Prosecution Insights
Last updated: April 19, 2026
Application No. 17/987,964

SECONDARY BATTERY

Non-Final OA §103§112
Filed
Nov 16, 2022
Examiner
VAN KIRK, DUSTIN KENWOOD
Art Unit
1722
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Samsung Electronics
OA Round
3 (Non-Final)
76%
Grant Probability
Favorable
3-4
OA Rounds
3y 4m
To Grant
87%
With Interview

Examiner Intelligence

Grants 76% — above average
76%
Career Allow Rate
13 granted / 17 resolved
+11.5% vs TC avg
Moderate +11% lift
Without
With
+10.6%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
31 currently pending
Career history
48
Total Applications
across all art units

Statute-Specific Performance

§103
61.2%
+21.2% vs TC avg
§102
20.8%
-19.2% vs TC avg
§112
13.5%
-26.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 17 resolved cases

Office Action

§103 §112
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5 November 2025 has been entered. Status of Claims Claims 1 and 4-6 are currently pending Claim 1 is amended Claims 2 and 3 have been cancelled Status of Amendments The amendment filed 5 November 2025 has been fully considered, but does not place the application in condition for allowance. Status of Objections and Rejections of the Office Action from 5 August 2025 The 102 rejections over Yoshihara are withdrawn in view of Applicant’s amendment. The 103 rejections over Yoshihara in view of Oh are maintained in view of Applicant’s amendment and have been modified to address the amended limitations. Specification The disclosure is objected to because of the following informalities: [AltContent: textbox (Modified Fig. 2)]Paragraph [0037] says “a distance C… exists between a point where the curved surface leading from the side surface 121b to the bottom surface 121a starts and a point where the curved surface leading from the side surface 121b to the terrace portion 122 ends.” This is shown on the modified instant Fig. 2 below, for convenience, with the clearance distance already marked as C, the point where the curved surface leading from the side surface 121b to the bottom surface 121a starts being marked by Examiner as P1, and the point where the curved surface leading from the side surface 121b to the terrace portion 122 ends being marked by Examiner as P2. [AltContent: arrow][AltContent: arrow][AltContent: textbox (E1)][AltContent: arrow][AltContent: arrow][AltContent: textbox (P2)][AltContent: textbox (P1)] PNG media_image1.png 283 461 media_image1.png Greyscale Paragraph [0037] then says “for example, the clearance C may be a distance on the side surface 121b between the fourth curved surface S4 and each of the first and second curved surfaces S1 and S2” with the example clearance distance being marked as E1 on the modified instant Fig. 2 above, for convenience. This example does not match the previous definition of how the clearance is measured nor does it match the clearance distance C indicated in instant Figs. 2 and 3. Appropriate correction is required. Claim Rejections - 35 USC § 112 The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Claims 1 and 4-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Amended claim 1 claims the clearance as “being vertical relative to the bottom surface.” The added limitation indicates that the clearance is perpendicular to the bottom surface or that the clearance distance is only measured as the vertical distance between the two specified points, discounting any horizontal distance between the points. Applicant cites [instant 0037] as teaching the amended limitation. However, [instant 0037] only teaches the clearance as being “in a substantially vertical direction.” This is not equivalent to saying the clearance is only vertical relative to the bottom surface. Further, [instant 0037] concedes that the clearance is only “in a substantially vertical direction” implying at least part of the clearance is not in a vertical direction. Claims 4-6 are rejected for being dependent from a rejected base claim. 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 1 and 4-6 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. [AltContent: oval][AltContent: oval][AltContent: textbox (P2)][AltContent: textbox (P1)][AltContent: textbox (P1)][AltContent: textbox (P2)][AltContent: ][AltContent: oval][AltContent: oval][AltContent: arrow][AltContent: textbox (C)][AltContent: textbox (P2)][AltContent: arrow][AltContent: ][AltContent: connector][AltContent: arrow][AltContent: connector][AltContent: oval][AltContent: ][AltContent: textbox (C)][AltContent: textbox (C)][AltContent: textbox (P1)][AltContent: connector][AltContent: oval][AltContent: connector][AltContent: textbox (P1)][AltContent: textbox (P2)][AltContent: oval][AltContent: oval][AltContent: ]Claim 1 defines a clearance as “a distance along at least one of the side surfaces between a point where a curved surface leading from one of the side surfaces to the bottom surface starts and a point where a curved surface leading from the one of the side surfaces to the terrace portion ends” as well as “the clearance being vertical relative to the bottom surface.” These appear to be two conflicting ways to measure the clearance. Further, [instant 0005] defines a clearance as “a distance between a point where the curved surface leading from the side surface to the bottom surface starts and a point where the curved surface leading from the side surface to the terrace portion ends” and [instant 0037] provides an example in which the clearance “may be a distance on the side surface 121b between the fourth curved surface S4 and each of the first and second curved surfaces Si and S2.” Overall, the claims and the specification do not disclose the exact way the clearance is expected to be measured with at least five interpretations being possible, shown below, based on the various passages referenced above: [AltContent: textbox (C)][AltContent: ][AltContent: textbox (P1)][AltContent: textbox (P2)][AltContent: oval][AltContent: oval][AltContent: ][AltContent: textbox (S4)] [AltContent: arrow][AltContent: textbox (C)][AltContent: oval] [AltContent: textbox (2)][AltContent: textbox (1)][AltContent: textbox (5)][AltContent: textbox (4)][AltContent: textbox (3)] The first clearance is along at least one side surface between the two points, as indicated by the first amended limitation of claim 1. The second clearance is vertical relative to the bottom surface, as indicated by the second amended limitation of claim 1. The third clearance is horizontal relative to the bottom surface, which naturally follows as a possibility if the clearance of option 2 is possible. The fourth clearance is the direct distance between the two points, as indicated by the broadest interpretation of [instant 005]. The fifth clearance is the distance on the side surface between the curved surface S4 and the other curved surface. Currently, no preference is given toward any of the specified options over the others, leaving the scope of the limitation unclear. Claims 4-6 are rejected for being dependent from a rejected base claim. 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. Claims 1 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshihara in view of Oh (WO 2022039534 A1), hereinafter Oh. Regarding claim 1, Yoshihara teaches a secondary battery [0001], comprising: an electrode assembly 4 (Fig. 3) including a first electrode plate 1, a second electrode plate 2, and a separator 3 in a stack [0015]; a case body 7 including a receiving portion 11 and a terrace portion 6 (Fig. 6), the receiving portion 11 including a bottom surface and side surfaces extending from the bottom surface to accommodate the electrode assembly (Seen in Fig. 6), and the terrace portion 6 extending outwardly along an edge of the receiving portion 11 [0019]; a case cover 5 covering the case body and bonded along the terrace portion (P1, P2, P3 of Fig. 5) [0019]; and a first electrode tab 8 (Fig. 2) drawn out from the first electrode plate 1 and a second electrode tab 9 drawn out from the second electrode plate 2 [0017], wherein a first boundary is defined where the bottom surface and at least one of the side surfaces meet (measured by R2 in Fig. 6), the first boundary being a first curved surface, wherein a second boundary is defined where two adjacent ones of the side surfaces meet (measured by R1 in Fig. 5), the second boundary being a second curved surface, wherein a third boundary is defined where at least one of the side surfaces, in this case the inclined surface, and the terrace portion, in this case the top surface flat portion, meet (seen in Fig. 6 connecting the side surface to terrace portion 6), the third boundary being a third curved surface, in this case defined as having the same curvature radius as R1 [0022]. Yoshihara also teaches a distance along at least one of the side surfaces between a point where a curved surface leading from one of the side surfaces to the bottom surface starts and a point where a curved surface leading from the one of the side surfaces to the terrace portion ends which corresponds to the claimed “clearance”. In this case Yoshihara teaches an inclined surface alongside P2 of the receiving portion 11 set to an angle of 30 to 60° [0022]. Therefore, a clearance must exist between a point where a curved surface leading from one of the side surfaces to the bottom surface starts and a point where a curved surface leading from the one of the side surfaces to the terrace portion ends. Yoshihara further teacher a radius of curvature of the first curved surface R2 as being 0.3 mm to 1 mm [0006], with an example battery having an R2 of 0.5 mm [0028], and a radius of curvature of the second curved surface R1 as being 0.5 mm to 5 mm [0006], with an example battery having an R1 of 1.5 mm [0028]. Therefore, Yoshihara teaches a radius of curvature of the first curved surface R2 being smaller than a radius of curvature of the second curved surface R1. Yoshihara is silent as to the range of clearance and as to the clearance being vertical relative to the bottom surface. However, Oh teaches a secondary battery with a distance, CL, as seen in Fig. 9, defined as being the vertical distance between vertical line V2 and vertical line V4 that is 0.5 mm or less, in particular 0.35 mm or less (pg. 22, ¶8 into pg. 23, ¶ 1). This overlaps with the claimed range of 0.1 to 0.6 mm. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Yoshihara and Oh are both considered to be analogous to the claimed invention because they are in the same field of secondary battery housings. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Yoshihara with the clearance taught by Oh. Doing so would have increased the volume of the electrode assembly and the energy density (pg. 19, ¶ 5). Regarding claim 4, modified Yoshihara teaches the secondary battery as claimed in claim 1. Yoshihara further teaches the bottom surface of the receiving portion including two long sides opposite to each other and two short sides opposite to each other (as seen in Fig. 5). Yoshihara does not specify the long sides having a different radius of curvature upon meeting the side surface than the short sides. Therefore, given the curvature radii mentioned above regarding claim 1, a sum of a radius of curvature where one of the two long sides and one of the side surfaces meet and a radius of curvature where one of the two short sides and one of the side surfaces meet would equal 1 mm, which is smaller than a radius of curvature of the second curved surface of 1.5 mm. Regarding claim 5, modified Yoshihara teaches the secondary battery as claimed in claim 1. Yoshihara further teaches the radius of curvature of the first curved surface R2 being in a range of 0.3 mm to 1 mm [0006], with an example battery having an R2 of 0.5 mm [0028]. This example lies within the claimed range of 0.2 mm to 0.5 mm. "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). Regarding claim 6, modified Yoshihara teaches the secondary battery as claimed in claim 1. Yoshihara further teaches the radius of curvature of the second curved surface R1 being in a range of 0.5 mm to 5 mm [0006], with an example battery having an R1 of 1.5 mm [0028]. This example lies within the claimed range of 1.0 mm to 4.0 mm. "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). Response to Arguments Applicant's arguments filed 5 November 2025 have been fully considered but they are not persuasive. Applicant argues that Yoshihara and Oh, or the combination thereof, fail to teach a clearance in a vertical direction along the side surface. Examiner respectfully disagrees because Oh teaches the clearance as being the vertical distance between vertical line V2 and vertical line V4 (pg. 22, ¶8 into pg. 23, ¶ 1), as noted above regarding claim 1. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUSTIN KENWOOD VAN KIRK whose telephone number is (703)756-4717. The examiner can normally be reached Monday-Friday 9am-5pm EST. 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, Niki Bakhtiari can be reached at (571)272-3433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /DUSTIN VAN KIRK/Examiner, Art Unit 1722 /ANCA EOFF/Primary Examiner, Art Unit 1722
Read full office action

Prosecution Timeline

Nov 16, 2022
Application Filed
Mar 20, 2025
Non-Final Rejection — §103, §112
Jun 17, 2025
Response Filed
Aug 01, 2025
Final Rejection — §103, §112
Sep 18, 2025
Response after Non-Final Action
Nov 05, 2025
Request for Continued Examination
Nov 08, 2025
Response after Non-Final Action
Mar 10, 2026
Non-Final Rejection — §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
76%
Grant Probability
87%
With Interview (+10.6%)
3y 4m
Median Time to Grant
High
PTA Risk
Based on 17 resolved cases by this examiner. Grant probability derived from career allow rate.

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