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 .
This communication responds to the application and amended claim set filed August 10, 2023. Claims 1-20 are currently pending.
Priority
This application is the national stage entry of PCT/EP2021/085686, filed December 14,2021, which claims priority to EP20214723.7, filed December 16,2020. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1-3 and 11, 17 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (KR-10-2021-0071563 A as listed on the IDS dated 8/10/2023; full English Machine translation incorporated herewith).
Regarding claim 1, Park et al. teach a two component resin composition (abstract) in which a main component comprising a polyol resin and a curing agent part comprising a compound containing an isocyanate group (claim 6) are mixed and cured to form a resin layer ([0003],[0036]), wherein each of the main component and the curing agent includes a filler (claim 9). Park et al. further teach the composition has a thermal conductivity of about 3 W/mk or more (claim 12, [0080], [0109]) and the resin layer (which correspond to the cured product) exhibit a V-0 rating in the UL94V test [0110]. Furthermore, Park et al. do not disclose the use of halogen or phosphorus based flame retardants in the examples, therefore the content of halogen and phosphorus will be 0%. Additionally, Park et al. teach the two component resin composition is applied to a battery module to achieve excellent heat dissipation performance, insulating properties , adhesion and the like (abstract).
However, Park et al. are silent as to the specific gravity of the curable composition. In view of the substantially identical composition of Park et al., which includes same reaction components including 70wt% or more of fillers such as aluminum oxide (alumina), aluminum hydroxide ([0075]-[0077]) and considering that the curable composition of Park et al. is used in a similar application as the present invention, then the curable composition of Park will possess the claimed property of specific gravity. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 2, Park et al. are silent on the adhesion force to aluminum and to polyester of the cured product.
However, Park et al. teach an ester polyol is used as the polyol resin [0039], wherein the ester polyol is carboxylic acid polyol or a caprolactone polyol ([0041]-[0042],[0048]-[0049]), wherein the polyol is derived from diol or triols to introduce branching [0052] and tailor desired properties [0058]-[0060], wherein the carboxylic acid is derived from fatty acid compounds, alicyclic compounds and aliphatic compounds having two or more carboxyl groups to tune desired properties [0053]-[0057]. In view of the substantially identical composition of Park et al. as discussed in the rejection of claim 1 above, the curable composition of Park will possess the claimed properties of adhesion strength. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 3, Park et al. teach the curable composition has a viscosity of 150,000 cP to 400,000 cP [0071], as required by the instant claim.
Regarding claim 11, Park et al. teach the curable composition comprises 70 wt.%-95 wt.% based on a total weight of the curable composition [0079], as required by the instant claim.
Regarding claim 17, the limitation of the two component curable composition is discussed in the rejection of claim 1 as set forth above (paragraph 7). Park et al. teach cured product exhibit a V-0 rating in the UL94V test [0110]. It is noted that Park et al. do not disclose the use of halogen or phosphorus based flame retardants in the examples, therefore the content of halogen and phosphorus will be 0%. Park et al. further teach the two component resin composition is applied to a battery module to achieve excellent heat dissipation performance, insulating properties, adhesion and the like (abstract), which is a similar application as the claimed invention.
Although, Park et al. are silent on the adhesion force to aluminum of the cured product. In view of the substantially identical composition of Park et al., which includes same reaction components including 70wt% or more of fillers such as aluminum oxide (alumina), aluminum hydroxide ([0075]-[0077]) and considering that the curable composition of Park et al. is used in a similar application as the present invention, then the curable composition of Park will possess the claimed property of adhesion force. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 19, Park et al. teach a two-component resin composition, wherein the compound having an isocyanate group is a non-aromatic compound having two or more isocyanate groups (claim 8), as required by the instant claim.
Regarding claim 20, Park et al teach a battery module comprising a module case having an upper plate, a lower plate and a side wall, a plurality of battery cells existing in the internal space of the module case and a resin layer formed by curing the two component resin composition and in contact with the plurality of battery cells and at least one of a lower plate and a side wall, wherein the resin layer work as a heat dissipation material (heat carrier) and the battery is the heat generating element (claim 11, abstract), as required by the instant claim.
Claim Rejections - 35 USC § 103
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.
Claims 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (KR-10-2021-0071563 A) in view of Watanabe et al. (US2004/0241541 A1 as listed on the IDS dated 8/10/2023).
Park et al. teach the composition according to claim 1 as set forth above and incorporated herein by reference.
Regarding claims 4-5, Park et al. teach an ester polyol is used as the polyol resin [0039], wherein the ester polyol is carboxylic acid polyol or a caprolactone polyol ([0041]-[0042] represented by represented by formulas 2 and 3, respectively:
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wherein, in formula 2 and 3, X is a unit derived from a carboxylic acid, and Y is a unit derived from a polyol, which is a triol unit or a diol unit, n and m can be any numbers, for example, n is a number in the range of 2 to 10, m is a number in the range of 1 to 10, and R 1 and R2 are each independently an alkylene having 1 to 14 carbon atoms ([0048]-[0049]). Park et al. teach the use of a mixture of diols an triols to tailor desired properties [0058]-[0060], and the use of the carboxylic acid derived units from fatty acid compounds, alicyclic compounds and aliphatic compounds having two or more carboxyl groups to tune desired properties [0053]-[0057]. Furthermore, Park et al. teach “ the polyol-derived unit of Y in the above chemical formula 3 is a unit derived from a polyol containing three or more hydroxyl groups, such as a triol unit, a structure in which the Y moiety is branched in the structure [0051]-[0052] , which implies the curable composition comprises a polyol compound containing at least one branched hydrocarbon chain having 3 or more carbon atoms in the terminal .
Park et al. are silent on the admixture of a first and second polyol as recited by the instant claims 4.
However, Watanabe et al. teach a composition comprising a diisocyanate compound, a compound B1 made of a polyol mixture of a bifunctional polyol and a trifunctional polyol (claim 6) in a battery application. Watanabe et al. further teach the bifunctional polyol is selected from polyoxypolyalkylene diol, polyester- based diol, polyether diols, polycaprolactone polyols, castor oil based polyol [0087] (which correspond to the polyol comprising a branched hydrocarbon chain having 3 or more carbon atoms at the terminal) and mixture thereof ([0077]- [0091]). Furthermore, Watanabe et al. teach the trifunctional polyol includes Polyoxypolyalkylene Polyol (glycerin, trimethanolpropane), and polycaprolactone polyols and mixture thereof ([0092]-[0098],[0099]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Park and Watanabe et al. to use the combination of a bifunctional and a trifunctional polyol as taught by Watanabe et al. in the polyol component of Park to improve the crosslinking density with the expected result of forming a cured product having enhanced adhesive force and improved properties such as strength, hardness and solvent/water resistance [0073] (See MPEP 2143(I)(B).
Regarding claims 6-7, Park et al. teaches the polyol resin include ester polyols [0039]-[0041]. Park et al. teach the curable composition containing a polyol, wherein the polyol have polycaprolactone polyol units ([0042]-[0043]), dicarboxylic unit ([0042]-[0043],[0053],[0056]) and a polyol unit derived from a polyol that is alkane with 3 carbon atoms or more substituted with 3 hydroxyl groups ([0058],[0060]). Even Park et al. are silent on the combination of the polyols of formulas 2 and 3, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Park and Watanabe et al. to use the combination of a bifunctional and a trifunctional polyol as taught by Watanabe et al. in the polyol component of Park to improve the crosslinking density with the expected result of forming a cured product having enhanced adhesive force and improved properties such as strength, hardness and solvent/water resistance [0073] (See MPEP 2143(I)(B), thereby arriving to the claimed invention.
Regarding claims 8 and 9, Park et al. are silent on the combination of the first polyol and second polyol. However, Watanabe et al. teach in the Example 1 a polyol mixture comprising 126 parts of bifunctional polyol and 8.3 parts of trifunctional polyol ( [0126], table 2) which implies a ratio of first polyol/ second polyol of 15, thereby reading on the polyol component comprises more than 80 wt.% of the first polyol relative to a total weight of the polyol component and the claimed ratio of 5 or more. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polyol mixture of Watanabe et al. in the polyol component of Park to improve the crosslinking density with the expected result of forming a cured product having enhanced adhesive force and improved properties such as strength, hardness and solvent/water resistance [0073] (See MPEP 2143(I)(B), thereby arriving to the claimed invention.
Regarding claim 10, the limitation of the first and second was discussed in the rejection of claim 4 (paragraph 12). Park et al. in view of Watanabe et al. teach the weight average molecular weight of the polyol is in the range of about 300 to about 2,000 and can be adjusted in consideration of viscosity, durability, adhesiveness, etc. [0065], which overlap the claimed range. 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Park et al. in view of Watanabe et al.
Claims 12-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (KR-10-2021-0071563 A) in view of Noda et al. (JP2013-018988 A as listed on the IDS dated 8/10/2023; Full English Machine translation provided by applicant) as evidenced by the Technical datasheet of Aluminum hydroxide by Flinn Scientific, 2014 and Technical datasheet of Aluminum Oxide by NJ Department of Health, 2017.
Park et al. teach the composition according to claim 1 and claim 17 as set forth above and incorporated herein by reference.
Regarding claims 12-16 and 18, Park et al. teach two or more type of fillers can be used [0077], wherein there is not limitation on the type of the filler that can be used and provide as examples of fillers aluminum oxide, aluminum nitride, silicon nitride, magnesium oxide, aluminum hydroxide(claim 10, [0075]-[0076]).
Park et al. are silent on the specific gravity of the first and second filler.
However, Noda et al. teach a polyurethane resin composition comprising a polyurethane resin obtained by reacting a polyisocyanate with a polyol, a metal hydroxide including aluminum hydroxide ([0025], Example 9, Table 2 of original document) and a thermal conductivity imparting agent selected from metal oxides and metal nitrides [0030] including aluminum oxide (claims 1 and 2, Example 9, Table 2 of original document), wherein the specific gravity of the aluminum hydroxide is 2.42 (which correspond to the first filler) and the specific gravity of the aluminum oxide is 4 (which correspond to the second filler) (see Technical datasheet of Aluminum hydroxide by Flinn Scientific, 2014 and Aluminum Oxide by NJ Department of Health, 2017).
Noda et al. teach the content of the metal hydroxide (aluminum hydroxide, which correspond to the first filler) is 10-95% by weight based on 100% by weight of the total weight of the composition [0026], the combined amount of the aluminum hydroxide and the aluminum oxide (which correspond to the second filler) is 30-95% by weight based on 100% by weight of the total weight of the composition [0030]; the mixing ratio of the aluminum hydroxide and the aluminum oxide is 95/5 to 70/30 [0031]. Furthermore, Noda et al. teach 53.4 parts by weigh of aluminum hydroxide and 33.4 parts by weight of the aluminum oxide based on the total composition (example 9), which implies the composition comprises more than 5% wt.% of the first filler relative to the total weight of the curable composition and the second filler is s present in a value of 62.54 part by weight relative to 100 parts by weight of the first filler. Noda et al. offers the motivation of using the amounts of the aluminum hydroxide and the aluminum oxide as taught by Noda to obtain a composition that exhibits high heat dissipation and flame retardancy ([0001], [0030]-[0031]). In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the aluminum hydroxide and the aluminum oxide as the first and second filler on the curable composition of Park et al., thereby arriving at the claimed invention.
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 1-2, 17 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 17-18 of copending Application No. 18/276,358 in view of Park et al. (KR-10-2021-0071563 A).
Claims 1-2 of the ‘358 copending application teach a curable composition comprising a polyol component and a filler wherein the curable composition is capable of forming a cured body having an adhesion force to a polyester surface of 100 gf/cm or less and an adhesion force to aluminum of 0.1 N/mm2 or less. Both claims sets teach a two component composition comprising a polyol component and filler and a curing agent component and filler.
The difference between the claims of the ‘358 copending application and the present claims is that the cured product is silent on the properties of flame retardancy of grade V-0 or more, gravity specific of 3 or less, a thermal conductivity of 2 W/mK or more, a combined content of halogen or phosphorus elements of 0.3 wt.% or less and the adhesion force to aluminum for the cured product of claim 17 of the ‘358 copending application .
However, Park in the same field of endeavor (curable composition) teach a two component resin composition (abstract) in which a main component comprising a polyol resin and a curing agent part comprising a compound containing an isocyanate group (claim 6) are mixed and cured to form a resin layer ([0003],[0036]), wherein each of the main component and the curing agent includes a filler (claim 9). Park et al. further teach the composition has a thermal conductivity of about 3 W/mk or more (claim 12, [0080], [0109]) and the resin layer (which correspond to the cured product) exhibit a V-0 rating in the UL94V test [0110]. Furthermore, Park et al. do not disclose the use of halogen or phosphorus based flame retardants in the examples, therefore the content of halogen and phosphorus will be 0%. In view of the substantially identical composition of Park et al., which includes same reaction components including 70wt% or more of fillers such as aluminum oxide (alumina), aluminum hydroxide ([0075]-[0077]) and considering that the curable composition of Park et al. is used in a similar application as the present invention, then the curable composition of Park will possess the claimed property of specific gravity and the claimed adhesion force to aluminum. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to form a curable composition and a cured product having the claimed properties as Park et al. demonstrates these properties as being suitable for similar curable compositions. This represents the use of a suitable range of properties in a similar curable composition application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Ercole et al. (US2012/052967 A1). Ercole et al. teach a polyurethane composition (cured product) prepared from a curable composition comprising a polyol component and a filler [0104], wherein the polyol is a mixture of different polyols units including polycaprolactone diols, 1,4-butanediol and fatty-acid based polyols such as (ethylene glycol capped) 2-OH Oleic acid [0230]-[0233].
Matsumoto et al. (JP 2007-284520). Matsumoto et al. teach a two part type polyurethane composition comprising a main agent comprising an isocyanate group-containing compound (a) having an NCO group content of 10 to 20 mass% , a curing agent containing a polyester polyol (b) having a number-average molecular weight of 500 to 2,000 which comprises a diol (b1) having two primary hydroxy groups and a 1 to 4C alkyl group on a side chain and a dicarboxylic acid (b2) selected from adipic acid, pimelic acid, suberic acid, azelaic acid and sebacic acid as an active hydrogen compound and optionally a trifunctional polyester polyol composed of a triol such as trimethylolpropane and a filler (Example 4).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763