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 .
Remarks
Claim 1-20 are as previously presented, claim 21 is newly presented. Claims 1-21 are presently examined.
Status of objections and rejections
The rejection below has been modified as necessitated by the applicant’s amendments and/or arguments.
Claim Interpretation
The examiner is interpreting the claim limitation of “solder film” to be a material that can prevent the transmission of water vapor and oxygen (e.g. atmospheric gasses) as discussed in [0054] of the instant specification.
The claims and specification do not provide a clear definition for what a “plating film” is. As such, the examiner is interpreting it to be a surface finishing where a thin layer of a different metal or alloy is deposited onto a substrate, typically a metal or conductive plastic, to enhance its appearance, durability, and functional properties like corrosion resistance or electrical conductivity.
Examiner note
In an effort to expedite prosecution the examiner would like the applicant to consider adding details of the holding terminal to the independent claims. Independent claims 1 and 15 predominately focus on details of the solid state battery. However, the dependent claims, drawings, and instant specification make it clear that the holding terminal is the alleged inventive concept. However, these details are largely absent from the independent claims.
Upon review of the instant specification and drawings it appears that figures 3B, 4B, and 5B appear to be the best representation of the instant application. If the applicant wishes to continue with the examination process, the examiner would like for the applicant to consider adding the features found in the above listed figures to the independent claims. Doing so will help distinguish the instant application from the prior art.
The examiner would like to clarify that they are not suggesting this is allowable subject matter. But rather is attempting to help move prosecution forward by pointing to embodiments that can further define the instant invention and move prosecution forward.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4, 7, 9, 15-17 and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gaben (US20190036152A1) in view of Kato (WO2018186449A1).
Regarding claim 1 and 15, Gaben discloses a solid-state battery comprising: a battery element that includes [0033, Gaben], along a lamination direction [fig. 2, Gaben], one or more battery constituent units each having a positive electrode (12, 24) layer [0079, fig. 2, Gaben], a negative electrode (14, 21) layer [0079, fig. 2, Gaben], and a solid electrolyte (22) layer interposed between the positive electrode layer and the negative electrode layer [0011, 0038, 0210, fig. 8, 11, Gaben]; an external electrode (35, 36) joined to an end of the battery element [0199, fig. 8, 11, Gaben]; a solder film (80, 81) covering a surface of the external electrode [0098, 0216-0226, fig. 25, Gaben discloses that 80 and 81 both serve a function of preventing deterioration due to atmospheric gases notably humidity (water vapor) and oxidation (oxygen), which reads on a “solder film”.]; and a holding terminal (83) that surrounds parts of the external electrode and holds the external electrode [0098, 0219-0226, fig. 25, Gaben discloses the use of a multi-layer film containing metal that surrounds the sides of the electrode, where the external electrode is located, and serves as a means of protecting the edges of the battery. Notably the edges not covered by the protective film 80 are still exposed to the atmospheric elements and these edges are coated with a coating containing metal elements.].
Gaben does not explicitly disclose the holding terminal covering five surfaces.
However, Kato depicts a rectangular parallelepiped shaped battery with a laminated structure made of a first (30) and second (40) electrode member and a solid electrolyte layer (50) [abstract, fig. 1, 3-16, Kato]. The battery contains an external electrode (71, 72) and a connecting portion (91, 92; equivalent to “holding terminal”) that covers five surfaces of the external electrode [fig. 5, 7, 14-16, Kato]. The connecting portion with edges that wrap around five surfaces of the battery (in addition to additional elements of the battery) are shown to improve the reliability of the battery and help reliably prevent moisture from entering the interior of the battery [0009, 0013, 0047, 0070, 0077, Kato].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Gaben such that the multi-layered film containing metal that surrounds the sides of the electrodes (81, 82, 83) were wrapped around all edges (side, top, bottom, front, and back) of the solid-state battery as depicted in Kato. Doing so would improve the reliability of the battery and prevent moisture from entering the interior of the battery [0009, 0013, 0047, 0070, 0077, Kato].
In regards to claim 15, Gaben discloses that the terminal holder (83) may be made of tin which is a conductive material.
Regarding claim 2 and 16, Gaben discloses the solid-state battery, wherein the solder film is a water vapor transmission preventing film [0072, 0098, 0216, 0223, 0226, Gaben].
Regarding claim 3, Gaben discloses the solid-state battery, further comprising a plating film (82) on a surface of the holding terminal [0220-0223, fig. 25, Gaben discloses the use of a nickel film between the conductive polymer layer (“solder film”) and tin film (“holding terminal”). Which serves a function of protecting the conductive polymer layer (“solder film”) during welding while maintaining electrical conductivity. This reads on a “plating film”].
Regarding claim 4 and 17, Gaben discloses the solid-state battery, wherein the holding terminal includes a holder having an internal space with an opening constructed to hold the external electrode with the solder film within the internal space [fig. 25, Gaben].
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Annotated fig. 25, Gaben depicting an internal space of the holding terminal.
Regarding claim 7, Gaben discloses the solid-state battery, wherein a part of a formation surface of the internal space has a discontinuous portion [fig. 25, Gaben].
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Annotated fig. 25, Gaben depicting a discontinuous portion on the formation surface of the internal space.
Regarding 9 and 20, Gaben discloses a solid-state battery, wherein a gap portion is depicted in the formation surface of the holder [fig. 25, Gaben depicts a gap in the formation surface of the holder where the electrode fills the internal space.].
Regarding claim 21, Gaben discloses the solid-state battery, wherein the external terminal is on an exterior surface of the battery element and electrically connected to one of the negative electrode layer or the positive electrode layer [0199, Gaben].
Claim(s) 5-6 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Gaben as applied to claim 1 above, and further in view of Baba (WO2019167856A1).
Regarding claim 5 and 18, Nanno and alternatively modified Gaben are silent to the holding terminal further including a base continuous with the holder.
However, Baba discloses an L-shaped terminal (17) with a first connecting portion (17a, equivalent to “holding terminal”) that is connected to a solid-state battery (10) [fig. 1, 2, Baba]. Where a base (17c) is continuous (17b) with the holder and constructed to support the holder [0028-0034, fig. 1, 2, Baba].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to further modify Gaben such that the holding terminal included a base continuous with the holder such that continuous portion and the base made an “L-shape”. Doing so would provide a terminal that can be mounted on a mounting board [0032, Baba].
Regarding claims 6 and 19, Gaben as modified above discloses the solid-state battery, wherein the base has an L-shaped cross-sectional shape [0028, fig. 1, 2, Baba].
Claim(s) 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Gaben as applied to claim 7 above and in view of Nanno (US20050196668A1 as cited on the IDS dated 11/13/24).
Regarding claim 8, modified Gaben is silent to the discontinuous portion being located in the bottom of the holder.
However, Nanno discloses the solid-state battery, wherein the discontinuous portion (67) is located at a bottom of the holder [fig. 6, Nanno].
The examiner notes that without a defining feature terms like “bottom” or “top” are relative terms that vary based off of perspective.
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Gaben such that a “discontinuous” portion was located at the bottom of the holder as a means for readily distinguishing the different terminal polarity of the battery [0008, Nanno]
Regarding claim 10, modified Gaben is silent to wherein at least a part of the discontinuous portion is in a tapered form extending from the opening of the holder toward the internal space of the holder, a wide portion of the tapered form is on an opening side of the opening, and a narrow portion of the tapered form is located inside the holder.
However, Nano discloses a dent (67, “discontinuous portion”) as a means for easily distinguishing the different terminal polarities [0008, Nanno].
Prior to the effective filing date, one of ordinary skill within the arts would appreciate that one could have the discontinuous portion be in the shape of a tapered form as a matter of a mere change in shape, MPEP 2144.04.IV.B. Doing so can minimize the amount of materials needed for the holder thereby reducing the cost while still allowing one to distinguish the different terminal polarities.
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Gaben such that a discontinuous portion was in a tapered form as this can be a change in shape that helps distinguish different terminals
Claim(s) 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Gaben as applied to claims 1 and 7 above.
Regarding claim 11, Gaben is silent to the discontinuous portion being a through hole in the formation surface. Prior to the effective filing date, one of ordinary skill within the arts would appreciate that one could have the discontinuous portion be a through hole as a matter of a mere change in shape, MPEP 2144.04.IV.B. Doing so can minimize the amount of materials needed for the holder thereby reducing the cost.
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Gaben such that a discontinuous portion was in a through hole as this can minimize the materials needed for the holder while still minimizing the risk of foreign substances (e.g. dirt, dust, water, oxygen) from reaching the surface of the electrode/solder film.
Regarding claim 12, Gaben discloses the solid-state battery, wherein an oxygen permeability of the solder film is 10-3 cc/m2/day/atm (1cc of O2 is equal 0.001429 g of O2) or less [0218, Gaben discloses that the permeability of air (previously described as humidity (water vapor) and oxidation (oxygen) [0216, Gaben] is 0.1 µg/m2/day or less.].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim (see MPEP 2144.05).
Regarding claim 13 and 14, Gaben discloses the solid-state battery, wherein an H20 permeability of the solder film is 10-4 g/m2/day or less [0218, Gaben discloses that the permeability of air (previously described as humidity (water vapor) and oxidation (oxygen) [0216, Gaben] is 0.1 µg/m2/day or less.].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim (see MPEP 2144.05).
Response to Arguments
Applicant’s arguments, see page 1 and 2 related to Nanno as primary reference, filed 01/20/26, have been fully considered and are persuasive. The 102 rejection of claims 1, 2, 4, 7-8 and 15-17 has been withdrawn.
Applicant's arguments, see pages 2-4 related to Gaben as a primary reference, filed 01/20/26 have been fully considered but they are not persuasive. See below for additional details.
Applicant then argues the Gaben does not read on the claimed invention. They argue that Gaben does not read on a solder film. However, as noted above a solder film is not defined in the claimed limitation and as such the BRI of a “solder film” may be a material that can prevent the transmission of water vapor and oxygen (e.g. atmospheric gasses) as discussed in [0054] of the instant specification. A conductive polymer film, a nickel film, or a tin film read on a solder film reads on this limitation. The examiner further notes that nickel and tin films are common solder films. Applicant again argues that a soldering step is performed later. However this is not bared based on the claim set.
Applicant also argues that because a final soldering step is applied to the battery then the solder film as argued by the examiner cannot be a soldering film. The examiner notes that the presence of additional soldering steps does not overcome the “soldering film” argued by the examiner as more than one solder film or soldering step may be present.
Applicant argues that there is no corresponding element to the electrical contacts 35 and 36. The examiner respectfully disagrees as Gaben teaches “FIG. 25 shows a battery like that in FIG. 11, also comprising coatings for protection against atmospheric gases” [0098]. Additionally noted is “FIG. 25 shows an embodiment of an all-solid-state thin film battery according to FIG. 11”. Figure 11 teaches of the terminals 35 and 36. While not explicitly shown in fig. 25 it is understood that the battery of figure 11 (includes terminals 35 and 36) are present in figure 25.
The examiner maintains their rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 QUINTIN DALE ELLIOTT whose telephone number is (703)756-5423. The examiner can normally be reached M-F 8:30-6pm (MST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached on 5712705256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QUINTIN D. ELLIOTT/Examiner, Art Unit 1724 /MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724
Prosecution Insights