RESPONSE TO AMENDMENT
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 .
Amendments to the specification and the claims, filed 17 April 2026, have been entered in the above-identified application.
Claims 1, 3-9 remain pending in the application
Claim 10 is newly added in the application
Claim 2 is cancelled in the application
Withdrawn Objections/Rejections
The objection to the claims, made of record in the office action mailed on 4 February 2026, page 5, has been withdrawn due to Applicant’s amendment in the response 17 April 2026.
The 35 U.S.C. §112b rejections of claims 1-9 made of record in the office action mailed on 4 February 2026, page 5-6, have been withdrawn due to Applicant’s amendment in the response filed 17 April 2026.
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/304,365 (reference application, henceforth referred to as ‘365) in view of Lee et. al. (Korean Patent Application Publication No. 2009/0020888).
This is a provisional nonstatutory double patenting rejection.
Regarding Applicant’s claims 1 and 10, ‘365 claims a secondary battery comprising an electrode assembly. ‘365 also claims a pouch including an upper sheet (cover portion) and a lower sheet (case body portion) accommodating the electrode assembly wherein the pouch is formed with a sealing portion sealing the upper sheet and the lower sheet on an outer portion. The sealing portion includes a polymer compound layer between the top sheet and the bottom sheet in at least a portion, and the polymer compound layer includes a polymer compound (claim 1). The polymer compound is a thermally expandable polymer compound of a composite of polyurethane and silica (claim 2) ; or at least one heat-shrinkable polymer compound selected from the group comprising polyphenylene ether (PPE), polycarbonate (PC), polyoxymethylene (POM) and polyamide (PA) (claim 1).
‘365 does not claim the polymer compound layer is configured to shrink or expand by heat generated inside the secondary battery to reduce an adhesive strength of the sealing portion, nor a reduction in the adhesive strength of the sealing portion causes a flow path to be formed for discharging gas or an electrolyte contained within the secondary battery.
Lee teaches a battery (electrochemical device) and a case for the battery with improved stability even in case of the abnormal increase of internal temperature (abstract). The pouch case is a plurality of layers, in which one of the layers is a thermally expanding polymer compound (foaming agent within a binder polymer) (page 5 lines 5-15, and fig. 2 ref. #5) which can be selected from a group of polymers including polyurethane (page 10 lines 16-20). The thermally expanding polymer layer is configured to expand by heat generated inside the secondary battery to reduce an adhesive strength of the sealing portion (as the polymer compound layer expands, the adhesive strength in the sealing portion will decrease, resulting in the sealing portion opening) (page 6, paragraph 2, lines 10-14). The reduction in the adhesive strength of the sealing portion causes a flow path to be formed for discharging gas or an electrolyte contained within the secondary battery (as venting of the internal pressure occurs, a flow path must be formed for the internal pressure to leave the battery).
It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to include the expanding polyurethane layer of Lee in the laminated pouch case of Tanaka. One of ordinary skill in the art would have been motivated to make this inclusion as the expanding polymer layer allows for increased safety of the battery by allowing for venting of the battery at increased temperature and a decreased concentration of oxygen, in turn suppressing explosion and ignition risk (page 4 line 14 to page 5 line 2).
Regarding Applicant’s claim 3 and 4, ‘365 further claims the polymer compound layer being formed on a portion or an entirety of a width of the sealing portion, and the polymer compound layer being formed on the sealing portion of a surface from which the electrode lead is drawn out (claim 3).
Regarding Applicant’s claim 5, ‘365 further claims the polymer compound layer having a thickness of 3 to 25 µm (claim 5).
Regarding Applicant’s claim 6, ‘365 further claims the polymer compound layer including a thermally expandable polymer compound, and has a volume at a temperature of 80 °C or higher, which is 30 to 4,000 times a volume at room temperature (claim 7).
Regarding Applicant’s claim 7, ‘365 further claims the polymer compound layer includes a heat-shrinkable polymer compound, and has a volume at 80 °C or higher, which is 0.02 to 0.9 times a volume at room temperature (claim 8).
Regarding Applicant’s claim 8, ‘365 further claims the polymer compound being in a form of a bead, a pillar, a flake, or powder (claim 9).
Regarding Applicant’s claim 9, ‘365 further claims the polymer compound comprising expanded graphite filled inside of the polymer compound (claim 10).
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 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, 3-4, 6, and 10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Tanaka et. al. (WIPO Patent Application Publication No. 2018/186463) as evidenced by Tujimoto et. al. (WIPO Patent Application Publication No. 2019/111888). For prior art discussion see English translations for WO-2018186463-A1 and WO-2019111888-A1.
Regarding claims 1, 3 and 4, Tanaka teaches a film-like packaging material and a battery made using the film-like packaging material ([0135]). The battery is a secondary battery ([0136]), which includes an electrode assembly ([0135]) which is accommodated in a pouch including an upper sheet and a lower sheet ([0135], and fig. 2 ref. #3, upper and lower sections).
The pouch is formed with a sealing portion (flange portion) sealing the upper sheet and the lower sheet on an outer portion ([0135], and fig. 2 ref. #3a). The sealing portion includes a polymer compound layer between the top sheet and the bottom sheet in at least a portion, and the polymer compound layer includes a polymer compound ([0135], and fig. 2 ref. #1). The polymer compound layer is formed on a portion of the width of the sealing portion. The sealing portion is on a surface from which the electrode lead is drawn out (fig. 2 ref. #1 and #2).
The polymer compound is selected from a group of polymer compounds, including both polyamide and polycarbonate ([0059]). The polyamide or polycarbonate may be made of a uniaxially or biaxially stretched resin film ([0063]).
Tanaka does not explicitly teach that the polyamide or polycarbonate uniaxially or biaxially stretched resin film is heat shrinkable, nor the polymer compound layer being configured to shrink or expand by heat generated inside the secondary battery to reduce an adhesive strength of the sealing portion.
As evidenced by Tujimoto, a general means for imparting heat shrinkability to a thermoplastic resin film is by a stretching treatment such as uniaxial stretching or biaxial stretching. By changing the settings of the stretching conditions, it is possible to increase or decrease the heat shrinkage rate of the stretched resin film ([0005]). Therefore, the uniaxially stretched or biaxially stretched polyamide or polycarbonate resin of Tanaka is deemed to be heat shrinkable.
Tanaka does not explicitly teach the polymer compound layer is configured to shrink or expand by heat generated inside the secondary battery to reduce an adhesive strength of the sealing portion, however, it is reasonable to presume that said limitations are inherent to the invention. Support for said presumption is found in the use of similar materials (heat shrinkable polyamide or polycarbonate) used to produce the heat shrinkable polymer layer. The burden is upon the Applicant to prove otherwise. MPEP 2112.III
Regarding claim 6, the claimed limitations only further limit the optional thermally expandable polymer compound and do not require the thermally expandable polymer compound to be present. Therefore, since Tanaka discloses the heat-shrinkable compound it also anticipates claim 6.
Regarding claim 10, Tanaka does not explicitly teach a reduction in the adhesive strength of the sealing portion causes a flow path to be formed for discharging gas or an electrolyte contained within the secondary battery, however, it is reasonable to presume that said limitations are inherent to the invention. Support for said presumption is found in the use of similar materials (heat shrinkable polyamide or polycarbonate) used to produce the heat shrinkable polymer layer. The burden is upon the Applicant to prove otherwise. MPEP 2112.III
Claim Rejections - 35 USC § 102/103
Claims 5 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tanaka et. al. (WIPO Patent Application Publication No. 2018/186463) as evidenced by Tujimoto (WIPO Patent Application Publication No. 2019/111888). For prior art discussion see English translations for WO-2018186463-A1.
Tanaka is relied upon as described above.
Tanaka also teaches the width of the polymer compound as being between 5 to 100 µm ([0070]), which overlaps with Applicant’s claimed range of 3 to 25 µm. When there is sufficient overlap and specificity of the prior art range, then the claimed range is anticipated by the prior art (MPEP 2131.03).
In the alternative, the claims are further rejected under 35 U.S.C. 103 as obvious over Tanaka because of the overlap of the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et. al. (WIPO Patent Application Publication No. 2018/186463) as evidenced by Tujimoto et. al. (WIPO Patent Application Publication No. 2019/111888), in view of Kim et. al. (Korean Patent Application Publication No. 2012/0052056). For prior art discussion see English translations for WO-2018186463-A1, WO-2019111888-A1, and KR-20120052056-A.
Tanaka is relied upon as described above
Tanaka does not explicitly teach that the polymer compound layer includes a heat-shrinkable polymer compound that has a volume at 80 °C or higher which is 0.02 to 0.9 times a volume at room temperature.
Kim teaches an environment friendly heat shrinkable film (title). The heat shrinkable film contains a carbonate polymer ([0014]). The heat shrinkable film has a volume at a temperature above 80 °C (90 °C) which is 0.02 to 0.9 times the volume at room temperature (30% reduction, or 0.7) ([0014]). In the case where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to modify Tanaka by using the heat shrinkable polymer of Kim. One of ordinary skill in the art would have been motivated to make this modification to as the heat shrinkable polymer of Kim has excellent heat shrinkability, shrinkage stress, coefficient of friction, and heat resistance (Kim, [0034]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et. al. (WIPO Patent Application Publication No. 2018/186463) as evidenced by Tujimoto et. al. (WIPO Patent Application Publication No. 2019/111888) in view of Takahagi et. al. (Chinese Patent Application Publication No. 105794012). For prior art discussion see English translations for WO-2018186463-A1, WO-2019111888-A1, and CN-105794012-A.
Tanaka is relied upon as described above.
Tanaka does not explicitly teach the polymer compound being in a form of a bead, a pillar, a flake, or powder.
Takahagi teaches a battery packaging material comprising a film-like laminate comprising at least a substrate layer, an adhesive layer, a metal layer and a sealing layer stacked sequentially (abstract). Takahagi also teaches using a polyamide in the form of a bead or powder (granule) to form a resin layer ([0139]).
It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to use a polyamide in bead or powder form. One of ordinary skill in the art would have been motivated to do this as it allows for the laminated battery packaging material to be formed by heating and melting the polyamide bead or powder and co-extruding it with other layers of the laminate (Takahagi, [0139]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et. al. (WIPO Patent Application Publication No. 2018/186463) as evidenced by Tujimoto et. al. (WIPO Patent Application Publication No. 2019/111888) in view of Bem et. al. (WIPO Application Publication No. 2021/1233838). For prior art discussion see English translations for WO-2018186463-A1 and WO-2019111888-A1.
Tanaka is relied upon as described above.
Tanaka does not explicitly teach the polymer compound comprising expanded graphite filled inside of the polymer compound.
Bem teaches a laminated metal polymer structure for use in batteries (abstract). The polymer layer in the metal polymer laminated structure can be made of polyamide (page 6, lines 33-35) and contains expanded graphite (page 3, lines 19-26).
It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to modify Tanaka with the inclusion of expanded graphite in the polymer layer. One of ordinary skill in the art would have been motivated to make this modification as to reduce heat transmission through the polymer layer (Bem, page 15, lines 15-19).
Claims 1-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et. al. (WIPO Patent Application Publication No. 2018/186463) as evidenced by Tujimoto et. al. (WIPO Patent Application Publication No. 2019/111888) in view of Lee et. al. (Korean Patent Application Publication No. 2009/0020888) and Hiroshima et. al. (Japanese Patent Application Publication No. 2021/099915). For prior art discussion see English translations for WO-2018186463-A1, WO-2019111888-A1, KR-20090020888-A, and JP-2021099915-A.
Regarding claims 1-4, Tanaka teaches a film-like packaging material and a battery made using the film-like packaging material ([0135]). The battery is a secondary battery ([0136]), which includes an electrode assembly ([0135]) which is accommodated in a pouch including an upper sheet and a lower sheet ([0135], and fig. 2 ref. #3, upper and lower sections).
The pouch is formed with a sealing portion (flange portion) sealing the upper sheet and the lower sheet on an outer portion ([0135], and fig. 2 ref. #3a). The sealing portion includes a polymer compound layer between the top sheet and the bottom sheet in at least a portion, and the polymer compound layer includes a polymer compound ([0135], and fig. 2 ref. #1). The polymer compound layer is formed on a portion of the width of the sealing portion. The sealing portion is on a surface from which the electrode lead is drawn out (fig. 2 ref. #1 and #2).
The polymer compound is selected from a group of polymer compounds, including both polyamide and polycarbonate ([0059]). The polyamide or polycarbonate may be made of a uniaxially or biaxially stretched resin film ([0063]).
Tanaka does not explicitly teach that the polyamide or polycarbonate uniaxially or biaxially stretched resin film is heat shrinkable.
As evidenced by Tujimoto, a general means for imparting heat shrinkability to a thermoplastic resin film is by a stretching treatment such as uniaxial stretching or biaxial stretching. By changing the settings of the stretching conditions, it is possible to increase or decrease the heat shrinkage rate of the stretched resin film ([0005]). Therefore, the uniaxially stretched or biaxially stretched polyamide or polycarbonate resin of Tanaka is deemed to be heat shrinkable.
Tanaka also does not explicitly teach the polymer compound being a thermally expandable polymer compound of a composite of a polyurethane, the polymer compound layer being configured to shrink or expand by heat generated inside the secondary battery to reduce an adhesive strength of the sealing portion, nor a reduction in the adhesive strength of the sealing portion causes a flow path to be formed for discharging gas or an electrolyte contained within the secondary battery.
Lee teaches a battery (electrochemical device) and a case for the battery with improved stability even in case of the abnormal increase of internal temperature (abstract). The pouch case is a plurality of layers, in which one of the layers is a thermally expanding polymer compound (foaming agent within a binder polymer) (page 5 lines 5-15, and fig. 2 ref. #5) which can be selected from a group of polymers including polyurethane (page 10 lines 16-20). The thermally expanding polymer layer is configured to expand by heat generated inside the secondary battery to reduce an adhesive strength of the sealing portion (as the polymer compound layer expands, the adhesive strength in the sealing portion will decrease, resulting in the sealing portion opening) (page 6, paragraph 2, lines 10-14). The reduction in the adhesive strength of the sealing portion causes a flow path to be formed for discharging gas or an electrolyte contained within the secondary battery (as venting of the internal pressure occurs, a flow path must be formed for the internal pressure to leave the battery).
It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to include the expanding polyurethane layer of Lee in the laminated pouch case of Tanaka. One of ordinary skill in the art would have been motivated to make this inclusion as the expanding polymer layer allows for increased safety of the battery by allowing for venting of the battery at increased temperature and a decreased concentration of oxygen, in turn suppressing explosion and ignition risk (page 4 line 14 to page 5 line 2).
Tanaka in view of Lee does not teach the polymer compound being a thermally expandable polymer compound of polyurethane and silica.
Hiroshima teaches a packaging material for a battery (electronic storage device). The packaging material is a laminated sheet containing several layers, one of which being a polymer compound layer that is a composite of a polyurethane ([0017]) and silica ([0045]).
It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to modify the polymer layer of Lee with the addition of silica as taught in Hiroshima. One of ordinary skill in the art would have been motivated to make this inclusion as silica dispersed within the polymer layer will increase mechanical strength.
Regarding claim 5, Tanaka also teaches the width of the polymer compound as being between 5 to 100 µm ([0070]), which overlaps with Applicant’s claimed range of 3 to 25 µm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
Regarding claim 6, Tanaka, Lee, and Hiroshima do not explicitly teach the polymer compound having a volume at a temperature of 80 °C or higher, which is 30 to 4,000 times a volume at room temperature, however it is reasonable to presume that said limitations are inherent to the invention. Support for said presumption is found in the use of similar materials (i.e. polyurethane and silica) used to produce the polymer compound layer. The burden is upon the Applicant to prove otherwise. MPEP 2112.III
Claims 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et. al. (WIPO Patent Application Publication No. 2018/186463) as evidenced by Tujimoto et. al. (WIPO Patent Application Publication No. 2019/111888) in view of Lee et. al. (Korean Patent Application Publication No. 2009/0020888) and Hiroshima et. al. (Japanese Patent Application Publication No. 2021/099915), further in view of Kim et. al. (Korean Patent Application Publication No. 2012/0052056). For prior art discussion see English translations for WO-2018186463-A1, WO-2019111888-A1, KR-20090020888-A, and JP-2021099915-A, and KR-20120052056-A.
Tanaka, Tujimoto, Lee, and Hiroshima are relied upon as described above
Tanaka does not explicitly teach that the polymer compound layer includes a heat-shrinkable polymer compound that has a volume at 80 °C or higher which is 0.02 to 0.9 times a volume at room temperature.
Kim teaches an environment friendly heat shrinkable film (title). The heat shrinkable film contains a carbonate polymer ([0014]). The heat shrinkable film has a volume at a temperature above 80 °C (90 °C) which is 0.02 to 0.9 times the volume at room temperature (30% reduction, or 0.7) ([0014]). In the case where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to modify Tanaka by using the heat shrinkable polymer of Kim. One of ordinary skill in the art would have been motivated to make this modification to as the heat shrinkable polymer of Kim has excellent heat shrinkability, shrinkage stress, coefficient of friction, and heat resistance (Kim, [0034]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et. al. (WIPO Patent Application Publication No. 2018/186463) as evidenced by Tujimoto et. al. (WIPO Patent Application Publication No. 2019/111888) in view of Lee et. al. (Korean Patent Application Publication No. 2009/0020888) and Hiroshima et. al. (Japanese Patent Application Publication No. 2021/099915), further in view of Takahagi (Chinese Patent Application Publication No. 105794012). For prior art discussion see English translations for WO-2018186463-A1, WO-2019111888-A1, KR-20090020888-A, and JP-2021099915-A, and CN-105794012-A.
Tanaka, Tujimoto, Lee, and Hiroshima are relied upon as described above.
Tanaka does not explicitly teach the polymer compound being in a form of a bead, a pillar, a flake, or powder.
Takahagi teaches a battery packaging material comprising a film-like laminate comprising at least a substrate layer, an adhesive layer, a metal layer and a sealing layer stacked sequentially (abstract). Takahagi also teaches using a polyamide in the form of a bead or powder (granule) to form a resin layer ([0139]).
It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to use a polyamide in bead or powder form. One of ordinary skill in the art would have been motivated to do this as it allows for the laminated battery packaging material to be formed by heating and melting the polyamide bead or powder and co-extruding it with other layers of the laminate (Takahagi, [0139]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et. al. (WIPO Patent Application Publication No. 2018/186463) as evidenced by Tujimoto et. al. (WIPO Patent Application Publication No. 2019/111888) in view of Lee et. al. (Korean Patent Application Publication No. 2009/0020888) and Hiroshima et. al. (Japanese Patent Application Publication No. 2021/099915), further in view of in view of Bem et. al. (WIPO Application Publication No. 2021/1233838). For prior art discussion see English translations for WO-2018186463-A1, WO-2019111888-A1, KR-20090020888-A, and JP-2021099915-A.
Tanaka, Tujimoto, Lee, and Hiroshima are relied upon as described above.
Tanaka does not explicitly teach the polymer compound comprising expanded graphite filled inside of the polymer compound.
Bem teaches a laminated metal polymer structure for use in batteries (abstract). The polymer layer in the metal polymer laminated structure can be made of polyamide (page 6, lines 33-35) and contains expanded graphite (page 3, lines 19-26).
It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to modify Tanaka with the inclusion of expanded graphite in the polymer layer. One of ordinary skill in the art would have been motivated to make this modification as to reduce heat transmission through the polymer layer (Bem, page 15, lines 15-19).
Response to Arguments
Applicant’s arguments in the response filed on 17 April 2026 regarding the objection to the specification/drawings of record have been considered but are moot since the objection has been withdrawn.
Applicant’s arguments in the response filed on 17 April 2026 regarding the 35 U.S.C. §112b rejections of record have been considered but are moot since the rejection has been withdrawn.
Applicant’s arguments filed 17 April 2026 regarding the 35 U.S.C. §102 and 35 U.S.C. §103 rejections of the claims have been fully considered but they are not persuasive.
Applicant argues, in the response filed 17 April 2026, page 15 lines 13-18, that the present invention has a fundamentally different objective from each of Tanaka and Hiroshima.
In response to applicant’s argument, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). While Tanaka and Hiroshima do not explicitly teach weakening the sealing strength by heat as claimed in the present application, it is reasonable to presume that said limitations are inherent to the invention of Tanaka and Hiroshima. Support for said presumption is found in the use of similar materials (i.e. heat shrinkable polyamide or polycarbonate) used to produce the heat shrinkable polymer layer. The burden is upon the Applicant to prove otherwise. (MPEP 2112.III)
Applicant further argues, in the response filed 17 April 2026, page 15 line 19 to page 16 line 17, that the present invention has a fundamentally different objective from each of Lee.
In response to applicant’s argument, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Furthermore, Lee teaches a thermally expanding polymer layer that is configured to expand by heat generated inside the secondary battery to reduce an adhesive strength of the sealing portion (as the polymer compound layer expands, the adhesive strength in the sealing portion will decrease, resulting in the sealing portion opening) (page 6, paragraph 2, lines 10-14). The reduction in the adhesive strength of the sealing portion causes a flow path to be formed for discharging gas or an electrolyte contained within the secondary battery (as venting of the internal pressure occurs, a flow path must be formed for the internal pressure to leave the battery).
Applicant further argues, in the response filed 17 April 2026, page 15 line 19 to page 16 line 4, that the venting mechanisms are fundamentally different between the present application and Lee, as the present invention weakens the sealing strength due to heat generated within the battery.
In response to applicant’s argument, the Examiner respectfully disagrees. Lee teaches the thermally expanding polymer layer is configured to expand by heat generated inside the secondary battery to reduce an adhesive strength of the sealing portion (as the polymer compound layer expands, the adhesive strength in the sealing portion will decrease, resulting in the sealing portion opening) (page 6, paragraph 2, lines 10-14). As the thermally expanding polymer layer is included in all parts of the battery outer shell (page 12, lines 1-5), the adhesive strength in the sealing portion will be reduced. Applicant’s arguments therefore are not persuasive and do not overcome the prima facie case of obviousness as set forth in the claim rejections above.
Applicant further argues, in the response filed 17 April 2026, page 16 lines 5-13, that Lee requires an increase in internal pressure while the instant application does not and that Lee results in a strong ejection of materials (e.g., gas, electrolyte) occurs upon opening and that the risk of battery explosion due to high internal pressure cannot be excluded.
In response to applicant’s arguments, the issues of Lee requiring an internal pressure increase and the ejection of materials are not commensurate to the scope of the claims, as there are no limitations in the claims related to these arguments. Furthermore, as the 35 U.S.C. §103 rejection of the claims made with Lee use the same materials as the present application (i.e. polyurethane and silica for the thermally expandable polymer layer) it would have the same structure, therefore there is no evidence that it would not have the same function.
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Myles Alan Lovasz whose telephone number is (571)272-0214. The examiner can normally be reached Monday-Friday 7:30 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at (571) 272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MAL/
Myles Alan LovaszExaminer, Art Unit 1788
5/19/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
Prosecution Insights