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 .
Election/Restriction
Applicant’s election of Group I, claim(s) 1–8 and 16–20, in the reply filed on 06/30/25 is acknowledged. Claim(s) 9–15 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant traverses on the grounds that no search burden exists. Examiner respectfully disagrees and, as detailed in the restriction requirement, reiterates that the battery pack and method of manufacturing the pack are classified in different sub-classes of H01M 50 and, thus, would require different classification searches and search strategies. Moreover, an examination burden appears to exist in that art relevant to the product would not necessarily apply to the method (and vice versa), and future amendments could make the product and method claims diverge in scope.
Thus, the restriction is still deemed proper and is made FINAL.
Claim Objections
It is recommended that Applicant amend claim 16 as follows: in line 6, “an enclosure enclosing the plurality of layers” is suggested to read “[[an]] a separate enclosure enclosing the plurality of layers” to clarify that this enclosure is different from the electronic device’s enclosure receiving the battery pack, as in instant specification, ¶ 0026 and FIG. 6). Appropriate correction is required.
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 18 and 20 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 18 and 20 each recites “the enclosure” in lines 2 and 2/3, respectively. There is insufficient antecedent basis for this limitation because parent claim 16 recites “the device enclosure” as well as “the enclosure” included with the battery pack, making it unclear which enclosure “the enclosure” references in claims 18 and 20. For this Office Action “the enclosure” of claims 18 and 20 will be assumed to reference the enclosure included with the battery pack, as in instant specification, ¶ 0049 and 0042/0043, respectively.
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1–6, 8, and 16–19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Elfering et al. (US 20180366697 A1) (Elfering).
Regarding claims 1, 2, 4, 16, 17, and 19, Elfering discloses a portable electronic device (e.g., power tool, FIG. 28A–C and ¶ 0165), comprising: a set of components powered by a battery pack (components within tool necessarily powered by pack, per fig; see also, e.g., power saw in FIG. 50A, which would include powered components such as motor and blade); and a device enclosure configured to receive the battery pack (see sealing in, e.g., FIGS. 28A–C and ¶ 0165), the battery pack comprising
a plurality of layers (pos. and neg. electrodes in cell core 104, e.g., ¶ 0003 and FIG. 11); an enclosure enclosing the plurality of layers (housing 38 with insert lid insert 168, e.g., FIGS. 16, 20, and 21); a cathode terminal and an anode terminal extending from a first face of the enclosure (via terminal block 176 (e.g., FIG. 21B), which, in containing multiple terminals on the same side of the housing, would reasonably include both pos. and neg. terminals), wherein the cathode terminal and the anode terminal are connected to the plurality of layers (electrically connected to cell core via welding straps 140 connected to conductive straps 42, FIG. 21B–D and ¶ 0142); a connector comprising a portion external to the enclosure (weld straps 140 with exposed ends 160 and 172, FIG. 21B–D and ¶ 0142; see also annot. FIG. 21D below), wherein the connector is configured to connect the cathode terminal or the anode terminal to the plurality of layers (¶ 0142).
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Elfering further embodies applying a vapor-deposited coating 264 of, e.g., Parylene to all components of the battery pack and module housing (¶ 0040, 0185, 0186). As the instant specification fails to specially define a liquid-resistant tape coating that covers “the portion of the surface of the first face” (claims 2 and 17) or requires this tape coating to be a different material than the “coating” of claims 1 and 16 (note no exemplary materials for the tape in specification), as Parylene is hydrophobic (¶ 0185) and, thus, liquid-resistant, in fully coating the housing/pack components, the Parylene coating (claims 4 and 19) would necessarily cover “an entire surface” of the enclosure (claims 1 and 16), and the portion of the coating covering the “first face” would reasonably constitute a “liquid resistant tape coating” covering the portion of the surface of the first face “uncovered” by the coating (claims 2 and 17).
Regarding claims 3 and 18, Elfering discloses the battery pack of claim 1 and portable electronic device of claim 16, wherein the portion of the surface of the first face of the enclosure comprises a region of the surface of the first face from which the cathode terminal and the anode terminal extend (portion of “first face” with terminals 176, annot. FIG. 21D).
Regarding claim 5, Elfering discloses the battery pack of claim 1, wherein the coating further covers a surface of the external portion of the connector (in coating all components with the vapor-deposited coating, the surfaces of the exposed ends 160 and 172 of the welding straps, i.e., external portions of connector, would be covered).
Regarding claims 6 and 8, Elfering discloses the battery pack of claim 1, wherein the external portion of the connector is connected to the first face of the enclosure at a first position and is connected to a second face of the enclosure at a second position (per annot. FIG. 21D and ¶ 0152, weld straps 140, i.e., connector, include exposed contact ends 172 on the 1st face and exposed ends 160 on the 2nd face and, thus, are connected at two positions on the first and second faces, respectively),
the battery pack further comprising a liquid resistant tape coating covering at least a portion of a surface of the second face of the enclosure (again, in fully coating the housing/pack components, a portion of the Parylene coating—which, as discussed above, could be considered a “liquid resistant tape coating”, absent special definition or additional recitation—would cover at least a portion of a surface of the second face).
Claim Rejections - 35 USC § 103
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) 1–8 and 16–20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Elfering et al. (US 20180366697 A1) (Elfering).
NOTE: the following is an alternative rejection assuming that the vapor-deposited coating fails to read on a liquid-resistant tape coating that allows the “coating” to cover an entire surface of the enclosure except for at least a portion of a surface of the first face.
Regarding claims 1 and 16, Elfering discloses a portable electronic device (e.g., power tool, FIG. 28A–C and ¶ 0165), comprising: a set of components powered by a battery pack (components within tool necessarily powered by pack, per fig; see also, e.g., power saw in FIG. 50A, which would include powered components such as motor and blade); and a device enclosure configured to receive the battery pack (see sealing in, e.g., FIGS. 28A–C and ¶ 0165), the battery pack comprising
a plurality of layers (pos. and neg. electrodes in cell core 104, e.g., ¶ 0003 and FIG. 11); an enclosure enclosing the plurality of layers (housing 38 with insert lid insert 168, e.g., FIGS. 16, 20, and 21); a cathode terminal and an anode terminal extending from a first face of the enclosure (via terminal block 176 (e.g., FIG. 21B), which, in containing multiple terminals on the same side of the housing, would reasonably include both pos. and neg. terminals), wherein the cathode terminal and the anode terminal are connected to the plurality of layers (electrically connected to cell core via welding straps 140 connected to conductive straps 42, FIG. 21B–D and ¶ 0142); a connector comprising a portion external to the enclosure (weld straps 140 with exposed ends 172 and 160, FIG. 21B–D and ¶ 0142; see also annot. FIG. 21D above), wherein the connector is configured to connect the cathode terminal or the anode terminal to the plurality of layers (¶ 0142).
Elfering further discloses a potting/conformal coating 156 or 260 that may be applied to the battery pack’s components such as the PCB and terminal connections to keep fluid away (e.g., ¶ 0143, 0181), as well as vapor-deposited coating 264 that may be used in conjunction with the conformal coating (¶ 0183) and that may coat at least a portion of the housing (e.g., ¶ 0028) to provide fluid-resistance and inhibit fluid ingress generally and/or into gaps (¶ 0185).
Though Elfering fails to explicitly embody that the “coating”, i.e., vapor-deposited coating, covers an entire surface of the enclosure except for at least a portion of a surface of the first face, considering that Elfering is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely battery-pack coatings, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to coat at least Elfering’s housing’s sides with the vapor-deposited coating and coat the first face including the PCB and terminals with the conformal coating with the reasonable expectation of keeping fluid away from Elfering’s PCB and terminals and preventing fluid ingress generally along the housing’s sides, as suggested by Elfering.
Thus, Elfering would disclose or render obvious that the coating covers an entire surface of the enclosure except for at least a portion of a surface of the first face (by coating at least Elfering’s housing’s sides—each “an entire surface”—with the vapor-deposited coating while coating the first face with the potting/conformal film).
Regarding claims 2 and 17, Elfering discloses the battery pack of claim 1 and portable electronic device of claim 16, the battery pack further comprising a liquid resistant tape coating covering the portion of the surface of the first face (conformal/potting coating, which may be silicone to keep fluid away (¶ 0181) and, thus, reasonably a liquid-resistant tape coating).
Regarding claims 3 and 18, Elfering discloses the battery pack of claim 1 and portable electronic device of claim 16, wherein the portion of the surface of the first face of the enclosure comprises a region of the surface of the first face from which the cathode terminal and the anode terminal extend (portion of “first face” with terminals 176, annot. FIG. 21D).
Regarding claims 4 and 19, Elfering discloses the battery pack of claim 1 and portable electronic device of claim 16, wherein the coating is a material comprising Parylene (¶ 0185, 0186).
Regarding claim 5, Elfering discloses the battery pack of claim 1, wherein the coating further covers a surface of the external portion of the connector (in coating at least the housing’s sides with the vapor-deposited coating, the surfaces of the exposed ends 160 of the welding straps, i.e., external portion of connector, would be covered).
Regarding claims 6–8 and 20, Elfering discloses the battery pack of claim 1 and portable electronic device of claim 16, wherein the external portion of the connector is connected to the first face of the enclosure at a first position and is connected to a second face of the enclosure at a second position (per annot. FIG. 21D and ¶ 0152, weld straps 140, i.e., connector, include exposed contact ends 172 on the 1st face and exposed ends 160 on the 2nd face and, thus, are connected at two positions on the first and second faces, respectively), the battery pack further comprising a first liquid resistant tape coating covering the first position (conformal coating/potting from claims 1 and 16 covering electronic components such as PCBA and terminals and, thus, the exposed contact ends 172, i.e., first position).
As discussed in claims 1 and 16, the conformal coating/potting, i.e., tape coating, may be applied to the PCB and terminal connections to keep fluid away (e.g., ¶ 0143, 0181), but Elfering appears to fail to explicitly embody applying this coating to the exposed contact ends 160 and, thus, a second liquid resistant tape coating covering the second position/at least a portion of a surface of the second face of the enclosure.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to routinely coat the potting compound onto at least a portion of the exposed contact ends 160—and, thus, yield a second tape coating covering the second position and at least a portion of a surface of the second face of the enclosure—with a reasonable expectation of further keeping fluid away, as suggested by Elfering (e.g., MPEP 2143 (A.)).
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 1–8 and 16–20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–8 and 16–20 of copending Application No. 17/839911 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other as follows:
Ref. claims 1 and 6 together recite a battery pack including an enclosure enclosing a plurality of layers, a Parylene coating covering an entire surface of the enclosure except for at least a portion of a surface of a first face from which cathode and anode terminals extend, as well as a connector comprising a portion external to the enclosure, where the connector is configured to connect either terminal to the plurality of layers. The other dependent claims respectively recite identical subject matter as the instant claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20220272466 A1: battery module coated with Parylene, though terminals are on opposite sides of housing.
US 20150311494 A1: battery with terminal coated with Parylene.
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/J.S.M./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 9/10/2025