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 .
Status of Claims
Claims 1-19 are currently pending in the application and are being examined on the merits in this Office Action.
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 1-19 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 recites the limitation “the weight” in lines 2 and 4. There is insufficient antecedent basis for this limitation in the claim.
Regarding dependent claims 2-19, these claims do not address the antecedent basis deficiencies noted for parent claim 1, above, and are rejected under the same rationale.
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.
Claim(s) 1, 4, 10-11, 14-16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN11245503A) and further, in view of Aoyama et al. (U.S. Patent Application Publication 2016/0046774).
The Examiner has provided a machine translation of CN11245503A. The citation of the prior art in this rejection refer to the machine translation.
Regarding claim 1, Liu teaches A thermally conductive, electrically insulating film (i.e., thermally conductive insulating film) (P1:L49-50), comprising:
a thermoplastic resin (i.e., first or second polymer substrate) (P1:L57-58; P2:L1); and
a thermally conductive filler (i.e., thermally conductive filler and thermally conductive material) (P1:L56-58; P2:L1-2); wherein,
the thermally conductive filler comprises: a thermally conductive carbon-based filler (i.e., nanographene, carbon nanotubes) (P2:L2-3), a thermally conductive metal oxide or hydroxide filler and a thermally conductive ceramic filler (i.e., at least one of AlN, SiC, Al2O3) (P1:L58).
Liu does not teach the specifics of the thermoplastic resin accounting for 15-50% of the weight of the thermally conductive, electrically insulating film and the thermally conductive filler accounting for 40-70% of the weight of the thermally conductive, electrically insulating film.
Aoyama, directed to a film (abstract), teaches a film that includes a thermoplastic resin and a filler in the amount of 1-70 mass % relative to the total film mass, which implies that the thermoplastic resin must be in the remaining range of 30-99 mass % of the total film mass (paragraphs [0007]-[0009], [0068]). Further, Aoyama teaches that if the content of the filler is less than 1 mass % the film will be inferior in degradability and if more that 70 mass% the film will be inferior in water resistance (paragraph [0068]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Liu film having a content of the thermally conductive filler of 1-70 mass % of the total film mass, as suggested by Aoyama, in order to reduce degradability and improve water resistance of the film.
It is noted that Aoyama differ in the exact same thermoplastic resin and filler content range as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the content range of Aoyama overlap the instant claimed ranges and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, Liu teaches the thermally conductive carbon-based filler is one or more of graphene and carbon nanotubes (P2:L2-3).
Regarding claims 10, Liu teaches the thermally conductive metal oxide or hydroxide filler comprises aluminum oxide (P1:L58).
Regarding claim 11, Liu teaches the thermally conductive metal oxide or hydroxide filler comprises aluminum oxide (P1:L58) which is known and commercially available in the form of powder or granules1.
Regarding claim 14, Liu teaches the thermally conductive ceramic filler comprises one or more fillers selected from boron nitride, and aluminum nitride (P1:L58).
Regarding claim 15, Liu teaches the thermally conductive ceramic filler comprises one or more fillers selected from boron nitride, and aluminum nitride (P1:L58). Aluminum nitride for example, is known and commercially available in spherical powder2.
Regarding claim 16, Liu teaches the thermoplastic resin is polypropylene resin (i.e., PP) (P2:L15-25).
Regarding claim 19, Liu teaches the thermally conducting, electrically insulating film as described above in claim 1. Liu teaches the film is used in an automobile battery pack to dissipate heat generated by the battery (P1:L15-20) Further, Liu teaches heat conduction to the metal shell (suggesting bottom or side walls) and the thermal film (P1:L33-45). Although Liu does not expressly articulate the film specifically between the battery module and a bottom or side wall of the housing, it would have been obvious to a person of ordinary skill in the art to place the film at that interface. Such placement would provide the path for heat conduction and electrical insulation and consequently, heat dissipation, consistent with Liu’s purpose. A person of ordinary skill in the art would have reasonably expected the film to perform heat dissipation when placed between the battery module and the battery pack. Accordingly, the placement would have been an obvious implementation of Liu’s battery pack heat-dissipation teaching.
Claim(s) 2-3 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN11245503A) and Aoyama et al. (U.S. Patent Application Publication 2016/0046774) as applied to claim 1 and 4 above, and further in view of Kagawa (U.S. Patent Application Publication 2016/0185074).
Regarding claims 2-3, Liu teaches the thermally conducting, electrically insulating film as described above in claim 1.
Liu does not teach the thermally conductive carbon-based filler accounts for 2-15% and further 10-15 % of the weight of the thermally conductive, electrically insulating film.
Kagawa, also directed to a thermally conducting, electrically insulating film (paragraph [0001]) teaches a film having a thermoplastic resin (i.e., binder resin such as polypropylene) (paragraph [0018], [0076]) and a thermally conductive carbon-based filler such as flaky carbon (paragraph [0018], [0071]). Kagawa teaches flaky carbon comprises 5-25 mass% of the film (paragraph [0018]). Further, Kagawa teaches the appropriate ratio of resin and flaky carbon provides high thermal conductivity and strength in the film (paragraph [0078]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the film of Liu to include the thermally conductive carbon-based filler to account for 5-25 % mass of the film, as suggested by Kagawa, in order to optimize the thermal conductivity and strength of the film.
It is noted that Kagawa differ in the exact same carbon-based filler content range as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the content range of Kagawa overlap the instant claimed ranges and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 5-6, Liu, as modified by Kagawa, teaches thermally conductive carbon-based filler comprising flake graphite (paragraph [0071]).
Regarding claim 7, Liu, as modified by Kagawa, teaches the graphite having a particle size ranging from 5000-50000nm (i.e., 5-50µm) (paragraph [0073]).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN11245503A) and Aoyama et al. (U.S. Patent Application Publication 2016/0046774) as applied to claim 1 above, and further in view of Watanabe (U.S. Patent Application Publication 2013/0137322).
Regarding claims 8-9, Liu teaches the thermally conducting, electrically insulating film as described above in claim 1.
Liu does not teach the thermally conductive metal oxide or hydroxide filler accounts for 5-55% and further 20-50% of the weight of the thermally conductive, electrically insulating film.
Watanabe, also directed to a thermally conducting, electrically insulating film (paragraph [0001]), teaches a film including thermoplastic resin such as polypropylene (paragraph [0074]) and a filler such as aluminum oxide (same as Liu) (paragraph [0109]). Watanabe teaches the aluminum oxide being 40 wt% of the film (200 parts/(200 + 200 + 100)parts = 40%) (paragraph [0109]). Further, Watanabe teaches the filler helps with heat conduction (paragraph [0060]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Liu to include 40% wt of the aluminum oxide, as suggested by Watanabe, in order to optimize the heat conduction of the film.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN11245503A) and Aoyama et al. (U.S. Patent Application Publication 2016/0046774) as applied to claim 1 above, and further in view of Kudoh (U.S. Patent Application Publication 2023/0144307).
Regarding claims 12-13, Liu teaches the thermally conducting, electrically insulating film as described above in claim 1.
Liu does not teach the thermally conductive ceramic filler accounts for 2-50% and further 5-40% of the weight of the thermally conductive, electrically insulating film.
Kudoh, also directed to a thermally conducting, electrically insulating film (paragraph [0001]), teaches a film including a resin and a thermally conducting filler (paragraph [0010]). Kudoh teaches the thermally conducting filler such as boron nitride accounts for 20.5 % weight of the film (200 parts/(110+200+430+200+35)parts = 20.5% mass) (paragraph [0048]-[0049]). Further, Kudoh teaches the boron nitride provides high electrically insulating properties (paragraph [0048]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the film of Liu to include the thermally conductive ceramic filler in an amount of 20.5% weight of the film, as suggested by Kudoh, in order to optimize the electrical insulation properties of the film.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN11245503A) and Aoyama et al. (U.S. Patent Application Publication 2016/0046774) as applied to claim 1 above, and further in view of Eguchi et al. (U.S. Patent Application Publication 2014/0230887).
Regarding claims 17, Liu teaches the thermally conducting, electrically insulating film as described above in claim 1.
Liu does not teach the thermally conductive, electrically insulating film further comprises a flame-retardant accounting for 10-45% of the weight of the thermally conductive, electrically insulating film.
Eguchi, directed to a flame-retardant film for batteries (paragraph [0001]), teaches a film containing a flame retardant such as a phosphorous/nitrogen-containing flame retardant (i.e., phosphoramide) (paragraph [0076]) in the amount of 2-20 weight % (i.e., 2-20 parts by mass) of the film (claim 1). Further, Eguchi teaches the flame retardant can improve flame retardancy and molding fluidity of the film (paragraph [0076]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Liu to include a flame retardant in the thermally conductive, electrically insulating film in the amount of 2-20 weight % of the film, as suggested by Eguchi, in order to optimize the flame retardancy and molding fluidity of the film.
Regarding claim 18, Liu, as modified by Eguchi, teaches the flame retardant is a phosphorous/nitrogen-containing flame retardant (paragraph [0076]).
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Watanabe et al. (U.S. Patent Application Publication 2018/0163112). Watanabe teaches a thermally conducting sheet having a resin, graphite (paragraph [0007]) and aluminum oxide (paragraph [0137]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAN ROLDAN whose telephone number is (571)272-5098. The examiner can normally be reached Monday - Thursday 9:00 am - 7:00 pm.
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/CHRISTIAN ROLDAN/Primary Examiner, Art Unit 1723
1 https://en.wikipedia.org/wiki/Aluminium_oxide
2 https://www.preciseceramic.com/spherical-aluminum-nitride-powder.html
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