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 .
The amendment filed 10/2/2025 has been entered. Claim 3 has been canceled. Claims 1-2 and 4-22 are pending in the application. Claims 8-14 have been withdrawn from consideration. 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 Rejections - 35 USC § 103
Claims 1-2, 4-7, and 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over Park (US2018/0076493A1) taken alone as further discussed below with respect to the amended claims.
As discussed in the prior office action, Park teaches a battery module or battery pack (as in instant claims 4-5), particularly a battery for an electrical vehicle, and a vehicle such as an electrical vehicle comprising the battery (Entire document, particularly Abstract; Paragraphs 0004, 0038, and 0089; Claims 1 and 20; Figs. 4-8), wherein the battery module includes a module case (10) and a plurality of battery cells (20) accommodated in the module case (10) which comprises at least a sidewall (10b) and a lower plate (10c) that may be integrally formed with a guiding portion (10d); a resin layer (30), formed from a resin composition such as an adhesive material, in contact with the case (10) and all of the battery cells (20) and bonded thereto by curing of the resin composition (as in instant claims 15-22; Entire document, particularly Paragraphs 0008, 0016, 0025-0033, 0051, and 0077). Park teaches that the resin layer has a thermal conductivity of 1.5 W/mK or more (Paragraph 0035, Claim 6); a thickness of approximately 100 µm to 5 mm or 200 µm to 5 mm (Paragraphs 0032, 0120); and an insulation breakdown voltage of approximately 3 kV/mm or more, particularly 10 kV/mm or more, measured based on ASTM D149, with examples measured at approximately 2 mm (Paragraphs 0039 and 0120, and Claim 7), and “[a]lthough a higher value of the insulation breakdown voltage refers to the resin layer having excellent insulation properties, the insulation breakdown voltage is not specifically limited, and when formation and the like of the resin layer are considered, the insulation breakdown voltage may be approximately 50 kV/mm or less” (Paragraph 0039, reading upon the claimed thermal conductivity and dielectric breakdown of the claimed “adhesive” as recited in instant claims 1-2 given the thickness of the resin layer as taught by Park and the working examples). Park also teaches that the resin layer (30) may be in direct contact with the lower plate (10c) and/or guiding portion (10d) as shown in Fig. 7, or an insulating layer (40) may exist between the resin layer and the lower plate as shown in Fig. 8, wherein the insulating layer may be formed by coating with or injecting a material having insulation properties, such as a resin composition or adhesive material, and the “insulating layer may have an insulation breakdown voltage of approximately 5 kV/mm or more, approximately 10 kV/mm or more, approximately 15 kV/mm or more, 20 kV/mm or more, 25 kV/mm or more, or 30 kV/mm or more measured based on ASTM D149” and approximately 100 kV/mm or less (Paragraph 0063), reading upon the claimed dielectric strength of the “coating layer” as in instant claim 1 and the claimed “coating comprises a dielectric breakdown of at least 12 kV” as in instant claim 2 based upon the thickness of the insulating layer as taught by Park of approximately 1 mm or less and approximately 5 µm or more, approximately 10 µm or more, or 90 µm or more (Paragraph 0063); and may have a thermal conductivity within the claimed range of at least 0.3 W/mK with respect to the “coating layer” as in instant claim 1 (Paragraph 0025); and although Park does not specifically teach that the insulating layer as the claimed “coating layer” of instant claim 1 and/or “coating” of instant claim 2, “is deposited from a powder coating composition” (emphasis added) as in instant claim 1, the Examiner again takes the position that the claimed “deposited from a powder coating composition” is a process limitation in the product claims that does not differentiate the instantly claimed coating layer or coating from the insulating (coating) layer taught by Park. Additionally, given that Park does not limit the type of coating process or form of the material to be coated to produce the insulating layer as the claimed “coating layer”, and also teaches the use of a resin composition that may be a solvent free resin composition (Paragraphs 0071 and 0083), the Examiner again takes the position that “powder coating” is an obvious “coating” method in the art and/or a “powder” coating composition is an obvious form of a solvent free resin composition in the art and would have been obvious to one having ordinary skill in the art based upon the teachings of Park.
Further, with respect to the fillers and contents thereof as recited in amended claim 1, it is again noted that Park teaches that the resin composition for forming the resin layer that may be an adhesive layer (Paragraph 0025), reading upon the claimed “adhesive composition” for forming the claimed “adhesive”, comprises a thermally conductive filler in order to obtain the desired excellent thermal conductivity (Paragraphs 0035, 0039, 0041, 0053-0054) with working examples comprising alumina filler. More specifically, Park teaches that since it is difficult to obtain a target thermal conductivity only with a resin material, a filler having excellent thermal conductivity may be added to the resin layer at a suitable ratio (Paragraph 0035), wherein a ratio of the filler included in the resin layer may be selected to obtain the desired properties, for example, thermal conductivity and insulation properties in consideration of the properties of the resin layer, such as in a range of approximately 50 to 2,000 parts by weight with respect to the resin material of the resin layer of 100 parts by weight (Paragraph 0053-0054), with working examples utilizing various contents of alumina falling within the claimed 60-90% by weight range based on a total weight of the adhesive composition (Examples). Park also teaches that with respect to the insulating layer, which is equated by the Examiner to the claimed “coating layer”, a thermal interface material (TIM) may be applied to form the insulating layer, or alternatively, “the insulating layer may be formed of an adhesive material that, for example, may be formed by using a resin layer in which an amount of thermally conductive filler is small” (Paragraph 0063), and given that as noted above, Park teaches that the insulating layer may have an insulation breakdown voltage of approximately 5 kV/mm or more, or 30 kV/mm or more, and approximately 100 kV/mm or less (Paragraph 0063), which is generally higher than the insulation breakdown voltage of the resin layer (Paragraph 0039), thereby clearly teaching and/or suggesting a different composition thereof, particularly in light of the working examples, the only difference between the teachings of Park and the instantly claimed invention is that Park does not specifically teach a content of the filler in the insulating layer, as the claimed “coating layer”, of 30 percent to 90 percent by weight based on total weight of the coating composition as in instant claim 1. However, Park does broadly teach that an insulation breakdown voltage of a resin layer can be controlled by adjusting the insulation properties of the layer such as by the incorporation of an insulating filler into the layer, wherein a ceramic filler, such as particles of alumina or boron nitride, is generally known as a material that may provide insulation properties (Paragraphs 0039 and 0053), and given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize routine experimentation to determine the optimum filler content of a particular electrically insulative ceramic filler to incorporate into the insulating layer as taught by Park to provide the desired breakdown voltage for a particular end use, and/or to utilize an amount of filler that is similar to and/or “small” in comparison to the amount utilized in the resin layer, particularly in light of the working examples, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results with respect to the broad range of 30 percent to 90 percent by weight, the claimed invention as recited in instant claims 1-2, 4-6, and 15-22 would have been obvious over the teachings of Park, wherein it is again noted that the lower plate is equated to the claimed “substrate” of instant claim 1 as “part of an electrical storage device” of instant claim 4 and particularly an electrical storage device that “comprises a battery or battery component” of instant claim 5, the insulating layer deposited or coated on the lower plate is equated to the claimed “coating layer”, the resin layer formed on at least a portion of the insulating layer is equated to the claimed “adhesive”, and the battery cells and/or sidewalls are equated to the claimed “second substrate in contact with the adhesive” of instant claim 6.
With respect to instant claim 7, as discussed in the prior office action, Park teaches that in “[a] battery module, a thermal resistance of the resin layer or the battery module in which the resin layer is applied may be 5 K/W or less, 4.5 K/W or less, 4 K/W or less, 3.5 K/W or less, 3 K/W or less, or approximately 2.8 K/W or less” in order to provide excellent cooling efficiency or heat dissipation efficiency, wherein the thermal resistance may be measured based on ASTM D5470 (Paragraph 0036), and given that Park specifically teaches examples having a thermal resistance of 2 K/W or less (i.e. no more than 2 °C/W) using a TIM thermal resistance tester, the claimed invention as recited in instant claim 7 would have been obvious over the teachings of Park (Examples, particularly Paragraphs 0126 and 0132, Table 1).
Claims 1-2, 4-7, and 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over Park (US2018/0076493A1), as applied above, and in further view of Esler (US2022/0070996A1) or Liu (US2017/0158932A1) or Lee (US2025/0014965A1).
The teachings of Park are discussed in detail above and although Park does not specifically teach an amount of electrically insulative filler of 30 to 90 percent by weight as instantly claimed in the insulating layer (reading upon the claimed “coating layer”), that as taught by Park can be formed by coating a material having insulation properties such as a so-called thermal interface material (TIM) or adhesive material formed from a resin layer containing filler as discussed above, it is further noted that in addition to the teachings and/or suggestions as discussed in detail above, it is well established in the art that thermal interface materials can be thermally conductive, electrically insulative resin compositions comprising thermally conductive, electrically insulating fillers such as alumina or boron nitride (e.g., as in Park) in contents as instantly claimed as evidenced by Esler or Liu or Lee. More particularly, Esler teaches a power overlay module comprising thermal interface layers comprising thermally conductive ceramic fillers or particles, such as alumina and/or boron nitride, suspended in a polymer matrix, such as an epoxy or silicone resin (e.g., as in Park, see Paragraph 0063) wherein the thermally conductive, electrically insulating filler may be present in an amount of about 6% to about 60%, by volume (Esler: Entire document, particularly Abstract, Paragraphs 0029, 0043, and 0050); while Liu more broadly teaches an epoxy resin composition and a thermal interface material comprising the epoxy resin composition and a thermal conductive filler such as boron nitride or aluminum oxide, in a weight ratio of 20-95%, that may be used in various electronic products for thermal management, with examples utilizing 50wt% alumina (Abstract, Paragraphs 0003-0004, and 0008, Claims 13-15). Similarly, Lee teaches a thermal interface material for providing efficient transfer of heat for electronic components wherein the thermal interface material is provided as a composite material comprising a bulk layer comprising first filler particles, particularly ceramic particles, present in an amount of, for example, 80% by weight (Paragraphs 0044); and an adhesive layer having a greater tackiness than the bulk material and comprising second filler particles such as boron nitride (Abstract, Paragraph 0035, Claims 1-2 and 4), wherein Lee teaches that the amount of filler used may be selected to result in desired properties and that in general, a larger amount of filler will tend to provide higher thermal conductivity with some embodiments containing the filler in a content of at least 20%, 30%, 40%, 50%, 60%, 70%, 80%, 90%, 95% or more by weight of the TIM sheet (Paragraph 0107). Hence, each of Esler, Liu, and Lee supports the Examiner’s position that the claimed filler content would have been obvious to one having ordinary skill in the art based upon the above teachings of Park, and thus, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-2, 4-7, and 15-22 would have been obvious over the teachings of Park in view of Esler, or Liu, or Lee.
Response to Arguments
Applicant's arguments filed 10/2/2025 have been fully considered but they are not persuasive and/or moot in view of the additional remarks and new grounds of rejection with respect to the teachings of Park as the primary reference. Specifically, the Applicant argues that “there is no disclosure in Park of a coating layer deposited from a powder coating composition comprising an electrically insulative filler in an amount of 30 percent to 90 percent by weight based on total weight of the powder coating composition and an adhesive formed from an adhesive composition comprising a thermally conductive filler in an amount of 60 percent to 90 percent by weight based on total weight of the adhesive composition, as recited in amended claim 1” (emphasis in original, see first paragraph on page 10 of the response). However, as discussed in detail above, Park does teach that the resin composition for forming the resin layer that may be an adhesive layer, reading upon the claimed “adhesive composition” for forming the claimed “adhesive”, may comprise a thermally conductive filler, such as alumina or boron nitride as in the examples, at a suitable ratio in order to obtain the desired excellent thermal conductivity given that it is difficult to obtain a target thermal conductivity only with a resin material, wherein a ratio of the filler included in the resin layer may be selected to obtain the desired properties, for example, thermal conductivity and insulation properties in consideration of the properties of the resin layer, with an exemplified range being approximately 50 to 2,000 parts by weight with respect to 100 parts by weight of the resin material of the resin layer, reading upon and/or rendering obvious the claimed 60-90% by weight based on a total weight of the adhesive composition, particularly in light of the working examples of Park. As for the electrically insulative filler content of 30% to 90% by weight in the “powder coating” composition, Park also teaches that the insulating layer (as the claimed “coating layer”) that may be applied by coating and upon at least a portion of which the resin layer (as the claimed “adhesive layer”) may be formed, may also include filler and/or may be formed by a known thermal interface material, and given that Park teaches that the insulating layer may have desired dielectric and thermal properties as discussed in detail above, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results with respect to the broadly claimed range of 30% to 90% by weight, the claimed electrically insulative filler content would have been obvious over the teachings of Park, particularly given that contents within the claimed range are typical in the art with respect to TIM layers as evidenced by Esler, or Liu, or Lee. Hence, Applicant’s arguments with respect to Park are not persuasive in light of the new grounds of rejection above.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 10/2/2025.
Applicant's amendment necessitated the new ground(s) 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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787