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 .
Claim Rejections - 35 USC § 112
Claims 6 and 12 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.
Each of claims 6 and 12 recites “the heat-absorbing material comprises but is not limited to one of or a mixture of a plurality of the following components in any ratio” followed by a list of compounds. The phrase “comprises but is not limited to” renders the claims indefinite because it is not clear if the claims require one or a mixture of a plurality of the listed compounds (“comprises”) or if the listed compounds are merely optional (“is not limited to”). The examiner believes Applicant intends for the claim to require at least one of the listed compounds while leaving the claim open to additional compounds as well. If this is the correct interpretation, the examiner respectfully suggests deleting “but is not limited to” because “comprises” is interpreted to be inclusive of any unrecited elements.
Claim Rejections - 35 USC § 103
Claim(s) 1-2, 4-7, and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ootsuki et al. (US 2021/0013460) in view of Hudler et al. (US 2013/0264023) and Kilhenny et al. (US 2021/0257690).
Regarding claim 1:
Ootsuki discloses a fire-resistant laminate for batteries which provides thermal runaway protection [abstract; 0001; 0007-0008]. The laminate comprises a base material and a fire-resistant resin layer and an adhesive layer in between [0009-0013; 0077-0080]. The base material can be selected from various materials, including non-metal inorganic material [0164]. The fire-resistant resin layer (high-heat-conductivity heat-absorbing material) comprises resin and a fire-resistant additive selected from at least one of an endothermic agent and a thermally expandable layered inorganic material, and optionally an inorganic filler [0085; 0148]. The endothermic agent absorbs heat in an amount of 900 J/g or larger, including amounts “usually” of up to 4,000 J/g and a thermal decomposition temperature (which would absorb heat) in the range of 50-400°C [0119-0125]. Specific examples include calcium sulfate dihydrate and magnesium sulfate heptahydrate [0117-0118]. The thermally expandable layered inorganic material comprises graphite [0137-0138]. The optional inorganic filler comprises carbon black, graphite, carbon fiber, etc. [0149]. The resin has adhesiveness (i.e., broadly considered a “glue”) [0093; 0096; 0111].
The examiner submits those disclosed heat-absorbing materials that are the same as presently claimed meet the claimed heat absorption enthalpy and chemical reaction requirement because they are otherwise the same as presently claimed. Alternatively, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the heat absorption enthalpy, including over amounts presently claimed, and thermal decomposition temperatures, including over temperatures within the claimed range, to provide the desired level of heat absorption and fire resistance for a given end use.
Ootsuki teaches the content of the fire-resistant additive is 50-2500 parts by mass per 100 parts by mass of resin (i.e., about 33-96% of fire-resistant additive and 4-66% resin by overall mass) (example calculation: 96%=100%*(2500/(2500+100))) [0143]. Of that amount, the endothermic agent and thermally expandable layered inorganic material make up 49-2400 parts by mass per 100 parts of resin, or about 33-92% by overall mass. Ootsuki further teaches the use of 1-300 parts by mass of thermally expandable layered inorganic material relative to 100 parts by mass of endothermic agent [0300]. Therefore, about 1-75% of the combination is thermally expandable layered inorganic material (i.e., about 0.33-69% thermally expandable layered inorganic material and about 8-91% of endothermic agent by overall mass) (example calculation: 8%=33%*0.25). The optional inorganic filler can be used in amounts of 10-300 parts by mass relative to 100 parts by mass of resin [0151]. Ootsuki therefore provides amounts of endothermic agent and thermally expandable graphite (and optionally carbon-based inorganic fillers) that overlap the claimed amounts. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the relative amount of each component, including over amounts within the present claimed ranges, to provide the desired heat absorption, fire resistance, mechanical properties, etc. as desired for a given end use, and thereby arrive at the claimed invention.
Ootsuki is silent with regard to a base material comprising a flame-retardant graphite heat-conducting film.
Such materials were known in the art to have utility. For example, Hudler discloses a latent heat storage device comprising a phase change material and thin layers of graphite on each side thereof, which provide heat conductivity to the phase change material [abstract; 0001; 0009-0013].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use two outer layers of graphite on the fire-resistant resin layer of Ootsuki to provide improved heat transfer to the fire-resistant resin layer, which is used to absorb heat in a thermal runaway condition. The graphite layer is considered to be flame retardant because it comprises the same materials as presently claimed.
Ootsuki is silent with regard to an adhesive layer that conducts heat.
Such materials were known in the art to have utility. For example, Kilhenny discloses a thermal management multilayer sheet for use a battery [abstract; 0006-0009]. The sheet includes two heat-spreading layers comprising graphite [0006; 0039-0040]. These layers are adhered to other layers via adhesives, which can contain thermally conductive fillers to further improve the heat spreading property [0054-0055].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use thermally conductive fillers in the adhesive of Ootsuki to provide improved heat spreading property between the graphite layers taught by Hudler and the fire-resistant resin layer taught by Ootsuki.
Regarding claim 2:
Ootsuki teaches the adhesive’s thickness is not particularly limited but can be in the range of 10-200 microns (0.01-0.20 mm) [0201]. The base material is also not particularly limited but can be 5-500 microns thick (0.005-0.5 mm) [0171]. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the thicknesses of the layers, including over values within the claimed range, to provide the desired heat transfer and mechanical properties as well as overall dimensions required for a given end use.
Regarding claim 4:
Ootsuki teaches the fire-resistant resin layer can be 2-5,000 microns thick (0.02-5.0 mm) [0201]. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the thicknesses of the layer, including over values within the claimed range, to provide the desired heat transfer and mechanical properties as well as overall dimensions required for a given end use.
Regarding claim 5:
Although Ootsuki in view of the other references does not disclose the claimed preparation method, note that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Ootsuki in view of the other references meets the requirements of the claimed composition, the prior art meets the requirements of present claims.
Regarding claims 6 and 12:
Ootsuki discloses an endothermic agent, a thermally expandable layered inorganic material, and optionally an inorganic filler as previously explained. Although the present claim further limits the flame-retardant graphite-loaded organic tin catalyst, the claim does not require its presence (i.e., the claim still encompasses 0% of the component). Therefore, the disclosures meet the claimed requirements.
Regarding claims 7 and 13:
Although the present claim further limits the flame-retardant graphite-loaded organic tin catalyst, the claim does not require its presence (i.e., the claim still encompasses 0% of the component). Therefore, the disclosures meet the claimed requirements.
Allowable Subject Matter
Claims 3, 8-11, and 14-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Ootsuki et al. (US 2021/0013460), Hudler et al. (US 2013/0264023) and Kilhenny et al. (US 2021/0257690) disclose the features described above, but are silent with regard to at least the following features of the present claims:
Regarding claims 3 and 11, the references are silent with regard to peripheral side surfaces of the laminated structure being packaged by means of edge sealing glue.
Regarding claims 8 and 14, the references are silent with regard to a heat-conducting film prepared by compounding flame-retardant graphite with plastic particles and a flame-retardant level of UL94-V0 and a heat-conducting glue having a heat conductivity of greater than 1 W/mK.
Regarding claims 9 and 15, the references are silent with regard to the steps of brushing upper and lower surfaces of the high-heat-conductivity heat-absorbing material with heat-conducting glue, performing flattening by means of a mold, curing at room temperature, cutting the material into a specified size, and brushing the side surfaces with edge sealing glue.
Regarding claim 10, the references are silent with regard to the combined features recited in steps S1 through S6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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