DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 20 August 2024 has been entered.
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 5-24 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.
Claims 5 and 14 as presently amended recite that “the power switch is positioned entirely within the internal volume of the battery pack housing” and also that it “is accessible from outside the battery pack housing.” This claim is indefinite because it is ambiguous due to the contradictory requirements, and is unclear as to what portion of the switch is located inside the battery pack and which portion is located outside. The claims states that the switch is “positioned entirely within the internal volume” of the housing, wherein a person of ordinary skill in the art would normally interpret this to mean that all components of the switch, including whatever actuator portion that allows adjustment between on and off, are inside of the housing. But the claim also requires that the switch also be “accessible from the outside” the housing, that if the switch were entirely located inside of the internal volume of the battery pack housing, then nothing of the switch would be outside. These two recitations literally contradict each other. The claims are indefinite since the limitations simultaneously requires the switch to be wholly inside the housing year useable from the outside without reciting structure for how these limitations can both be satisfied.
Response to Arguments
Applicant's arguments filed with respect to the 35 SUC 102(a)(1) rejection of claims 5-7, 13-18, and 24 as being anticipated by Schaefer (US Patent no. 4,709,201) have been fully considered but they are not persuasive.
The Examiner disagrees with Applicant’s contention that Schaefer fails to show that a power switch is positioned entirely within the internal volume of the battery pack housing and accessible from the outside of the battery pack housing. Schaefer, at Figure 4, depicts the power switch 32 situated with internal circuitry within the battery housing 14. The actuation of the switch, which connects the positive terminal of battery 58 to isolation diode 62, necessarily occurs inside the housing, rather than outside of housing 14. In other words, the electrical connections that open or close the circuit to either interrupt or complete the current path are located within the internal volume of the battery pack. Furthermore, figure 3 of Schaefer illustrates the actuator that permits the switch to internally interrupt or complete the internal circuit components. Accordingly, the physical connections and disconnections effected by the switch are reasonably interpreted to be positioned entirely within the internal volume of the battery pack housing.
The rejection formulated on the basis of Shaefer is maintained. Updated rejections follow below.
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 5-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,291,827. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘827 patent anticipates the limitations presently recited in claims 5 and 14 of the present invention.
Regarding claims 5 and 14, claims 1, 9, 12, and 16 of the ‘827 patent is found to disclose the recited features of a battery pack housing comprising the first and second power leads configured as claimed. Furthermore, the ‘827 patent also recites the features of the power switch positioned within the battery pack housing and accessible from out of the battery pack housing, wherein the switch is adjustable between and on state and an off state. The recitation that the power switch is “positioned within” the battery pack housing can properly be construed to encompass “entirely” as presently claimed since there is no feature recited limiting the extent. In view of this, the present invention is not considered to be patentably distinct.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 5-7, 13-18, and 24 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Schaefer et al. (US Patent no. 4,709,201 – disclosed by Applicant).
In regard to claims 5 and 14, figures 3 and 4 of Schaefer et al. depict a battery pack 14, comprising:
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a battery pack housing 14, a plurality of battery cells 58 positioned within the housing 14 (col 3 lines 24-46, element 58 is described as battery cells implying more than one); a first power lead 36 extending from the battery pack housing; a second power lead 34 extending from the battery pack housing and coupled to the plurality of cells 58; and a power switch 32 adjustable between ON and OFF states, figure 4 shows that the power switch 32 is positioned within the battery pack housing 14 and figure 3 shows that the switch 32 is accessible from the outside (col 3 lines 1-10).
Schaefer, at Figure 4, depicts the power switch 32 situated with internal circuitry within the battery housing 14. The actuation of the switch, which connects the positive terminal of battery 58 to isolation diode 62, necessarily occurs inside the housing, rather than outside of housing 14. In other words, the electrical connections that open or close the circuit to either interrupt or complete the current path are located within the internal volume of the battery pack. Furthermore, figure 3 of Schaefer illustrates the actuator that permits the switch to internally interrupt or complete the internal circuit components. Accordingly, the physical connections and disconnections effected by the switch are reasonably interpreted to be positioned entirely within the internal volume of the battery pack housing.
It is noted that the preamble recites that the invention is for an electroporation device, this recitation is a statement of intended use. The structure of the Schaefer et al. reference is capable of being used to power such a device.
In regard to claims 6 and 15, the embodiment of figure 3 depicting switch 32 accessible from outside the housing 14, the surround of switch 32 is considered to comprise an aperture.
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In regard to claims 7 and 16, switch 32 as depicted in figure 3 allows manual activation.
In regard to claim 17, Schaefer et al. teaches an accessing step comprises adjusting the power switch to the OFF state, thereby disengaging the plurality of battery cells from the first and second power leads (col 3 lines 7-15 and lines 28-30).
In regard to claim 18, Schaefer et al. teaches an accessing step comprises adjusting the power switch to the ON state, thereby electrically engaging the plurality of battery cells with the first and second power leads (col 3 lines 7-15 and lines 30-33).
In regard to claims 13 and 24, figure 4 shows housing 14 in relation to a battery charger 54 for supplying recharge power to the cells 58.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 8, 9, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schaefer et al. (US Patent no. 4,709,201 – disclosed by Applicant) in view of Kosugi et al. (US Publication no. 2009/0184682 – disclosed by Applicant – previously cited).
In regard to claims 8 and 19, Schaefer et al. is considered to substantially describe the invention as claimed except for the safety switch positioned within the battery pack housing and coupled between the first power lead and the plurality of battery cells, wherein the safety switch is adjustable between an ON state, in which the plurality of battery cells are in electrical communication with the first power lead, and an OFF state, in which the battery cells are not in electrical communication with the first power lead. Figures 1 and 2 of Kosugi et al. shows a battery pack housing 2, a plurality of battery cells 1 positioned within the battery pack housing; a first power lead 4 extending from the battery pack housing (element 4 (indicated as +) is a terminal for supplying power from battery cells 1 via lead 5); a second power lead 4 extending from the battery pack housing (element 4 (indicated as -) is a terminal for supplying power from battery cells 1 via lead 5, see para 40);
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and a power switch 7 adjustable between an ON state and an OFF state (para 45 and 47, the battery pack does not operate until the power switch 7 is turned on). Figure 2 shows the circuit diagram of figure 1 with a safety switch 8 positioned within the battery pack housing 2 and coupled between the first power lead 4 and the plurality of battery cells 1, wherein the safety switch is adjustable between an ON state, in which the plurality of battery cells are in electrical communication with the first power lead, and an OFF state, in which the battery cells are not in electrical communication with the first power lead. Here it is considered that when switch 8 is open, the switch is in the OFF state thereby causing battery cells 1 to not be in communication with terminal 4. When switch 8 is closed, then the switch is in the ON position thereby connecting battery cells to terminal 4. Switch 7, considered similar to switch 32 of Schaefer et al. is interlocked with switch 8 such that switch 8 is not activated power switch 7 is activated (para 48). Kosugi et al. teaches that the switch 8 aids in protecting the battery cells. Modification to include a safety switch between the battery cells and power lead is considered to have been obvious to one of ordinary skill in the art since Kosugi et al. expressly teaches this feature forms a protective circuit to aid in protecting the battery cells.
In regard to claims 9 and 20, Kosugi et al. teach that the safety switch 8 is adjustable between its ON state and its OFF state at least in part on the state of power switch 7 (para 48, the on/off operations of power switch 7 and safety switch 8 are interlocked such that switch 8 is not turned on until switch 7 is turned on). Therefore the safety switch 8 of Kosugi et al. is adjustable between ON and OFF states based in part on the state of power switch 7. This feature is obvious to one of ordinary skill in the art since it is explicitly taught by Kosugi et al.
Claim(s) 10-12 and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schaefer et al. (US Patent no. 4,709,201 – disclosed by Applicant) in view of Kosugi et al. (US Publication no. 2009/0184682 – disclosed by Applicant – previously cited), further in view of White et al. (US Publication no. 2009/0015208 – disclosed by Applicant).
In regard to claims 10 and 21, Schaefer et al. in view of Kosugi et al. is considered to substantially describe the invention as claimed, however does not teach comprising a controller positioned within the battery pack housing, wherein the controller is configured to detect operating conditions and to adjust the safety switch between the ON state and the OFF state based at least in part on the operating conditions. Kosugi et al. does include a protective circuit 6 (considered to comprise the recited controller) consisting of switch control unit 61, voltage monitoring unit 62, and protective circuit power supply 63 (para 42). The voltage monitoring unit 62 is used to detect operating conditions of the battery cells (para 45), however does not appear to influence the operation of switch 8. Switch 8 appears to only be controlled by power switch 7 (para 45-47). White et al. in a similar field of endeavor describes a battery pack comprising a battery control unit 26 (figures 2 and 3; battery control unit 26 being considered to comprise the recited controller, para 22) and a switch 24 (switch 24 considered similar to safety switch 8), and battery cells 22. Like switch 8 of Kosugi et al. switch 24 of White et al. appears to enable current flow from the battery cells to a load (e.g., figure 2) and current flow to the battery cells from a charger (figure 3). Switch 24 is adjusted by the battery control unit 24 to open or close based on an operating condition (para 23 and 26, switch 24 may interrupt current flow to/from battery cells when an operating condition such as an over temperature condition is detected). This prevents excess current overheating the battery. The Examiner considers the teachings in White et al. are applicable to Schaefer et al. as modified by Kosugi et al. particularly to aspects of the protective circuit 6 pertaining to the voltage monitoring unit 62. It is considered that the voltage monitoring unit 62 of Kosugi et al. may be modified to communicate with switch control unit 61 as the battery control unit 26 and switch 24 does in White et al. so that switch 8 may be closed to prevent a charging or discharging operation from overcharging or over discharging without having to manually turn off switch 8 through switch 7. Such a modification is considered to have been obvious to one of ordinary skill in the art at the time of the invention since it would comprise application of a known technique to a known device to yield a predictable result of automatic current disruption via a safety switch to prevent damaging of the battery cells from overcharging or overdischarging or as White et al. teach overheating.
In regard to claims 11 and 22, Schaefer et al. in view of Kosugi et al. further in view of White et al. suggest the modification, wherein White et al. teaches that an operating condition for opening switch 24 includes over temperature (para 23-24). Kosugi et al. includes a voltage monitoring unit 62 which can detect over voltage or under voltage conditions (i.e., overcharging or over discharging) (para 45).
In regard to claims 12 and 23, in Kosugi et al., one of the operating conditions includes the state of power switch 7 such that switch 8 will not be ON unless switch 7 is ON and vice versa with respect to the Off state (para 47).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN T GEDEON whose telephone number is (571)272-3447. The examiner can normally be reached M-F 8:00 am to 5:30 PM ET.
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/BRIAN T GEDEON/Primary Examiner, Art Unit 3796 22 August 2025