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 (Fig. 1) and Species B-1 (Fig. 6) drawn to claims 1-8 in the reply filed on 02/09/2026 is acknowledged.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 4, and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takahashi (JP 2020072005 A, Machine Translation).
Reference Takahashi (JP 2020072005 A, Machine Translation) is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be excepted under 35 U.S.C. 102(b)(2)(C).
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Regarding claims 1 and 2, Takahashi discloses a heat transfer suppression sheet (Abstract) for a battery pack (See Figs. 1-11, see Fig. 9, 10 or 11 elements 100 or 60), the heat transfer suppression sheet (see Fig. 1 20) being used in a battery pack in which battery cells are connected in series or in parallel (see pg. 13, section battery pack) and being interposed between the battery cells, the heat transfer suppression sheet comprising (See Figs. 1-11):
a heat-insulating material (30, see pg. 4 paragraph 6 ) containing at least one of inorganic particles or inorganic fibers; and a covering material covering (20, see pg. 3 description of Fig. 1) at least a part of the heat-insulating material (30), wherein a gap (corrugations result in gaps) is formed between the heat-insulating material and the covering material, and the gap communicates with the outside (gap at edges since covering material does not cover edges) of the heat-insulating material and the covering material.
Regarding claims 4 and 6, Takahashi discloses all of the claim limitations as set forth above.
In addition, Takahashi discloses the heat transfer suppression sheet for a battery pack according to claim 1 interposed between the battery cells (see Fig. 9 50, see pg. 13-14, description of battery pack) and that the batteries are connected in series or parallel (see pg. 13, section battery pack)
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hu (US 20110159340 A1) in view of Takahashi ‘36 (JP 2019204636 A, Machine Translation).
Regarding claim 1, Hu discloses 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 (ceramic powder [0039]); and a covering material (212) covering at least a part of the heat-insulating material.
However, Hu does not disclose a gap is formed between the heat-insulating material and the covering material, and the gap communicates with the outside of the heat-insulating material and the covering material.
Takahashi ‘36 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 [0037]).
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 as disclosed by Takahashi ‘36 so that the effectiveness of the heat insulating properties is further increased.
The covering material of modified Hu does not cover the edges and therefore the gap communicates with the outside of the heat-insulating material and the covering material.
Regarding claim 2, modified Hu discloses all of the claim limitations as set forth above.
However, Hu does not disclose at least one of the inorganic particles or the inorganic fibers contained in the heat insulating material contains a material that releases moisture when heated.
Takahashi ’36 discloses that the heat insulating layer can comprise inorganic particles or the inorganic fibers contained in the heat insulating material contains a material that releases moisture when heated and that using this material increases performance of the battery cells ([0040]-[0044]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the heat insulating layer material of modified Hu by using the heat insulating layer material as disclosed by Takahashi ’36 because it is known that heat insulating/absorbing material is used to control heat transfer between batteries and furthermore that using this material increases performance of the battery cells.
Regarding claims 4 and 6-8, modified Hu discloses a battery pack in which battery cells are connected in series or in parallel ([0033]), wherein the heat transfer suppression sheet for a battery pack according to claim 1 is interposed (302 [0043], 1000a-g [0066], the heat transfer suppression sheet comprising (see Figs. 3B, Fig. 4, Fig. 10, Fig. 18) between the battery cells.
Regarding claims 3 and 5, modified Hu discloses all of the claim limitations as set forth above.
In addition, Hu discloses that the covering material (212) can be formed of an ceramic filled polymer ([0039]) which is a polymer film.
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 1-8 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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/272,238. 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