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 .
Response to Amendment
The Amendment filed June 2nd, 2026 has been entered. Claims 1-10 remain pending in the application. Claim 9 has been withdrawn from consideration.
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 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.
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.
Claims 1 & 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2020/0185797 A1), in view of Dedomenic et al. (US 2024/0059911 A1, priority date of 12/18/2020).
Regarding claim 1, Park teaches a battery module (Par. 0003; Fig. 1-2) comprising: at least one
battery cell (battery cell 20; Fig. 6-8); a module case (case 10; Fig. 1) in which the at least one battery cell
is accommodated, and including a lower plate (lower plate 10a) and a side plate (sidewall 10b) forming
an internal space (Fig. 1); and a thermally conductive coating layer (resin layer 30; Par. 0037, “thermally
conductive resin layer”) formed on an internal surface of the lower plate (Par. 0030-0032, resin layer is
in thermal contact with the lower plate. Figs 6-7 show the resin layer on the lower plate, which is mislabeled as 10c, when it should be 10a) or an internal surface of the lower plate and an internal
surface of the side plate (Fig. 7; lower plate 10a is mislabeled as 10c), and having a thickness of 70 μm to 130 μm (Par. 0034, 100 μm-5 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 (See MPEP 2144.05(I))), wherein the thermally conductive coating layer includes a polymeric binder resin (Par. 0038; acrylic-, urethane-, epoxy-, and olefin-based resins are all polymeric) and an inorganic filler (Par. 0056; filler may be a particle of a ceramic). Park fails to teach the thermally conductive coating layer having a surface roughness Ra of 0.7 μm or more and 50 μm or less.
However, Dedomenic teaches a coating layer (Abstract; “electrodepositable coating composition”) which is thermally conductive (Abstract, Par. 0128; “The coating may be thermally conductive”) formed on an internal surface of a battery module (Par. 0115, “the electrodepositable coating composition of the present invention may be applied onto a number of substrates”; Par. 0116, the substrate may include a battery module or module housing), wherein the coating layer has a surface roughness of 0.7 μm or more and 50 μm or less (Par. 0129; the coating may have a surface roughness of 100, 75, 60, or 50 microinches or less, which are respectively equal to 2.54, 1.905, 1.524, and 1.27 μm or less, which overlap 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 (See MPEP 2144.05(I)).
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 thermally conductive coating layer taught by Park by providing it with a surface roughness of 0.7 μm to 50 μm, as taught by Dedomenic. One of ordinary skill would have determined that this modification would prevent damaging the batteries in the module due to too high of a roughness value, while ensuring that the batteries don’t move within the case in the absence of friction due to too low of a roughness value.
Regarding claim 4, Park fails to explicitly teach a thermally conductive coating layer with a withstand voltage intensity of 2.5 to 4.0 kV.
However, Park inherently teaches a thermally conductive coating layer with a withstand voltage intensity of 2.5 to 4.0 kV. Park teaches the same polymeric binders and inorganic fillers as claimed, with the inorganic fillers at the same weight percentages, thus the thermally conductive and electrically insulating coating has an identical composition as claimed. Therefore, the withstand voltage of the coating must be in the range of 2.5 to 4.0 kV. Thus, claim 4 is rejected.
Regarding claim 5, modified Park teaches the battery module of claim 1, wherein adhesive strength between the thermally conductive coating layer and the battery cell is 500 to 2000 gf/10mm (Par. 0040; 1000 gf/10mm - 600 gf/mm fit the claimed range).
Regarding claim 6, modified Park teaches the battery module of claim 1, wherein the polymeric binder resin comprises at least one selected from the group consisting of an acrylic resin (Par. 0038), a urethane-based resin (Par. 0038), a silicone-based resin (Par. 0038), an epoxy-based resin (Par. 0038), and an olefin-based resin (Par. 0038).
Regarding claim 7, modified Park teaches the battery module of claim 1, wherein the inorganic filler comprises at least one ceramic particle selected from the group consisting of alumina, aluminum nitride, boron nitride, silicon nitride, SiC, silica, ZnO, and BeO (Par. 0056, lines 16-18; all claimed ceramics are stated).
Regarding claim 8, modified Park teaches the battery module of claim 1, wherein the thermally conductive coating layer further comprises a carbon-based filler (Par. 0056; “use of a carbon filler such as graphite may be considered).
Regarding claim 10, Park teaches a method of preparing a battery module (Par. 0068), comprising: applying a coating composition to an internal surface of a module case including a lower plate and a side plate forming an internal space (Par. 0072 describes methods of applying the thermal coating resin; Claim 4 states that the resin is in contact with the lower and side plates); curing the coating composition to form a thermally conductive coating layer (Par. 0069; resin layer 30; Par. 0037, “thermally conductive resin layer”) having a thickness of 70 to 130 μm (Par. 0034, 100 μm-5 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 (See MPEP 2144.05(I))); and positioning at least one battery cell in the module case on which the thermally conductive coating layer is formed (Par. 0079-80; battery cells are accommodated in the module case), wherein the thermally conductive coating layer includes a polymeric binder resin (Par. 0038; acrylic-, urethane-, epoxy-, and olefin-based resins are all polymeric) and an inorganic filler (Par. 0056; filler may be a particle of a ceramic). Park fails to teach the thermally conductive coating layer having a surface roughness Ra of 0.7 μm or more and 50 μm or less.
However, Dedomenic teaches a coating layer (Abstract; “electrodepositable coating composition”) which is thermally conductive (Abstract, Par. 0128; “The coating may be thermally conductive”) formed on an internal surface of a battery module (Par. 0115, “the electrodepositable coating composition of the present invention may be applied onto a number of substrates”; Par. 0116, the substrate may include a battery module or module housing), wherein the coating layer has a surface roughness of 0.7 μm or more and 50 μm or less (Par. 0129; the coating may have a surface roughness of 100, 75, 60, or 50 microinches or less, which are respectively equal to 2.54, 1.905, 1.524, and 1.27 μm or less, which overlap 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 (See MPEP 2144.05(I)).
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 thermally conductive coating layer taught by Park by providing it with a surface roughness of 0.7 μm to 50 μm, as taught by Dedomenic. One of ordinary skill would have determined that this modification would prevent damaging the batteries in the module due to too high of a roughness value, while ensuring that the batteries don’t move within the case in the absence of friction due to too low of a roughness value.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Park and Dedomenic, and further in view of Ma et al. (US 2023/0115050 A1, priority date of 2/26/2020).
Regarding claim 2, Park fails to teach the thermally conductive coating layer comprising 20 to 50% by weight of the inorganic filler, based on a total weight of the thermally conductive coating layer.
However, Ma teaches the thermally conductive coating layer comprising 20 to 50% by weight of the inorganic filler, based on a total weight of the thermally conductive coating layer (Par. 0057, lines 1-8; “such as 20% to 50% by weight”).
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 thermally conductive coating layer taught by Park by incorporating a filler at a weight percentage between 20 and 50%, as taught by Ma. One of ordinary skill in the art could have determined that this would yield predictable results of improved structural stability and thermal insulation, as the resin would still be able to bind with the battery module case without breaking down. While Ma’s invention is directed towards a thermally conductive powder coating composition, it is reasonably pertinent to the present application, as Ma describes using the coating for batteries and battery components (Par. 0125).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Park and Dedomenic, and further in view of Podkaminer et al. (U.S. Patent No. 12,115,737 B2, priority date of 2/18/2021).
Regarding claim 3, Park fails to explicitly teach a thermal conductivity of the thermal conductive
coating layer between 200 and 230 W/mK.
However, Podkaminer teaches a thermally conductive coating layer comprised of a polymeric binder resin (Column 1, lines 14-16; organic matrices made of acrylics, silicones, and epoxies are same as claimed), an inorganic filler particle (Column 1, lines 16-17; “particles of ceramic”), and a carbon-based filler (Column 1, lines 16-17; particles of carbon). Thus, Podkaminer teaches the same composition as claimed. Podkaminer teaches the thermally conductive coating layer having a thermal conductivity of 200 W/mK or more and 230 W/mK or less (Column 12, lines 29-34; bulk thermal conductivities between 150 W/mK and 350 W/mK envelop the claimed range).
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 thermally conductive coating layer as taught by Park by assigning it a thermal conductivity value of 200 W/mK to 230 W/mK, as taught by Podkaminer. This would be done in order to achieve effective heat dissipation from the battery module, as stated in Podkaminer (Column 2, lines 22-28). Podkaminer is reasonably pertinent to the present application, as their thermally conductive article is intended for use in a battery module.
Response to Arguments
Applicant’s arguments, filed 6/2/2026, with respect to the rejection(s) of claim(s) 1 and 4-10 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Park and Dedomenic.
Applicant’s amendments overcome the rejection of record of claims 1 and 4-10 under 35 U.S.C. 103 over Park, claim 2 over Park in view of Ma, and claim 3 over Park in view of Podkaminer. However, as new prior art has been applied to claim 1, Applicant’s arguments do not apply with the current rejection of claims 1 and 4-10 under 35 U.S.C. 103 over Park and in view of Dedomenic, claim 2 over Park in view of Dedomenic and Ma, and claim 3 over Park in view of Dedomenic and Podkaminer.
Applicant's arguments filed 6/2/2026 that the steps of claim 10 are not in the correct order have been fully considered but they are not persuasive. Applicant argues that Park fails to teach the step of curing the coating composition before positioning at least one battery cell in the module case on which the thermally conductive coating layer is formed. However, there is no explicit sequence of steps recited in the claim. Thus, as Park teaches each step recited in claim 10, the rejection of record still applies to the limitations of the claimed method steps.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON M BAIRD whose telephone number is (571)272-9742. The examiner can normally be reached 8am-5pm.
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/CAMERON M BAIRD/ Examiner, Art Unit 1728
/MATTHEW T MARTIN/ Supervisory Patent Examiner, Art Unit 1728
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