DETAILED ACTION
Response to Amendment
This action is in response to the amendment after non-final filed 7 January 2026. Claims 5-24 remain pending.
Information Disclosure Statement
The information disclosure statement filed 17 October 2025 has been considered.
Claim Rejections - 35 USC § 112
The 35 USC 112, second paragraph, rejection of claims 5-24 has been withdrawn in view of Applicant’s remarks.
Response to Arguments
Applicant's arguments filed concurrent with the amendment have been fully considered but they are not persuasive. The Examiner respectfully disagrees with Applicant’s assessment Schaefer et al. (US Patent no. 4,709,201) as interpreted in light of the claims. Figures 3 and 4 of Schaefer et al. as discussed in the previous Office action clearly show the claimed limitations. Figure 4 depicts the switch 32 internal to the battery pack housing 14 of the battery case and adjustable between an ON and OFF state. This satisfies the limitation of “a power switch adjustable between an ON state and an OFF state, wherein the power switch is positioned entirely within the internal volume of the battery pack housing”. Figure 3 of Schaefer et al. depicts the external configuration of the housing as in figure 4. Figure 3 includes an actuator (also labeled 32) that allows internal switch 32 of figure 4 to be accessible from outside of housing 14, which satisfies the claimed limitation for “…and the power switch is accessible to be physically moved between the ON and OFF states from outside the battery pack housing.”
The plain language of the claim is not misinterpreted, and Schaefer et al. is correctly applied. The movement of switch 32 to the OFF terminal (as depicted in Figure 4) happens entirely within battery pack housing 14. The movement of switch 32 from the OFF terminal to the ON terminal (as depicted in Figure 4) also happens entirely within battery pack housing 14. The movement of the switch 32 inside of housing between the OFF and ON states is permitted by physical movement from outside the battery pack 14 when accessible by actuator (element 32 as showing in figure 3). Just because figure 3 numbers the actuator as 32 the same as switch 32 in figure 4 does not contradict the interpretation. The actuator in figure 3 is the feature that allows switch 32 internal to housing accessible for physical movement from outside housing 14. The actuator of figure 3 is just a member or slider that allows accessibility of the switch in the internal housing. Therefore, the rejection is maintained.
The rejections of claims 6, 15, and 16 have been reconsidered in light of Applicant’s amendments, and have thereby been withdrawn.
Additionally, the newly cited reference to Namamura et al. (Japanese Application no. 2015-041560) has been deemed applicable and has been applied in a rejection of the claims.
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, 14, 17, 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. The actuator in figure 3 is the feature that allows switch 32 internal to housing accessible for physical movement from outside housing 14. The actuator of figure 3 is just a member or slider that allows accessibility of the switch in the internal housing.
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, 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. Moreover, the actuator is capable of being physically moved with aid of a tool.
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In regard to claims 7, 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(s) 5-9 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Nakamura et al. (JP 2015-041560 – disclosed by Applicant – English Translation provided by USPTO).
In regard to claim 5, Nakamura et al. describes a battery pack A, comprising:
a battery pack housing A defining an internal volume 8;
a plurality of battery cells 1 positioned within the internal volume of the battery pack housing A;
a first power lead 10 extending from the battery pack housing;
a second power lead 10 extending from the battery pack housing (two leads are depicts connecting switch body 4 to battery 1), the second power lead coupled to the plurality of battery cells (as depicted in figure 1);
and a power switch 3 adjustable between an ON state and an OFF state (mentioned in the Background-Art section and with description of switch 3), wherein the power switch 3 is positioned entirely within the internal volume 8 of the battery pack housing A, and the power switch 3 is accessible to be physically moved between the ON and OFF states from outside the battery pack housing A (via operation portion 5 in window hole 9).
In regard to claim 6, the battery pack housing 8 defines an aperture 9, and the power switch is tool-accessible from outside the battery pack housing through the aperture (window hole 9 forms the aperture, wherein the operation portion 5 of switch 3 is considered capable of being operated by a tool, and hole 9 permits portion 5 to be tool accessible).
In regard to claim 7, the aperture 9 and the power switch 3/5 allow manual disengagement of the plurality of battery cells from the first and second power leads (page 3 of translation at paragraph that begins “Therefore…”.
In regard to claim 8, comprising a safety switch 3 positioned within the internal volume 8 of the battery pack housing A and coupled between the first power lead 10 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 (Background-Art section teaches that the circuit is shut off using switch and is considered to necessarily encompass the on and off states).
In regard to claim 9, it is considered that Nakamura et al. teach that the safety switch is adjustable between its ON state and its OFF state based at least in part on the state of the power switch (Background-Art section teaches that the circuit is shut off using switch and is considered to necessarily encompass the on and off states).
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).
Double Patenting
The double patenting rejection is maintained as the Office has not received the Terminal Disclaimer nor fee as stated by Applicant.
Allowable Subject Matter
Claims 15 and 16 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 prior art fails to teach the steps of preparing the handset of the electroporation device by inserting a tool through the aperture to physically move the switch from one of an OFF state to an ON state.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). The maintenance of the previous grounds of rejection, and Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 7 January 2026 prompted the new ground(s) of rejection presented in this Office action.
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 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 9 April 2026
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