DETAILED ACTION
This is the first office action on the merits 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 1-7 are pending; Claims 1-5 are considered herein.
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 .
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, Claims 1-5, in the reply filed on 2/9/2026 is acknowledged.
Additional Prior Art
The Examiner wishes to apprise the Applicant of the following references, which are not currently applied in a rejection.
U.S. Patent Application Publication 2018/0205048 A1: This reference teaches a battery module with thermally conductive material between adjacent battery cells (Fig. 1).
U.S. Patent Application Publication 2021/0210814 A1: This reference teaches a battery module with thermally conductive material 15 between battery cells and the battery casing (Fig. 2C), wherein the thermally conductive material comprises silicone and aluminum hydroxide particles (Table 1).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of copending Application No. 17/615,703 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of Claims 1-5 are taught by Claims 1 and 5 of 17/615,703.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Applicant is advised that should claim 4 be found allowable, claim 5 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-5 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 “the cell” in line 4. There is insufficient antecedent basis for this limitation, because Claim 1 includes a prior recitation of “a plurality of cells.” Therefore, it is unclear to which of the plurality of cells is referred by “the cell” in line 4.
Claims 2-5 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 1-5 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 Ota, et al. (U.S. Patent Application Publication 2020/0270499 A1), 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.
To solve the same problem of providing a thermally conductive silicone-aluminum hydroxide composition for a battery (Ota, paragraph [0032]), Ota teaches a heat absorbing composition comprising 2-15 parts by weight of silicone (paragraph [0081]) and 85-98 parts by weight of thermally conductive (paragraph [0081]) aluminum hydroxide particles (paragraph [0076]) with a mean particle size of 0.01-50 microns (paragraph [0078]).
Ota further teaches that the composition of his invention provides the benefits of having a high fuller content, a high thermal conductivity, and good stress dissipation (paragraph [0010]).
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 silicone/aluminum hydroxide thermally conductive member 70 of Rath from the silicone/aluminum hydroxide composition of Ota, because of the taught benefits of the composition of Ota.
Forming the silicone/aluminum hydroxide thermally conductive member 70 of Rath from the silicone/aluminum hydroxide composition of Ota 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. 0.01-50 microns) 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 overlaps with the taught range of 0.01-50 microns.
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, Ota further teaches that a content of the aluminum hydroxide particles is 20 vol% or more i.e. 70% (for an aluminum hydroxide amount of 85% and a silicone density of 1 g/cm3) to 97% (for an aluminum hydroxide amount of 98% 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 Ota teaches the limitations of Claim 1, wherein a content of the small particle size aluminum hydroxide is 20 vol% or more (i.e. 70-97%).
In reference to Claim 2, Ota teaches that the heat absorbing member has a thermal conductivity of 0.8 W/mK or more (i.e. 2.0 W/mK or more, paragraph [0081]).
In reference to Claim 3, modified Rath as applied to Claim 1 does not teach that the heat absorbing member necessarily comprises a large particle size aluminum hydroxide having a particle size of more than 5 μm.
However, Ota further teaches that using a combination of “large” and “small” thermally conductive particles in the thermally conductive composite of his invention provides the benefit of improving filling efficiency, decreasing viscosity, and increasing thermal conductivity (paragraph [0079]).
He further teaches a specific embodiment comprising a mixture of thermally conductive particles of aluminum oxide with an average size of 0.4 microns, and average size of 2.5 microns, and an average size of 35 microns (paragraphs [0176]-[0179] and Table 1). 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 of the heat absorbing member of modified Rath to have included a mixture of aluminum hydroxide particles with an average size of 0.4 microns, and average size of 2.5 microns, and an average size of 35 microns, based on the disclosure of Ota.
This modification teaches the limitations of Claim 3, wherein the heat absorbing member further comprises a large particle size aluminum hydroxide having a particle size of more than 5 μm.
In reference to Claim 4, modified Rath as applied to Claim 1 does not teach that 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 necessarily 26 vol% or more.
However, as described above, Ota teaches that the aluminum hydroxide particles of the heat conductive sheet of his invention have a mean particle size of 0.01-50 microns (paragraph [0078]).
Therefore, this disclosure overlaps with the claimed range of particle size recited in Claim 4. Specifically, the disclosure that the aluminum hydroxide particles of the heat conductive sheet have a mean particle size of 0.01-50 microns renders obvious the range of the average particle size of 100% of the particles in the material being 0.01-5 microns.
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 of the particles having a size of 5 microns or less overlaps with the taught range of the particles having an average size of 0.01-50 microns.
Alternatively, Ota teaches that using a combination of “large” and “small” thermally conductive particles in the thermally conductive composite of his invention provides the benefit of improving filling efficiency, decreasing viscosity, and increasing thermal conductivity (paragraph [0079]).
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 tuned the viscosity, filling efficiency, and thermal conductivity of the thermally conductive layer by controlling the relative amounts of the “large” and “small” sized particles within the thermally conductive sheet, as taught by Ota. It is the Examiner’s position that this routine optimization would have led one of ordinary skill in the art at the time the instant invention was filed to have arrived at a composition meeting the limitations of Claim 4, without undue experimentation.
In reference to Claim 5, modified Rath as applied to Claim 1 does not teach that a volume ratio of aluminum hydroxide having a particle size of 5 μm or less in the whole aluminum hydroxide contained in the heat absorbing member is 26 vol% or more.
However, as described above, Ota teaches that the aluminum hydroxide particles of the heat conductive sheet of his invention have a mean particle size of 0.01-50 microns (paragraph [0078]).
Therefore, this disclosure overlaps with the claimed range of particle size recited in Claim 4. Specifically, the disclosure that the aluminum hydroxide particles of the heat conductive sheet have a mean particle size of 0.01-50 microns renders obvious the range of the average particle size of 100% of the particles in the material being 0.01-5 microns.
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 of the particles having a size of 5 microns or less overlaps with the taught range of the particles having an average size of 0.01-50 microns.
Alternatively, Ota teaches that using a combination of “large” and “small” thermally conductive particles in the thermally conductive composite of his invention provides the benefit of improving filling efficiency, decreasing viscosity, and increasing thermal conductivity (paragraph [0079]).
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 tuned the viscosity, filling efficiency, and thermal conductivity of the thermally conductive layer by controlling the relative amounts of the “large” and “small” sized particles within the thermally conductive sheet, as taught by Ota. It is the Examiner’s position that this routine optimization would have led one of ordinary skill in the art at the time the instant invention was filed to have arrived at a composition meeting the limitations of Claim 5, without undue experimentation.
Conclusion
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.
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/SADIE WHITE/Primary Examiner, Art Unit 1721
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