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 .
Status of Claims
This action is in response to Applicant’s Request for Reconsideration dated 06/15/2026.
Claim(s) 11-11, 13, 16 and 17 are currently pending.
Claim(s) 1 and 13 have been amended.
Claim(s) 12, 14, 15 and 18-21 have been canceled.
Response to Arguments
The amendments to the specification overcome the previous rejection of the drawings as set forth in Page 2 of the Non-Final Rejection mailed 03/18/2026.
Applicant’s arguments, see Remarks filed 06/15/2026, with respect to the rejection(s) of claims 1-11 under 35 U.S.C. 102 and 35 U.S.C. 103 have been fully considered and are persuasive. The rejection(s) of claims 1-11 have been withdrawn.
Applicant’s arguments, see Remarks filed 06/15/2026, with respect to claims 13, 16 and 17 have been fully considered but are not persuasive.
Applicant argues that Stepanian's aerogel has "sub-nanometer scale pore sizes." (Paragraph [0003]).
Applicant further argues that the combination of Kaye and Stepanian does not arrive at Applicant's claimed porous structure, which has an average pore diameter ranging from about 10 µm to about 700 µm.
Examiner respectfully disagrees. Applicant’s arguments are not commensurate in scope with the claims. As set forth in Page 17 of the Non-Final Rejection mailed 03/18/2026, Tang was relied upon to meet with the limitation of “macropores”, wherein it is disclosed that a pore size greater than 50 microns provides a surprisingly flexible aerogel composite with superior properties to other flexible aerogel composites [see Tang, para. 0015]. Applicant does not appear to have provided any arguments regarding Tang as it pertains to now canceled claims 14 and 20, previously reciting the resilient material comprising macropores.
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].
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.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR20180081802 A, Kaye et al. (hereinafter “Kaye”) with US 2019/0140237 A1 used as an English language equivalent, in view of US 2009/0029147 A1, Tang et al. (hereinafter “Tang”).
Regarding claim 13
Kaye teaches a battery module [Fig. 1D and para. 0053] comprising:
a first battery cell (140) and a second battery cell (142) [Fig. 1D and para. 0053];
a heat control member (corresponding to insulators 148 and 156 and metal layer 152) [Fig. 1D and para. 0053], the heat control member (148/152/156) comprising;
multiple layers of reinforced aerogel (the insulators 148 and 156 may comprise porous materials such as, for example, a thermally insulating material including aerogels associated with reinforcing fiber) between the first battery cell (140) and the second battery cell (142) [Fig. 1D and paras. 0005, 0053 and 0059-0066, 0099, 0140, 0163 and 0185], the multiple layers of reinforced aerogel (148 and 156) including:
a first layer of reinforced aerogel (corresponding to insulator 148 comprising aerogel; paras. 0163 and 0185 disclose the aerogel comprising fibrous materials such as glass fibers) [see also: paras. 0059-0066, 0099 and 0140];
a second layer of reinforced aerogel (corresponding to insulator 156 comprising aerogel; paras. 0163 and 0185 disclose the aerogel comprising fibrous materials such as glass fibers) [see also: paras. 0059-0066, 0099 and 0140]; and
a thermally conductive material layer (corresponding to metal layer 152) between the first layer of reinforced aerogel (148) and the second layer of reinforced aerogel (156) [Fig. 1D and para 0053],
wherein one or more of the multiple layers of reinforced aerogel (148 and 156) include a porous structure [paras. 0059 and 0062-0063].
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Fig. 1D of Kaye
Kaye does not teach the porous structure having an average pore diameter ranging from about 10µm to about 700 µm.
Tang teaches an aerogel composite having a pore size greater than 50 microns, wherein the large pore size provides a surprisingly flexible aerogel composite with superior properties to other flexible aerogel composites [para. 0015].
Kaye and Tang are analogous inventions in the field of aerogel composite materials. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the resilient material of Kaye to have an average pore diameter of greater than 50 microns, as in Tang, in order to improve the flexibility of the composite.
The limitation “to provide resilience” is considered a functional limitation and is given weight to the extent that the prior art is capable of providing the claimed function. Since the structure of the aerogel disclosed in the art is the same as the one claimed i.e., reinforced porous aerogel, the claimed properties or functions are presumed to be inherent.
It has been held that when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (see MPEP § 2112.01). “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).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaye in view of Tang, as applied to claim 13 above, and further in view of US 2002/0094426 A1, Stepanian et al. (hereinafter “Stepanian”).
Regarding claim 16
Modified Kaye does not disclose the reinforced aerogel including the porous structure providing a compressibility of at least 50% of an uncompressed thickness.
Stepanian teaches an insulating fiber reinforced aerogel composition (aerogel composite with fibrous batting) exhibiting improved flexibility, durability, aerogel sintering, x-y thermal and/or electrical conductivity, RFI and EMI attenuation, and burn-through resistance [paras. 0002, 0004 and 0012], said fiber reinforced aerogel composition provides compressibility of at least 50% of an uncompressed thickness and resilient recovery to at least 70% of an uncompressed thickness after compression [para. 0041].
The use of such resilient fiber reinforced aerogel composition further minimizes the volume of unsupported aerogel while avoiding substantial degradation of the thermal performance of the aerogel [para. 0038].
Modified Kaye and Stepanian are analogous inventions in the field of thermal insulating materials comprising aerogels. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the reinforced aerogel disclosed in modified Kaye with the insulating fiber reinforced aerogel composition of Stepanian, providing compressibility of at least 50% of an uncompressed thickness and a resilient recovery to at least 70% of an uncompressed thickness after compression, in order to minimize the volume of unsupported aerogel while avoiding substantial degradation of the thermal performance of the aerogel thereby providing an insulating material exhibiting improved properties and durability [Stepanian, paras. 0012, 0038 and 0041].
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].
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaye in view of Tang, as applied to claim 13 above, and further in view of US 2022/0131208 A1, Zhang et al. (hereinafter “Zhang”).
Regarding claim 17
Modified Kaye does not teach the reinforced aerogel including the porous structure providing a thermal conductivity at 10 °C of about 40 mW/mK or less while under compression.
Zhang teaches an aerogel composition having a thermal conductivity of 25 mW/m-K or less such that a desired thermal barrier effect is obtained [Abstract, paras. 0013, 0032-0034, 0037-0038 and 0113].
Modified Kaye and Zhang are analogous inventions in the field of aerogel composite materials for use as insulating layers between battery modules. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the reinforced aerogel disclosed in Kaye to have a thermal conductivity of 25 mW/m-K or less, as disclosed in Zhang, for the purpose of providing a suitable thermal barrier effect.
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].
Furthermore, absent a showing of criticality or unexpected results with respect to the thermal conductivity of the first and/or second reinforced aerogel layers (a result-effective variable), it would have been obvious to a person of ordinary skill in the art at the time of the invention to optimize said parameter through routine experimentation in order to achieve the desired thermal barrier effect [Zhang, para. 0037]. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art [MPEP 2144.05].
Allowable Subject Matter
Claims 1-11 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1
Kaye teaches a battery module [Fig. 1D and para. 0053] comprising:
a first battery cell (140) and a second battery cell (142) [Fig. 1D and para. 0053];
a heat control member (corresponding to insulators 148 and 156 and metal layer 152) [Fig. 1D and para. 0053] between the first battery cell (140) and the second battery cell (142) [Fig. 1D and para. 0053], the heat control member (148/152/156) comprising;
multiple layers of reinforced aerogel (the insulators 148 and 156 may comprise porous materials such as, for example, a thermally insulating material including aerogels associated with reinforcing fibers) [paras. 0005, 0059-0066, 0099, 0140, 0163 and 0185], including;
a first layer of reinforced aerogel (corresponding to insulator 148 comprising aerogel; paras. 0163 and 0185 disclose the aerogel comprising fibrous materials such as glass fibers) [see also: paras. 0059-0066, 0099 and 0140];
a second layer of reinforced aerogel (corresponding to insulator 156 comprising aerogel; paras. 0163 and 0185 disclose the aerogel comprising fibrous materials such as glass fibers) [see also: paras. 0059-0066, 0099 and 0140]; and
a thermally conductive material layer (corresponding to metal layer 152) between the first layer of reinforced aerogel (148) and the second layer of reinforced aerogel (156) [Fig. 1D and para 0053].
Kaye does not teach a polymer compliant layer;
a first thermally conductive material layer between the first layer of reinforced aerogel and the polymer compliant layer; and
a second thermally conductive material layer between the second layer of reinforced aerogel and the polymer compliant layer.
Neither of Stepanian, Mihalcik, Zhang, Muthukumaran and Tang alleviate the deficiencies in Kaye.
Accordingly, the claim is allowed.
Regarding claims 2-11
Claims 2-11 are allowed for their dependency on claim 1.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 MAYLA GONZALEZ RAMOS whose telephone number is (571)272-5054. The examiner can normally be reached Monday - Thursday, 9:00-5:00 - EST.
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/MAYLA GONZALEZ RAMOS/Primary Examiner, Art Unit 1721
