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 .
Election/Restrictions
Applicant’s election with traverse of Group I, claims 1-8 in the reply filed on December 16, 2025 is acknowledged.
Claims 9-14 and 18-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 16, 2025.
Applicant's election with traverse of Group I claims 1-8 in the reply filed on December 16, 2025 is acknowledged. The traversal is on the ground(s) that unity of invention exists between groups I and II since they depend on the same independent claim 1 and that there is no burden of search between the groups. This is not found persuasive as follows.
Restriction practice under 371 national stage applications and unity of invention is not limited in the manner alleged by Applicant.
According to MPEP § 1850:
13.3. Determination of Unity of Invention Not Affected by Manner of Claiming
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
As noted in the previous Office Action, since independent claim 1 is disclosed by at least one cited prior art reference therein, then the record has established that there is a lack of unity of invention since claim 1 lacks a special technical feature over the cited prior art of record. The term “special technical features” is defined as meaning those technical features that define a contribution which each of the inventions considered as a whole, makes over the prior art. Lack of unity can be established “a posteriori” in light of prior art wherein the prior art teaches that some of the claimed inventions lack recitation of a common special technical feature.
According to MPEP § 1850:
An international application should relate to only one invention or, if there is more than one invention, the inclusion of those inventions in one international application is only permitted if all inventions are so linked as to form a single general inventive concept (PCT Rule 13.1). With respect to a group of inventions claimed in an international application, unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical features. unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more special technical features.
Since claim 1 fails to meet the standard for unity of invention under 371 practice (since it does not have a special technical feature therein, the term defined as meaning those technical features that define a contribution which each of the inventions considered as a whole, makes over the prior art, then lack of unity exists and restriction is proper.
As to the additional argument to burden of search this argument is not persuasive for the following reasons.
First, the standard for ascertaining unity of invention has not been met as noted above and that standard is what drives lack of unity in the instant application. Furthermore, each of Groups I-III pertain to distinct embodiments - claims 2-8 are represented by the embodiment in Fig. 2; claims 9-14, are represented by the embodiment in Fig. 3; and claims 18-24 are represented by the embodiment in Fig. 4. Each embodiment in Figs. 2-4 are of distinct design which are structurally different from each other further requiring different search strategy to each design regardless of any allegation for similar classification.
The standard focuses on whether the claims share a "single general inventive concept" linked by a "special technical feature" that is novel and non-obvious. The examiner does not need to explicitly prove a "serious search burden" in the same way as a § 111(a) case, as the test is based purely on the technical relationship (or lack thereof) between the claimed inventions relative to the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed March 21, 2023 and August 12, 2024 have been placed in the application file and the information referred to therein has been considered as to the merits.
With respect to foreign language references with no translation of the document: “If no translation is submitted, the examiner will consider the information in view of the concise explanation and insofar as it is understood on its face, e.g., drawings, chemical formulas, English language abstracts, in the same manner that non-English language information in Office search files is considered by examiner in conducting searches.” See MPEP §609.04(a)(II) (D) and 37 CFR 1.98(a)(3)(ii).
Note that the relevance of KR 10-2021-0047605, cited in the IDS filed March 21, 2023, is not clear as the invention appears to be directed to a semiconductor device which does not appear to have any relevance to the instant invention. Clarification is respectfully requested.
Drawings
The drawings received March 21, 2023 are acceptable for examination purposes.
Specification
The specification received March 21, 2023 has been reviewed for examination
purposes.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of copending Application No. 18/290,092 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to instant claim 1, copending Application No. 18/290,092 claims a side frame for a battery case (see claim 1, line 1) comprising:
A first frame unit formed to have an open end (open cross-section, see claim 1, ll. 2-3); and
A second frame unit arranged in the first frame unit to close the open end surface (open-cross section) of the first frame unit and coupled to the first frame unit 32 (see claim 1, ll. 4-6),
Wherein the first frame unit and second frame unit are formed of different materials (see claim 1, ll. 7-8).
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsuyusaki et al. (JP 2018-188106A).
As to claim 1, Tsuyusaki discloses a side frame for a battery case comprising:
A first frame unit 88 formed to have an open end surface; and
A second frame unit 87 arranged in the first frame unit 88 to close the open end surface of the first frame unit 88 and coupled to the first frame unit 88,
Wherein the first frame unit 88 and second frame unit can be formed of different materials (para. [0083]). Notably, Tsuyusaki teaches that the second frame unit 87 must have a higher strength than the first frame unit 88 and that the difference in strength can be achieve by the formation of bead 97 as shown in the figures or can be achieved by other ways including changing the thickness of outer wall 93 of second frame 87 or by changing the material of the frame unit 87 (Figs. 3-4, for example). Therefore, Tsuyusaki reasonably teaches of an invention where a second frame is inserted into an open end of a first frame and the frame materials are different and Tsuyusaki anticipates claim 1.
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(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 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Munjurulimana et al. (U.S. Patent Application Publication No. 2022/0320659).
As to claim 1, Munjurulimana discloses a side frame for a battery case comprising:
A first frame unit 32 formed to have an open end surface (defined by channel 35); and
A second frame unit 60 arranged in the first frame unit 32 to close the open end surface of the first frame unit 32 and coupled to the first frame unit 32,
Wherein the first frame unit 32 and second frame unit 60 can be formed of different materials as unit 60 is a polymer material (para. [0065]) and unit 32 is a metal such as steel or aluminum (paras. [0051], [0072]; Fig. 6 for example).
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Allowable Subject Matter
Claims 2-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: none of the cited prior art of record, alone or in combination are held to reasonably teach, suggest or render obvious the side frame of claim 1 including the particular first frame unit having first and second vertical members and first, second and third horizontal members arranged in the particular manner recited therein.
Each of Tsuyusaki and Munjurulimana teach of first frame units of significant different design and there is no sufficient motivation or teaching to modify the first frame units of either reference to meet the first frame unit of claim 2 in addition to the features of base claim 1. KR 10-2020-0080470 discloses a similar frame design however the first and second frame units are spot welded together (Fig. 8) and only disclosed to be of the same metal material (steel) for effective welding. It would not be reasonable to modify the materials of the frame units to be different since it would be held to negatively impact the thrust of the reference with respect to welding the units together. None of the remaining cited prior art of record, provide sufficient teaching or suggestion to modify this reference to meet the limitations of claim 2.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent Application Publication No. 2017/0050675 discloses a sill (frame) for a vehicle comprising plural frame parts. U.S. Patent Application Publication No. 2018/0361875 discloses a first frame having an l-shape.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGG CANTELMO whose telephone number is (571)272-1283. The examiner can normally be reached Mon-Thurs 7am to 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at (571) 272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGG CANTELMO/Primary Examiner, Art Unit 1725