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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Park (CN 107431147 A, hereinafter referring to US Patent No. 11,271,264 B2 as the United States equivalent) in view of Cao (US 2013/0310505 A1) and Kuraray (Kuraray Polyols Technical Brochure, 2014).
Regarding claim 1, Park teaches a battery module and a resin composition applied thereto (Abstract), wherein the resin composition has a low thermal resistance which is suitable for heat dissipation of the battery module (col. 7, lines 4-14). Park teaches that the composition has a shore OO hardness of 5 or more (col. 9, lines 35-36), which overlaps the claimed range of “less than 90,” establishing a prima facie case of obviousness.
Park additionally teaches the incorporation of a filler (col. 8, lines 37-38).
Park is silent regarding the claimed adhesion force of “1 N/mm2 or less.” However, Park teaches an adhesion strength of 1,000 gf/10 mm or less (col. 22, claim 11), indicating that Park contemplates a maximum adhesiveness above which the inventive formulation is less optimal. Furthermore, Park indicates that the claimed adhesion strength is chosen in the interest of successfully binding the adherends without delamination due to volume change of the battery during use, due to charging/discharging, heating, etc. (col. 7 ,lines 31-51), thereby recognizing adhesive strength as a result effective variable governing the durability of the battery product. Furthermore, one having ordinary skill in the art would have had a reasonable expectation of success in doing so, as Park teaches that adhesiveness may be adjusted to a range of values including an upper limit, similar to the manner in which the adhesiveness is limited as claimed (col. 7, lines 15-31). It is prima facie obvious to optimize a result-effective variable using routine experimentation to arrive at a claimed range (see MPEP 2144.05.II.A.). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to optimize the adhesiveness of the composition of Park for the purpose of achieving maximum durability in battery modules. Park additionally teaches the adhesion of the composition to an aluminum substrate (col. 16, line 48).
Park teaches the incorporation of a polyurethane (col. 6, lines 57-59), but differs from claim 1 because it is silent with regard to incorporation of a polyfunctional polyol compound with 3 functionalities or more and a bifunctional polyol compound.
In the same field of endeavor, Cao teaches a flame retardant thermoplastic polyurethane composition (Abstract), which is suitable for use in battery parts ([0083]), wherein the thermoplastic polyurethane may be formed by reacting at least one polyol with at least one diisocyanate ([0044]). Cao further specifies that the polyol intermediate may be formed from the combination of a polyester polyol and a polyether polyol ([0044]), and teaches that the polyester polyol may be one comprising adipic acid as the dicarboxylic acid component ([0045]).
The polyether polyol may be polyethylene glycol ([0044]), which is a bifunctional polyether and which therefore reads on the claimed “bifunctional polyol compound.”
Cao teaches the formation of polyester polyol by reacting a bifunctional alcohol with a bifunctional carboxylic acid ([0045]), and therefore differs from claim 1 because it is silent regarding the use of a trifunctional polyester polyol.
However, in the same field of endeavor, Kuraray teaches polyester polyols suitable for the formation of thermoplastic polyurethanes (c.f. p. 3, “Case Study 2”), and teaches Kuraray polyol F-510 as an MPD/TMP/Adipic Acid-based polyester polyol, having a functionality of 3, within their catalogue of polyester polyols. It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute the Kuraray F-510 polyester polyol in place of the bifunctional polyester polyol of Cao, as Kuraray recognizes it as a suitable polyester polyol for the formation of thermoplastic polyurethanes. In so doing, the formulation of Park as modified by Cao and Kuraray would contain a thermoplastic polyurethane resin comprising a polyethylene glycol-based bifunctional polyether polyol and a trifunctional adipic acid/MPD/TMP based trifunctional polyester polyol. The modified composition therefore would meet the compositional limitations of claim 1.
Regarding claim 2, Park teaches that the resin composition has a thermal conductivity of 1.5 W/mK or more (col. 22, claim 4), which falls within the claimed range of “1.2 W/mK or more,” establishing a prima facie case of obviousness.
Regarding claim 3, Park teaches that the resin may be a urethane-based resin (col. 6, lines 57-59), which reads on “polyurethane” from the claimed list.
Regarding claim 5, Cao teaches that the polyethylene glycol-based bifunctional polyether polyol has a molecular weight ranging from 500-5,000 g/mol ([0047]), which overlaps the claimed range of “300 to 3000 g/mol,” establishing a prima facie case of obviousness.
Regarding claim 6, as described above, the bifunctional polyether polyol of Cao has a molecular weight ranging from 500-5,000 g/mol ([0047]). Furthermore, Kuraray F-510 has as molecular weight of 500 g/mol (c.f. Kuraray p. 9). Kuraray F-510 therefore reads on the claimed component having a molecular weight of less than 1500 g/mol, while the polyethylene glycol bifunctional polyol reads on the claimed component having a molecular weight of greater than 1500 g/mol. In each case, the values within the prior art overlap/fall within the claimed ranges, establishing prima facie cases of obviousness.
Regarding claim 7, as described above, the composition of Park as modified by Cao and Kuraray contains a polyester polyol and a polyether polyol.
Regarding claim 8, as described above, Kuraray F-510 is formed from MPD, TMP, and adipic acid (Kuraray p. 9), which reads on the claimed “alkane diol unit,” “polyol unit,” and “dicarboxylic acid,” respectively.
Regarding claim 9, Cao is silent with regard to the relative amounts of the polyester polyol and polyether polyol within the thermoplastic polyurethane. However, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Cao discloses the use of the polyester polyol and the polyether polyol as equally suitable alternatives used in conjunction with one another within the thermoplastic polyurethane, and therefore recognizes the equivalence of the two polyols. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine the polyester polyol and polyether polyol in equal amounts (i.e., in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This 1:1 ratio equates to an incorporation of 100 parts by weight of the bifunctional polyol compound per 100 parts by weight of the trifunctional polyol compound, which falls within the claimed range of “5 to 100,” establishing a prima facie case of obviousness.
Regarding claim 10, Cao teaches the additional incorporation of brominated mono-alcohols as secondary flame retardant additives ([0060]), and Park likewise contemplates the incorporation of flame retardants for the inventive composition (c.f. Park col. 12, lines 1-4) It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate brominated mono-alcohols, such as tribromophenol ([0060]), into the formulation of Cao as modified, for the purpose of imparting said flame retardancy. Cao teaches that said flame retardant may be suitably added in amounts ranging from 0 to 15 wt% of the overall composition ([0059]).
Regarding claim 11, Park as modified by Cao and Kuraray does not directly state the amount of the mono-alcohol flame retardant (which reads on the claimed “monohydric alcohol”) with respect to the amount of the trifunctional polyester polyol component. However, Cao does teach the incorporation of 20-80 wt% of the thermoplastic polyurethane within the flame-retardant resin composition ([0013]). Also, as described above, Cao teaches that said flame retardant may be suitably added in amounts ranging from 0 to 15 wt% of the overall composition ([0059]). Moreover, Cao specifies that MDI is the most-preferred diisocyanate within the polyurethane ([0049]), and teaches that the molecular weight of the polyethylene glycol bifunctional polyether polyol ranges from about 500 – 5,000 g/mol ([0047]). Finally, Kuraray teaches that the molecular weight of F-510 is 500 g/mol (c.f. Kuraray p. 9).
The thermoplastic polyurethane of Park as modified by Cao and Kuraray may contain a 50:50 mixture of the polyether and polyester polyols, as described in the rejection of claim 9, above. Therefore, said thermoplastic polymer contains a mole ratio of MDI:polyether polyol: polyester polyol of 2:1:1. Given the molecular weights of each component, described above, it can be calculated that the trifunctional polyester polyol comprises between 8.3 and 33.3 % by mass of the thermoplastic polyurethane. Given that the resin composition contains between 20 and 80 wt% of said polyurethane and between 0.1 and 15 wt% of the monofunctional alcohol (tribromophenol), the reisn formulation can be approximated as containing 20-80 grams of polyurethane and 0.1-15 grams of tribromophenol. The formulation would therefore contain between about 1.66 and 26.64 grams of polyester polyol and 0.1-15 grams of tribromophenol, equivalent to a range of about 0.38 – 903.62 g of tribromophenol per 100 grams of trifunctional polyester polyol. This range encompasses the claimed range of “1 to 100 parts by weight relative to 100 parts by weight,” establishing a prima facie case of obviousness.
Regarding claim 12, as described above, Cao teaches the preferred incorporation of MDI ([0049]), which reads on the claimed “polyisocyanate” because the instant Specification exemplifies “polyisocyanate” compounds as those including bifunctional isocyanates (c.f. instant Specification at [57], wherein HMDI, a bifunctional isocyanate, is included as a polyisocyanate compound).
Regarding claim 13, as described above, the formulation of Park as modified by Cao and Kuraray contains a thermoplastic polyurethane formed from a PEG-based bifunctional polyol and a trifunctional polyester polyol.
Regarding claim 14, Cao is silent with regard to the relative amounts of the polyester polyol and polyether polyol within the thermoplastic polyurethane. However, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Cao discloses the use of the polyester polyol and the polyether polyol as equally suitable alternatives used in conjunction with one another within the thermoplastic polyurethane, and therefore recognizes the equivalence of the two polyols. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine the polyester polyol and polyether polyol in equal amounts (i.e., in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This 1:1 ratio equates to an incorporation of 100 parts by weight of the bifunctional polyol compound per 100 parts by weight of the trifunctional polyol compound, which falls within the claimed range of “5 to 100,” establishing a prima facie case of obviousness.
Regarding claim 15, Park teaches fillers including, inter alia, boron nitride, silicon nitride, silicon carbide, zinc oxide, and beryllium oxide (col. 10, lines 51-53).
Regarding claim 17, Park teaches a battery module wherein the battery cells (which are heat-producing) are disposed adjacent to the inventive resin layer (Sheet 6, Figure 6, and col. 15, lines 24-25 and 34-35).
Claims 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Park (US Patent No. 11,271,264 B2).
Regarding claim 16, Park teaches all of the limitations of claim 1, as described above. Park further teaches that the inventive composition may be a two-component system (col. 13, lines 43-45), and exemplifies the inventive composition as a two-part urethane formulation wherein the polyol and isocyanate components present as main material and hardener components, respectively. (col. 18, Example 3, lines 35-47). Park teaches the incorporation of a filler therein, but is silent regarding the filler being included separately in each of the two-parts of the two-component system. However, it is prima facie obvious to select any order of mixing ingredients (see MPEP 2144.04.IV.C.). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the filler into each of the components of the two-component system.
Regarding claim 18, Park teaches a battery module wherein the battery cells (which are heat-producing) are disposed adjacent to the inventive resin layer (Sheet 6, Figure 6, and col. 15, lines 24-25 and 34-35).
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed June 16, 2026, with respect to 35 U.S.C. 112(b) and the objection to the Specification have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejection and the Objection have been withdrawn.
Applicant’s remaining arguments have been fully considered but they are not persuasive.
Applicant first argues that prior art reference Park fails to teach the claimed adhesion force characteristic. However, while the previous Office action contained a typographical error which mistakenly referenced Park’s adhesion force in units of “gf/10 min” (as opposed to the actual value of gf/10 mm), the referenced passage within Park (col. 22, claim 11) clearly refers to an adhesion strength value and not a melt flow rate.
Applicant attempts to argue that the adhesion force ranges of park differ from those of the instant application, stating that the instant application targets low adhesion forces while those of Park are high. However, as described above, Park merely discloses the adhesion force value of 1,000 gf/10mm as a maximum value and contemplates the incorporation of lower values as well. Therefore, as described above, the adhesion force characteristic is disclosed as a result-effective variable, and would have been obvious to modify for the purpose of modifying the suitability of the inventive product.
Applicant argues that one having ordinary skill in the art would not be motivated to utilize a 3-functional polyol within the teachings of Cao because the high level of functionality would introduce crosslinking which would destroy the thermoplastic nature thereof. However, as described above, Kuraray teaches that the 3 functional materials described above may be used to form thermoplastic polyurethanes. Therefore one having ordinary skill in the art would recognize the 3-functional polyol as useful for the formation of a thermoplastic polyurethane despite the increased functionality.
Applicant asserts that the different temperature ranges of the polymer systems of Park and Cao render the two documents incompatible; however, Park merely indicates optionality of room-temperature curing and also specifically mentions thermal curing at higher temperatures (e.g., col. 14, lines 1-2).
Applicant asserts there is no reasonable expectation of success, relying on experimental examples in the instant application to support that both the claimed bifunctional and trifunctional components need to be present within the claimed composition; however, as described above, the rejection of the claims in view of the prior art includes both components as claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762
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