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 .
Specification
The amendment to the specification filed on 09/04/2025 is accepted and the objection is withdrawn.
Drawings
Due to the amendment to the specification filed on 09/04/2025 the objection to the drawings is withdrawn and the drawings filed 11/06/2022 are accepted.
Response to Amendment
The amendments filed on 09/04/2025 has been entered. Claim 1 has been amended, Claims 13-17 are newly added, and Claims 1-17 are pending.
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.
Claim 15 is 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.
Claim 15 recites the limitation "the second opening" on Page 3 of the claims in Line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 3, 4-6, and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. (US 20140050948 A1), hereinafter “Hashimoto” in view of Baek et al. (US 20120129014 A1), hereinafter “Baek”. Hashimoto and Baek et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely secondary battery circuit assembly.
In regard to Claim 1, Hashimoto et al. discloses a battery pack comprising: a secondary battery; and a circuit board (Hashimoto, Abstract), wherein the secondary battery includes a metal exterior portion, a first external terminal, and a second external terminal (Hashimoto, Paragraphs [0048-0049], Figure 3 [10, 20]). Hashimoto et al. also discloses the circuit board having a plurality of connection portions connected to the first external terminal or the second external terminal (Hashimoto, Paragraph [0044], Figure 1). Further, Hashimoto et al. discloses at least one of the connection portions has a first opening (Hashimoto, Figure 4) and the connection portion having the first opening is solder-bonded to the first external terminal or the second external terminal (Hashimoto, Paragraph [0054-0055, 0057]).
However, Hashimoto et al. fails to explicitly disclose the opening is a through hole and instead discloses a notch which has the same function but is structurally different than a through hole. Baek et al. discloses Hashimoto et al. discloses a battery pack comprising: a secondary battery; and a circuit board wherein the secondary battery includes a metal exterior portion, a first external terminal, and a second external terminal (Baek, Abstract, Figure 1), wherein the circuit board comprises a plurality of connection portions connected to the first external terminal or the second external terminal (Baek, Paragraphs [0017-0019]), at least one of the connection portions has a first opening which is a through hole (Baek, Paragraph [0036]). Further, this through hole is taught to have the benefit of facilitating welding/soldering (Baek, Paragraph [0036]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a connection portion comprising a first opening which comprises a through hole as taught in Baek et al. in place of a notch as disclosed in Hashimoto et al. as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Baek and as doing so would amount to nothing more than a variation of an opening for use in the same field based on design incentives or other market forces, as the variations are predictable to one of ordinary skill in the art.
In regard to Claim 3, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 1. Hashimoto et al. also discloses the connection portion having a metal exposed portion (tin plating, 61a, 63) surrounding a periphery of the first opening (Hashimoto, Paragraph [0054]).
In regard to Claim 4, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 3. Hashimoto et al. also discloses a solder portion is formed on at least a part of a surface of the metal exposed portion (Hashimoto, Paragraph [0054-0055]).
In regard to Claim 5, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 4. Hashimoto et al. also discloses the solder portion is formed from a surface of the metal exposed portion facing the secondary battery to an opposite surface (Hashimoto, Paragraph [0054-0055, 0082]).
In regard to Claim 6, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 5. Hashimoto et al. also discloses the solder portion formed on an opposite surface of the metal exposed portion has a step. Hashimoto discloses plating the rim of the opening portion (61a) with tin to form a metal exposed portion on the connection portion (63) wherein the plating has a thickness which forms a step where the soldering occurs on both the battery side and the opposite side (Hashimoto, Paragraph [0054-0055, 0082], annotated Figure 6).
In regard to Claim 10, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 1. Hashimoto et al. also discloses an insulating member is disposed between the circuit board and the secondary battery (Spacer 71 made of insulating material such as ABS or phenolic resins) and the insulating member has a second opening at a location corresponding to the plurality of connection portions (donut shape i.e. the central region is the second opening allowing the connection portion access to the terminals if needed) (Hashimoto, Paragraphs [0060-0061], Figure 1).
In regard to Claim 11, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 1. Hashimoto et al. also discloses the metal exterior portion has a columnar or prismatic shape (Hashimoto, Paragraph [0006, 0047-0048], Figure 1).
In regard to Claim 12, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 1. Hashimoto et al. also discloses an electronic device comprising the battery pack according to claim 1 (Hashimoto, Paragraph [0004]).
In regard to Claim 13, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 1. Hashimoto et al. discloses a plurality of connection portions with openings but fails to explicitly disclose wherein each one of the pluralities of connection portions includes a respective through hole, and the through holes are arranged along a straight line. Baek et al. discloses pluralities of connection portions includes a respective through hole, and the through holes are arranged along a straight line (Baek, Figure 1 (311)). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to adapt the through holes (openings) to accommodate the battery design and arrange them in a straight line where required by the battery design as taught in Baek et al. as doing so would amount to nothing more than the use of known technique to improve similar devices (methods, or products) in the same way.
In regard to Claim 14, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 1. While Hashimoto discloses round openings it fails to explicitly disclose the round opening is a hole. Baek et al. discloses a through hole used for the same function as the round opening of Hashimoto (Baek, Paragraph [0036]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a through hole as taught in Baek et al. as a round opening as disclosed in Hashimoto et al. as doing so would provide the same function and as doing so would amount to nothing more than a simple substitution of one known shape for another to obtain predictable results.
In regard to Claim 15, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 1. Hashimoto et al. discloses a plurality of connection portions with openings but fails to explicitly disclose wherein the second opening is a rectangular hole. Baek et al. discloses a rectangular hole as an opening (Baek, Figure 1 (111)). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a rectangular hole instead of a circular hole as doing so would amount to nothing more than simple substitution of one known shape for another to obtain predictable results.
Claims 2, and 16-17 is rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. (US 20140050948 A1), hereinafter “Hashimoto” in view of Baek et al. (US 20120129014 A1), hereinafter “Baek” as applied to Claim 1 above, and further in view of Tanii et al. (JP 5486486 B2 – Machine Translation), hereinafter “Tanii”. Hashimoto, Baek, and Tanii et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely secondary battery circuit assembly.
In regard to Claim 2, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 1. Hashimoto et al. discloses the use of a substrate and circuit components (Hashimoto, Paragraph [0052]) but fails to explicitly disclose wherein the circuit board includes an FPC or an insulation-coated metal plate. Tanii et al. discloses a battery unit 1, wherein the circuit board includes an FPC (Tanii, Paragraph [4]) with the added benefit of the flexible substrate having the ability to deform or transform so that the connection part may be bent (Tanii, Paragraph [18]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a flexible circuit board taught to provide the skilled artisan the reasonable ability to achieve the benefit taught in Tanii as opposed to a rigid circuit board as doing so would be obvious to try for the skilled artisan and would be nothing more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
In regard to Claim 16, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 1. While Hashimoto discloses wherein the circuit board includes a circular base portion but fails to explicitly disclose wherein the circuit board includes a circular base portion and at least one differently shaped part extending from an edge of the circular base portion. Tanii et al. discloses a circuit board includes a circular base portion and at least one differently shaped part extending from an edge of the circular base portion (Tanii, Figure 8). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a differently shaped part extending from an edge of the circular base portion when required by the design to function properly and would amount to nothing more than a variation of a circuit board for use in the same field based on design incentives or other market forces, as the variations are predictable to one of ordinary skill in the art.
In regard to Claim 17, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 1. While Hashimoto discloses the circuit board bonded to an end surface it fails to explicitly disclose wherein the circuit board is bonded to a surface of the secondary battery different from an end surface. Tanii et al. discloses the circuit board is bonded to a surface of the secondary battery different from an end surface (Tanii, Figure 1 (5,52)). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a differently shaped part extending from an edge of the circular base portion that would reasonably be used to bond to a surface of the secondary battery different from an end surface as doing so would amount to nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. (US 20140050948 A1), hereinafter “Hashimoto” in view of Baek et al. (US 20120129014 A1), hereinafter “Baek” as applied to Claim 1 above, and further in view of Rubino et al. (US 20040146780 A1), hereinafter “Rubino”. Hashimoto, Baek, and Rubino et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely secondary battery circuit assembly.
In regard to Claim 7, Hashimoto et al. in view of Baek et al. discloses the battery pack according to claim 5. Hashimoto et al. also discloses a plurality of the connection portions are arranged on the same plane regardless of where the external terminals are disposed (Hashimoto Figure 1). However, Hashimoto et al. fails to explicitly disclose wherein the first external terminal is disposed at a center portion of an end surface of the metal exterior portion, the second external terminal is disposed so as to surround the first external terminal. Rubino et al. discloses a first external terminal disposed at a center portion of an end surface of the metal exterior portion and the second external terminal is disposed so as to surround the first external terminal with the benefit of simplifying the connection to a circuit board (Rubino, Abstract). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a coin cell battery with the beneficial configuration taught in Rubino and apply the plurality of the connection portions on the same plane disclosed in Hashimoto as doing so would be nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
In regard to Claim 8, Hashimoto et al. in view of Baek et al. and further in view of Rubino et al. discloses the battery pack according to claim 7. Hashimoto et al. discloses wherein the plurality of connection portions include a first connection portion connected to the first external terminal and a second connection portion connected to the second external terminal where first connection portions 66-69 are connected to the terminals in the central region and second connection portions 63 are connected to the terminals in an outer region, thus surrounding the first connection portion (Hashimoto, Paragraphs [0057-0058], Figure 4). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide connection portions in such a configuration based on the discretion of the skilled artisan and would be nothing more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
In regard to Claim 9, Hashimoto et al. in view of Baek et al. and further in view of Rubino et al. discloses the battery pack according to claim 8. Hashimoto et al. discloses the second connection portion has a plurality of the metal exposed portions by disclosing the connection portions (61a, 63) having a metal exposed portion (tin plating) surrounding a periphery of the openings (Hashimoto, Paragraph [0054]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the second connection portion having a plurality of the metal exposed portions based on the discretion of the skilled artisan and would be nothing more than the use of known technique to improve similar devices (methods, or products) in the same way.
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 1-2, 7, 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 9-10 of copending Application No. 17/988206 (reference application). All of the limitations of Claim 1 and Claim 7 of the original claims are encompassed by claim 1 and claim 4 of the reference application. All of the limitations of Claim 2 of the original application are encompassed by claim 2 of the reference application. All of the limitations of Claim 11 of the original application are encompassed by claim 9 of the reference application. All of the limitations of Claim 12 of the original application are encompassed by claim 10 of the reference application.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments with respect to claim 1 has been considered but is moot because the new ground of rejection has changed from a 35 USC 103 rejection to a 35 USC 103 rejection and an additional prior art reference Baek et al. (US 20120129014 A1), which was not relied upon for the prior rejection of record has been applied.
In regard to the nonstatuatory double patenting rejection, the request for the rejection to be held in abeyance is denied and the nonstatutory double patenting rejection is maintained until, if and when the requirements to overcome the rejection are met.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MAX OTERO whose telephone number is (571)272-2559. The examiner can normally be reached M-F Generally 7:30-430.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Buie-Hatcher can be reached at (571) 270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.M.O./ Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/ Supervisory Patent Examiner, Art Unit 1725