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 .
Response to Amendment/Arguments
The 35 USC 112 rejection is overcome as claim 9 has been canceled.
Applicant's arguments filed September 22, 2025, have been fully considered but they are not persuasive. The independent claims have been amended to include parts of dependent claims 3-9.
Applicant’s arguments have been considered but are moot because the new ground of rejection utilizes new art, Kwon (US 20130295436).
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 1-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12603399 in view of Kwon (US20130295436).
US399 teaches a first bare cell and a second bare cell adjacent to each other. Note that the claims of US399 contain language regarding the use of the bare cells, for example, “when the battery is installed”. US399 does not specifically teach the use of an insulator. However, Kwon clearly teaches an insulator #450 (see fig. 7) around each cell. Therefore, it would have been obvious to one skilled in the art to utilize a film between the cells in order to provide stacking of the cells in the device of US399.
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.
Claim(s) 1, 2, 10, 16 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kwon (US 20130295436).
Regarding claims 1 and 18, Kwon teaches a pouch battery comprising (see figure 7; [0120-124]):
a first cell #300I;
a second cell #300H
a third cell #300G (claim 18), wherein the first, second and third cells are different cells; and
an isolation layer #450 that divides an inner space of the shell #40 (note the isolation layer surrounds each cell and thus separates the inside of the shell as shown in figure 7);
the cells are stacked in in a height direction on the basis of a plane ([0122]);
wherein the first and second cell comprises a first shell and second shell which are the same (see fig. 1 note the case #40, [0013]).
Regarding claim 2, Kwon teaches that lithium batteries are high power/capacity and can be utilized in electronic devices [0007]. Note that no specific structures are identified in the specification regarding the intended use language around “high/low/fast” etc. Additionally, given the lack of structure in the specification, these are also relative terms and Kwon teaches high power batteries. Kwon teaches the structure in claim 1, and thus can perform the use in claim 2 absent unclaimed structural limitations.
Regarding claim 10 and 16, Kwon teaches that each cell has a first and second tab #21/221 (positive/negative) connected to respective leads #30/31 ([0009]). The respective tab groups can form first and second charging ports. Note that positive/negative are the intended use of the tabs.
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) 11-15, 17 and 19-27 are rejected under 35 U.S.C. 103 as being obvious over Kwon et al. (US 20130295436), as applied to claim 10 above, in further view of Kim (20090123829).
Regarding claims 19 and 21, Kwon teaches a pouch battery comprising (see figure 7; [0120-124]):
a first cell #300I;
a second cell #300H
a third cell #300G (claim 21), wherein the first, second and third cells are different cells; and
an isolation layer #450 that divides an inner space of the shell #40 (note the isolation layer surrounds each cell and thus separates the inside of the shell as shown in figure 7);
the cells are stacked in in a height direction on the basis of a plane ([0122]);
wherein the first and second cell comprises a first shell and second shell which are the same (see fig. 1 note the case #40, [0013]).
Kwon teaches a pouch battery with tabs and leads that can be used as a power source for a mobile phone, a portable computer, a smartphone, a smart pad, a netbook computer, a light electric vehicle (LEV), an electric vehicle, a hybrid electric vehicle, a plug-in hybrid electric vehicle, and a power storage unit [0097], but does not appear to go into specifics regarding the charging/discharging port which appears to be applicant’s electrode lead section of their invention.
However, Kim teaches an electronic device 600 within a housing (diagonal lines surrounding battery pack 100 in fig. 6). The electronic device 600 has a battery accommodating portion 610 for accommodating the battery pack 100 (battery compartment), and an external terminal portion 615 (electrical connection) connected to an external connection terminal portion 41 of the battery pack 100 is provided at one side of the battery accommodating portion 610 (par. [0070]).
Therefore, as Kwon is silent as to its connection, it would have been obvious to one of ordinary skill in the art to add a circuit and housing compartment as taught by Kim in order to support the pouch battery taught by Kwon in order to have the battery of Kwon function in a device such as a phone, vehicle, etc.
Regarding claim 20, Kwon teaches that lithium batteries are high power/capacity and can be utilized in electronic devices [0007]. Note that no specific structures are identified in the specification regarding the intended use language around “high/low/fast” etc. Additionally, given the lack of structure in the specification, these are also relative terms and Kwon teaches high power batteries. Kwon teaches the structure in claim 19, and thus can perform the use in claim 20 absent unclaimed structural limitations.
Regarding claim 22, Kwon teaches that each cell has a first and second tab #21/221 (positive/negative) connected to respective leads #30/31 ([0009]). The respective tab groups can form first and second charging ports. Note that positive/negative are the intended use of the tabs.
Regarding claims 11-15, 17, 23-27, Kwon teaches a pouch battery with tabs and leads that can be used as a power source for a mobile phone, a portable computer, a smartphone, a smart pad, a netbook computer, a light electric vehicle (LEV), an electric vehicle, a hybrid electric vehicle, a plug-in hybrid electric vehicle, and a power storage unit [0097], but does not appear to go into specifics regarding the charging/discharging port which appears to be applicant’s electrode lead section of their invention.
However, as noted in the nonfinal, Kim also teaches a battery comprising cells separated by an isolation layer that divides a case. Note that depending on its orientation in space, the cells are “stacked”. Kim teaches first and second leads 50 and 60 to electrically connect the lithium-ion cell and the protective circuit board 40 (par. [0029]). The lithium-polymer cell also comprises positive and negative electrode tabs 21 and 23 electrically connected to the protective circuit board 40 (par. [0034]). The tab group associated with the lithium-ion cell could be formed into a first charging/discharging group and the same for the lithium-polymer cell and its tab group.
Kim also teaches a plurality of the positive terminals 43 and a plurality of the negative terminals 45 may be disposed on the protective circuit board 40 such that the positive terminal 15 of the lithium-ion cell 10 (via the first lead 50) and the positive electrode tab 21 of the lithium-polymer cell 20 are electrically connected to different positive terminals 43, respectively, and the negative terminal 11 of the lithium-ion cell 10 (via the second lead 60) and the negative electrode tab 23 of the lithium-polymer cell 20 are electrically connected to different negative terminals 45, respectively (par. [0039]). The tabs/leads electrically connected to the positive and negative terminals act as the 'composite tabs' in this instance and as charging/discharging ports. Fig. 1 further shows the two different cells and their leads/tabs being stacked on top of one another and eventually electrically connected to the connection terminal unit. The term 'electrically connected' insinuates that the tabs are secured to one another and therefore satisfies the limitations of claims 11 and 23.
The composite tabs/terminals formed by Kim are in turn electrically connected to the protective circuit board 40 (par. [0045]). The composite tabs/terminals connected to the PCB 40 is equivalent to integrating the terminals to the first and second charge/discharging port, satisfying the limitations of claims 12 and 24.
Kim discloses the positive terminal 15 (first tab) and the negative terminal 11 (second tab) for the lithium ion battery and negative electrode tab 23 (second tab of second cell) and positive tab 21 (first tab of second cell), satisfying the limitations of claims 13, 14, 25 and 26. Note the intended use language regarding positive/negative is how the terminals are to be utilized.
Lastly, Kim teaches the positive terminal 15 of the lithium-ion cell 10 (via the first lead 50, at cell first tab) and the positive electrode tab 21 (2nd cell first tab) of the lithium-polymer cell 20 are electrically connected to the positive terminal 43, and the negative terminal 11 of the lithium-ion cell 10 (via the second lead 60, 1st cell second tab) and the negative electrode tab 23 (2nd cell second tab) of the lithium-polymer cell 20 are electrically connected to the one negative terminal 45 (par. [0035]), satisfying the limitations of claims 15 and 27.
Therefore, it would have been obvious to one skilled in the art before the effective file date of the present invention to have utilized the connections as disclosed in Kim in the device of Kwon in order to provide the connection means needed to attach the battery to an electrical device.
Kim teaches a protective circuit board (PCB) 40 including protective elements, such as a protective circuit, a charge/discharge element unit, a PTC thermistor, a fuse, and the like, but is not limited thereto (par. [0036]). Kim further discloses that the negative electrodes of the first and second cells 210 and 220 are connected to a ground terminal B- of the external connection terminal unit 400 through a charge/discharge element unit 320 (par. [0049]). The charge/discharge element unit 320 is connected to both cells in this instance. The positive and negative terminals 43, 45 of the PCB acts as the third and fourth charging and discharging ports.
The first & second charge/discharge ports are electrically connected to each cell and the first charging/discharging circuit is connected to each cell via the cells' terminals/composite tabs as evident in fig. 4. The third & fourth charge/discharge ports are located in the battery assembly 200. The battery assembly 200 is electrically connected to the discharge element 320 as indicated by arrows in fig. 4. Fig. 4 also showcases the PCB 300 electrically connected to the external connection terminal unit 400 (power management circuit) that may include a power terminal B+, a ground terminal B-, an input/output terminal (not shown) and a thermistor terminal (not shown) but is not limited thereto (par. [0061]). The charge/discharge element unit 320 (charger circuit) includes charge and discharge elements 321 and 323 operated by control signals of the charge/discharge control unit 311 (charger management circuit) in the primary protective circuit 310. That is, when the battery assembly 200 is connected to an externa power supply through the external connection terminal unit 400 and the charge element 321 is turned on, the battery assembly 200 is charged (par. [0055]). A charge/discharge link can be formed from the connection of the PCB, external connection terminal unit, charge/discharge control unit, and the charge/discharge element unit through the positive and negative terminals 43, 45 (third & fourth charge/discharge ports), satisfying the limitations of claim 17.
Thus, given the various tab/lead combinations taught in Kim, it would have been obvious to one of ordinary skill in the art to add the lead/tab/charge/discharge element unit as described in Kim invention to provide charge to the battery or supply power to the load in Kwon which is silent as to how its battery is connected to an external device. Additionally, it is noted that merely making integral or making duplicate parts without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Harza, 124 USPQ 378 (CCPA 1960) (see MPEP § 2144.04) and See In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (see MPEP § 2144.04). Therefore, it would have been obvious to one skilled in the art to provide multiple electrical connection means depending on the intended use of the battery of Kwon.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP2018526802 teaches a pouch battery with stacked cells, tabs, leads, etc. (note applicant’s claims directed to “tab” configurations).
KR20100101762 teaches a stacked pouch battery with insulation between cells. It teaches the battery improves high-temperature storage characteristics (note applicant’s claims 2 and 20).
CN 106505169 teaches a battery module that comprises separate cells in a housing divided by an insulator with tabs, leads, etc. Depending on how you orient it in space, the cells can be stacked on top of each other.
WO2020151392 teaches bare cells in a pouch.
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 JENNIFER M DIETERLE whose telephone number is (571)270-7872. The examiner can normally be reached M-Th 9:30-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Mallari can be reached at 571-272-4729. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jennifer Dieterle/ Supervisory Patent Examiner, Art Unit 1776
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