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 .
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 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2, 5-9 of copending Application No. 17/924186. The copending application lays claim to the scope of the instant claim in substantial and overlapping manner such the double patenting rejection is issued. Pertaining to dependent claim 2, this claim is indefinite and therefore is interpreted to be met by the positive recitation of the copending application. Pertaining to claim 3, although specific dimensions are not enumerated in the copending application, these limitations are obvious to one of ordinary skill in the art through routine experimentation to produce the invention of the copending application for batteries over various sized casings and energy densities.
This is a provisional nonstatutory double patenting rejection.
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 2 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. Instant claim lays weight to a size selection which makes the battery impervious to the effects of damage – this is not possible. There are imaginable conditions upon which the scope of the claim would no longer be met because what is being claimed is impossible. Batteries in an environment of 0Kelvin would not transport electrons and therefore the resistance of the electric storage device would be changed, and that relationship has nothing to do with the size of the weld area and the size of the weld area cannot change the batteries response to such environment.
Claim 3 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. Instant claim recites “the flange has a dimension…” – the claim is written as “comprising” language and therefore the full scope of the flange elements is not specifically defined. It is interpreted that a weld, attachment layer, etc. could be within the scope of applicant’s flange material whereby it is unclear what features exhibits the 0.9mm or more and 1.1mm or less. Additionally, what is the contact area of the flange – located on the outer surface of the case – and the swaged portion – located on the inside portion of the case to hold the shaft in contact electrically with the electrode assembly? The shaft portion exists between the flange and the swaged portion and therefore determining a contact area is indefinite.
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.
(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) and 35 U.S.C. 102(a)(2) as being anticipated by Yokota et al (PGPUB 2017/0054131).
Claim 1: Yokota teaches a battery terminal made of a clad material which a first metal layer of Al0based alloy, a second layer of Cu-based alloy, and a third metal layer of Ni-based alloy are bonded to each other in a state where the first, second, and third metal layers are stacked; the assembly includes a flange portion and shaft portion [Abstract]. The electric storage device (1) includes an electrode assembly (4), a case (3), and external terminals (10, 20) which are connected to internal leads (5, 6) [Fig 1-3]. The external terminal includes a flange and shaft portion [0010]. The flange (12) is located on the outer surface of the case [Fig 3; 0064]. The shaft (11) extends from the flange to pass through the case and act as a connective connection to the electrode assembly such that the shaft is swaged [Fig 3; 0065]. The flange is made of a clad material having a plurality of metal layers such exemplified to be Al (101) welded (W2) to a layer of material (31) of cladding material of (31, 32, 33) [Fig 4; 0069-0071] whereby the interpretation of the claim is the shaft is the radial dimension of the element set by the dimension of the hole and the flange portion is the aspect extending therebeyond in a direction of the outer surface of the case.
Claim 2: Yokota teaches a flange and shaft to be connected to each other with the shaft being swagged [Fig 4; 0065, 0069-0071]. Yokota teaches the weld zone between one of the metal layers at one end and the shaft to have a size [Fig 4; 0107]. The prior art teaches all positively recited structural features of the instant claim and therefore is interpreted to have the same functional limitation pertaining to the resistance characteristics – See 35 U.S.C. 112(b) rejection above.
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yokota et al (PGPUB 2017/0054131).
Claim 3: Yokota teaches an external terminal made of a flange and shaft that is welded together to atomically bond the materials [0011] – the determination of where the flange starts and stops becomes open for interpretation since these features are blurring together via the weld. The prior art teaches at least one layer in the passing direction to have a dimension between 0.4mm and 0.6mm [Fig 15]. The prior art is silent to specifically define the contact area between the flange and swagged portion of the shaft and the flange dimension features to comprise a dimension of the claimed scope. The prior art teaches these features [Fig 13]. The relative size of these features is obvious to one having ordinary skill in the art to optimize and select a usable dimension based upon the size of the case and the energy density of the battery.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN J YANCHUK whose telephone number is (571)270-7343. The examiner can normally be reached M-Th 10a-8p.
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, Nick Smith can be reached at 571-272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN J YANCHUK/Primary Examiner, Art Unit 1752