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 Arguments
The following is in response to the applicant’s remarks filed 12/24/25.
The applicant submits that the amendments overcome the previous 112 and 103 rejections. Specifically, the applicant submits that the cited art does not teach a sensor which measures a force during production, and that neither Yoo nor Auer teach an outer casing that is processed in the battery facility.
The examiner respectfully disagrees. Regarding the 112 rejections, the term similar is a term of degree which does not give definite bounds to the claim, so the rejection is maintained.
Regarding the 103 rejections, the applicant’s arguments are directed at functional claim limitations of the claimed sensor unit. For instance, a sensor that detects a force which acts from a battery manufacturing facility to the casing and the sensor unit that is processed in the battery manufacturing facility is not patentably distinct from a sensor unit that detects a force to the casing. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990).
Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). See also MPEP § 2173.05(g). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971) (“where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on”).
The sensor unit of combined Auer which possesses the function of being able to detect a force acting on a case, and is shaped identically to a battery cell case which undergoes manufacturing inherently possesses the claimed functional limitations.
Separately, the applicant’s attempt to distinguish between post and preproduction stages of the battery cell is unpersuasive given the broadest reasonable interpretation of the claimed terms “processed in the battery manufacturing facility”. Any step of a battery assembly including the described steps of Yoo wherein the dummy cell is placed within a battery module would then reasonably be interpreted as being processed in a manufacturing facility.
Additionally, the limitations reciting wherein when the casing is introduced to a same battery manufacturing facility as an outer housing can of a battery, the casing is processed in the battery manufacturing facility in a manner similar to the outer housing can are product by process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production [MPEP 2113].
Then, the rejection is maintained.
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.
Claims 1 - 13 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.
Regarding claims 1, 5, and 13, the term “similar” in claim 1, line 9 and “similar” in claims 5, line 2 and 13, line 3 are relative terms. which renders the claim indefinite. The term “similarly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 – 2 and 4 are rejected under 35 U.S.C. 103 by Auer, US20230033261A1, and Yoo, US20090092895A1
Regarding claim 1, Auer teaches a sensor unit which is introduced to a battery manufacturing facility (force measurement module (100)), the sensor unit comprising:
that is processed in the battery manufacturing facility (force measurement module is substituted for a battery within a housing of the same dimensions)[0009]; and
a sensor that is mounted on the casing and that detects a force which acts from the battery manufacturing facility to the casing (force sensors)[0013]
and the sensor is housed inside the casing (sensors)[0013]
wherein when the casing is introduced to a same battery manufacturing facility as an outer housing can of a battery, the casing is processed in the battery manufacturing facility in a manner similar to the outer housing can (inherently present function).
Additionally, the limitations reciting wherein when the casing is introduced to a same battery manufacturing facility as an outer housing can of a battery, the casing is processed in the battery manufacturing facility in a manner similar to the outer housing can are product by process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production [MPEP 2113].
Auer does not teach a casing having a tubular shape with a bottom.
Yoo teaches a sensor unit (dummy cell)[0003] formed to have the same outer casing as the battery in that it replicates wherein the casing has a tubular shape with a bottom [fig. 1][0006][0007][0008]. Further, Yoo teaches that the shape of the battery housing is a design choice which can be selected from cylindrical, rectangular, or other various forms [0006]. Then, it would have been obvious to combine the shape of the sensor of Yoo into the battery of Auer as an obvious design choice.
Regarding claim 2, combined Auer teaches the sensor unit according to claim 1.
Further, Auer teaches wherein the casing is identical to the outer housing can (same as module)[0009],
Regarding claim 4, combined Auer teaches the sensor unit according to claim 3.
Further, Auer teaches further comprising: a first component (base surface (101)) on which the sensor (104) is mounted and that is housed inside the casing [fig. 1]; and a second component (cover (119)) placed to engage an outer side of the first component [fig. 4][0051],
wherein the first component is configured such that the first component can be separated from the second component and taken out through an opening of the casing (unscrewed and disassembled)[0051][fig. 4].
Claims 5, 8, 9, 11, and 13 are rejected under 35 U.S.C. 103 by Auer, US20230033261A1, and Yoo, US20090092895A1 as applied to claim 4 above, and further in view of Kim, KR20180087544A.
Regarding claim 5, combined Auer teaches the sensor unit according to claim 4.
Combined Auer does not teach wherein a groove section is formed on the casing in the battery manufacturing facility similar to the outer housing can, the first component is placed in such a manner to not overlap the groove section in an axial direction of the casing, and the second component is placed in such a manner to overlap the groove section in the axial direction of the casing.
Kim teaches a sensor unit (battery with sensor)[0024] wherein a groove section is formed on the casing (insertion groove (201) for anode (220))[0027] in the battery manufacturing facility similar to the outer housing can, the first component (ring shaped body (not labeled))[fig. 1] is placed in such a manner to not overlap the groove section in an axial direction of the casing (spaced away from anode terminal groove), and the second component (head portion (200)) is placed in such a manner to overlap the groove section in the axial direction of the casing (formed with anode terminal groove). Further, Kim teaches that the sensor is configured to be firmly positioned [0030] with the first and second component within a cylindrical shaped housing. Then, it would have been obvious to combine the components and grooves of Kim into the sensor unit of combined Auer to allow for the sensor to be firmly positioned within a cylindrical cell.
Regarding claim 8, combined Auer teaches the sensor unit according to claim 4,
Combined Auer does not teach wherein the first component comprises a first substrate on which the sensor is provided, and a second substrate on which one of a wireless communication module and a connection terminal is provided, and the other of the wireless communication module and the connection terminal is provided on the first substrate.
Kim teaches a sensor unit (battery with sensor)[0024] wherein the first component (head portion (200)) comprises a first substrate (300) on which the sensor (310) is provided, and a second substrate (400) on which one of a wireless communication module (320) and a connection terminal is provided (210), and the other of the wireless communication module and the connection terminal is provided on the first substrate [fig. 4]. Further, Kim teaches that the sensor is configured to be firmly positioned [0030] with the first and second component within a cylindrical shaped housing. Then, it would have been obvious to combine the components and grooves of Kim into the sensor unit of combined Auer to allow for the sensor to be firmly positioned within a cylindrical cell.
Regarding claim 9, combined Auer teaches the sensor unit according to claim 4.
Combined Auer does not teach wherein a memory and a battery are provided on the first component.
Kim teaches a sensor unit (battery with sensor)[0024] wherein a memory (410) and a battery are provided on the first component [fig. 4]. Further, Kim teaches that the sensor is configured to be firmly positioned [0030] with the first and second component within a cylindrical shaped housing. Then, it would have been obvious to combine the components and grooves of Kim into the sensor unit of combined Auer to allow for the sensor to be firmly positioned within a cylindrical cell.
Regarding claim 11, combined Auer teaches the sensor unit according to claim 10.
Combined Auer does not teach wherein the sensor further includes an environment sensor which detects at least one of temperature, humidity, or atmospheric pressure in the battery manufacturing facility.
Kim teaches a sensor unit (battery with sensor)[0024] wherein the sensor further includes an environment sensor which detects temperature in the battery manufacturing facility [0042]. Further, Kim teaches the sensor measuring temperature allows for the battery controls which reduce cost and inefficiencies [0042][0049]. Then, it would have been obvious to combine the temperature sensor of Kim into the sensing unit of combined Auer to improve efficiency.
Regarding claim 13, combined Auer teaches the method of inspecting the battery manufacturing facility according to claim 12.
Combined Auer does not teach wherein a groove section is formed on the casing in the battery manufacturing facility similar to the outer housing can after the groove section is formed, the sensor is taken out from the casing and retrieved.
Kim teaches a sensor unit (battery with sensor)[0024] wherein a groove section is formed on the casing (groove formed on case (100))[fig. 1] in the battery manufacturing facility similar to the outer housing can. Further, Kim teaches that the sensor is configured to be firmly positioned [0030] with the first and second component within a cylindrical shaped housing. Then, it would have been obvious to combine the components and grooves of Kim into the sensor unit of combined Auer to allow for the sensor to be firmly positioned within a cylindrical cell.
Kim does not teach after the groove section is formed, the sensor is taken out from the casing and retrieved.
However, this is considered to be a product by process limitation, and it does not impact the patentability of the claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” [MPEP 2113 I].
Claims 6 and 7 are rejected under 35 U.S.C. 103 by Auer, US20230033261A1, and Yoo, US20090092895A1 as applied to claim 4 above, and further in view of Sato, US20220209356A1.
Regarding claim 6, combined Auer teaches the sensor unit according to claim 4.
Combined Auer does not teach an elastic member of an annular shape that is fitted to the second component so as to contact an inner circumferential surface of the casing.
Sato teaches a sensor unit (battery with sensor)[0041][0043] wherein the sensor unit further comprises an elastic member (81)[0092] of an annular shape [fig. 13] that is fitted to the second component so as to contact an inner circumferential surface of the casing [fig. 13][0092]. Further, Sato teaches the elastic member to allow for a secure attachment of the sensor unit components [0093]. Then, it would have been obvious to combine the elastic member of Sato with the sensor unit of combined Auer to improved the connection between components.
Regarding claim 7, combined Auer teaches the sensor unit according to claim 6.
Further, Sato teaches wherein a groove (cutout portions)[0093] to which the elastic member is fitted is formed on the second component [fig. 13].
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 PATRICK M GREENE whose telephone number is (571)270-1340. The examiner can normally be reached M-F 8-5.
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, Miriam Stagg can be reached at (571)270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK MARSHALL GREENE/Examiner, Art Unit 1724 /BRIAN R OHARA/Examiner, Art Unit 1724
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