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 .
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 11 and 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.
Regarding claim 11, the phrase "e.g., mineral fibers" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 19 recites the limitation "the foam matrix" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Additionally, there appears to be a grammatical error with the claim. The claim would look better in compliance with US Patent Practice if rewritten as follows:
The firming particles, individually or in combination, exhibit one or more properties selected from viscosity increase of a silicone foam precursor, structural reinforcement, cost-effectiveness, endothermic activity, and fire retardancy of the silicone rubber foam layer.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-10, and 12-20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2022/0294044 to Kristy et al. (hereinafter “Kristy”).
The language in the claim indicates that a solid film is optional; therefore, the claimed thermal insulation/protection barrier can be free of the solid film.
As to claims 1, 4, 5, 12-18, and 20, Kristy discloses a composite thermal management sheet for a battery comprising a silicone rubber foam layer and a reactive filler composition disposed within the foam layer (abstract). The reactive filler composition includes a first filler that decomposes to generate water upon initial exposure to heat, and a second filler different from the first filler wherein the second filler forms a thermal barrier layer with a decomposition product of the first filler, and/or absorb the water (abstract). The silicone rubber foam layer comprises 30 to 60 wt% of the reactive filler composition wherein the reactive filler composition comprises aluminum trihydroxide (ATH), hydrous sodium silicate and zinc borate, and each of which corresponding to the claimed firming particle (paragraphs 66-69). The silicone rubber foam is free of microspheres and cenopheres, and thus a cured, non-syntactic foam layer (tables 2 and 4).
Kristy does not explicitly disclose that it takes a greater compressive force to compress the foam layer to a desired compression value, compared to the same silicone rubber foam layer without the firming particles.
However, it appears that the composite thermal management sheet is made of the same composition as the claimed thermal insulation/protection barrier. The composite thermal management sheet for a battery comprises a silicone rubber foam layer and a reactive filler composition disposed within the foam layer (abstract). The reactive filler composition includes a first filler that decomposes to generate water upon initial exposure to heat, and a second filler different from the first filler wherein the second filler forms a thermal barrier layer with a decomposition product of the first filler, and/or absorb the water (abstract). The silicone rubber foam layer comprises 30 to 60 wt% of the reactive filler composition wherein the reactive filler composition comprises aluminum trihydroxide (ATH), hydrous sodium silicate and zinc borate, and each of which corresponding to the claimed firming particle (paragraphs 66-69). The silicone rubber foam is free of microspheres and cenopheres, and thus a cured, non-syntactic foam layer (tables 2 and 4).
Therefore, the examiner takes the position that it would inherently take a greater compressive force to compress the foam layer to a desired compression value, compared to the same silicone rubber foam layer without the firming particles. In particular, the silicone rubber foam would inherently exhibit a compression value of no more than about 50%, wherein subjected to a compression force of at least 100 KPa. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claim 2, the silicone resin is obtained from a composition comprising a polysiloxane having vinyl groups, and a polysiloxane having terminal hydride groups, (paragraph 62; and table 4). Indeed, the WR-68 silicone hydride is a methyl hydrogen polysiloxane having four hydrogen atoms per molecule (3 hydrogen atoms from CH3 and 1 hydrogen atom from hydride). The silicone resin composition can be formed from a combination of several polysiloxane polymers having different functional or reactive groups including hydroxyl, vinyl, hydride, epoxy, and mercapto terminal groups (paragraph 62). This is a clear indication that the silicone resin is formed from one of polysiloxane polymers comprising hydroxide terminal groups, corresponding to the claimed hydroxyl compound C. Further, the silicone resin comprises benzyl alcohol that can read on the claimed hydroxyl compound C as well. The composition also contains a curing catalyst (paragraph 63).
As to claim 3, the composite thermal management sheet comprises a silicone rubber foam layer and a reactive filler composition uniformly distributed within the foam layer (paragraph 38).
As to claims 6 and 7, the composite thermal management sheet for a battery comprises a silicone rubber foam layer and a reactive filler composition disposed within the foam layer (abstract). The silicone rubber foam layer comprises 30 to 60 wt% of the reactive filler composition (paragraphs 66-69). The silicone rubber foam layer comprises 20 to 40 wt% of ATH, which includes the claimed amount of 40 wt% (paragraph 67).
As to claims 8-10, the silicone rubber foam layer comprises the ATH having a particle size of 1 to 5 microns, including the claimed size of 2 microns (table 1).
As to claim 19, the reactive filler composition imparts fire retardant (abstract). The reactive filler composition further includes reinforcing fibers to provide structural reinforcement to the foam matrix (paragraph 73).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kristy as applied to claim 1 above, and further in view of US 4,593,049 to Bauman et al. (hereinafter “Bauman”).
Kristy does not explicitly disclose the length of the reinforcing fiber.
Bauman, however, discloses a flame-retardant foam comprising a silicone rubber foam and flame-retardant additives incorporated into the foam (column 10, lines 15-20). The flame-retardant additives include non-flammable fibers and carbon black wherein the non-flammable fibers are ceramic fibers having an average diameter of less than 5 microns and length of less than 100 mm so that the fibers can be evenly and easily distributed throughout the mixture (column 10, lines 30-35).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the reinforcing fibers disclosed in Kristy having an average length disclosed in Bauman motivated by the desire to promote a uniform distribution of the fibers throughout the mixture.
Claims 1, 3, 4, 8, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2017/0305106 to Kato et al. (hereinafter “Kato”).
The language in the claim indicates that a solid film is optional; therefore, the claimed thermal insulation/protection barrier can be free of the solid film.
As to claim 1, Kato discloses a thermally conductive foam sheet for an electronic equipment comprising a silicone resin, thermally conductive particles, and bubbles dispersed in the silicone resin wherein the content of the thermally conductive particles is 100 to 400 parts by mass based on 100 parts by mass of the silicone resin (abstract). The foam sheet is free of microspheres and cenospheres (example 1), and thus a non-syntactic foam sheet. The foam sheet has a 25% compressive strength of 200 Kpa or less (abstract). The thermally conductive particles thus impart additional firmness to the foam so that it takes a greater compressive force to compress the foam layer to a desired compression value, compared to the same silicone rubber foam layer without the thermally conductive particles.
As to claim 3, the thermally conductive particles are uniformly distributed within the silicone rubber foam in view of uniform mixing of the composition prior to the foaming process (paragraph 68).
As to claim 4, the foam sheet has a 50% compressive strength of 160 Kpa (table 1, example 2).
As to claim 8, the foam sheet also contains magnesium hydroxide to impart flame retardant property (paragraph 41). The magnesium hydroxide reads on the claimed firming particle.
As to claim 19, the thermally conductive particles increase the viscosity of the silicone foam precursor. Further, the foam sheet also contains magnesium hydroxide to impart flame retardant property (paragraph 41).
As to claim 20, Kato does not explicitly disclose a battery assembly comprising the foam sheet. However, it appears that the thermally conductive foam sheet of Kato meets all structural limitations and chemistry required by the claims. The thermally conductive foam sheet comprises a silicone resin, thermally conductive particles, and bubbles dispersed in the silicone resin wherein the content of the thermally conductive particles is 100 to 400 parts by mass based on 100 parts by mass of the silicone resin (abstract). The foam sheet is free of microspheres and cenospheres (example 1), and thus a non-syntactic foam sheet. The foam sheet has a 25% compressive strength of 200 Kpa or less (abstract). The thermally conductive particles thus impart additional firmness to the foam so that it takes a greater compressive force to compress the foam layer to a desired compression value, compared to the same silicone rubber foam layer without the thermally conductive particles. Therefore, the examiner takes the position that the battery assembly would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Claims 5, 6, 9, 10, 13, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kato.
As to claims 5, 13 and 17, the foam sheet has a 25% compressive strength of 20 to 150 KPa (paragraph 30). Further, the foam sheet has a 50% compressive strength of 200 KPa or less (paragraph 31). This overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the compression force will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the compression force is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the compression force in the range instantly claimed, motivated by the desire to provide the thermally conductive foam sheet having a thinness and flexibility to be suitable used inside electronic equipment. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
As to claim 6, the content of the thermally conductive particles is 100 to 400 parts by mass based on 100 parts by mass of the silicone resin (abstract). Hence, the thermally conductive particles are present in an amount of 50 to 80 wt%, which overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the content of the thermally conductive particles will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the content of the thermally conductive particles is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the content of the thermally conductive particles in the range instantly claimed, motivated by the desire to provide sufficient thermal conductivity while maintaining great flexibility. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
As to claim 9 and 10, the thermally conductive particles have an average particle size in a range of 0.5 to 15 microns (paragraph 25).
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the average particle size of the thermally conductive particles will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the average particle size of the thermally conductive particles is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the average particle size of the thermally conductive particles in the range instantly claimed, motivated by the desire to obtain a thin foam sheet having good foamability. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kato as applied to claim 1 above, further in view of Kristy.
Kato discloses that the silicone resin obtained by curing a curable silicone resin composition comprising (A1) an organopolysiloxane having at least two alkenyl groups in one molecule, (A2) an organohydrogen polysiloxane having at least two hydrogen atoms bonded to silicon atoms in one molecule and (A3) a platinum-based catalyst.
Kato does not explicitly disclose the silicone resin composition comprising at least one hydroxyl containing compound.
Kristy, however, discloses that the silicone resin is obtained from a composition comprising a polysiloxane having vinyl groups, and a polysiloxane having terminal hydride groups, (paragraph 62; and table 4). Indeed, the WR-68 silicone hydride is a methyl hydrogen polysiloxane having four hydrogen atoms per molecule (3 hydrogen atoms from CH3 and 1 hydrogen atom from hydride). The silicone resin composition can be formed from a combination of several polysiloxane polymers having different functional or reactive groups including hydroxyl, vinyl, hydride, epoxy, and mercapto terminal groups (paragraph 62). This is a clear indication that the silicone resin is formed from one of polysiloxane polymers comprising hydroxide terminal groups, corresponding to the claimed hydroxyl compound C. The composition also contains a curing catalyst (paragraph 63).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a polysiloxane having terminal hydroxyl groups disclosed in Kristy in the silicone resin composition of Kato, motivated by the desire to provide reactive sites for curing and crosslinking.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights