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 .
The amendment filed 8/18/2026 has been entered. Claims 10-11, 14, and 17 have been canceled. Claims 1-9, 12-13, 15-16, and 18-35 are pending in the application. Claims 22-35 have been withdrawn from consideration as being directed to nonelected inventions. Election was made without traverse in the reply filed 2/16/2026. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-9, 12-13, 15-16, and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Ninomiya (JP2020-161290A, please refer to the machine translation of record for the below cited sections) for generally the reasons recited in the prior office action and restated below with respect to the amended claims, and as further evidenced by Bi (CN109320195A, see attached machine translation for the below cited sections), or He (CN112677580A, see attached machine translation for the below cited sections), or Song (KR20180013554A, see attached machine translation for the below cited sections), or Kawakami (US2024/0400464A1), or Imae (US2014/0057083A1).
As discussed in the prior office action, Ninomiya teaches a partition member (1), particularly for a battery pack (e.g., an electrical energy storage system), comprising a heat insulating material (130) (reading upon the claimed “at least one insulation layer”) and an exterior body (110) at least partially encapsulating the heat insulating material (130), wherein the exterior body (110) is provided as a laminate (reading upon the claimed encapsulation layer/laminate film) comprising a base material and a resin, preferably a laminate of three or more layers including a protective resin layer (123) (“outer polymer layer”), a metal base layer (122) such as an aluminum foil (“a metal foil layer comprising a metal foil”, Paragraph 0054), and a sealant resin layer (121) (“inner polymer layer”) which is in contact with the heat insulating material (130), and with the metal (foil) layer (122) disposed between the (outer) protective resin layer (123) and the (inner) sealant resin layer (121) (Entire document, particularly Abstract; Paragraphs 0015, 0044, 0054-0055). Ninomiya teaches that there is no particular limitation on the thickness of the meta layer, but from the viewpoint of ensuring moisture permeability and suppressing pinhole formation, it is preferably 5 µm or more, more preferably 8 µm or more, and even more preferably 12 µm or more, while from the viewpoint of ensuring flexibility, it is preferably 50 µm or less, more preferably 35 µm or less, and even more preferably 20 µm or less (Paragraph 0046, reading upon the claimed “metal foil layer has a thickness of about 10 µm to about 40 µm” as recited in amended claim 1).
Ninomiya teaches that the thermal insulation material (130) is formed from a material containing a porous body, and that the porous material contains at least one of fibrous material and particles, with suitable materials for the porous body recited in Paragraph 0030, including silica, vermiculite, and aerogel (as recited in instant claim 18); and although Ninomiya specifically determines the thermal resistance (e.g., inversely proportion to thermal conductivity) of the partition members in the working examples as noted in Paragraph 0064 with working example 1 utilizing a porous vermiculite sheet wherein vermiculite is known to have a very low thermal conductivity of about 50 mW/m-K at 25°C, Ninomiya does not teach that the thermal insulation/heat insulating material layer (130) has a thermal conductivity through a thickness dimension of less than about 50 mW/m-K at 25°C and less than about 60 mW/m-K at 600°C as instantly claimed, which is the only difference between the instantly claimed insulation barrier of instant claims 1 and 18, and the partition member taught by Ninomiya (Paragraph 0031, Examples). However, it is again noted that Ninomiya specifically teaches that the thermal insulation material may be an aerogel, as recited in instant claim 18, which as noted in the prior office action is known in the art to exhibit thermal conductivity properties as instantly claimed (as evidenced by Bi, Entire document, particularly Paragraphs 0004-0005, Examples, Fig. 2; or He, Paragraph n0003; or Song, Paragraphs 0023, 0052-0054, Examples; or Kawakami, Entire document, particularly Paragraphs 0042, 0045, 0050, 0070-0072, Examples; or Imae, Entire document, particularly Abstract, Paragraphs 0012-0016, 0026-0030, 0073, Claims 31-32); and hence, the Examiner again takes the position that absent any clear showing of criticality and/or unexpected results, the instantly claimed invention as recited in instant claims 1 and 18 would have been obvious over the teachings of Ninomiya given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, wherein one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to determine the optimum material(s) or aerogel as taught by Ninomiya to utilize as the thermal insulation material (130) to provide the desired thermal resistance and/or thermal conductivity for a particular end use of the invention taught by Ninomiya, rendering the claimed invention obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, e.g., given that the claimed thermal conductivity properties as recited in amended claims 1 and 18 are typical in the art with respect to an aerogel insulation layer as evidenced by Bi or He or Song or Kawakami or Imae.
With respect to instant claims 2-8, 12-13, 15-16, and 19-20, Ninomiya specifically teaches a working example (Example 1), wherein the exterior body (110) or outer casing is formed from two sheets of aluminum laminate film comprising, in order, a 12 µm thick polyethylene terephthalate (PET) film as an outer protective resin layer (123) (reading upon the claimed outer polymer layer as in instant claim 1, and particularly as in instant claims 2-4, 8, and 13 given that PET, as specifically recited in instant claim 8, is a polymer that is “resistant to dielectric heat transfer fluids” as in instant claim 2, and particularly “resistant to a heat transfer fluid” as in instant claim 3, is a polyester or “polyethylene terephthalate” polymer as in instant claim 4, and has a thickness within the claimed range of about 10 µm to about 100 µm as in instant claim 13); a 12 µm thick aluminum foil layer as the metal base layer (122) (reading upon the claimed “metal foil layer” as in instant claim 1); a 15 µm thick unoriented nylon film as a reinforcing layer (124); and a 60 µm thick unoriented polypropylene (PP) film as an inner sealant resin layer (121) (reading upon the claimed inner polymer layer as in instant claim 1, and particularly as in instant claims 5-8 and 15 given that unoriented PP, as specifically recited in instant claim 8, can be heat welded to itself as in instant claim 5, is a polyolefin polymer as in instant claim 6, is a different polymer than the PET of the outer layer as in instant claim 7, and has a thickness within the range recited in instant claim 15); with a 5 µm thick polyurethane adhesive layer between each layer (as in instant claim 12), for a total thickness of 112 µm (as in instant claim 16), wherein the two sheets are heat fused or heat welded (as in instant claim 20) together on three sides, and after insertion of an insulation material into the unfused portion of the exterior body, the unfused portion is sealed by heat fusion such that the exterior body completely surrounds the insulation material as in instant claim 19 (Example 1). Hence, the claimed invention as recited in instant claims 2-8, 12-13, 15-16, and 19-20 would have been obvious over the teachings of Ninomiya (as evidenced by Bi or He or Song or Kawakami or Imae) given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claim 9, Ninomiya teaches that the protective resin layer can include any of the polymers recited in Paragraph 0049, and may consist of only one layer, or two or more layers may be laminated together, wherein in the case of two or more layers, one may choose from different resin layers as in instant claim 9, or the same resin layer (Paragraph 0049), and hence, the claimed invention as recited in instant claim 9 would have been obvious over the teachings of Ninomiya (as evidenced by Bi or He or Song or Kawakami or Imae).
Further with respect to instant claim 20 as well as instant claim 21, Ninomiya teaches that the outer casing may be formed from two sheets as in instant claim 20 as demonstrated by Example 1, or formed from a folded sheet as in instant claim 21, and sealed via the inner sealant resin layer(s), and hence, the claimed invention as recited in instant claim 20 as well as in instant claim 21 would have been obvious over the teachings of Ninomiya (as evidenced by Bi or He or Song or Kawakami or Imae).
Response to Arguments
Applicant's arguments filed 8/18/2026 have been fully considered but they are not persuasive with respect to the obviousness rejection over Ninomiya as applied above to the amended claims. Specifically, in response to the Examiner’s previous position that it would have been obvious to determine the optimum material(s) or aerogel as taught by Ninomiya to utilize as the thermal insulation material (130) to provide the desired thermal resistance and/or thermal conductivity for a particular end use of the invention taught by Ninomiya, the Applicant argues that “revised claim 1 is not merely directed to a general selection of materials having ‘suitable’ thermal conductivity” but rather, “claim 1 defines specific and quantitative thermal conductivity ranges at two different temperatures, which imposes a dual condition constraint on material selection” and that “[s]uch a requirement is technically meaningful, as thermal conductivity of materials may vary significantly with temperature, and satisfying specific ranges simultaneously at two distinct temperature points is [allegedly] not a routine or arbitrary selection” (see page 10 of the response, first and second full paragraphs). The Applicant then argues that “[i]n the absence of any disclosure or teaching in Ninomiya regarding thermal conductivity behavior across different temperatures, a person having ordinary skill in the art [allegedly] would not be motivated to derive the claimed numerical ranges, nor would they [allegedly] have had a reasonable expectation of successfully satisfying both conditions concurrently” (see page 10, third full paragraph). However, the Examiner respectfully disagrees and again notes that Ninomiya clearly teaches that the heat insulating layer is formed of a material containing a porous body with specific preferred materials for forming said porous body or sheet including porous vermiculite as utilized in the non-limiting working examples, as well as fumed silica and aerogel, and given that an aerogel insulating layer is known in the art to exhibit thermal conductivity properties as instantly claimed as evidenced by Bi or He or Song or Kawakami or Imae, and more particularly, is known to have a thermal conductivity of “less than about 50 mW/m-K” at the claimed higher temperature of 600°C such that it would also exhibit a thermal conductivity of “less than about 50 mW/m-K” at the claimed lower temperature of 25°C given the known trend in the thermal conductivity of an aerogel as a function of temperature, i.e., as temperature increases, thermal conductivity increases, Applicant’s arguments that “a person having ordinary skill in the art [allegedly] would not be motivated to derive the claimed numerical ranges, nor would they [allegedly] have had a reasonable expectation of successfully satisfying both conditions concurrently” based upon the teachings of Ninomiya are not persuasive. Hence, the Examiner maintains her position that absent any clear showing of criticality and/or unexpected results, the instantly claimed invention would have been obvious over the teachings of Ninomiya given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize an aerogel insulating layer, which is known in the art to exhibit thermal conductivity properties as instantly claimed (as evidenced by Bi or He or Song or Kawakami or Imae) in the invention taught by Ninomiya given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 8/18/2026.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
