CTNF 18/487,057 CTNF 85948 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Status of Application Claims 1-12 are pending. Priority 02-09 AIA Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows: 02-10 The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc. , 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). The disclosures of the prior-filed applications, Application No. 17/014,089 and 17/563,964, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior-filed applications do not describe the limitations of claim 3-12. As a result, the effective filing date for claims 1 and 2 is 9/5/2019 , claiming foreign priority, and the effective filing date for claims 3-12 is 10/14/2023 . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 3-5, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0074972 to Kim et al., in view of US 2021/0163303 to Evans et al . Regarding claim 3 , Kim et al. teaches an energy storage module 100 comprising: a plurality of battery cells 120 arranged in a first direction such that long side surfaces of adjacent ones of the battery cells face one another, each of the battery cells comprising a vent; a plurality of insulation spacers 130 , at least one of the insulation spacers being between the long side surfaces of each adjacent pair of the battery cells, each of the insulation spacers comprising a heat-insulating first sheet and a plurality of flame-retardant second sheets respectively adhered to opposite surfaces of the first sheet by an adhesion member; a cover member 110 comprising an internal receiving space configured to accommodate the battery cells and the insulation spacers; a top plate 140 coupled to a top of the cover member, the top plate comprising ducts respectively corresponding to the vents of the battery cells and having fire extinguishing agent openings respectively corresponding to the insulation spacers; a top cover 160 coupled to a top of the top plate and having discharge openings respectively corresponding to the ducts; and an extinguisher sheet 150 between the top cover and the top plate, the extinguisher sheet being configured to emit a fire extinguishing agent at a temperature exceeding a reference temperature (Figs. 1-5; [0008]; [0065-75]), and wherein the first sheet comprises an aerogel layer ([0093]). Kim et al. teaches that the aerogel layer comprises a layer of aerogel composition ([0093]), but does not expressly teach that the aerogel layer comprises a substrate. Evans et al. also relates to a heat control member (insulation spacer) placed between battery cells in a battery module (abstract; [0002]; [0022]; [0023]) and teaches an exemplary heat control member 40 including reinforced aerogel compositions 42 , 43 disposed on a layer of compliant material 44 (substrate), and layers of thermally conductive or thermally capacitive material 46 , 47 (second sheets) covering surfaces of the reinforced aerogel compositions 42 , 43 (Fig. 9; [0067]; [0149]; [0150]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a substrate in the aerogel layer of Kim et al., motivated by the fact that Evans et al. teaches that the compliant member or substrate can be compressed to reduce its thickness while providing a desired resistance to compression ([0016]; [0144]) and this contributes to favorable properties of the heat control member in compressibility, compressional resilience, and compliance ([0014]; [0016]). The skilled artisan would have obtained expected results applying a known element to a similar product. The resulting aerogel layer would have been a single layer structure. Regarding claim 4, Evans et al. teaches that the compliant material can be, e.g. a resin such as polyurethanes (resin) ([0016]). Regarding claim 5, Kim et al. does not expressly teach that the aerogel layer comprises: a fibrous support; an aerogel; and a functional material comprising a binder, a dispersant, or a combination thereof. Evans et al. also relates to a heat control member (insulation spacer) placed between battery cells in a battery module (abstract; [0002]; [0022]; [0023]) and teaches that the heat control member includes a reinforced aerogel composition, wherein the reinforced aerogel composition includes reinforcement fibers such as glass fibers ([0025]; [0067]; [0068]) as a fibrous support; an aerogel; and a binder ([0128-130]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the claimed components in the aerogel layer of Kim et al., motivated by the fact that Evans et al. teaches that heat control members (insulation spacers) including the reinforced aerogel composition provide thermal barriers for batteries, have favorable insulation properties, and have favorable reaction to fire, combustion and flame-resistance properties (abstract). Regarding claim 7, Evans et al. teaches that the fibrous support comprises, e.g. a glass fiber ([0025]; [0067]; [0068]). Regarding claim 12, the instant claim is proviso upon parent claim 5, which requires a binder, a dispersant, or a combination thereof, and in the case that the parent claim is met, the instant claim is considered met . 07-21-aia AIA Claim s 6, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. and Evans et al. as applied to claim 5 above, in view of WO 2022/024078 to Middendorf et al. (US 2023/0275289 used for citation) . Regarding claim 6 , Evans et al. does not expressly teach that with respect to a total solid content of the aerogel layer, the fibrous support may be included in a content range of 30 wt% to 50 wt%, the aerogel may be included in a content range of 40 wt% to 60 wt%, the binder may be included in a content range of 5 wt% to 10 wt%, and the dispersant may be included in a content range of 0.1 wt% to 3 wt%. Middendorf et al. also to a plurality of insulation spacers or thermal runway barriers 24 disposed between a plurality of battery cells 22 in an energy storage module or battery module 20 (abstract; Fig. 2; [0037]) and teaches that the insulation spacer or thermal runway barrier 24 comprises a layer of nonwoven fibrous thermal insulation including a fiber matrix of inorganic fibers in a content of from about 10% up to about 80% ([0091]), thermally insulative inorganic particles (e.g. aerogel particles) in the range of from about 10% to 60% ([0092]), and binder in the range of from about 2.5% to 10.0% ([0093]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed proportions of the fibrous support, aerogel, and binder in the prior art aerogel layer, because Middendorf et al. teaches ranges overlapping with the claimed counterparts and the skilled artisan would have optimized the amounts of the components to produce the desired aerogel layer with favorable insulation and fire safety. The limitation directed to the dispersant is proviso upon the parent claim 5 and is considered met when the parent claim is met. A prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. 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). Regarding claim 10, Evans et al. does not expressly teach that the aerogel has a particle diameter in a range of 5 μm to 200 μm, 10 μm to 100 μm, or 20 μm to 50 μm. Middendorf et al. also to a plurality of insulation spacers or thermal runway barriers 24 disposed between a plurality of battery cells 22 in an energy storage module or battery module 20 (Fig. 2; [0037]) and teaches that the insulation spacer or thermal runway barrier 24 comprises a layer of nonwoven fibrous thermal insulation including, for example, silica aerogel with a particle size of 100-700 micrometers (AG) (abstract; Table 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed aerogel particle diameter in the prior art aerogel layer, because Middendorf et al. demonstrates known silica aerogel with a particle size range overlapping with the claimed counterpart. The skilled artisan would have obtained expected results using a known element for a known product. A prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. 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). Regarding claim 11, Evans et al. does not expressly teach that the binder comprises an aqueous polymer binder and a water-dispersible polymer. Middendorf et al. also to a plurality of insulation spacers or thermal runway barriers 24 disposed between a plurality of battery cells 22 in an energy storage module or battery module 20 (Fig. 2; [0037]) and teaches that the insulation spacer or thermal runway barrier 24 comprises a layer of nonwoven fibrous thermal insulation including a binder, e.g. a liquid binder (e.g., acrylic latex, ethylene vinyl acetate (EAF68) latex, silicone, polyurethane etc.) (abstract; [0104]), which is a water-dispersible polymer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a water-dispersible polymer in the prior art aerogel layer, because Middendorf et al. demonstrates that such binder is known in a composition for a thermally runaway barrier and the skilled artisan would have obtained expected results using a known element for a known product . 07-21-aia AIA Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. and Evans et al. as applied to claim 5 above, in view of US 2022/0166106 to Zhang et al . Regarding claim 8, Evans et al. does not expressly teach that the fibrous support has a length in a range of 50 μm to 1,000 μm, 70 μm to 800 μm, or 100 μm to 600 μm. Zhang et al. also relates to a spacer disposed between two neighbor cells in a battery pack and teaches that the spacer contains a composite thermal barrier material comprising an inner layer of an aerogel material sandwiched by two flame retardant layers ([0014]; [0027]), wherein the aerogel material may include glass fibers with a length of 10 μm to 2 mm ([0037]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed length for the fibrous support in the prior art aerogel layer, because Zhang et al. demonstrates that the glass fibers with the known length provides the composite material with proper mechanical strength ([0037]). One skilled in the art would have obtained expected results using a similar known element in a known product . 07-21-aia AIA Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. and Evans et al. as applied to claim 5 above, in view of US 2019/0178434 to Sakatani et al . Regarding claim 9, Evans et al. does not expressly teach that the aerogel has a Brunauer–Emmett–Teller (BET) specific surface area in a range of 500 m 2 /g to 1,000 m 2 /g. Sakatani et al. also relates to a heat insulating material disposed between two adjacent battery cells (abstract) and teaches that the heat insulating material is a sheet containing a fiber and an aerogel (Figs. 1A and 1B; [0010]; [0030-34), wherein silica aerogel has a specific surface area of 500 to 900 m 2 /g ([0040]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed specific surface area of the aerogel in the prior art aerogel layer, because Sakatani et al. demonstrates that such known silica aerogel is known to provide desirable insulation in a heat insulating material ([0042]). One skilled in the art would have obtained expected results using a similar known element in a known product . Double Patenting 08-33 AIA 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. 08-36 AIA Claim s 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 and 5 of U.S. Patent No. 11,764,430 in view of US 2021/0163303 to Evans et al. (cited by Applicant). Claim 1 of the conflicting patent recites all of the limitations of the instant claim 1 except that the first sheet comprises an aerogel layer. Evans et al. also relates to a heat control member (insulation spacer) placed between battery cells in a battery module (abstract; [0002]; [0022]; [0023]) and teaches an exemplary heat control member 40 including reinforced aerogel compositions 42 , 43 (first sheet) sandwiched between layers of thermally conductive or thermally capacitive material 46 , 47 (second sheets) (Fig. 9; [0067]; [0149]; [0150]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the reinforced aerogel composition of Evans et al. as the first sheet in the insulation spacer, motivated by the fact that Evans et al. teaches that aerogel materials are known to possess about two to six times the thermal resistance of other common types of insulation ([0007]), that the reinforced aerogel compositions are durable and easy to handle, have favorable resistance to heat propagation and fire propagation while minimizing thickness and weight of materials used, and also have favorable properties for compressibility, compressional resilience, and compliance ([0014]), and that the heat control members (insulation spacers) including the reinforced aerogel composition provide thermal barriers for batteries, have favorable insulation properties, and have favorable reaction to fire, combustion and flame-resistance properties (abstract). The skilled artisan would have obtained expected results applying a known element to a similar product . Claim 5 of the conflicting patent recites the same limitation as that of claim 2 of the current application . 08-36 AIA Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,735,788 in view of Evans et al . 08-36 AIA Claim s 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,848,461 in view of Evans et al . 08-36 AIA Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 11,735,795 in view of Evans et al . 08-36 AIA Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,145,933 in view of Evans et al . 08-36 AIA Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,771,935 in view of Evans et al . 08-36 AIA Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,057,598 , in view of Evans et al . 08-36 AIA Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,090,354 in view of Evans et al . The conflicting claim of the respective patent in sections 9-15 above recites all of the limitations of claim 1 (and claim 2 when applicable) of the instant application except that the first sheet comprises an aerogel layer. Evans et al. supplements the teachings and provides a motivation to modify as explained for the first ODP rejection in section 8 above. The same rationale applies to all of the ODP rejections. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENG M CHAN whose telephone number is (571)270-5859. The examiner can normally be reached 9 am - 5:30 pm on Monday, 9 am - 3 pm on Tuesday, and 9 am to 1 pm on Wednesday and Thursday. 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, Basia Ridley can be reached at 571-272-1453. 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. /Heng M. Chan/Examiner, Art Unit 1725 /Sean P Cullen, Ph.D./Primary Examiner, Art Unit 1725 Application/Control Number: 18/487,057 Page 2 Art Unit: 1725 Application/Control Number: 18/487,057 Page 3 Art Unit: 1725 Application/Control Number: 18/487,057 Page 4 Art Unit: 1725 Application/Control Number: 18/487,057 Page 5 Art Unit: 1725 Application/Control Number: 18/487,057 Page 6 Art Unit: 1725 Application/Control Number: 18/487,057 Page 7 Art Unit: 1725 Application/Control Number: 18/487,057 Page 8 Art Unit: 1725 Application/Control Number: 18/487,057 Page 9 Art Unit: 1725 Application/Control Number: 18/487,057 Page 10 Art Unit: 1725 Application/Control Number: 18/487,057 Page 11 Art Unit: 1725 Application/Control Number: 18/487,057 Page 12 Art Unit: 1725
