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 .
Election/Restrictions
Applicant’s election without traverse of Species A-1 (Figs. 1-3), B-1 (Fig. 6), and C-1 (Fig. 16) in the reply filed on 02/18/2026 is acknowledged.
It is noted that claims 5, 7, 18, and 19 recites “the covering material has the concave portion and the convex portion on the surface facing the heat-insulating material” and Applicant elected Species A-1 drawn to the embodiment disclosed in Figs. 1-3. In Figs. 1-3 the covering material (A12) is flat and contains no concave portion and convex portions. Concave and convex portions are shown in Fig. 4 (A2), for example, wherein the covering material has the concave portion and the convex portion ([0125]-[0129], see US 20240088484 A1, which is the publication of the instant application). Therefore, claims 5-8 and 18-19 are withdrawn as not being drawn to Species A-1.
It is noted that claim 15 recites “the covering material completely covers the heat-insulating material” and Applicant elected Species A-1 drawn to the embodiment disclosed in Figs. 1-3. In Figs. 1-3 the covering material (A12) does not cover the end portions of the heat insulating material (A11). Contrastingly in Fig. 11 the covering material completely covers the heat insulating material as noted in paragraph [0070] in US 20240088484 A1. Therefore, claim 15 is withdrawn as not being drawn to Species A-1.
Therefore, claims 5-9 and 15-20 are withdrawn from consideration because these claims are drawn to Species A-2 through A-10 and Species B-2 through B-11 and Species C3 and Species C-4.
Species A-1, B-1, and C-1 are drawn to claims 1-4 and 10-14.
Claims 5-9 and 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species A-2 through A-10 and Species B-2 through B-11 and Species C3 and Species C-4, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/18/2026.
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 12 and 13 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 12 recites “the heat-insulating material is bonded to the covering material, or the covering material comprises two or more covering material portions that are bonded to each other with an adhesive that melts at a temperature of 60°C or more, and adhesives having different melting temperatures are used as the adhesive in regions such that the adhesives melt stepwise in the regions as the temperature rises.” It is unclear if the heat-insulating material and the covering material are bonded with an adhesive that melts at a temperature of 60°C or more, and adhesives having different melting temperatures are used as the adhesive in regions such that the adhesives melt stepwise in the regions as the temperature rises or if only the two or more covering material portions are bonded with an adhesive that melts at a temperature of 60°C or more, and adhesives having different melting temperatures are used as the adhesive in regions such that the adhesives melt stepwise in the regions. Further clarification and appropriate correction is required.
Claim 13 recites “the heat-insulating material is bonded to the covering material, or the covering material comprises two or more covering material portions that are bonded to each other with an adhesive that melts at a temperature of 60°C or more, and the adhesive is applied to regions in different application amounts such that the adhesive melts stepwise in the regions as the temperature rises.” It is unclear if the heat-insulating material and the covering material are bonded with an adhesive that melts at a temperature of 60°C or more, and the adhesive is applied to regions in different application amounts such that the adhesive melts stepwise in the regions as the temperature rises or if only two or more covering material portions are bonded with an adhesive that melts at a temperature of 60°C or more, and the adhesive is applied to regions in different application amounts such that the adhesive melts stepwise in the regions as the temperature rises. Further clarification and appropriate correction is required.
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.
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) 1-4, 10, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hu (US 20110159340 A1) in view of Takahashi (JP 2019204636 A, Machine Translation).
Regarding claims 1-3, and 14, Hu discloses a heat transfer suppression sheet (see Figs. 3B, Fig. 4, Fig. 10, Fig. 18, 320, 410, 1002,1810 [0037]) for a battery pack, the heat transfer suppression sheet being used in a battery pack in which battery cells are connected in series or in parallel ([0033]), and being interposed between the battery cells (302 [0043], 1000a-g [0066], the heat transfer suppression sheet comprising (see Figs. 3B, Fig. 4, Fig. 10, Fig. 18):
a heat-insulating material (214 [0037]-[0039], see analogous layers in other figures noted) containing at least one of inorganic particles or inorganic fibers (ceramic powder [0039]); and
a covering material (212) covering at least a part of the heat-insulating material.
However, Hu does not disclose wherein a gap is formed between the heat-insulating material and the covering material.
Takahashi discloses a heat insulating material sheet (10) between battery cells which has convex and concave portions (22 [0035]) which increases surface area so that the effectiveness of the heat insulating properties is further increased ([0019]-[0022],see Figs. 1-4, note both surfaces can have concave convex features [0107]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the heat insulating material layer of Hu to have concave and convex portions on either or both outer surfaces as disclosed by Takahashi so that the effectiveness of the heat insulating properties is further increased.
Regarding claim 4, modified Hu discloses all of the claim limitations as set forth above.
In addition, Hu discloses that the convex portion (modification above) of the heat-insulating material is bonded to the covering material ([0044]).
Regarding claim 10, modified Hu discloses all of the claim limitations as set forth above.
In addition, Hu discloses that the covering material does not cover the edge portions of the heat-insulating material and therefore the gap thermally communicates with the outside of the heat-insulating material and the covering material by discharging heat through the covering material and the uncovered ends (see Figs. 3B, Fig. 4, Fig. 10, Fig. 18, 320, 410, 1002,1810). In addition, Hu discloses that the covering material (212) can be formed a polymer composite ([0039]) and a polymer will have a melting point. At the melting point of the covering material the gap will communicate with the outside.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hu (US 20110159340 A1) in view of Takahashi (JP 2019204636 A, Machine Translation) as applied to claims 1-4, 10, and 14 above and in further view of Yoon (US 20210320345 A1).
Regarding claims 11, modified Hu discloses all of the claim limitations as set forth above.
Hu discloses that the covering material (212) can be formed of an ceramic filled polymer ([0039]).
However, Hu does not disclose the gap is sealed at a temperature of less than 60°C and that the covering material is configured such that a communication opening that allows the gap to communicate with the outside of the covering material is formed at a temperature of 60°C or more.
Yoon discloses a heat suppression sheet that comprises a heat insulating material (121) which has gaps (121c, through holes [0151]) which are filled with covering phase changing material (122) ([0051]-[0057]) and that having these through holes filled with phase changing material allows for a battery failure or damage event that may be caused in the battery cell by the heat, may be delayed, prevented, and/or reduced by the fire extinguishing agent ([0057]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the heat insulating material layer of Hu by including filling the gaps with PCM as disclosed by Yoon because this allows for a battery failure or damage event that may be caused in the battery cell by the heat, may be delayed, prevented, and/or reduced by the fire extinguishing agent.
With regards to “the gap is sealed at a temperature of less than 60°C and that the covering material is configured such that a communication opening that allows the gap to communicate with the outside of the covering material is formed at a temperature of 60°C or more” as noted above the covering material melts at a temperature of 120°C and therefore a gap will communicate with the outside of the covering material which is formed at a temperature of 60°C or more.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hu (US 20110159340 A1) in view of Takahashi (JP 2019204636 A, Machine Translation) in view of Yoon (US 20210320345 A1) as applied to claims 1-4, 10, and 14 above and in further view of Kilhenny (US 20210257690 A1)
Regarding claim 13, modified Hu discloses all of the claim limitations as set forth above.
Hu discloses that the heat-insulating material and the covering material are adhered ([0046]), but does not disclose specifics.
Kilhenny discloses an adhesive material layer between a heat insulating material and a covering material that includes polymeric adhesives which melt at temperatures above 60°C ([0054]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the adhering of the heat-insulating material and the covering material by using a polymer based adhesive as disclosed by Kilhenny because Kilhenny discloses that these types of adhesive are known to adhere heat-insulating material and covering materials and Hu discloses a method of adhesion should be used.
Furthermore it would have been obvious to one of ordinary skill the art at the time of filing to modify the amount of adhesive applied so that the concave regions of the heat insulating sheet are not filled with adhesive in modified Hu because this will not aid in the bonding of heat insulating sheet and the cover material.
With regards to the property of “the adhesive is applied to regions in
different application amounts such that the adhesive melts stepwise in the regions as the temperature rises” will be present in the heat suppression sheet of modified Hu since modified Hu discloses all the claimed structure for the adhesive layer.
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 1-4 and 10-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-9 of copending Application No. 18/272,300. Although the claims at issue are not identical, they are not patentably distinct from each other because they recites a substantially similar structure for a heat transfer suppression sheet.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 and 10-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-8 of copending Application No. 18/272,758. Although the claims at issue are not identical, they are not patentably distinct from each other because they recites a substantially similar structure for a heat transfer suppression sheet.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVINA PILLAY whose telephone number is (571)270-1180. The examiner can normally be reached Monday-Friday 9:30-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey T Barton can be reached at 517-272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DEVINA PILLAY
Primary Examiner
Art Unit 1726
/DEVINA PILLAY/Primary Examiner, Art Unit 1726
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