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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-17 and 21-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1-17 and 21-24, claim 1 recites a fibrous support comprising a plurality of fibers, wherein Ds denotes an average diameter of the fibers. Applicants’ specification as originally filed does not teach that the fibrous support comprises a plurality of fibers, as Applicants’ specification only references the fibrous support including a fiber. Additionally, Applicants’ specification clearly teaches in multiple instances throughout the specification that Ds denotes a diameter of the fibrous support, and not an average diameter of the fiber. Therefore, the limitations constitute new matter.
Regarding claim 3, the claim recites that the average diameter of the fibrous support is 0.1 µm to 20 µm. However, the claim is dependent from claim 1, which now recites that the fibrous support comprises a plurality of fibers. Therefore, claim 3 is reciting that the plurality of fibers collectively have a diameter of 0.1 µm to 20 µm. Applicants’ specification as originally filed does not recite the claimed average diameter of the fibrous support as currently claimed.
Regarding claim 21, the claim recites that the fibers have an average length of 50 µm to 1,000 µm. Applicants’ specification only teaches that the fibrous support comprises the length as claimed. No reference is made to the fibers having an average length as claimed. Therefore, the limitations constitute new matter.
Regarding claims 22 and 23, the claims recites that the aerogel layer comprises aerogel particles around and on the fibers and that the aerogel particles are attached to exterior surfaces the fibers. Applicants’ specification as originally filed does not appear to teach the claimed limitations. Therefore, the limitations constitute new matter.
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.
Claims 1-7, 9-17, and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2015/0240076 to Eling in view of US Pub. No. 2021/0257690 to Kilhenny.
Regarding claims 1-7, 9-17, and 22-24, Eling teaches a composite material for thermal and/or acoustical insulation, comprising nanoporous particles and at least one binder constructed from at least one isocyanate and at least one polymer P, wherein the at least one binder is used in an amount of 0.1 to 20 wt%, based on the amount of nanoporous particles (Eling, Abstract). Eling teaches that the nanoporous particles are preferably aerogels (Id., paragraph 0028). Eling teaches that the isocyanate is water-emulsifiable (Id., paragraph 0054), wherein the water-emulsifiability is achieved and/or improved through the use of surfactants or other surface-active substances (Id., paragraph 0067). Eling teaches that the composite material may comprise effective amounts of further additional agents such as fillers and glass fibers, wherein the volume fraction of fibers should preferably be 0.1 to 30 wt.% based on the entire composite material (Id., paragraphs 0090-0095). Eling teaches that the fiber diameter should preferably be in the range from 0.1 to 30 µm (Id., paragraph 0096). Eling teaches that the invention provides shaped articles, wherein the shaped article can be laminated with at least one outer layer such as woven or nonwovens such as basalt nonwovens, polymeric films and metal foils (Id., paragraphs 0112-0119).
Eling does not appear to teach the claimed thickness to satisfy Formula 1. However, Kilhenny teaches an assembly for a battery including a thermal management multilayer sheet, wherein the sheet includes a thermally-insulating layer, a first heat-spreading layer disposed on a first side of the thermally-insulating layer, and a second heat-spreading layer disposed on a second side of the thermally-insulating layer (Kilhenny, Abstract). Kilhenny teaches that the thermally-insulating layer comprises a non-metallic material including an aerogel and fiberglass, and a binder, such as 20 to 90 wt% of a particulate filler and 10 to 80 wt% of a binder (Id., paragraph 0042-0045). Kilhenny teaches that the first and second heat-spreading layers can comprise materials such as metals or fibers, including a foil and a nonwoven fiber mat (Id., paragraph 0040), wherein the use of two heat-spreading layers can significantly improve the thermal management properties of the sheets (Id., paragraph 0039). Kilhenny teaches that the thickness of the first and second heat-spreading layers depends on the materials used, the degree of thermal conductivity desired, cost, desired thickness, or weight of the battery, or like considerations (Id., paragraph 0041). Kilhenny teaches that the heat-spreading layers can have a thickness of 5 to 1,000 µm, and that metal foils can each independently have a thickness of 12.7 to 508 µm (Id.). Kilhenny teaches that the thickness of the thermally insulating layer depends on the materials used, the degree of thermal conductivity desired, cost, desired thickness, or weight of the battery, or like considerations (Id., paragraph 0053). Kilhenny teaches that the thickness of the thermally-insulating layer can have a thickness of 50 to 15,000 µm, such as 50 to 4,000 µm (Id.). Kilhenny teaches that the thermally-insulating layer can include a reinforcement material to reinforce the strength, wherein the reinforcement material can be fibrous such as a nonwoven glass fiber mat, having a thickness of 20 to 600 µm (Id., paragraph 0066).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the thermal insulating composite material of Eling, wherein the aerogel layer comprises a thickness, such as within the claimed range, as taught by Kilhenny, such that the thicknesses satisfy the claimed Formula 1, and for use as battery insulation, as taught by Kilhenny, motivated by the desire of forming a conventional thermally insulating composite comprising thicknesses known in the art as being predictably suitable for battery applications, based on the desired thermal conductivity and cost.
Regarding claim 3, the prior art combination teaches that the fiber diameter should preferably be in the range from 0.1 to 30 µm. Note that 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the thermal insulating composite material of the prior art combination, and adjusting and varying the average fiber diameter, such as within the claimed range, as taught by Eling, motivated by the desire of forming a conventional thermally insulating composite comprising suitable fiber diameters based on the totality of the teachings of the prior art.
Regarding claims 5 and 22-24, the prior art combination teaches that the composite material comprises fibers at a volume fraction of preferably 0.1 to 30 wt% based on the entire composite material (Eling, paragraphs 0092-0095). The prior art combination teaches and suggests that the fibers and the aerogel particles are bonded to and between each other with the binder (Id., paragraphs 0121). Therefore, the aerogel particles appear to be on the surfaces of the fibers, or around and on the fibers, or attached to exterior surfaces of the fibers as claimed.
Regarding claim 9, the prior art combination teaches that the binder is water-dispersible (Eling, paragraph 0065, 0070-0072, claim 17).
Regarding claim 11, the prior art combination teaches mixtures of water-soluble or water-dispersible polymers (Eling, paragraphs 0069-0072), wherein for mixtures of two or more polymers, the individual polymers are each present at more preferably 20 to 80 wt% (Id., paragraphs 0087-0088). Note that 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claims 13-17, the prior art combination teaches at least one binder is used in an amount of 0.1 to 20 wt% per 100 parts by weight of nanoporous particles (Eling, paragraph 0048), and that fibers should preferably be 0.1 to 30 wt.% based on the entire composite material. Additionally, the prior art combination teaches mixtures of water-soluble or water-dispersible polymers (Id., paragraphs 0069-0072), wherein for mixtures of two or more polymers, the individual polymers are each present at more preferably 20 to 80 wt% (Id., paragraphs 0087-0088).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the thermal insulating composite material of the prior art combination, and adjusting and varying the amounts of fibers, aerogel particles, and mixtures of water-soluble or water-dispersible polymers, such as within the claimed ranges, as taught by Eling, motivated by the desire of forming a conventional thermally insulating composite comprising the desired components based on the totality of the teachings of the prior art combination. Note that polymer P of the prior art would appear to be within the scope of the claimed dispersant.
Alternatively, the prior art combination teaches that the water-emulsifiability is achieved and/or improved through the use of surfactants or other surface-active substances. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the thermal insulating composite material of the prior art combination, and adjusting and varying the amounts of fibers, aerogel particles, and binder, and additionally including a surfactant, such as within the claimed ranges, as taught by Eling, motivated by the desire of forming a conventional thermally insulating composite comprising the desired components and having improved water-emulsifiability of the binder based on the totality of the teachings of the prior art combination.
Regarding claim 24, the prior art combination teaches that the silica particle diameter is preferably from 0.01 to 10 mm (Eling, paragraphs 0030-0035). Note that 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the thermal insulating composite material of the prior art combination, and adjusting and varying the average particle diameter, such as within the claimed range, as taught by Eling, motivated by the desire of forming a conventional thermally insulating composite comprising suitable fiber diameters based on the totality of the teachings of the prior art.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Eling in view of Kilhenny, as applied to claims 1-7, 9-17, and 22-24 set forth above, and further in view of US Pub. No. 2021/0163303 to Evans.
Regarding claim 8, the prior art combination teaches that the preferred aerogels have a porosity from 50 to 99%, a density from 30 to 300 g/L, a particle diameter from 0.001 to 100 mm, a pore diameter of 0.1 to 500 nm, and a thermal conductivity of less than 40 mW/mK (Eling, paragraphs 0031-0036). The prior art combination does not appear to teach the claimed specific surface area. However, Evans teaches aerogel-based components for electric vehicle thermal management including a heat control member, wherein the member includes reinforced aerogel compositions (Evans, Abstract). Evans teaches that aerogels have an average pore diameter ranging from 2 nm to about 100 nm, a porosity of at least 80% or more, a surface area of about 100 m2/g or more, and a thermal conductivity of about 40 mW/mK or less (Id., paragraphs 0057, 0078-0079).
Eling and Evans establish similar aerogels having similar properties, wherein such aerogels are known in the art as having a surface area of about 100 m2/g or more. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the thermal insulating composite material of the prior art combination, wherein the aerogel comprises a specific surface area, such as within the claimed range, as taught by Evans, motivated by the desire of forming a conventional thermally insulating composite comprising an aerogel having a specific surface area known in the art as being predictably suitable for thermal management applications.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Eling in view of Kilhenny, as applied to claims 1-7, 9-17, and 22-24 set forth above, and further in view of WO 202/323663 to Zhang.
Regarding claim 21, the prior art combination does not appear to teach the claimed fiber length. However, Zhang teaches a similar composite having excellent thermal insulation effect comprising a substrate and a double-layer structure coating on the substrate, wherein the double-layer structure includes an inner layer containing an aerogel material (Zhang, Abstract, page 23 line 24 to page 24 line 5). Zhang teaches that the aerogel material may include glass fibers with the length of 10 µm to 2 mm to give the composite material with proper mechanical strength (Id., page 9 line 31 to page 10 line 10), wherein the composite is suitable for battery applications (Id., page 15 lines 7-12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the thermal insulating composite material of the prior art combination, and adjusting and varying the average fiber length such as within the claimed range, as taught by Zhang, motivated by the desire of forming a conventional thermally insulating composite comprising suitable fiber lengths to provide predictably increased physical benefits including mechanical strength suitable for similar thermal insulating applications such as batteries.
Response to Arguments
Applicants’ arguments have been considered but are moot based on the new ground of rejection.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/ Primary Examiner, Art Unit 1786
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