DETAILED ACTION
This is the final office action for 18/267,303, filed 6/14/2023, which is a national stage entry of PCT/JP2021/046868, filed 12/17/2021, which claims priority to Japanese application JP2021-013715, filed 1/29/2021.
Claims 1-3 and 6-10 are pending; Claims 1-3 and 8-10 are considered herein.
In light of the claim amendments filed 7/1/2026, the claim objection, rejections under 35 U.S.C. 112(b), and prior art rejections are withdrawn, and new grounds of rejection are presented herein.
In light of the abandonment of application 17/615,703, the double patenting rejections have been withdrawn.
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 .
Additional Prior Art
The Examiner wishes to apprise the Applicant of the following reference, which is not currently applied in a rejection.
U.S. Patent Application Publication 2020/0152932 A1: This reference teaches a battery module with thermally conductive pottant comprising both aluminum oxide and aluminum hydroxide (paragraph [0081]).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3 and 8-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a content of the small particle size aluminum hydroxide is 20 vol% or more” and “wherein a volume ratio of the small particle size aluminum hydroxide relative to the whole amount of aluminum hydroxide contained in the heat absorbing member is 26 vol% or more and 80 vol% or less.”
Because Claim 1 now recites two different ranges for the amount of the small particle size aluminum hydroxide in the material, the scope of Claim 1 is unclear. Specifically, it is unclear whether the “20 vol% or more” limitation refers to the amount of the small particle size aluminum hydroxide, relative to the entire heat absorbing member, or whether it refers to the amount of the small particle size aluminum hydroxide, relative to the entire amount of aluminum hydroxide in the heat absorbing member.
Claims 2-3 and 8-10 are indefinite, because of their dependence on Claim 1.
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.
Claims 1-3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Rath, et al. (U.S. Patent Application Publication 2020/0381694 A1), in view of Konomi (JP2010123850 A1, with reference made to the provided machine translation), as evidenced by Brown (U.S. Patent 6,171,651 B1) and Dane, et al. (U.S. Patent Application Publication 2007/0138157 A1).
In reference to Claim 1, Rath teaches a battery module (Figs. 4-6, paragraphs [0051]-[0060]).
The module of Rath comprises a case 31/32 and a plurality of cells 10 arranged in the case 32 (Figs. 4-6, paragraph [0059]).
Rath teaches that the module comprises a heat absorbing member 70 disposed between the case portion 31 and the cell 10 (Fig. 6, paragraph [0059]).
He does not teach that the heat absorbing member 70 necessarily comprises silicone and aluminum hydroxide.
However, he teaches that a suitable matrix material for the heat absorbing member 70 is silicone, and a suitable thermally conductive filler for the heat absorbing member is aluminum hydroxide (paragraph [0059]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have formed the thermally conductive layer 70 from a composite of silicone and aluminum hydroxide particles, because he teaches that this is a suitable composition for the composite of his invention.
Rath is silent regarding the size and content of the aluminum hydroxide particles within the silicone matrix.
Therefore, he does not teach that the aluminum hydroxide is a small particle size aluminum hydroxide having a particle size of 5 μm or less dispersed in the silicone matrix, wherein a content of the small particle size aluminum hydroxide is 20 vol% or more, and wherein a volume of the small particle size aluminum hydroxide relative to the whole amount of aluminum hydroxide contained in the heat absorbing member is 26 vol% or more and 80 vol% or less.
To solve the same problem of providing a thermally-conductive sheet (translation, page 1, paragraph 1) comprising aluminum hydroxide particles (translation, page 8, paragraph 5), Konomi teaches that suitable amounts and size distributions for aluminum hydroxide particles for this use include 70-90 mass% thermally conductive particles (translation, page 8, paragraph 6) with a bimodal size distribution of particle sizes greater than 20 microns and less than 20 microns (translation, page 8, paragraph 7), and wherein the weight ratio of large particles to small particles of 100/1 to 100/80 (translation, page 8, paragraph 8).
Konomi teaches that this particle size and distribution provides the benefit of improving thermal conductivity and flame retardancy (translation, page 8, paragraph 7).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have formed the aluminum hydroxide particles in the heat absorbing material of Rath to have the size, content, and size distribution taught by Konomi, based on Konomi’s disclosure that this size, content, and size distribution provides the benefit of improving thermal conductivity and flame retardancy (translation, page 8, paragraph 7).
Forming the aluminum hydroxide particles in the heat absorbing material of Rath to have the size, content, and size distribution taught by Konomi, teaches the limitations of Claim 1, wherein the heat absorbing member comprises a silicone matrix and a small particle size aluminum hydroxide having a particle size of 5 microns or less (i.e. 20 microns or less) dispersed in the silicone matrix.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I. In the instant case, the claimed range of 5 microns or less lies within the taught range of 20 microns or less.
Evidentiary reference Brown teaches that aluminum hydroxide has a density of 2.42 g/cm3 (column 1, lines 32-33), and evidentiary reference Dane teaches that silicone resins have a density of 1-1.5 g/cm3 (paragraph [0033]).
Therefore, Konomi’s disclosure teaches that a content of the aluminum hydroxide particles is 20 vol% or more, i.e. 22% (for an aluminum hydroxide amount of 70 mass% and a silicone density of 1 g/cm3) to 84% (for an aluminum hydroxide amount of 90 mass% and a silicone density of 1.5 g/cm3).
Therefore, forming the silicone/aluminum hydroxide thermally conductive member 70 of Rath from the silicone/aluminum hydroxide composition of Konomi teaches the limitations of Claim 1, wherein a content of the small particle size aluminum hydroxide is 20 vol% or more (i.e. 22-84 vol%).
Further, forming the silicone/aluminum hydroxide thermally conductive member 70 of Rath from the silicone/aluminum hydroxide composition of Konomi teaches the limitations of Claim 1, wherein a volume of the small particle size aluminum hydroxide relative to the whole amount of aluminum hydroxide contained in the heat absorbing member is 26 vol% or more and 80 vol% or less.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I. In the instant case, the claimed range of “26 vol% or more and 80 vol% or less” lies within the taught range of 100/1 to 100/80 (i.e. 0.99-44 vol%).
In reference to Claim 2, Konomi teaches that the heat absorbing member has a thermal conductivity of 0.8 W/mK or more (i.e. 1.0 W/mK or more, page 2, paragraph 2).
Therefore, it is the Examiner’s position that the heat conductive member of modified Rath has a thermal conductivity of 0.8 W/mK or more.
In reference to Claim 3, as described above, Konomi teaches that the aluminum hydroxide particles of his invention include a population with a particle size greater than 20 microns (Konomi, translation, page 8, paragraph 7).
This teaches the limitations of Claim 3, wherein the heat absorbing member comprises a large particle size aluminum hydroxide having a particle size of more than 5 microns.
In reference to Claim 8, as described above, Konomi teaches that the small particle size aluminum hydroxide has a particle size of 20 microns or less.
This teaches the limitations of Claim 8, wherein the small particle size aluminum hydroxide has a particle size of 2 microns or less.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I. In the instant case, the claimed range of “2 microns or less” lies within the taught range of 20 microns or less.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Rath, et al. (U.S. Patent Application Publication 2020/0381694 A1), in view of Konomi (JP2010123850 A1, with reference made to the provided machine translation), as evidenced by Brown (U.S. Patent 6,171,651 B1) and Dane, et al. (U.S. Patent Application Publication 2007/0138157 A1), as applied to Claim 1, and further in view of Jennrich, et al. (U.S. Patent Application Publication 2018/0301771 A1).
In reference to Claim 9, modified Rath as applied to Claim 1 does not teach that the heat absorbing member further comprises aluminum oxide.
However, Rath recognizes both aluminum oxide and aluminum hydroxide are suitable thermally conductive fillers for the heat conductive member 70 of his invention (paragraph [0059]).
To solve the same problem of providing a thermally conductive material for use in a battery casing, Jennrich teaches that a combination of aluminum oxide and aluminum hydroxide particles may suitably be used as the thermally conductive particles in such a material (paragraph [0116]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used a combination of aluminum hydroxide and aluminum oxide particles as the thermally conductive particles in the heat conductive member of modified Rath, based on Jennrich’s disclosure that these particles may be used in combination in a heat conductive member for a battery.
Using a combination of aluminum hydroxide and aluminum oxide particles as the thermally conductive particles in the heat conductive member of modified Rath teaches the limitations of Claim 9, wherein the heat absorbing member further comprises aluminum oxide.
In reference to Claim 10, Rath teaches that the heat absorbing member 70 is disposed between the case and the plurality of cells, as described in the rejection of Claim 1 above.
Modified Rath as applied to Claim 1 does not teach that the heat absorbing member is disposed between the plurality of cells.
To solve the same problem of providing a thermally conductive material for use in a battery casing, Jennrich teaches embodiments in which a thermally conductive material 40 is disposed both between the adjacent cells and between the cells and the casing (e.g. Figs. 15-16, paragraph [0170]). Jennrich teaches that the disposition of the thermally conductive material in the batteries of his invention provides the benefit of improving temperature control and electrical insulation (paragraph [0009]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have formed the device of modified Rath to have the thermally conductive member material also disposed between adjacent battery cells, based on the teachings of Jennrich.
Response to Arguments
Applicant’s arguments with respect to the rejections presented in the non-final rejection have been fully considered and are persuasive. Therefore, these rejections have been withdrawn. However, upon further consideration, new grounds of rejection are presented herein.
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 SADIE WHITE whose telephone number is (571)272-3245. The examiner can normally be reached 6am-2:30pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke, can be reached at 303-297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SADIE WHITE/Primary Examiner, Art Unit 1721
Prosecution Insights