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 .
Election/Restrictions
Claims 13 and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected production method for a layered product and electronic member comprising a layered product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 17th, 2026.
Applicant’s election without traverse of Group I (claims 1-12 and 14-17) in the reply filed on June 17th, 2026, is acknowledged.
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.
Claims 1-12 and 14-17 are 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 1, in the second-to-last line, uses the phrase “the substrate”, but there is no antecedent basis for this limitation. Claim 1 previously sets forth a pair of substrates – it is unclear which of the two substrates of the pair of substrates constitutes “the substrate”. It is possible the claim intends to limit both substrates to the claimed water vapor transmission rate, as invoked by the phrase “the substrate”, but it is unclear from the present claim. In the interest of compact prosecution, the phrase “the substrate” will be interpreted as “a substrate”. In addition, claim 1 uses the phrase “the layer containing a fire-extinguishing agent component”, but there is no antecedent basis for this limitation. In the interest of compact prosecution, the phrase “the layer containing a fire-extinguishing agent component” will be interpreted as referencing the claimed fire-extinguishing agent-containing layer.
Claims 2-8 are rejected as indefinite due to dependence on indefinite claim 1.
Claim 6 recites the phrase “the fire-extinguishing agent-containing layer side”, but there is no antecedent basis for this limitation. The preceding claims do not recite a specific side for the fire-extinguishing agent-containing layer, and as best understood from the present claims and specification, the fire extinguishing agent-containing layer has at least two sides (i.e., it is unclear which of the at least two sides is “the side”). In the interest of compact prosecution, the claim will be interpreted as reciting “a side”.
Claim 9 recites the indefinite phrase “high strength-heat resistance”. The phrase “high strength-heat resistance” constitutes relative terminology, which is not per se indefinite. However, per MPEP 2173.05(b), whether or not an issue of indefiniteness arises “depends on whether one of ordinary skill in the art would understand what is claimed, in light of the specification”. In the present case, paragraph [0100]-[0101] of the present specification (PGPub) indicates that high strength-heat resistance “can be resistant to heat or an impact due to fire”, but alternatively, that high strength-heat resistance “has at least a tensile strength and a heat resistance temperature described below”. The present specification attempts to simultaneously describe high strength-heat resistance as requiring a tensile strength and a heat resistance, while admitting that high strength-heat resistance merely indicates fibers which “can be resistant to heat or an impact due to fire”. It is unclear if the present specification is attempting to define high strength-heat resistance as having the properties of paragraph [0100]-[0101], and if so, which properties and to what degree. In the interest of compact prosecution, the claim will be interpreted as directed to a fiber layer which is capable of being resistant to heat or impact due to fire.
Claims 10-12 are rejected as indefinite due to dependence on indefinite claim 9.
Claim 14, in the last line, uses the phrase “the substrate”, but there is no antecedent basis for this limitation. Claim 14 previously sets forth a pair of substrates – it is unclear which of the two substrates of the pair of substrates constitutes “the substrate”. It is possible the claim intends to limit both substrates to the claimed water vapor transmission rate, as invoked by the phrase “the substrate”, but it is unclear from the present claim. In the interest of compact prosecution, the phrase “the substrate” will be interpreted as “a substrate”. In addition, claim 14 uses the phrase “the layer containing a fire-extinguishing agent component”, but there is no antecedent basis for this limitation. In the interest of compact prosecution, the phrase “the layer containing a fire-extinguishing agent component” will be interpreted as referencing the claimed fire-extinguishing agent-containing layer.
Claims 15-17 are rejected as indefinite due to dependence on indefinite claim 1.
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.
Claims 9-10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamamoto et al (WO2020203685A1). Yamamoto et al is read from its English language equivalent, US2022/0149463A1.
With regards to claim 9, Yamamoto discloses an outer packaging film assembled with a lithium ion battery, the outer packing film having fire extinguishing properties (i.e., a layered product for extinguishing fire) and comprising an outer film 10a, the outer film including a self-extinguishing layer 14 comprising a flame-retardant resin and including an agent which generates an aerosol when combusted (i.e., including a resin layer, wherein at least the resin layer contains a fire-extinguishing agent component generating an aerosol by combustion) (Yamamoto: Figs. 2-3; para. [0047], [0088]-[0091], [0107]-[0108], [0141], and [0341]). The battery of Yamamoto includes a separator formed of a sheet like member made of heat-resistant fibers containing glass, or ceramics, which are disclosed as examples of inorganic fibers having high strength-heat resistance according to the present specification (Present Specification PGPub: para. [0099]; Yamamoto: para. [0206]-[0208]).
With regards to claim 10, the fiber layer contains glass fiber or ceramic fiber (see above discussion).
With regards to claim 12, the resin layer includes brominated epoxy resin (i.e., an epoxy resin) or silicone powder (i.e., a silicone resin) (Yamamoto: para. [0130] and [0143])
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.
Claims 1-8 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al (WO2020203685A1) in view of Arai et al (US2011/0259390A1). Yamamoto et al is read from its English language equivalent, US2022/0149463A1.
With regards to claim 1, Yamamoto discloses a multilayer outer packaging with fire extinguishing properties for a lithium-ion battery (i.e., a layered product for extinguishing fire) comprising outer films 10a which overlap both sides of a lithium-ion battery, the outer films each including gas barrier layers 13 (i.e., a pair of substrates) which surround self-extinguishing layers 14, the self-extinguishing layers 14 comprising a flame-retardant resin and including an agent which generates an aerosol when combusted (i.e., a fire-extinguishing agent-containing layer between the pair of substrates, the layer containing a fire-extinguishing agent component generating an aerosol by combustion, and a binder resin) (Yamamoto: Figs. 2-3; para. [0047], [0088]-[0091], [0107]-[0108], [0141], [0180], and [0341]).
Yamamoto does not appear to expressly disclose a water vapor transmission rate (in a condition of 40⁰C/90%RH) for a substrate of 12 g/m2/day or less. Though, it is noted that Yamamoto desires its film to “suppress penetration of water vapor or the like” (Yamamoto: para. [0040]).
Arai is directed to a film for sealing a solar battery, the film including a moisture barrier film having a moisture transmission coefficient of 5 g/m2/day or less as measured by JIS K7129 at a temperature of 40⁰C and relative humidity of 90% (Arai: para. [0026] and [0070]). According to Arai, it is desirable that its film has high heat resistance (Arai: para. [0004]). These properties enable the film to protect the solar battery during exposure to outdoor air for long periods of time, and in particular, protect from cracking and fracture caused by exposure to heat and weather (Arai: para. [0020]). Selection of an inorganic layer for the moisture barrier film, in particular, includes an inorganic layer formed of silicon oxide, in order to provide electrical insulation (Arai: para. [0026] and [0029]). Yamamoto and Arai are analogous art in that they are related to the same field of endeavor of outer covers for use in batteries, the covers having high heat and moisture resistance. Arai is considered reasonably pertinent to the problem faced by Applicant since it proposes the same solution to the same problem (i.e., both Applicant and Arai select vapor-deposited metal oxides as barrier materials for identical purposes of providing requisite water vapor barrier properties at reduced cost to a battery cover) (Arai: see above discussion; Present Specification PGPub: para. [0139]). A person of ordinary skill in the art would have found it obvious to have selected a moisture barrier film according to Arai, such as a vapor-deposited silicon oxide layer, which has a moisture transmission coefficient of 5 g/m2/day or less as measured by JIS K7129 at a temperature of 40⁰C and relative humidity of 90%, in order to provide the requisite moisture barrier properties (i.e., as required by Yamamoto), and to provide improved heat resistance, protection from cracking and fracture caused by exposure to heat and weather, and improved electrical resistance (see above discussion). The moisture transmission coefficient range of Arai would have been obvious in particular, both since it appears to be a well-known property of a well-known gas barrier films, and since it is associated with appropriate moisture barrier properties, as is desirable by Yamamoto (see above discussion). The range of Arai overlaps the claimed range of 12 g/m2/day or less, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 2, the self-extinguishing layer material (i.e., fire-extinguishing agent component) of Yamamoto includes a radical-trapping material (i.e., radical generator) such as tripotassium citrate (i.e., a potassium salt) (Yamamoto: para. [0125] and [0343]).
With regards to claim 3, the self-extinguishing layer material (i.e., fire-extinguishing agent component) of Yamamoto includes a radical-trapping material (i.e., radical generator) such as tripotassium citrate in addition to an oxidizing agent such as potassium chlorate (i.e., an inorganic oxidizer) and a fuel source such as carboxylmethyl cellulose (i.e., a binder resin, which combusts together with the inorganic oxidizer to generate heat energy) (Yamamoto: para. [0125] and [0343]). The tripotassium citrate of Yamamoto is the same radical generator as the present specification, and therefore, it is considered to inherently possess an initial decomposition temperature in a range of 90C to 260C (i.e., paragraph [0079] of Applicant’s PGPub lists tripotassium citrate as an example of a material having the claimed initial decomposition temperature, though this could be further inferred from Applicant’s dependent claim 4) (see above discussion).
With regards to claim 4, the radical generator is tripotassium citrate (see above discussion).
With regards to claim 5, a person of ordinary skill in the art would have found it obvious to have included silicon oxide (i.e., silica) in the gas barrier layers of Yamamoto and Arai (i.e., in at least one of the pair of substrates as claimed) in order to provide the requisite water barrier properties at reduced cost (see above discussion).
With regards to claim 6, as best understood, the silicon oxide layer of Yamamoto and Arai is located in the same overall film as the self-extinguishing layer (i.e., fire-extinguishing agent-containing layer), and therefore, it is located towards at least one side of the self-extinguishing layer (see above discussion).
With regards to claim 7, a person of ordinary skill in the art would have found it obvious to have selected a vapor-deposited layer of metal oxide since vacuum deposition (i.e., a form of vapor deposition) is taught by Arai as the best method in the field in terms of productivity (Arai: para. [0029]). However, it is further noted that the present recitation constitutes product-by-process language. Such language does not limit the present product claims to the material performance of the recited steps, but rather, only the structure implied, per MPEP 2113. In the present case, the claims require a metal oxide layer, and the combination of Yamamoto and Arai teaches such a product.
With regards to claim 8, Yamamoto depicts the further inclusion of an outer sealing portion 10 s which seals a lateral surface of the self-extinguishing layer (in this case, a central lateral surface) (Yamamoto: para. [0276]; Fig. 2).
With regards to claim 14, Yamamoto discloses a multilayer outer packaging with fire extinguishing properties for a lithium-ion battery (i.e., a layered product for extinguishing fire) comprising outer films 10a which overlap both sides of a lithium-ion battery, the outer films each including gas barrier layers 13 (i.e., a pair of substrates) which surround self-extinguishing layers 14, the self-extinguishing layers 14 comprising a flame-retardant resin and including an agent which generates an aerosol when combusted (i.e., a fire-extinguishing agent-containing layer between the pair of substrates, the layer containing a fire-extinguishing agent component generating an aerosol by combustion, and a binder resin) (Yamamoto: Figs. 2-3; para. [0047], [0088]-[0091], [0107]-[0108], [0141], [0180], and [0341]).
Yamamoto does not appear to expressly disclose a water vapor transmission rate (based on JIS K 7129, in a condition of 40⁰C/90%RH) for a substrate of 12 g/m2/day or less. Though, it is noted that Yamamoto desires its film to “suppress penetration of water vapor or the like” (Yamamoto: para. [0040]).
Arai is directed to a film for sealing a solar battery, the film including a moisture barrier film having a moisture transmission coefficient of 5 g/m2/day or less as measured by JIS K7129 at a temperature of 40⁰C and relative humidity of 90% (Arai: para. [0026] and [0070]). According to Arai, it is desirable that its film has high heat resistance (Arai: para. [0004]). These properties enable the film to protect the solar battery during exposure to outdoor air for long periods of time, and in particular, protect from cracking and fracture caused by exposure to heat and weather (Arai: para. [0020]). Selection of an inorganic layer for the moisture barrier film, in particular, includes an inorganic layer formed of silicon oxide, in order to provide electrical insulation (Arai: para. [0026] and [0029]). Yamamoto and Arai are analogous art in that they are related to the same field of endeavor of outer covers for use in batteries, the covers having high heat and moisture resistance. Arai is considered reasonably pertinent to the problem faced by Applicant since it proposes the same solution to the same problem (i.e., both Applicant and Arai select vapor-deposited metal oxides as barrier materials for identical purposes of providing requisite water vapor barrier properties at reduced cost to a battery cover) (Arai: see above discussion; Present Specification PGPub: para. [0139]). A person of ordinary skill in the art would have found it obvious to have selected a moisture barrier film according to Arai, such as a vapor-deposited silicon oxide layer, which has a moisture transmission coefficient of 5 g/m2/day or less as measured by JIS K7129 at a temperature of 40⁰C and relative humidity of 90%, in order to provide the requisite moisture barrier properties (i.e., as required by Yamamoto), and to provide improved heat resistance, protection from cracking and fracture caused by exposure to heat and weather, and improved electrical resistance (see above discussion). The moisture transmission coefficient range of Arai would have been obvious in particular, both since it appears to be a well-known property of a well-known gas barrier films, and since it is associated with appropriate moisture barrier properties, as is desirable by Yamamoto (see above discussion). The range of Arai overlaps the claimed range of 12 g/m2/day or less, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 15, Yamamoto depicts the further inclusion of an outer sealing portion 10 s which seals a lateral surface of the self-extinguishing layer (in this case, a central lateral surface) (Yamamoto: para. [0276]; Fig. 2).
With regards to claim 16, a person of ordinary skill in the art would have found it obvious to have included metal oxide in the gas barrier layers of Yamamoto and Arai (i.e., in at least one of the pair of substrates as claimed) in order to provide the requisite water barrier properties at reduced cost (see above discussion).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al as applied to claim 9 above, and in further view of Himstedt et al (US2018/0261816A1).
With regards to claim 11, Yamamoto discloses a layered product for extinguishing fire as applied to claim 9 above, the layered product including a fiber layer in the form of a glass fabric for battery separator (see above discussion).
Yamamoto does not appear to disclose a thickness for its glass fabric, and therefore, Yamamoto is not considered to expressly disclose a fiber layer thickness of 0.02 to 2.0 mm.
Himstedt is directed to fire-resistant lithium-ion battery separators comprising a nonwoven mat of glass fibers, the nonwoven mat having a thickness of between 0.1 and 20 mils (i.e., 2.54 to 508 microns, or 0.00254 to 0.508 mm) (Himstedt: abstract; para. [0022] and [0030]; claim 1). The introduction of a polymer component according to Himstedt enables selection within its thickness range, which is associated with a thinner lithium-ion battery separator, thereby resulting in a battery with improved capacity and efficiency (Himstedt: para. [0016] and [0033]-[0034]). In addition, as best understood from Himstedt, by reducing the thickness of the separator into its disclosed range, a single layer nonwoven separator can be effectively formed, which allows for interruption of a chemical process in response to overheating or runaway (i.e., effectively, since a thinner separator has less material, it is more likely to form a hole during thermal runaway, effectively stopping said thermal runaway) (Himstedt: para. [0024]-[0029]). Yamamoto and Himstedt are analogous art in that they are related to the same field of endeavor of providing heat and fire resistance to lithium-ion batteries comprising glass fiber separators. A person of ordinary skill in the art would have found it obvious to have adopted the separator of Himstedt for the separator of Yamamoto, and in particular, to have selected from the thickness range of Himstedt, in order to improve the capacity and efficiency of the battery of Yamamoto, while also providing a built-in safety mechanism for stopping thermal runaway (see above discussion). The range of Himstedt (i.e., 0.00254 to 0.508 mm) overlaps the claimed range of 0.02 to 2.0 mm, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al in view of Arai et al as applied to claim 14 above, and in further view of Doi et al (WO2012053417A1). Doi is read from an English machine translation, which has been placed in the application file.
With regards to claim 17, Yamamoto and Arai teach a layered product for extinguishing fire as applied to claim 14 above (see above discussion).
Yamamoto and Arai do not appear to teach a layered product for extinguishing fire as comprising a pressure-sensitive adhesive on an outermost layer.
Doi is directed to a high-strength and flame-retardant polymer member for use in protecting lithium-ion batteries, the high-strength and flame-retardant polymer member including a layer of pressure-sensitive adhesive on an outermost layer thereof (Doi – Translation: abstract; page 3, paragraph titled “<<1. High-strength flame retardant polymer material>>”; page 16, subsection “<<4. Flame retardant products>>, sixth paragraph, starting with “The high-strength flame retardant polymer member…”, last six lines). As best understood from Doi, it is well-known in the art to apply pressure-sensitive adhesives to flame retardant members, and further, the pressure-sensitive adhesive enables removability with strong adhesiveness (Doi – Translation: page 2, “Printed material that is pasted…”; page 3, paragraph titled “<<1. High-strength flame retardant polymer material>>”). In support, Yamamoto teaches that its outer packaging film may be prepared by any conventionally known method in the art (i.e., any adhesive method, and therefore, including use of a pressure-sensitive adhesive). Yamamoto and Arai are analogous art in that they are related to the same field of endeavor of flame-retardant members used to protect lithium-ion batteries. A person of ordinary skill in the art would have found it obvious to have selected the pressure-sensitive adhesive of Doi as an outermost layer for the substrate of Yamamoto and Arai, as application of pressure-sensitive adhesives as outermost layers of such materials is well-known in the art, and within the purview of the lamination process of Yamamoto (see above discussion). Furthermore, a person of ordinary skill would have found it obvious to have selected a pressure-sensitive adhesive to maintain adhesive strength while enabling removability (i.e., to allow either the substrate of Yamamoto and Arai to be removed from the rest of the battery for access, or to allow attachment/removal during production/lamination) (see above discussion). In yet another alternative, since Doi discloses its pressure-sensitive adhesive as having improved adhesive strength overall, it would have been obvious to have selected its pressure-sensitive adhesive for the purpose of providing improved lamination strength (see above discussion).
Conclusion
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/ETHAN WEYDEMEYER/
Examiner, Art Unit 1783
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