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 .
Response to Amendment
The amendment received 11/13/2025 (“Amendment”) has been entered.
Response to Arguments
Applicant’s arguments, see pgs 6-9, filed 11/13/2025, with respect to the rejection(s) of claim(s) 1-4 under Cai have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of English translation of WO2010035696A1 (Suzuki).
Election/Restrictions
Newly submitted claims 9-13 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
As noted in the Restriction requirement mailed 5/15/2025; Inventions I and Il are related as process of making and III is related to a product made. Applicant elected Invention I without traverse.
The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product as claimed can be made by a materially different process such as using soldering. Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Separate classification thereof and separate classification searches
Separate text searches
Separate NPL searches
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 9-13 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 and 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over English translation of WO2010035696A1 (Suzuki).
Regarding claim 1, Suzuki teaches a joining method [abs]. Suzuki teaches a manufacturing method of a joined structure in which a first metal member and a second metal member are joined to each other, the manufacturing method comprising: bringing the first metal member and the second metal member into contact with each other so as to form a space surrounded by the first metal member and the second metal member [p. 2 lines 52-54; a bonding member 101 a (a first bonding member) and a bonding member 101 b (a second bonding member; space due to groove, i.e groove 108a], wherein a pressure reducing port [exhaust hole 112a; p. 3 lines 14-17] being formed between the first metal member and the second metal member or in at least one metal member of the first metal member and the second metal member; performing a suction operation [The shape of the exhaust hole 214 is not limited only to the hole, and may have a groove. The stage 204 is connected to the pump 206 through an exhaust hole 214. The pump 206 can decompress the space by sucking the gas in the connected space. Therefore, the pump 206 can reduce the space (space due to the groove 108 a) between the joining member 101 a and the joining member 101 b via the exhaust hole 214 and the exhaust hole 112 a.]; on the space through the pressure reducing port to depressurize the space so as to bring a first portion of the first metal member into contact with a second portion of the second metal member or to make a distance between the first portion of the first metal member and the second portion of the second metal member smaller than that when the space is not depressurized; and welding the first portion of the first metal member and the second portion of the second metal member to each other in a state where the space is depressurized [When the space between the joining member 101 a and the joining member 101 b is depressurized, a pressure difference (air pressure difference) is generated between the space and the outside space. That is, the pressure in the space between the bonding member 101 a and the bonding member 101 b is lower than the pressure in the external space. Therefore, the bonding member 101 a and the bonding member 101 b can be brought into close contact with each other easily. As in the modification shown in FIG. 5 (a), only the exhaust hole 112 c is provided in the joining member 101 c (the first joining member), and the joining member 101 c (the second joining member) in the joining member 101 d And the groove 108 d may be provided at the bonding interface between the groove 108 d and the groove 108 d. According to this, since only the groove portion 112 a is provided in the joining member 101 c, the strength (rigidity) of the joining member 101 c can be kept larger. Therefore, it is possible to further prevent the joining member 101 c from being deformed when the joining member 101 c is carried in or installed].
With regards to the limitation requiring the two members are joined by “welding”, Suzuki teaches: when the laser light 120 is irradiated to the bonding interface, the bonding members 101 a and 101 b absorb the laser light 120 and generate heat. By this heat generation, at least one of the joining member 101a and the joining member 101b is melted and solidified, thereby forming a joined portion. As a result, the joining member 101a and the joining member 101b are joined at the joint portion. Subsequently, when joining the joining member 101 a and the joining member 101 b, for example, over the entire circumference, by appropriately moving the laser optical system substantially in parallel with the joining members 101 a and 101 b, the joining member 101 a and the joining member 101 b And the member 101 b can be joined over the entire circumference. Therefore, examiner has interpreted the heating, melting and solidifying as a welding process, as welding is a process of joining materials by way of melting them with heat/pressure.
Regarding claim 3, Suzuki teaches wherein the first portion of the first metal member and the second portion of the second metal member are welded to each other by irradiating an outer surface of the second metal member with a laser beam that travels in a direction from the second portion of the second metal member toward the first portion of the first metal member [It is to be noted that the irradiation direction of the laser light 120 is not limited to the direction illustrated in FIG. 6 (a), and as shown in FIG. 6 (b), for example, from the direction substantially perpendicular to the upper surface of the bonding member 101 b It may be irradiated via the bonding member 101b. In this case, the bonding member 101 b is required to have transparency to laser light. Here, the permeability to the laser light means to transmit the laser light as a heat source without reflecting or absorbing it, or melting even if the laser light is partially absorbed or reflected but transmits the remaining laser light and can reach the bonding interface]. Therefore, it is the Examiners position, Suzuki teaches the claimed limitations.
Regarding claim 4, Suzuki teaches wherein the first metal member includes a bottom plate portion and a peripheral wall portion surrounding the bottom plate portion, the space is defined by the bottom plate portion, the peripheral wall portion, and the second metal member, the bottom plate portion is provided with a convex portion, and the convex portion protrudes (fig 4; 108a] from the bottom plate portion [please refer to the annotated fig below that illustrates the claimed limitations; pgs. 6-8], a distal end of the convex portion in a protruding direction defines the first portion, and a part of the second metal member facing the first portion defines the second portion. Please refer to the annotated figure below to illustrate the claimed structural elements.
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Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over English translation of WO2010035696A1 (Suzuki) in view of US20110052969A1 (Cai)
Regarding claim 2, Suzuki does not teach the first metal to be copper and the second to be aluminum. Cai teaches a battery module which includes a plurality of electrochemical battery cells positioned adjacent one another and each having a positive cell tab and a negative cell tab [abs], further teaches wherein the first metal member is made of copper, and the second metal member is made of aluminum [0041; the positive cell tab 16 may be constructed substantially of aluminum, and the negative cell tab 18 may be constructed substantially of copper]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Suzuki in view of Cai wherein the first metal be made of copper and the second metal be made of aluminum, as this is considered to be a simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARIKA GUPTA whose telephone number is (571)272-9907. The examiner can normally be reached 8:30AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at 571-272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.G./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729