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/Restrictions
Applicant's election with traverse of Group I in the reply filed on 09/02/2025 is acknowledged. The traversal is on the ground(s) that the technical feature only lies in the number of positive/negative/bipolar electrodes. This is not found persuasive because not all the groups indicated have the same technical feature that does not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claim 2, 5-8, 10-11 and 13-17 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II-X, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/02/2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claims 4 and 9 are interpreted to invoke 112f because the claims meet the following three prong test:
Prong A: Yes, “means” is used as a generic placeholder for performing the claimed function of “switching.”
Prong B: Yes, “switching means” is modified by the functional language “configured to switch between a first state in which the first input/output line is electrically connected to the positive terminal of the secondary battery pack and a second state in which the first input/output line is electrically connected to the negative terminal of the second battery of the secondary battery pack; a second input/output line electrically connected to the bipolar terminal of the third battery of the secondary battery pack”
Prong C: Yes, “switching means” is not modified by sufficient structure to perform the claimed function.
Since all three prongs are met the recitation of “switching means” in Claims 4 and 9, invoke 112f. As identified in the specification, the structure that corresponds to the “switching means” is interpreted to correspond to the structure of a bipolar transistor, see instant-spec. [0029].
Claim Rejections - 35 USC § 102
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mizusawa (JP-2016171075-A as provided in the IDS dated 10/06/2022 with citations from the provided translation).
Regarding Claim 1, Mizusawa discloses:
A secondary battery pack comprising:
a first battery and a second battery each of which includes a positive terminal and a negative terminal (see annotated Fig. 9a below);
a third battery including a positive terminal, a negative terminal, and a bipolar terminal (see annoted Fig. 9a below);
a first connector configured to electrically connect the negative terminal of the first battery and the positive terminal of the third battery (see annotated Fig. 9a below);
and a second connector configured to electrically connect the positive terminal of the second battery and the negative terminal of the third battery (see annotated Fig. 9a below),
where the third battery includes the following elements, with n being an integer equal to or greater than zero: (n+ 1) positive electrode and (n+1) negative electrodes alternately arranged; (2n+1) bipolar electrodes individually located in spaces between the positive electrodes and the negative electrodes neighboring each other (1st electrode of (n + 1) sheets laminated stacked alternately, and the 2nd electrode of (n + 1) sheets A total of (2n + 1) third electrodes positioned between adjacent first and second electrodes, see [0008] and annoted Fig 9 below. Wherein, the first electrode and the second electrode each are one of the negative or positive, and the third electrode is a bipolar electrode, see [0008] and [0013]);
an electrolyte (electrolyte, see [0008]);
a positive-electrode connection member configured to electrically connect the positive terminal of the third battery and the (n+1) positive electrodes (see annotated Fig 9a below);
a negative-electrode connection member configured to electrically connect the negative terminal and the (n+1) negative electrodes;
and a bipolar-electrode connection member configured to electrically connect the bipolar terminal and each of the (2n+1) bipolar electrodes (see annotated Fig. 9a below).
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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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Mizusawa (JP-2016171075-A as provided in the IDS dated 10/06/2022 with citations from the provided translation) as applied to Claim 1 above and in further view of White et al. (US-20160020443-A1).
Regarding Claim 3, Mizusawa teaches the DC batteries can be charged/discharged so therefore are secondary batteries, see [0042]. However, Mizusawa is silent toward the structure of the DC batteries (i.e., the indicated first and second batteries shown in annotated Fig. 9a above) and therefore, does not teach:
wherein at least one of the first battery and the second battery includes a plurality of secondary battery cells connected in series or in parallel.
To solve the same problem designing battery packs (see Abstract), White teach it is conventional and successful to have DC batteries that comprise a plurality of cells that are connected in parallel, see [0438].
Consequently, one of ordinary skill in the art before the effect filling date of the claimed invention would have had a reasonable expectation of success in preparing DC batteries of Mizusawa with a plurality of cells connected in parallel as taught by White.
Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Mizusawa (JP-2016171075-A as provided in the IDS dated 10/06/2022 with citations from the provided translation) as applied to Claim 1 above and in further view of Tatebayashi et al. (US-20100237829-A1).
Regarding Claim 4, Mizusawa with the following modification in view of Tatebayashi teaches:
A secondary battery module including the secondary battery pack according to-claim 1 (see annotated Fig. 9a-9b below),
the secondary battery module comprising: a first input/output line (see annotated Fig. 9a-9b below);
a switching means (switch circuit 3G which includes a bipolar transistor, see [0019], [0042], and Fig. 9a-9b) configured to switch between a first state in which the first input/output line is electrically connected to the positive terminal of the secondary battery pack and a second state in which the first input/output line is electrically connected to the negative terminal of the second battery of the secondary battery pack (see Fig. 9a-9b);
a second input/output line electrically connected to the bipolar terminal of the third battery of the secondary battery pack (see annotated Fig. 9a-9b below);
Mizusawa is silent toward use of a controller in the switching circuit 3G and, therefore, does not teach:
and a controller configured to control the switching means.
To solve the same problem of designing a charge/discharge switch for a battery (see [0028]), Tatebayashi teaches using a controller to monitor and control a charge/discharge switch, see [0028].
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have used a controller as taught by Tatebayashi in the switching circuit of Mizusawa in order to monitor and control the switch circuit.
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Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Mizusawa (JP-2016171075-A as provided in the IDS dated 10/06/2022 with citations from the provided translation) in view of White et al. (US-20160020443-A1) as applied to Claim 1 and 3 above and in further view of Tatebayashi et al. (US-20100237829-A1).
Regarding Claim 9, modified Mizusawa with the following additional modification in view of Tatebayashi teaches:
A secondary battery module including the secondary battery pack according to claim 3 (see annotated Fig. 9a-9b above),
the secondary battery module comprising: a first input/output line (see annotated Fig. 9a-9b above);
a switching means (switch circuit 3G which includes a bipolar transistor, see [0019], [0042], and Fig. 9a-9b) configured to switch between a first state in which the first input/output line is electrically connected to the positive terminal of the secondary battery pack and a second state in which the first input/output line is electrically connected to the negative terminal of the second battery of the secondary battery pack (see Fig. 9a-9b);
a second input/output line electrically connected to the bipolar terminal of the third battery of the secondary battery pack (see annotated Fig. 9a-9b above);
Mizusawa is silent toward use of a controller in the switching circuit 3G and, therefore, does not teach:
and a controller configured to control the switching means.
To solve the same problem of designing a charge/discharge switch for a battery (see [0028]), Tatebayashi teaches using a controller to monitor and control a charge/discharge switch, see [0028].
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have used a controller as taught by Tatebayashi in the switching circuit of Mizusawa in order to monitor and control the switch circuit.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kayla E Clary whose telephone number is (571)272-2854. The examiner can normally be reached Monday - Friday 8:00-5:00 (PT).
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/K.E.C./
Kayla E. ClaryExaminer, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721