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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 6-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Muraki et al. (US 2016/0372720 A1, “Muraki”).
With respect to claim 1, Muraki discloses a packaging material for a lithium battery (i.e., a power storage device) comprising a laminate having a substrate layer, a first adhesive layer, a metal foil layer, a corrosion prevention treatment layer, a second adhesive layer, and a sealant layer ([0018]). The metal foil corresponds to the claimed barrier layer. The first adhesive layer includes a polyurethane-based adhesive containing a main resin composed of a polyol and a curing agent composed of a bifunctional or higher (i.e., a polyfunctional) isocyanate compound ([0053]). While there may be no explicit disclosure from Muraki regarding wherein the adhesive layer containing the urethane compound, when a peak intensity of infrared absorption spectrum at 1,700-1,800 cm-1 measured using infrared spectroscopy is represented by A, and a peak intensity of infrared absorption spectrum at 1,600-1,660 cm-1 measured using infrared spectroscopy is represented by B, a value X = {B/(A+B)} × 100 satisfies the relationship 0.1 ≤ X ≤ 7.0, given that Muraki discloses an otherwise identical packaging material made from an otherwise identical adhesive layer made from an otherwise identical polyurethane as that presently claimed, it is clear the adhesive layer containing the urethane compound of Muraki would necessarily inherently possess these properties and thereby satisfy the claimed expression, absent evidence to the contrary.
In light of the overlap between the claimed packaging material and that taught by Muraki, it would have been obvious to one of ordinary skill in the art to use a packaging material that is both taught by Muraki and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 2, given that this claim further limits an optional embodiment, the claim is considered met by the prior art.
With respect to claims 3 and 7, Muraki discloses the polyol includes polypropylene glycol ([0060]), which has 2 hydroxyl groups. Muraki further discloses the use of a bifunctional or higher isocyanate ([0053], [0067]), which has at least 2 isocyanate groups. Therefore, a ratio Y = D/C, where D is the number of isocyanate groups in the multifunctional isocyanate and C is the number of hydroxyl groups in the polyol is at least 1 (2/2), which overlaps the presently claimed range of 5.0 < Y< 60. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to claims 4 and 8, the polyol includes polyester polyols and carbonate polyols which are carbonate diols ([0053], [0062]).
With respect to claims 6 and 10, while Muraki discloses the packaging material is for a lithium battery ([0018]), there is no disclosure from Muraki regarding the packaging material being “for use in a solid-state battery”. However, the recitation in the claims that the packaging material is “for use in a solid-state battery” is merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Muraki discloses a packaging material as presently claimed, it is clear that the packaging material of Muraki would be capable of performing the intended use (i.e., being for use with a solid-state battery) presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claims 5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Muraki et al. (US 2016/0372720 A1, “Muraki”) as applied to claims 1-2 above, and further in view of Fukase et al. (US 2018/0162100 A1, “Fukase”).
With respect to claims 5 and 9, Muraki does not disclose the polyfunctional isocyanate compound is at least one material selected from the group consisting of multimers of alicyclic polyfunctional isocyanates and multimers of polyfunctional isocyanate compounds with aromatic rings.
Fukase teaches an adhesive made by reacting a polyol and a multimer of polyisocyanate ([0034]). The multimer of polyisocyanate includes alicyclic diisocyanates and aromatic diisocyanates ([0075]). The multimer of polyisocyanate produces an adhesive excellent in heat resistance and electrolytic solution resistance ([0074]).
Muraki and Fukase are analogous inventions in the field of packaging materials for batteries including a metal foil layer, a polyurethane adhesive layer, and a resin layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the bifunctional or higher polyisocyanate of Muraki to be the multimer of polyisocyanate including alicyclic diisocyanate and aromatic diisocyanates as taught by Fukase in order to provide an adhesive that is excellent in heat resistance and electrolytic solution resistance (Fukase, [0074]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571) 272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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