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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/12/2025 has been entered.
Claim Status
Claims 1-2 have been amended. Support for amendment can be found in Fig. 1 and 4b and instant specification par. [0023].
Claims 1-2 are pending.
Response to Arguments
Applicant's arguments filed 09/12/2025 have been fully considered but they are not persuasive. Applicant argues:
Kanetani teaches a smaller diameter reduction rate than instantly claimed.
Enomoto in view of Kanetani and Liu does not recognize the advantages nor is there any other rationale prompting a skilled artisan to modify the combination to arrive at an insulating plate having an outer diameter larger than the outer diameter of the opening end of the exterior housing can.
In regards to argument a, Enomoto is relied upon for the teaching of the quantified diameter reduction rate while Kanetani is relied upon to teach method steps and the addition of an further insulation plate. Enomoto teaches wherein the opening end that houses the sealing assembly has an outer diameter which is 98.9% to 89.3% of the outer diameter of the body part, overlapping with the claimed range (Tables 2 and 3 Examples 7-8 & 11-12; [0011]; [0016]; [0012])1. 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, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP §2144.05).
In regards to argument b, while it is acknowledged that Enomoto in view of Kanetani and Liu does not explicitly discuss the relative dimensions of the insulating plate, as pointed out in the Arguments presented 09/12/2025, Fig. 4 of Kanetani shows an insulating plate having an outer diameter that is the same as the outer diameter of the opening end of the exterior housing can (Fig. 4 Kanetani; Arguments p. 7). The examiner notes that claim 1 does not provide any values for the “larger than” limitation, such that a portion a nanometer larger would satisfy the claims such that manufacturing tolerances would be included in the recited limitation. In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir.1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). The Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 contains the limitation "wherein the opening end has an outer diameter smaller than the outer diameter of the body part by 5% or more and 9% or less". This is equivalent to the limitation in claim 1, from which claim 2 depends, "the opening end that houses the sealing assembly has an outer diameter which is 91% to 95% of the outer diameter of the body part". Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Enomoto et. al. (US 20030035993 A1) hereinafter "Enomoto" in view of Kanetani et al. (JP 2007066835 A) hereinafter "Kanetani" in further view of Liu et al. (US 20190296270 A1) hereinafter "Liu". Documents cited on the IDS filed on 06/14/2022 and 02/12/2024. Reference is made to previously provided translation.
Regarding claim 1, Enomoto teaches a method of manufacturing a cylindrical battery, the cylindrical battery comprising: an electrode assembly in which a positive electrode and a negative electrode are wound with a separator interposed therebetween ([0018]; [0011] “cylindrical battery case”, “an electrode body”, “positive electrode, a negative electrode, and a separator”); an insulating gasket (abstract; [0013]; [0020] “elastic body is preferably made of any of ethylene propylene rubber, polyethylene, polypropylene and fluororesin”); an electrolyte ([0011]); a bottomed cylindrical exterior housing can that houses the electrode assembly and the electrolyte ([0011]; [0014] “caps at both ends”, the bottom cap forms the bottom of the housing); and a sealing assembly that is fixed to an opening end of the exterior housing can by caulking (par. [0015] “caulked portions to execute sealing”), wherein the opening end that houses the sealing assembly has an outer diameter which is 91% to 95% of the outer diameter of the body part (Tables 2 and 3 Examples 7-8 & 11-12; [0011]; [0016]; [0012])2, the method comprising: an electrode assembly insertion step of inserting the electrode assembly into the exterior housing can ([0018]). Enomoto teaches wherein a diameter of the body portion is 50mm ([0016] “a difference between Rbody(mm) and Rtop(mm), ΔR preferably fulfills relationship of ΔR ≤5mm and the Rbody and the ΔR preferably fulfill relationship of ΔR/ Rbody x 100 ≤ 10%”).
Enomoto does not teach wherein an outer diameter of a body part of the exterior housing can that houses the electrode assembly is 20 mm or more and 21mm or less, and where the method comprises a diameter reduction step of reducing the outer diameter of the opening end after the electrode assembly insertion step; and an insulating plate insertion step of inserting an insulating plate into the exterior housing can, and arranged on the electrode assembly, after the diameter reduction step.
However, Kanetani teaches a method of forming a cylindrical battery ([0022]) wherein the battery comprises a positive electrode and a negative electrode wound with a separator interposed therebetween; an insulating plate on the electrode assembly; an electrolyte; and a sealing plate ([0023]). Kanetani further teaches wherein the method comprises an electrode assembly insertion step of inserting the electrode assembly into the exterior housing can; a diameter reduction step of reducing the outer diameter of the opening end after the electrode assembly insertion step ([0017]-[0022]); and an insulating plate insertion step of inserting the insulating plate into the exterior housing can after the diameter reduction step ([0026]-[0027]; [0022]-[0026]). Kanetani teaches that in a cylindrical battery obtained by the method described an outer diameter of the body of the exterior can is the maximum outer diameter and the volumetric efficiency of the electrode group is improved ([0031]). Kanetani further teaches there is no need to perform processing to reduce the outer diameter of the sealing portion, good sealability is maintained and the safety mechanism is not impaired ([0031]). Kanetani teaches that the manufacturing method taught produces a cylindrical battery with excellent dimensional stability ([0031]). Kanetani teaches where an outer diameter of the can has a diameter of 18mm ([0024]).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified the method taught by Enomoto by including a diameter reduction step of reducing the outer diameter of the opening end after the electrode assembly insertion step; and an insulating plate insertion step of inserting an insulating plate into the exterior housing can, and arranged on the electrode assembly, after the diameter reduction step as taught by Kanetani.
One of ordinary skill in the art would be motivated to modify the method taught by Enomoto by including a diameter reduction step of reducing the outer diameter of the opening end after the electrode assembly insertion step; and an insulating plate insertion step of inserting an insulating plate into the exterior housing can, and arranged on the electrode assembly, after the diameter reduction step as taught by Kanetani to improve volumetric efficiency, reduce the need to additional processing, improve sealability, and maintain safety component integrity ([0031]).
Enomoto in view of Kanetani does not teach wherein an outer diameter of a body part of the exterior housing can that houses the electrode assembly is 20 mm or more and 21 mm or less.
However, Liu teaches a method of making a cylindrical battery comprising providing a housing having an open end and a closed end where an open end includes an uneven rim pattern, providing a gasket in the open end, and performing a crimping operation to define a neck region of the housing and engage the gasket ([0004]; [0027]). Liu teaches wherein the cylindrical battery has a diameter between 19 mm and 23 mm ([0023]; [0025]). Fig. 1 and 9 of Liu depict a battery wherein the head portion has a smaller diameter than the body (Fig. 1 and 9).
Enomoto, Kanetani, and Liu all teach varying cylindrical battery sizes wherein the outer diameter of an opening end or head portion is smaller than a body portion.
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified the battery taught by Enomoto in view of Kanetani by setting the diameter of the body portion to 19 mm and 23 mm as taught by Liu.
One of ordinary skill in the art could have modified the battery taught by Enomoto in view of Kanetani by setting the diameter of the body portion to 19 mm and 23 mm as taught by Liu with a reasonable expectation of success since varying sizes of cylindrical batteries are known in the art. Modification in battery size are within the ambit of one of ordinary skill in the art. In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) (See MPEP 2144.04).
Further, it would have been obvious to one of ordinary skill in the art to modify the diameter of the body portion within the range taught by Liu to reach the claimed range. 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, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP §2144.05).
While Enomoto in view of Kanetani and Liu does not explicitly discuss the relative dimensions of the insulating plate, as pointed out in the Arguments presented 09/12/2025, Fig. 4 of relied upon Kanetani shows an insulating plate having an outer diameter that is the same as the outer diameter of the opening end of the exterior housing can (Fig. 4 Kanetani; Arguments p. 7). The examiner notes that claim 1 does not provide any values for the “larger than” limitation, such that a portion a nanometer larger would satisfy the claims such that manufacturing tolerances would be included in the recited limitation. Therefore, the structure taught by Enomoto in view of Kanetani and Liu meets the limitation of claim 1.
Further, in Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir.1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding claim 2, Enomoto further discloses wherein the opening end has an outer diameter smaller than the outer diameter of the body part by 5% or more and 9% or less (Tables 2 and 3 Examples 7-8 & 11-12; [0011]; [0016] “the Rbody and the ΔR preferably fulfill relationship of ΔR/ Rbody x 100 ≤ 10%”; [0012])3. 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, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP §2144.05).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Watanabe et al. (US 20160093841 A1) teaches a cylindrical battery wherein the sealing portion has a maximum outside diameter smaller than the outer diameter of the body portion throughout its circumference ([0021]; [0024]; [0020]; [0060]). Cited on the IDS filed 06/14/2022.
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/F.B.A./Examiner, Art Unit 1728
/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728
1 Example 11 from Table 3: ΔR=Rbody-Rtop=2.5 and ΔR/Rbody=5%=0.05. Given these equations, calculations show Rtop=45 and Rbody = 47.5. Therefore Rtop is 95% of Rbody.
2 Example 11 from Table 3: ΔR=Rbody-Rtop=2.5 and ΔR/Rbody=5%=0.05. Given these equations, calculations show Rtop=45 and Rbody = 47.5. Therefore Rtop is 95% of Rbody.
3 Example 11 from Table 3: ΔR=Rbody-Rtop=2.5 and ΔR/Rbody=5%=0.05. Given these equations, calculations show Rtop=45 and Rbody = 47.5. Therefore Rtop is 95% of Rbody.