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 .
Election/Restrictions
Applicant’s election of Group I, Claims 1-21, in the reply filed on 2/16/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 22-35 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/16/2026.
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 1-21 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. The term “malleable” in claim 1 is a relative term which renders the claim indefinite. The term “malleable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In looking to the specification, it is noted that Paragraph 0059 (of the specification as filed) recites, “The malleable layer also provides protection to the insulation layer, however, the malleable layer also provides additional support to the insulation layer as a rigid, but malleable support for the insulation layer” (emphasis added), however, given that “rigid” is a known antonym for “malleable” (see attached Google AI Search results) and that the specification does not clearly define the relative term, it is unclear as to how rigid or flexible a layer or material or polymer (see particularly claim 11 which recites “malleable polymer”) would need to be in order to be considered “malleable” according to the claim(s) versus a layer or material or polymer that is not “malleable”.
Dependent claims 2-21 do not remedy the above and hence are indefinite for the same reasons.
Claim 4 is 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 4 recites, “wherein the outer polymer layer is made from a polymer selected from the group consisting of polyoxymethylene…polyester… polyimide, and terephthalate,” however, given that “terephthalate” is not a polymer, it is unclear as to what is meant to be encompassed by the claimed “polymer selected from…terephthalate”.
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.
Claims 1-16 and 19-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ninomiya (JP2020-161290A, please refer to the machine translation sent with the prior office action for the below cited sections). As briefly discussed in the prior office action, Ninomiya discloses 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 (“malleable layer of malleable material”, 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), and hence, Ninomiya anticipates instant claim 1.
With respect to instant claims 2-8, 10-16, and 19-20, Ninomiya specifically discloses 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 “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 “malleable layer” as in instant claim 1, and particularly as in instant claim 10 with a thickness as in instant claim 14); a 15 µm thick unoriented nylon film as a reinforcing layer (124) (also reading upon the claimed “malleable layer” as in instant claim 1, and particularly a “malleable polymer” as in instant claim 11, with a thickness as in instant claim 14 whether taken alone or in combination with the aluminum layer); 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, Ninomiya anticipates instant claims 2-8, 10-16, and 19-20.
With respect to instant claim 9, Ninomiya discloses 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, Ninomiya anticipates instant claim 9.
Further with respect to claim 20 as well as claim 21, Ninomiya discloses that the outer casing may be formed from two sheets as in instant claim 20 as demonstrated by Example 1, or a folded sheet as in instant claim 21, and sealed via the inner sealant resin layer(s), and hence, Ninomiya anticipates instant claim 20 as well as instant claim 21.
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 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ninomiya (JP2020-161290A), as applied above to claims 1-16 and 19-21, and further discussed below.
The teachings of Ninomiya are discussed in detail above and incorporated herein by reference, wherein in addition to the above, 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/mK at 25°C, Ninomiya does not specifically teach the thermal conductivity properties as recited in instant claim 17 (Paragraph 0031; Examples). However, given that Ninomiya does teach that the thermal insulation material may be an aerogel, as noted above and specifically as recited in instant claim 18, which is known in the art to exhibit thermal conductivity properties as instantly claimed, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the instantly claimed invention as recited in instant claims 17-18 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.
Claims 1-21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Williams (US2025/0038311A1). Williams discloses an insulation barrier, particularly an encapsulated aerogel thermal barrier, for use between battery cells or battery modules in an energy storage system (Paragraph 0002), wherein the insulation barrier comprises an insulation layer (as in instant claim 1) that preferably comprises an aerogel (as in instant claim 18) and has a thermal conductivity through a thickness dimension of said insulation layer of less than about 50 mW/m-K at 25° C and less than about 60 mW/m-K at 600° C (as in instant claim 17, Paragraph 0015); and an encapsulation layer at least partially surrounding the insulation layer (as in instant claim 1) and comprising a laminate film including an outer polymer layer (as in instant claim 1), a rigid layer such as a metal foil (reading upon the claimed “malleable layer” of instant claim 1, and particularly as in instant claim 10), and an inner polymer layer (as in instant claim 1), wherein the inner polymer layer is in contact with the insulation layer and the rigid layer (“malleable layer”) is disposed between the outer polymer layer and the inner polymer layer (Entire document, particularly Abstract; Fig. 25; Paragraphs 0002, 0012, and 0015). Hence, Williams anticipates instant claims 1, 10, and 17-18.
With respect to instant claims 2-4, Williams discloses that the outer polymer layer comprises a polymer that is resistant to dielectric heat transfer fluids as in instant claim 2, and particularly fluids as in instant claim 3 (Paragraph 0018), with specific polymers as recited in instant claim 4 (Paragraph 0018), thereby anticipating instant claims 2-4.
With respect to instant claims 5-7, Williams discloses that the inner polymer layer comprises a polymer that can be heat welded to itself as in instant claim 5, such as a polyolefin polymer as in instant claim 6, and in some aspects, the inner polymer is composed of a polymer that is different from the polymer in the outer polymer layer as in instant claim 7 (Paragraph 0019), thereby anticipating instant claims 5-7.
With respect to instant claim 8, Williams discloses that in a specific aspect, the outer layer is composed of PET or a nylon polymer such as an oriented nylon (ONy), and the inner polymer layer is composed of PP or polyethylene (PE) (Paragraphs 0020 and 0134), thereby anticipating instant claim 8.
With respect to instant claim 9, Williams discloses that the outer layer can be composed of two or more polymer layers, wherein the additional outer polymer layers may be formed from the same polymer or different polymers, with one aspect of the invention including an outer layer that is composed of an ONy polymer layer having an overlying PET polymer layer (Paragraph 0135), thereby anticipating instant claim 9.
With respect to instant claims 10-11, it is again noted that Williams specifically discloses that in some aspects, the “rigid layer” comprises a metal foil, such as an aluminum foil (as in instant claim 10), while in some aspects, the rigid layer comprises a polymer with examples thereof including nylon, modacrylic, and aromatic polyamide or aramid, reading upon the claimed “malleable polymer” as recited in instant claim 11 (Paragraphs 0021-0022; Claims 14-17). Hence, Williams anticipates instant claims 10 and 11.
With respect to instant claim 12, Williams discloses that in an aspect of the disclosure, the encapsulation layer further comprises an adhesive disposed between the outer polymer layer and the rigid (“malleable”) layer and/or the inner polymer layer and the rigid (“malleable”) layer as instantly claimed (Paragraph 0024), and hence Williams anticipates instant claim 12.
With respect to instant claims 13-16, Williams discloses thicknesses as instantly claimed with respect to the outer polymer layer as in instant claim 13, the rigid (“malleable”) layer as in instant claim 14, the inner polymer layer as in instant claim 15, and the total thickness of the encapsulation layer as in instant claim 16 (Paragraphs 0025 and 0147; Claims 20-23). Hence, Williams anticipates instant claims 13-16.
With respect to instant claim 19, Williams discloses that the encapsulation layer may completely surround the insulation layer as in instant claim 19 (Paragraph 0028), thereby anticipating instant claim 19.
With respect to instant claims 20-21, Williams discloses that the encapsulation layer may be composed of two laminate films or sheets as shown in Fig. 1 that are sealed or heat welded together as in instant claim 20 (Paragraphs 0028 and 0085, Fig. 1); or by a single film that is folded and heat welded to itself to form an envelope or an enclosure that at least partially surrounds the insulation layer, e.g., as shown in Figs. 6 and 11, as in instant claim 21 (Paragraphs 0086 and 0105, Figs. 6 and 11), thereby anticipating instant claims 20-21 (Entire document, particularly as noted above and Paragraphs 0028-0029 and 0139).
The applied reference has a common joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Double Patenting
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.
Claims 1-8 and 10-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-17, and 19-23 of copending Application No. 18/716106 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claims 1, 8-17, and 19-23 encompass and/or render obvious all of the limitations of instant claims 1-8 and 10-19 given that copending claim 1 is similarly directed to an insulation barrier for use in an electrical energy storage system with the insulation barrier comprising at least one insulation layer; and an encapsulation layer at least partially surrounding the insulation layer, wherein the encapsulation layer comprises a laminate film comprising an outer polymer layer, a rigid layer (that reads upon the claimed “malleable layer” given the lack of clarity thereof), and an inner polymer layer, wherein the inner polymer layer is in contact with the insulation layer and wherein the rigid (“malleable”) layer is disposed between the outer polymer layer and the inner polymer as in instant claim 1, such that instant claim 1 would have been obvious over copending claim 1. Further, instant claims 2-4 would have been obvious over copending claim 10 which recites the same polymers as recited in instant claim 4 which are resistant as instant claims 2-3; instant claims 5-6 would have been obvious over copending claim 11 which recites a polyolefin polymer as in instant claim 6 and renders instant claim 5 obvious given that polyolefins are polymers that can be heat welded to themselves; the limitations of instant claims 7 and 8 are recited in copending claims 12 and 13, respectively; the “metal foil” of instant claim 10 would have been obvious over the metal layer of copending claim 14 or particularly aluminum of copending claim 15; the “malleable polymer” of instant claim 11 would have been obvious over the “rigid” polymer of copending claim 16 or particularly the polymers of copending claim 17; the limitation of claim 12 is recited in copending claim 19; the thicknesses of instant claims 13-16 would have been obvious over the thicknesses of copending claims 20-23, respectively; the limitations of instant claims 17 and 18 are recited in copending claims 8 and 9, respectively; and the “completely surrounds” limitation of claim 19 would have been obvious over the “at least partially surrounding” limitation of copending claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 9 and 20-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, and 13 of copending Application No. 18/716106, as applied above to instant claim 1, and in further view of Ninomiya, wherein with respect to instant claim 9, although copending claim 10 recites that the outer polymer layer is made from a polymer selected from various polymers while copending claim 11 recites that the outer polymer layer is composed of PET or a nylon polymer, the copending claims do not recite that the outer polymer layer is composed of two polymer films of different materials as in instant claim 11. However, Ninomiya, discussed in detail above and incorporated herein by reference, discloses a similar insulation barrier wherein an outer protective polymer layer may be formed from similar polymers as in copending claim 10 or copending claim 11, and given that Ninomiya specifically discloses the outer protective layer 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, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to similarly utilize two different polymer layers or films for the outer polymer layer of copending claim 1 such as any of the two polymers of copending claim 10 or 11, such that instant claim 1 would have been obvious over copending claim 1, 10, or 11 in view of Ninomiya.
With respect to instant claims 20-21, although copending claim 1 recites that the encapsulation layer at least partially surrounds the insulation layer and comprises a laminate film as in instant claim 1, the copending claims do not recite that the encapsulation layer is composed of two laminate films that are heat welded together as in instant claim 20, or that the encapsulation layer surrounds the insulation layer and is heat welded to itself to form an enclosure at least partially surrounding the insulation layer as in instant claim 21. However, as noted above, Ninomiya discloses that the outer casing, similar to the claimed encapsulation layer of copending claim 1 and instant claim 1, may be formed from two sheets as in instant claim 20 as demonstrated by Example 1, or a folded sheet as in instant claim 21, and sealed via the inner sealant resin layer(s) of said sheet(s) as in instant claims 20-21, and hence, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to similarly utilize two laminated films in forming the insulation layer of copending claim 1 as in instant claim 20, or a single laminated film as in instant claim 21, as in the invention taught by Ninomiya to at least partially surround the insulation layer by the encapsulation layer of copending claim 1, thereby rendering instant claims 20-21 obvious over copending claim 1 in view of Ninomiya.
This is a provisional nonstatutory double patenting rejection.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ninomiya (US2023/0335850A1) discloses a battery pack comprising a separation member that has a heat insulating portion comprising a porous sheet of a heat insulating material encapsulated within a metal laminate film as an exterior body including a metal foil positioned between a PET resin layer as an outer layer, and a polyethylene inner layer. Honda (US2021/0013471A1) discloses a partition member for a battery pack comprising a thermal insulation material formed of a porous body including a fibrous substance and particles such as aerogel particles, wherein the thermal insulation material is completely encapsulated within an outer package body that is a laminated body of a metal foil and a resin, particularly a laminate comprising at least three layers including an outer resin layer, a metal foil layer, and a resin sealant layer.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787