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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "9" and "11" have both been used to designate an unwinding roll. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "10" and "12" have both been used to designate a winding roll. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
This application does not contain an abstract of the disclosure as required by 37 CFR 1.72(b). An abstract on a separate sheet is required.
The disclosure is objected to because of the following informalities: previously labeled "300" as battery pack on page 3, line 1 but changed "300" to be battery module on page 19, line 10. Also previously labeled “302” as being battery modules on page 3, line 1 but changed “302” to be battery cells on page 19, line 10.
Appropriate correction is required.
The disclosure is objected to because of the following informalities: flurorocarbons should be fluorocarbons on page 7, line 8.
Appropriate correction is required.
The disclosure is objected to because of the following informalities: 1 mmm/min should be 1 mm/min on page 37, line 21.
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 6 is objected to because of the following informalities: “flurorocarbons” should be “fluorocarbons.” Appropriate correction is required.
Claim 9 is objected to because of the following informalities: the thermally resistant layer cannot both "consists" and "comprises" please choose one transitional phrase. Where consists means excludes any element not specified and comprises means inclusive to any additional, unrecited elements. Will affect broadness of claim. Appropriate correction is required.
Claim 11 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. See MPEP § 608.01(n). Accordingly, the claim has not been further treated on the merits.
Claim 14 is objected to because of the following informalities: there is a comma after silica at the end of the claim instead of a period. Appropriate correction is required.
Claim Interpretation
Based on other amendments it has been interpreted that claim 11 is dependent on claim 1 as to give a compact prosecution. Applicant should verify.
Claim 9 will be interpreted with the broadest reasonable interpretation unless clarified which transitional phrase was intended by Applicant.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
To satisfy the enablement requirement of 35 U.S.C. 112, first paragraph, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without "undue experimentation." See, e.g., In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988). In In re Wands, the court set forth the following factors to consider when determining whether undue experimentation is needed: (1) the breadth of the claims; (2) the nature of the invention; (3) the state of the prior art; (4) the level of one of ordinary skill; (5) the level of predictability in the art; (6) the amount of direction provided by the inventor; (7) the existence of working examples; and (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. Wands, 858 F.2d at 737. The undue experimentation determination is not a single factual determination. Rather, it is a conclusion reached by weighing all the factual considerations. Wands, 858 F.2d at 737.
Whether the specification would have been enabling as of the filing date involves consideration of the nature of the invention, the state of the prior art, and the level of skill in the art. The initial inquiry is into the nature of the invention, i.e., the subject matter to which the claimed invention pertains. The nature of the invention becomes the backdrop to determine the state of the art and the level of skill possessed by one skilled in the art. See MPEP § 2164.05(a).
Claim 1 states the multilayer thermal barrier comprises one or more thermally-insulating porous foam layers, one or more thermally resistant layers disposed on the thermally-insulating porous foam layer, wherein a thermally-insulating porous foam layer alternates with a thermally resistant layer, wherein the thermally resistant layers comprise insulative particles, and must meet three test conditions:
Condition one: exhibits a pressure of at least 30 kPa when subjected to a compression of 20%,
Condition two: exhibits a pressure of less than 2,500 kPa when subjected to a compression of 55%;
Condition three: wherein the cold plate takes more than 500 seconds to reach 150°C in a HCST test.
As to the breadth of the claims, In claim 1, the transitional phrase comprising is used, showing the claims are not limited to what is specifically recited in the claims. This renders the claim language with a wide breadth. Additionally, the ranges given for pressures caused by compression, weight ratios, and weight percents are large further increasing breadth; The nature of the invention is for a cushioning article capable of pressure management and thermal insulation properties, particularly in application of electric batteries;
In the prior art, Kilhenny et al (US-20210257690-A1) teaches of a multilayer thermal barrier (see e.g. thermal management multilayer sheet “401” in paragraph 39 and Figure 6), comprising one or more thermally-insulating porous foam layer (see e.g. thermally-insulating layer “62” in paragraph 39 that is preferably porous in paragraph 42 with polymer foam being a preferable embodiment in paragraphs 43 and 61 and Figure 6), one or more thermally resistant layers disposed on the thermally-insulating porous foam layer (see e.g. first heat-spreading layer “61” disposed on the first side “62a” of the thermally-insulating layer “62” and a second heat-spreading layer “63” on the second side “62b” of the thermally-insulating layer “62” in paragraph 39 and Figure 6), wherein a thermally-insulating porous foam layer alternates with a thermally resistant layer (see e.g. Figure 6), wherein the thermally resistant layers comprise insulative particles (see e.g. optional adhesive layer on the first/second heat-spreading layer "61/63" can comprise an inorganic filler that is either heat spreading or thermally-insulating in paragraph 54),
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834
458
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Figure 6: Labeled Kilhenny et al (US-20210257690-A1) Published 8/19/2021
Kilhenny et al further teaches wherein the multilayer thermal barrier exhibits a pressure of at least 30 kPa when subjected to a compression of 20% (see e.g. where at 25% compression force deflection is 351.5-70,307 Kg/m^2 and force deflection at 10% results in a 7-1724 kPa in paragraph 61 and 62 and in Table 1), wherein the multilayer thermal barrier exhibits a pressure of less than 2,500 kPa when subjected to a compression of 55% (see e.g. paragraph 61 and 62 and Table 1).
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565
713
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Table 1: Highlighted Kilhenny et al (US-20210257690-A1) Published 8/19/2021
Dietz (US-20090304560-A1) teaches of a material similar to the thermally resistant layer, that comprises a: a layer of nonwoven fibrous thermal insulation, further comprising a fiber matrix of inorganic fibers (see e.g. mat layers, specifically nonwoven mat layer made from glass, ceramic and other inorganic fibers in paragraphs 40-41, 82, 87, and 93), thermally insulative inorganic particles of irreversibly expanded intumescent materials dispersed within the fiber matrix (see e.g. where expandable intumescent inorganic particles can be added as a subset of binders to the fibers composition and colloidal inorganic particles acting as an adhesive in paragraphs 16, and 65-67), and a binder dispersed within the fiber matrix so as to hold together the fiber matrix (see e.g. organic binders mixed with glass fibers, fibers, fillers to improve resiliency and strength, acting similar to an adhesive in paragraphs 35 and 40). Along with other more specific properties described in additional claims.
Additional sources list similar inventions showing not only the knowledge of the problem, but also various solutions that mirror the instant application. Based on the prior art, a material scientist or engineer with an undergraduate degree or higher, would find the instant application moderately predictable;
However, there is minimal direction provided by the inventor as to how to meet the requirements of the application using the embodiments provided; There is a lack of existence of working and prophetic examples within the specification as In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998). The examples shown do not show all claimed conditions are met simultaneously (see e.g. Table 5 of the instant application). Examples 1 and 2 do not meet the third condition of taking more than 500 seconds to reach 150°C. While Examples 3 and 4 meet this the third condition, they fail to meet the first condition of exhibiting at least 30 kPa at 20% compression. Condition two cannot be properly judged as there is no 55% compression, however it can be extrapolated that examples meet that condition. Additionally comparable example 2 meets all the conditions while being prior art, calling novelty into question. It would take an undo amount of experimentation and time to achieve a working example that met all the claimed requirements set forth in claim 1. Different combinations/embodiments not listed would have to be tried, before a working example was found.
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449
778
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Table 5: Highlighted Instant Application (18/875,980)
Based upon a totality of the Wands factors there does not appear to be adequate disclosure in the specification of how to make the invention as claimed.
Additional References
Additional references that were found to read on the claims presented are Fay et al (US-20020017590-A1) discloses weight ratio and encapsulation, Juen (US-5574073-A) discloses
organopolysiloxane foam, Middendorf (EP-3663451-A1) discloses mechanical cycling tests, Fernando et al (US-20140147615-A1) discloses an insulative multilayer barrier and a flame test, Shayan et al (US-20210151816-A1) discloses a two layered thermal and compression barrier with mechanical tests, and Evans et al (US-20210163303-A1) discloses an aerogel thermal and compression barrier with mechanical tests.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARA N WHIPKEY whose telephone number is (571)270-0873. The examiner can normally be reached Monday-Friday 8:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571) 270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.N.W./ Examiner, Art Unit 1781
/FRANK J VINEIS/ Supervisory Patent Examiner, Art Unit 1781
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