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 Group I, claims 1 – 15, in the reply filed on 1 October 2025 is acknowledged.
Claims 16 – 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1 October 2025.
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, 9, 11, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8 of copending Application No. 18/037,351 (hereinafter “the ‘351 application”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, claims 1 and 8 of the ‘351 application are collectively directed to a sandwich panel for an automobile, comprising:
a core layer that defines a sheet form, the core layer comprising a glass fiber (“flame retardant fiber”, which claim 8 mentions can be glass fiber) and a thermoplastic resin;
a surface layer disposed on at least one surface of the core layer (“skin layer”); and
an adhesive layer that attaches the core layer and the surface layer to each other.
Regarding claim 2, in addition to the limitations of claim 1, claim 7 of the ‘351 application recites the thermoplastic resin comprises, e.g., polyethylene.
Regarding claim 9, in addition to the limitations of claim 1, claim 10 of the ‘351 application recites the surface layer comprises, e.g., aluminum.
Regarding claim 11, in addition to the limitations of claim 1, claim 11 of the ‘351 application recites the adhesive layer comprises, e.g., polyethylene, polypropylene, amorphous polyalphaolefin adhesives (“olefin-based adhesive”).
Regarding claim 15, claim 14 of the ‘351 application is directed to an upper cover for an automobile battery pack, the upper cover comprising the sandwich panel discussed in the double patenting rejection of claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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, 9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (US 2019/0105877 A1).
Regarding claim 1, Kim discloses a sandwich panel (“sandwich panel”: e.g. Fig. 1 – 4; ¶¶ [0009] – [0114]) for an automobile (“cars”: e.g. ¶¶ [0046], [0070], [0114]), comprising:
a core layer that defines a sheet form (“core layer”, e.g. “core layer” 10: e.g. Fig. 2; ¶¶ [0011] – [0026], [0029], [0031] – [0038], [0045] – [0102], [0105], [0106], [0108], [0110], [0113], [0114]), the core layer comprising a glass fiber (e.g. ¶ [0080]) and a thermoplastic resin (“binder”: e.g. ¶¶ [0012], [0017], [0022], [0033], [0045], [0047], [0057], [0058], [0060] – [0062], [0065], [0073], [0075], [0079], [0096]);
a surface layer disposed on at least one surface of the core layer (“skin layer”, e.g. “skin layer” 20: e.g. Fig. 2; ¶¶ [0011], [0012], [0015], [0016], [0026], [0027], [0029], [0033], [0034], [0045], [0048] – [0050], [0052] – [0055], [0103] – [0105], [0108], [0110], [0112], [0113]); and
an adhesive layer that attaches the core layer and the surface layer to each other (“adhesive layer”: e.g. ¶¶ [0012], [0015], [0016], [0028], [0029], [003], [0034], [0045], [0049] – [0052], [0054], [0055], [0105], [0107], [0108], [0111] – [0113]).
Regarding claim 2, in addition to the limitations of claim 1, Kim discloses the thermoplastic resin comprises, e.g., polyethylene (e.g. ¶ [0061])
Regarding claim 3, in addition to the limitations of claim 1, Kim discloses the thermoplastic resin surrounds the glass fiber (e.g. ¶¶ [0058], [0065], [0096]).
Regarding claim 9, in addition to the limitations of claim 1, Kim discloses the surface layer comprises, e.g., aluminum (e.g. ¶¶ [0027], [0103]).
Regarding claim 11, in addition to the limitations of claim 1, Kim discloses the adhesive layer comprises, e.g., polyethylene (e.g. ¶¶ [0029], [0030], [0107] – [0109]).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kim as applied to claim 1 above, and further in view of Solenicki (US 2019/0291393 A1).
Regarding claim 4, although Kim is not explicit as to the core layer being configured to be converted into a non-combustible layer based on the thermoplastic resin being carbonized upon ignition, this feature would have been obvious in view of Solenicki.
Solenicki discloses a core layer used to make panels (e.g. ¶¶ [0009] – [0071]), wherein the core layer is configured to be converted into a non-combustible layer based on the thermoplastic resin being carbonized upon ignition in order to inhibit or delay the spread of fire (“intumescent”: e.g. ¶ [0044]).
Solenicki relates to uses with mass transit vehicles (e.g. ¶¶ [0008], [0009], [0030], [0039]) but also recognizes equivalent efforts are made for an automobile (use understood from Solenicki’s background discussion: e.g. ¶¶ [0003] – [0008]) or other road applications such as buses (e.g. ¶ [0039]) which the examiner finds to be substantially similar to automobiles.
Accordingly, it would have been obvious to configure Kim’s core layer to be converted into a non-combustible layer based on the thermoplastic resin being carbonized upon ignition as Solenicki suggests, the motivation being to inhibit or delay the spread of fire.
Regarding claim 6, although Kim is not explicit as to each of the glass fiber and the thermoplastic resin amounts to 40 wt% to 60 wt% of a total weight of the core layer, this feature would have been obvious in view of Solenicki.
Solenicki discloses a core layer used to make panels (e.g. ¶¶ [0009] – [0071]), wherein glass fiber amounts to 50 wt% to 80 wt% of a total weight of the core layer (e.g. ¶¶ [0010] – [0013], [0016], [0045]), and thermoplastic resin amounts to, e.g., 25 wt% or more of the core layer (e.g. ¶¶ [0010] – [0012], [0016], [0043]).
Solenicki discloses such amounts are advantageous for meeting structural requirements of mass transit vehicles (e.g. ¶¶ [0008], [0009], [0030], [0039]) but also recognizes equivalent efforts are made for an automobile (use understood from Solenicki’s background discussion: e.g. ¶¶ [0003] – [0008]) or other road applications such as buses (e.g. ¶ [0039]) which the examiner finds to be substantially similar to automobiles.
Accordingly, it would have been obvious for glass fiber to amount to 50 wt% to 80 wt% of a total weight of Kim’s core layer and thermoplastic resin to amount to, e.g., 25 wt% or more of Kim’s core layer as Solenicki suggests, the motivation being to meet structural requirements in the intended use.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kim as applied to claim 1 above, and further in view of Solenicki and Rose (US 2002/0056713 A1).
Regarding claim 5, although Kim is not explicit as to the core layer being configured to expand by 200% or more in a thickness direction of the sandwich panel upon ignition, this feature would have been obvious in view of Solenicki.
Solenicki discloses a core layer used to make panels (e.g. ¶¶ [0009] – [0071]), wherein the core layer is configured to be converted into a non-combustible layer based on the thermoplastic resin being carbonized upon ignition in order to inhibit or delay the spread of fire (“intumescent”: e.g. ¶ [0044]). From Rose, one of ordinary skill in the art would have understood an intumescent material is one which expands in a thickness direction when exposed to elevated temperature (e.g. ¶ [0018]). Given the function of the intumescent material, one of ordinary skill in the art would have been able to determine a suitable expansion rate, e.g. by adjusting the compositions Solenicki discloses (e.g. ¶ [0044]) which provides the requisite minimum inhibition or delay of fire spreading
Solenicki relates to uses with mass transit vehicles (e.g. ¶¶ [0008], [0009], [0030], [0039]) but also recognizes equivalent efforts are made for an automobile (use understood from Solenicki’s background discussion: e.g. ¶¶ [0003] – [0008]) or other road applications such as buses (e.g. ¶ [0039]) which the examiner finds to be substantially similar to automobiles.
Accordingly, it would have been obvious to configure Kim’s core layer to be converted into a non-combustible layer based on the thermoplastic resin being carbonized upon ignition as Solenicki suggests, the motivation being to inhibit or delay the spread of fire.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05, II, A. Accordingly, it would have been obvious for the core layer to be configured to expand by 200% or more in a thickness direction of the sandwich panel upon ignition in order to meet design requirements for inhibiting or delaying fire spread.
Claims 7, 8, 10, and 12 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over Kim as applied to claim 1 above. The rejection of claim 14 further relies on Branagan (US 2011/0108166 A1) as an evidentiary disclosure.
Regarding claim 7, in addition to the limitations of claim 1, Kim discloses a weight per unit area of the core layer is 0.05 kg/m2 to 8 kg/m2
More specifically, Kim discloses the “core layer” has a thickness of 0.1 to 10 mm (e.g. ¶¶ [0026], [0098], [0102]) at a density of 0.5 to 0.8 g/cm3 (e.g. ¶¶ [0012], [0033], [0045], [0047], [0057], [0066]).
Accordingly, the minimum weight is
0.5
g
c
m
3
0.1
m
m
1
k
g
10
3
g
1
m
10
3
m
m
100
3
c
m
3
1
3
m
3
=
0.05
k
g
m
2
using minimum values for density and thickness as the basis for this calculation. A similar calculation can be performed using maximum values for density and thickness to arrive at the cited upper endpoint:
0.8
g
c
m
3
10
m
m
1
k
g
10
3
g
1
m
10
3
m
m
100
3
c
m
3
1
3
m
3
=
8
k
g
m
2
Kim’s weight per unit area of the core layer encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 8, in addition to the limitations of claim 1, Kim discloses a thickness of the core layer is 0.1 to 10 mm (e.g. ¶¶ [0026], [0098], [0102]), which encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 10, in addition to the limitations of claim 1, Kim discloses a thickness of the surface layer is 0.1 mm to 0.5 mm (e.g. ¶¶ [0026], [0104]), which overlaps 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). See MPEP § 2144.05, I.
Regarding claim 12, in addition to the limitations of claim 1, Kim discloses a thickness of the adhesive layer is 20 μm to 300 μm (e.g. ¶ [0111]), which encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 13, in addition to the limitations of claim 1, Kim discloses a thickness of the sandwich panel is 0.22 mm to 10.8 mm (0.1 to 10 mm for the “core layer”, 0.1 mm to 0.5 mm for the “skin layer”, and 20 µm to 300 µm for the “adhesive layer”: e.g. ¶¶ [0026], [0098], [0104], [0111]), which encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 14, in addition to the limitations of claim 1, Kim discloses a weight per unit area of the sandwich panel is, e.g., 0.3412 kg/m2 to 9.6545 kg/m2.
More specifically, Kim notes the “core layer” has a thickness of 0.1 to 10 mm at a density of 0.5 to 0.8 g/cm3, the “skin layer” has a thickness of 0.1 mm to 0.5 mm and uses aluminum, and the “adhesive layer” has a thickness of 20 µm to 300 µm at a density of 0.910 to 0.965 g/cm3 (e.g. ¶¶ [0012], [0026], [0027], [0033], [0045], [0057], [0066], [0098], [0103], [0104], [0109], [0111], [0134], [0137]). As the aluminum, Kim gives an example of using Al 3003 (e.g. ¶¶ [0134], [0137]), which Branagan notes has a density of 2.73 g/cm3 (e.g. Table 9).
Accordingly, the minimum weight per unit area is
0.5
g
c
m
3
0.1
m
m
1
k
g
10
3
g
1
m
10
3
m
m
100
3
c
m
3
1
3
m
3
+
2.73
g
c
m
3
0.1
m
m
1
k
g
10
3
g
1
m
10
3
m
m
100
3
c
m
3
1
3
m
3
+
0.910
g
c
m
3
20
μ
m
1
k
g
10
3
g
1
m
10
6
μ
m
100
3
c
m
3
1
3
m
3
=
0.05
k
g
m
2
+
0.273
k
g
m
2
+
0.0182
k
g
m
2
=
0.3412
k
g
m
2
using minimum values for density and thickness as the basis for this calculation. A similar calculation can be performed using maximum values for density and thickness to arrive at the cited upper endpoint:
0.8
g
c
m
3
10
m
m
1
k
g
10
3
g
1
m
10
3
m
m
100
3
c
m
3
1
3
m
3
+
2.73
g
c
m
3
0.5
m
m
1
k
g
10
3
g
1
m
10