retardant composition, suitable for electrical applications, having an organopolysiloxane, graphite, and a metal oxide hydrate (col. 1, lines 53-57; col. 4, lines 64-65). Schiller teaches articles such as electrical or electronic devices and extruded packaging material formed from the composition described above. These articles read on the claimed fire protection structure. The metal oxide hydrate may be 10-60 wt% alumina trihydrate (col. 4, lines 17-19, 36-38). The composition may further contain 0.5-30 wt% graphite (col. 4, lines 48-49). Schiller also teaches that known heat-resistant fibers, like glass and asbestos, may be added, but does not require the fibers or any further components (col. 4, lines 1-2). The amounts taught by Schiller imply elastomeric polymer content ranging from 10-89.5 wt%, which encompasses the claimed range. A prima facie case of obviousness exists where the prior art range encompasses the claimed range. Schiller’s organopolysiloxane elastomers are preferably diorganopolysiloxanes (col. 1, lines 65-67) where at least 70% of organic radicals are methyl and the remaining organic radicals are preferably phenyl (col. 2, lines 38-45). This effectively describes a phenyl-substituted polydimethylsiloxane.
However, Schiller is silent as to use of 5-20 phr heat resistant fiber. In a similar composition suitable for use in battery components, Tomoda teaches use of heat-resistant organic fibers of wholly aromatic polyamide in amounts ranging from 10-180 parts by weight relative to 100 parts by weight of elastomer (10-180 phr) (col. 18, line 49; col. 7, lines 55-59). Tomoda’s composition also includes an elastomeric polymer such as a silicone-based thermoplastic elastomer (col. 8, lines 35-36). Specifically, the fibers may be of polyparaphenylene terephthalamide (col. 15, lines 15-16 and Ex. 22). This prior art range overlaps the claimed range. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Schiller with the heat resistant fiber of Tomoda to arrive at the claimed invention, and to achieve a desired impact strength without excessive strand breakage during fabrication, as taught by Tomoda (col. 7, lines 64-66).
Additionally, Schiller teaches toward forming electrical or electronic devices, but does not expressly suggest forming battery components. Tomoda demonstrates the utility of fiber-reinforced flame retardant resins in forming battery components. It would have been obvious to do the same with the modified composition as these represent specific electrical or electronic components as contemplated by Schiller.
Schiller and Tomoda do not specify the flame exposure that the composition of the combined prior art may withstand. Nevertheless, the combined prior art composition has the same ingredients in the same amounts, and it will necessarily possess the same flame exposure withstanding characteristics as the claimed composition. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Schiller in view of Tomoda, and further in view of NEC Corp. (JP 2016026254 A, attached with English translation).
Regarding claims 6 and 16, Schiller remains as applied to claims 1 and 14 above. However, Schiller is silent as to use of an expandable variety of graphite. NEC Corp. teaches use of expandable graphite (Abstract). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Schiller with the expandable graphite of NEC Corp. to arrive at the claimed invention, and to produce a composition with high flame retardancy while maintaining flexibility, as taught by NEC Corp. (p. 3, [0013]).
Response to Arguments
In light of the recent amendments to the claims, the rejection of claim 4 under 35 U.S.C. 112(b) is withdrawn.
Applicant's arguments filed 04 February 2026 regarding the rejections of the claims under 35 U.S.C. 103 have been fully considered but they are not persuasive. Regarding the new flame exposure limitation of claims 1 and 14, and the battery component limitation of claim 14, the existing rejection is revised above to encompass all claimed limitations. While Applicant correctly notes that Schiller and Tomoda use the term “fire resistance” rather than “fire protection” to describe the advantages of the composition, the combined prior art teaches an identical composition that will necessarily possess the same fire protection characteristics as the instant composition. The rejection of the claims under 35 U.S.C. 103 is maintained.
Applicant argues that Schiller relates to structural materials such as, for instance, building materials, and would not be understood to be useful in batteries. Schiller teaches a flame-retardant composition useful for forming electronic parts. A battery is an electronic part and a known potential fire hazard, and falls squarely within the field of application taught by Schiller.
Applicant argues that Tomoda makes no reference to batteries, only to battery trays. As discussed above, Schiller teaches applicability to electronic parts, which include batteries. Further, even if the Office were to assume that a battery tray is not a battery component, the instant specification includes “partition panels or barriers between modules comprising one or more battery cells, … battery covers, containers or housings, and components thereof” in its discussion of suitable applications. In the absence of a more limited definition of “battery components” in either the specification or the claims, Tomoda’s battery trays read on the limitation.
Finally, Applicant argues that none of the cited references provide a basis for selecting the claimed materials in fire protection materials and structures. As explained in the rejection above, Schiller teaches a flame-retardant composition suitable for use in electric or electronic devices (i.e., batteries) and packaging material (protection material). The combined prior art teaches a composition having the same ingredients in the same amounts. Whether or not the terms “fire protection” and “flame retardant” denote different characteristics (and Applicant has not provided such a definition in the claims or specification), the claimed composition is already taught in the combined prior art.
All of Applicant’s arguments are believed to have been addressed in full above.
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 ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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