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 .
Response to Amendment
Acknowledgment is made to applicant’s amendment of claims 1 filed on 06/09/2026. Claims 2 and 11 have been canceled. Accordingly, claims 1, 3-10 and 12 remain pending and are claims addressed and examined below.
Applicant’s corrected Fig. 1 has overcome the drawing objection previously set forth in the office action mailed on 03/19/2026.
The 35 U.S.C. 102(a)(1) rejection previously set forth in the Office Action mailed 03/19/2026 has been withdrawn.
Response to Arguments
Applicant's arguments filed 06/09/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that “Ishida's gas absorbent is specifically designed to reduce internal pressure, which is the opposite of the configuration recited in amended claim 1, where the gas absorbing material desorbs gas to increase internal pressure and induce venting. The Examiner has alleged that Ishida's safety valve reads on the claimed gas emission vent; however, the Examiner conflates two fundamentally different mechanisms. In Ishida, pressure increases come from gas produced by decomposition of the non-aqueous solvent (see Ishida, paragraphs [0004]-[0005]), not from desorption of gas from the gas absorbing material. In contrast, amended claim 1 requires that "the desorbed internal gas increases an internal pressure of the case to induce venting of the gas emission vent." Ishida does not disclose or suggest this configuration”, the safety valve taught by Ishida still functions as a gas emission vent that is induced by an increase in internal pressure of the case. This argument is not found persuasive as although Ishida does not specifically teach that the increased pressure in the battery is due to desorbed gas, Ishida recognizes that the same problem as applicant, which is the fact that there may be a pressure build up within the battery due to gas released by the battery. Recognizing the same problem, Ishida solves the problem using a gas absorbing material and a safety valve that reads on the gas emission vent.
In response to applicant’s argument that “Long is thus directed to a fundamentally different field, namely purifying natural gas in marine and offshore environments, and does not relate to secondary batteries at all”, Long is a broad reference that discusses the applicability of MOFs. Long teaches the MOFs of the claimed invention as suitable materials for gas absorption which is the same intended use of applicant’s MOFs, making Long reasonably pertinent art. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See MPEP 2141.01(a). In this instance Long is reasonably pertinent to the problem faced by the inventor, and thus the argument that Long is not analogous is not persuasive.
In response to applicant’s argument that “the combination still fails to teach or suggest the claimed functional relationship. Specifically, neither Ishida nor Long, alone or in combination, teaches or suggests "wherein the desorbed internal gas increases an internal pressure of the case to induce venting of the gas emission vent" as recited by amended claim 1. Ishida's gas absorbent is designed to absorb gas to prevent pressure increases, and Long's MOFs are designed to capture C02 from natural gas streams. Neither reference teaches or suggests using a gas absorbing material that, upon reaching a critical temperature during abnormal battery operation, desorbs previously absorbed gas to rapidly increase internal pressure and trigger venting of a gas emission vent.”, although the prior art does not specifically teach that the desorbed internal gas increases an internal pressure of the case to induce venting of the gas emission vent, as discussed earlier, Ishida recognizes that the same problem as applicant and solves the problem via a gas absorbing material and a safety valve (gas emission vent).
Long is used in combination with Ishida to render the specific materials claimed by applicant obvious. Ishida suggests a number of possible gas absorbing materials such as intermetallic compounds and some of the claimed materials of claim 4 in ¶ 0020. In ¶ 0076, Ishida also discusses that any suitable gas absorbing element other than those discussed above may be utilized , prompting one of ordinary skill to look to pertinent prior art. As discussed above, Long teaches suitable gas absorbing materials making it reasonably pertinent art for one of ordinary skill to look to. The 103 rejection set forth in the office action mailed on 03/19/2026 reasonably substituted Ishida’s gas absorbing material with MOFs taught by Long. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A and B.). Through this combination, the prior art renders applicant’s invention obvious to one of ordinary skill. Though the prior art does not teach specific critical temperatures, the properties of the material are inseparable from the material. The material and structure of the invention are rendered obvious thus, the invention taught by the combination is also capable of, upon reaching a critical temperature during abnormal battery operation, desorbing previously absorbed gas to rapidly increase internal pressure and trigger venting of a gas emission vent.
In response to applicant’s argument that “the Examiner's inherency argument, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977), is also misplaced. The Examiner has alleged that because modified Ishida teaches the same materials (mmen-Mg2(dobpdc)), the temperature-dependent absorption/desorption behavior and critical temperature are inherent. Office Action, page 6. However, the configuration recited in amended claim 1 is not merely about the material's inherent properties in isolation. Rather, amended claim 1 recites a specific functional configuration within a secondary battery: the gas absorbing material absorbs internal gas below the critical temperature, desorbs internal gas at or above the critical temperature, and the desorbed gas increases internal pressure to induce venting. This is a deliberate design choice for battery safety, not an inherent property that would flow from simply placing a gas absorbent inside a battery case”, the examiner disagrees. As discussed earlier, Ishida in view of Long teaches the same material as the claimed invention and the material being applied in the same manner as the claimed invention to solve the same problem as the claimed invention. The material in itself is capable of absorbing internal gas below a certain critical temperature and desorbing internal gas at or above a certain critical temperature. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant’s argument that “even if the "Mg2(dobpdc)" of Long has the property of desorbing gas in the range of 70 to 150°C or higher, it is difficult to derive a configuration in which the compound is applied inside the secondary battery of Ishida and the gas desorbed in the range above the critical temperature rapidly increases the internal pressure of the case to induce gas venting”, as discussed earlier, it is within the ability of one of ordinary skill to replace the gas absorbing material in the battery taught by Ishida with the material taught by Long.
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.
Claim(s) 1, 3-5, 8, 10, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al. (US 20030049519 A1) in view of Long et al. (US 20180272314 A1).
With regards to claim 1, Ishida teaches a secondary battery, comprising: an electrode assembly; and a case where the electrode assembly is inserted (¶ 0028 - ¶ 0029). Ishida teaches that the case has an inner side (¶ 0028; inner face). Ishida teaches that the battery may include a resin that functions as a safety valve between the electrodes leads, at the opening of the case (¶ 0072). Ishida teaches that there is a relatively weak joint between the resin film and the inner face of the case (¶ 0072). Ishida goes on to teach that this joint surface is peeled off to release the gas to the outside with an increase in internal pressure of the battery (¶ 0072). This reads on the case comprising a gas emission vent under pressure. Ishida also teaches that the case has a coating layer on the inner side containing a gas absorbing material that absorbs internal gas (¶0028 - ¶ 0029). Ishida does not specifically teach that the gas absorbing material desorbs internal gas depending on a temperature inside the case. Ishida also does not specifically teach that the gas absorbing material has a critical temperature between 70°C and 150°C, wherein the gas absorbing material absorbs internal gas below the critical temperature and wherein the gas absorbing material desorbs internal gas at or above the critical temperature, and wherein the desorbed internal gas increases an internal pressure of the case to induce venting of the gas emission vent. However, Ishida teaches that the gas absorbing element absorbs gas produced inside the battery (¶ 0019). Ishida teaches that it is preferred that the gas absorbent selectively absorbs gases such as carbon dioxide (¶ 0059). As Ishida teaches that the material absorbs gas, the material is inherently capable of absorbing or desorbing the internal gas. The safety valve taught by Ishida also functions as a gas emission vent that is induced by an increase in internal pressure of the case. Although Ishida does not specifically teach that the increased pressure in the battery is due to desorbed gas, Ishida recognizes that the same problem as applicant and solves the problem using a gas absorbing material and a safety valve that reads on the gas emission vent. Ishida teaches that the gas absorbing material comprises zeolites, metals, metal oxides and carbon materials such as active carbon (¶ 0060 - ¶ 0061). Ishida also teaches that any suitable gas absorbing material other than the previous examples may be utilized (¶ 0076).
In a similar field of endeavor, Long discloses that MOFs are ideally suited for use in gas sorption or separation (¶ 0003 and ¶ 0054). Long teaches that diamine appended MOFs such as mmen-Mg2(dobpdc) are promising adsorbents for highly selective CO2 capture (¶ 0055).
It would have been obvious to one of ordinary skill in the art, at the time the invention was effectively filed to substitute the gas absorbing material taught by Ishida with diamine appended MOFs such as mmen-Mg2(dobpdc) as taught by Long. This would predictably improve the capabilities of the gas adsorbing material, allowing it to absorb CO2 gas effectively.
Modified Ishida teaches the same materials used in dependent claims 4 and 5. Thus, the ability of the material to absorb or desorb internal gas depending on a temperature inside the case, wherein the gas absorbing material has a critical temperature between 70°C and 150°C, wherein the gas absorbing material absorbs internal gas below the critical temperature and wherein the gas absorbing material desorbs internal gas at or above the critical temperature is deemed to be an inherent physical property of the material and would be rendered obvious. See response to arguments section above. NOTE: Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on “prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
With regards to claim 3, Long teaches that the gas absorbing material comprises diamine appended MOFs that comprise a repeating core that includes metals such as magnesium, manganese, iron, zinc, and cobalt (¶ 0064 and ¶ 0066).
With regards to claim 4, Long further teaches mmen grafted to the M2(dobpdc) framework, where M may be Mg, Mn, Fe, Co, or Zn, as an example of the diamine appended MOF (¶ 0055).
With regards to claim 5, Ishida teaches that the gas absorbing material comprises at least one selected from zeolites, metal oxides and carbon materials such as active carbon (¶ 0060 - ¶ 0061).
With regards to claim 8, Ishida teaches that the coating film may have a thickness of 0.5 mm (500 µm) (¶ 0160). This overlaps with the claimed range (50 µm – 500 µm) of the invention. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regards to claim 10, With regards to claim 10, Ishida teaches that methane and carbon dioxide are the primary components of the gas produced in the battery (¶ 0016). Ishida also teaches that the gas absorbing material capable of absorbing methane, ethane, ethylene, carbon dioxide, or hydrogen (¶ 0020). These gases read on the internal gas of the claimed invention.
With regards to claim 12, Ishida in view of long teaches the secondary battery of claim 1. Ishida also teaches that the secondary battery is applicable to large-sized batteries used for electronic vehicles and power reservoirs (¶ 0255). Since these applications would require a battery module and they share the same function as a battery module, it reads on the secondary battery module that comprises the secondary battery of claim 1.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al. (US 20030049519 A1) in view of Long et al. (US 20180272314 A1) as applied to claim 1 and in further view of Shibata et al. (US 20130171483 A1).
With regards to claim 6, Ishida in view of Long teaches a plurality of gas absorbing materials that may be included in the coating layer. In ¶ 0070, Ishida teaches a binding agent that may be added to the gas absorbent which reads on the coating layer comprising a binder. However, modified Ishida does not specifically teach using two materials in the coating layer.
In a similar field of endeavor, Shibata discloses a secondary battery with a case comprising a gas absorber provided within the case (¶ 0011). Shibata teaches activated carbon and zeolite as materials that may be used as the gas absorbent material (¶ 0023). Shibata also teaches that a molecular-compound forming material is preferred in some conditions (¶ 0023). Shibata goes on to teach that combinations of compounds will make it possible for wide variety of gases to be effectively absorbed (¶ 0023).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to select two materials taught by modified Ishida, such as mmen-Mg2(dobpdc) and a zeolite, to be the gas absorbing materials in the coating layer, as Shibata teaches that this will allow for a wide variety of gases to be effectively absorbed.
Modified Ishida does not specifically teach the critical temperature of the materials; however, similar to the claimed invention, modified Ishida teaches mmen-Mg2(dobpdc) and zeolites as gas absorbing materials inside a battery case. Thus, the critical temperatures are deemed to be an inherent physical property of the materials and would be rendered obvious through the combination. NOTE: Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on “prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al. (US 20030049519 A1) in view of Long et al. (US 20180272314 A1) and Shibata et al. (US 20130171483 A1) as applied to claim 6 and in further view of Deng et al. (US 6358302 B1).
With regards to claim 7, modified Ishida is silent on the amount of gas absorbing material included in the coating layer.
In a similar field of endeavor, Deng teaches a multi-composite adsorbent mixture that is capable of removing gases such as carbon dioxide, nitrogen oxides and hydrocarbons (col 2, lines 34-41). Deng teaches that different adsorbent materials adsorb in the composite adsorb the different gasses mentioned earlier (col 4, 7-11). Deng teaches alumina and zeolites as examples of the gas adsorbent (col 4, 12-15). These gas adsorbents may be considered gas absorbents as applicant claims similar materials as gas absorbents. Deng goes on to teach that the adsorbent mixture may comprise from about 5 to about 95% CO2 adsorbent; and about 5 to about 95% nitrogen oxide/hydrocarbon adsorbent (col 4, 7-11). Deng also teaches that materials may be included within any percentage in the range as long as the total weight is 100% (col 4, 7-11).
It would have been obvious to one of ordinary skill in the art, at the time the invention was effectively filed to modify the coating layer taught by modified Ishida to include the two gas absorbent materials in a range within the range taught by Deng, as this would predictably yield a gas absorbing material capable of absorbing a variety of gases. The ranges taught by Deng would lead one of ordinary skill in the art to be within the percentages claimed, absent evidentiary data or unexpected results.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al. (US 20030049519 A1) in view of Long et al. (US 20180272314 A1) as applied to claim 1 and in further view of Kim et al. (US 20150140402 A1).
With regards to claim 9, modified Ishida is silent on the coating layer having a pattern structure and an area ratio of the coating layer with respect to the total surface of the case.
In a similar field of endeavor, Kim teaches a pattern coating layer on a surface of a coating layer (¶ 0006). Kim teaches that the pattern structure of the coating layer allows for enhanced adhesion of the coating layer (¶ 0038 - ¶ 0039). Kim goes on to teach that a total area of the pattern coating layer may be in a range of about 10% to about 70% based on a total area of the separator (¶ 0039). The greater the range that the coating layer is applied, the greater the adhesion. This range overlaps with the range of the claimed invention (50 to 90%).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the coating layer taught by modified Ishida to have a pattern structure with an area ratio within the range taught by Kim such as 10% - 70% with respect to a total surface area of the case to improve the adhesivity of the coating layer to the case.
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 HUNSUYADOR YUSIF whose telephone number is (571)272-4531. The examiner can normally be reached 7 am - 5 pm (M-R).
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/HUNSUYADOR MUGEESATU YUSIF/Examiner, Art Unit 1743
/GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743
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