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 .
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.
Specification
The use of the term Nomex®, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 contains the trademark/trade name Nomex®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the mineral yarn filament and, accordingly, the identification/description is indefinite.
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.
Claim(s) 1-3, 5-7, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukuyama et al (US 2023/0018024 A1, cited in IDS filed 2/08/24).
Regarding claim 1, Fukuyama et al teaches a flexible thermal insulator for an electric vehicle battery pack (abstract, fig 4, thermal insulator 10), comprising:
a fabric layer (fig 4, paragraph [0051], insulating fabric 20);
a flame resistant outer coating bonded to an outer side of the fabric layer (fig 4, paragraph [0051], silicone rubber layer 28 coated or otherwise bonded to side 24 of fabric 20, greatly enhancing the flame-resistant properties of the wall); and
a pressure-sensitive adhesive layer bonded to an inner side of the fabric layer (fig 4, paragraph [0051], pressure sensitive adhesive layer 26 bonded to side 22 of fabric 20), wherein the fabric layer is sandwiched between the flame-resistant outer coating and the pressure-sensitive adhesive layer (fig 4, note fabric 20 is sandwiched between rubber layer 28 and adhesive layer 26).
Regarding claims 2-3, Fukuyama et al teaches wherein the fabric layer includes woven mineral yarns, wherein the mineral yarns include silica multifilaments (paragraph [0051], tightly interlaced silica multifilament yarns 28).
Regarding claim 5, Fukuyama et al teaches further including a release layer (fig 4, paragraph [0053], release film 34 fixed to pressure sensitive adhesive layer 26) releasably bonded to the pressure-sensitive adhesive layer for removal to expose the pressure-sensitive adhesive layer for adhesion to a surface of the electric vehicle battery pack.
Regarding claims 6-7, Fukuyama et al teaches wherein the pressure-sensitive adhesive is an acrylic adhesive (paragraph [0054], acrylic pressure sensitive adhesive).
Note that although Fukuyama et al is quiet as to whether the pressure sensitive adhesive is fire-resistant, Fukuyama et al teaches of the same adhesive as claimed (acrylic), and thus the claims properties are presumed to be inherent, such as being fire-resistant. See MPEP 2112.01(I), Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 15, Fukuyama et al teaches an electric vehicle battery pack (abstract, paragraph [0050], battery pack 12), comprising:
a housing (paragraph [0031], paragraph [0050], housing 14);
a plurality of cells bounded by said housing (paragraph [0031], paragraph [0050], housing 14 bounding a plurality of cells 16); and
a flexible thermal insulator fixed to at least one surface of the housing (figs 2A-4, paragraph [0050-0051], thermal insulator 10, paragraph [0030], flexible), the flexible thermal insulator having:
a fabric layer (fig 4, paragraph [0051], insulating fabric 20);
a flame resistant outer coating bonded to an outer side of the fabric layer (fig 4, paragraph [0051], silicone rubber layer 28 coated or otherwise bonded to side 24 of fabric 20, greatly enhancing the flame-resistant properties of the wall); and
a pressure-sensitive adhesive layer bonded to an inner side of the fabric layer (fig 4, paragraph [0051], pressure sensitive adhesive layer 26 bonded to side 22 of fabric 20), wherein the fabric layer is sandwiched between the flame-resistant outer coating and the pressure-sensitive adhesive layer (fig 4, note fabric 20 is sandwiched between rubber layer 28 and adhesive layer 26).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukuyama et al in view of Romanko et al (US 2025/0096367).
Regarding claims 4 and 20, the combination is quiet to the fabric having a fabric weight between about 30 oz/sq-yd to 40 oz/sq-yd (note that 30 oz/sq-yd to 40 oz/sq-yd is approximately 1017 to 1356 g/m2).
Fukuyama et al teaches that the multifilament yarns are preferably woven using a tight plain weave pattern for maximum density (paragraph [0051]).
Romanko et al teaches a barrier article that is flexible and can provide thermal insulation to a rechargeable electrical energy storage system (abstract), including a plurality of core layers of a woven or nonwoven fiber mat, and a plurality of binder layers such as a silicone material (abstract). Romanko et al teaches the core layer may have a weight of 35 to 1500 g/m2 (paragraph [0043]) and can have a typical weave pattern including a plain weave (paragraph [0043]). Romanko et al shows examples of an E-glass cloth layer, where an increased thickness corresponds to an increased weight (see Table 1, E-glass), and that examples where the thicker e-glass cloth was used, the examples survived a larger number of blasts (paragraph [0156-0157], note examples 13 and 14 compared to others).
It would have been obvious to one of ordinary skill in the art to modify the combination such that the fabric of Fukuyama et al has a fabric weight falling within the claimed range, as Fukuyama et al suggests maximizing density (Fukuyama, paragraph [0015]) and Romanko et al teaches a weight range of a woven layer encompassing the claimed range (Romanko, paragraph [0043]), where an increased thickness and increased weight can survive a higher number of blasts (see examples 13 and 14, paragraph [0007], [0156-0157]).
"[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 MPEP 2144.05(II)(A).
Claim(s) 8-9, 12-13, and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukuyama et al in view of Liu et al (CN 110641101 A).
Regarding claims 8 and 16, Fukuyama et al teaches wherein the flame resistant outer coating is a silicone rubber layer that protects against the ingress of contamination while greatly enhancing the flame-resistant properties of the wall (paragraph [0051]), but is quiet to a compound including liquid silicone rubber (LSR) infused with a fire-resistant material.
Liu et al teaches a thermal insulation composite material for delaying heat diffusion in electric vehicle batteries (paragraph [0007]), the thermal insulation composite material comprising a silicone rubber layer (paragraph [0010]) and inorganic fiber layer (paragraph [0011]) such as a mineral fiber (paragraph [0029]). The thickness of the silicone rubber layer is in the range of 0.2 mm to 5 mm (paragraph [0012]), obtained by curing 35-70% by weight of a silicone oil (paragraph [0014]) and 10-50% by weight of a flame retardant (paragraph [0016]).
It would have been obvious to one of ordinary skill in the art to modify the silicone rubber layer of Fukuyama et al to be a liquid silicone rubber infused with a fire-resistant material, as Liu et al teaches a similar thermal insulation for use in electric vehicle batteries (paragraph [0007]) where flame retardants can be added to a crosslinkable silicone oil that is cured (paragraph [0047-0052]), in order to provide a flame retardant effect (paragraph [0054]), and that the insulating composite is flexible, not easily damaged, has good heat insulation performance, and can reduce the occurrence of battery thermal runaway (paragraph [0038]).
Regarding claim 9, the combination teaches wherein the compound includes 10-50% by weight of a flame retardant material (Liu et al, paragraph [0047-0052]), thereby overlapping the claimed range of between about 5 to 30% by mass of the fire-resistant material.
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 claims 12 and 17, the combination teaches wherein the flame resistant outer coating is cured (note combination, Liu et al teaches curing, paragraph [0047]).
Regarding claim 13, the combination teaches wherein the flame resistant outer coating has a thickness 0.2 mm to 5 mm (Liu et al, paragraph [0046]), thereby encompassing the claimed range of between about 0.5 mm to 1.0 mm.
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). "[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 also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005). See MPEP 2144.05(I).
Furthermore, Liu et al teaches by controlling the thickness of the silicone rubber layer to be within the range, sufficient heat insulation can be maintained without significantly increasing the size of the silicone rubber layer (paragraph [0046]).
It would have been obvious to one of ordinary skill in the art to optimize the thickness of the silicone rubber layer to be within the claimed range, for providing sufficient heat insulation without significantly increasing the size (Liu, paragraph [0046]). MPEP 2144.05(II), "[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).
Claim(s) 10-11 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukuyama as modified by Liu et al as applied to claims 9 and 17 above, and further in view of Li (CN 104212175 A, cited in IDS filed 6/13/24).
Regarding claims 10 and 18, the combination of Fukuyama as modified by Li teaches a silicone rubber including a fire-resistant material, but is quiet to the fire-resistant material being a powdered mica.
Li teaches a fire-resistant silicone rubber (paragraph [0002]) that includes a modified mica (paragraph [0006]) to significantly improve mechanical strength, fire resistance, and insulation properties (paragraph [0006]). The modified mica is prepared by mixing and pulverizing mica, calcium boroborate and boehmite into a fine powder (paragraph [0010]).
It would have been obvious to one of ordinary skill in the art to substitute the flame retardant of the combination with a modified mica as taught in Li, as Li teaches the modified mica has good compatibility with silicone rubber, has stable fire resistance, high insulation performance, good mechanical properties, and at the same time, has excellent flame retardancy, self-extinguishing properties, ozone resistance and atmospheric aging resistance, and high safety performance (paragraph [0012]).
Regarding claim 11, the combination teaches wherein the compound includes 10-50% by weight of a flame retardant material (Liu et al, paragraph [0047-0052]), thereby encompassing the claimed range of about 15% by mass of the powdered mica.
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). "[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 also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005). See MPEP 2144.05(I).
Furthermore, it would have been obvious to one of ordinary skill in the art to optimize the amount of the flame retardant in the silicone rubber, in order to obtain a composition that is flexible, not easily damaged, and still has good heat insulation performance (paragraph [0038]).
See MPEP 2144.05(II), "[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).
Regarding claim 19, the combination teaches wherein the compound includes between about 5 to 30% by mass of the powdered mica (note combination, Li teaches in paragraphs [0006] and [0012] a modified mica as a flame retardant, Liu et al teaches in paragraph [0047-0052] 10-50% by weight of a flame retardant, thus overlapping 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).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukuyama et al (US 2023/0018024 A1, cited in IDS filed 2/08/24).
Regarding claim 14, Fukuyama teaches wherein the flexible thermal insulator has a maximum thickness of 2 mm (paragraph [0058]), encompassing the claimed range of a thickness between about 1.0 mm to 2.0 mm.
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). "[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 also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005). See MPEP 2144.05(I).
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 1-3, 5-7, 12, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-12, and 14-20 of copending Application No. 17/866,316 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application anticipate and/or render obvious the claims of the instant application.
Regarding claims 1-3 and 15, the copending application teaches a flexible thermal insulator for an electric vehicle battery (claims 1 and 11) that consists of a flame-resistant material (claims 1 and 11) that may be a silica fabric woven sheet woven from silica multifilament yarns (claims 19-20), a silicone rubber layer (claim 1 and 11), and a pressure sensitive adhesive layer (claims 1 and 11). Regarding claims 5-7, the copending application teaches a release film (claim 1) and that the pressure-sensitive adhesive is an acrylic (claims 4 and 14). Regarding claim 12, the copending application teaches the outer layer is a silicone rubber (claims 1 and 11), thus suggesting the layer was cured. Regarding claim 14, the copending application teaches a maximum thickness of 2mm (claims 8 and 17).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 8-12, and 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/898,496 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application anticipate and/or render obvious the claims of the instant application.
Regarding claims 1-3 and 15, the copending application teaches a flexible insulator for an electric vehicle battery (claims 1 and 11) that includes a plurality of layers including a mineral material (claims 1 and 11) that may be interlaced mineral yarns of silica or fiberglass (claims 5-7), a silicone rubber layer (claim 1 and 11), and a pressure sensitive adhesive layer (claims 1 and 11). Regarding claims 8-12 and 16-19, the copending application teaches the outer layer is a silicone rubber (claims 1 and 11), thus suggesting the layer was cured, and that the silicone rubber includes mica in a range of 1-35% (claims 10 and 17).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/812,986 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application anticipate and/or render obvious the claims of the instant application.
Regarding claims 1-3 and 15, the copending application teaches a flexible insulator for an electric vehicle battery (claim 1) that includes a plurality of layers including an interlaced mineral material (claim 1) that may be woven silica or fiberglass yarn (claims 3-5), a flame resistant coating (claim 1), and a pressure sensitive adhesive layer (claim 1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/712,702 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application anticipate and/or render obvious the claims of the instant application.
Regarding claims 1-3 and 5, the copending application teaches a cover that includes a fabric layer (claims 1 and 11) that may be interlaced multifilament mineral yarns of silica, fiberglass, or basalt (claims 2-4), an impervious layer that may be silicone based (claim 1 and 7), and a pressure sensitive adhesive layer (claim 1). Regarding claim 5, the copending application teaches a release layer (claim 12).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACKY YUEN whose telephone number is (571)270-5749. The examiner can normally be reached 9:30 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACKY YUEN/
Examiner
Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
Prosecution Insights