DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 26 August 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Response to Amendment and Arguments
Applicant’s amendment overcomes the rejection of claims 1-11 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. The rejection has been withdrawn.
Applicant’s amendment distinguishes from 2016/0028068A1(Yang). The rejection of claims 1, 5, 6, 8 and 10-11 under 35 U.S.C. 102(a)(1) over Yang has been withdrawn.
Applicant’s amendment does not distinguish from US2014/0011060A1 (Yang’060).
Applicant’s arguments in light of the amendment have been fully considered .
With respect to Yang’060, Applicant argues that Yang’060 teaches punching the electrode lead to form a through- hole, which is not the same as removing a coating layer from the surface of the metal substrate. The examiner disagrees. The recitation “wherein the gas release portion has a structure formed by removing the coating layer partially or totally in the thickness direction through a physical or chemical etching process from the surface of the metal substrate” as amended does not exclude formation of a through-hole, and “punching the electrode lead to form a through- hole” meets the limitation of “removing the coating layer totally in the thickness direction through a physical process from the surface of the metal substrate”. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5 and 6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 requires “the gas release portion has a structure formed by removing the coating layer partially or totally in the thickness direction through a physical or chemical etching process from the surface of the metal substrate”, however, claim 5 recites “the gas release portion has a structure formed by coating with at least one non-adhesive material selected from the group consisting of a polyimide-based material, a fluorine-based material and polymethylpentene”, thus claim 5 fails to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 6 is rejected as depending upon rejected claim 5 but fail to remedy the 112 issue.
Claim Rejections - 35 USC § 102
Claims 1, 4, 7, 8 and 10 stand, and claim 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang’060.
Regarding claims 1, 3, 4 and 10-11, Yang’060 teaches an electrode lead made of nickel coated -copper ([0062]), which meets the claimed metal substrate and metal coating layer, wherein the electrode lead is coated with a sealing film of insulating property such as polyimide (Fig. 4, [0064] and [0085]), which meets the insulating film, and the electrode lead has a gas-venting through hole formed by punching the electrode lead so that the sealing film is penetrated ([0039], [0085] and Fig. 4, 6, 8 and 9), which meets the claimed gas release portion and totally or 100% removing the coating layer in the thickness direction.
Regarding claim 7, Yang’060 teaches the alternative embodiment thus meets the claim.
Regarding claim 8, Yang’060 teaches that the gas-venting through hole has a rounded shape ([0076]).
Claim Rejections - 35 USC § 103
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yang’060 as applied to claims 1, 4, 7, 8 and 10-11 above in view of Isozaki.
The teachings of Yang’060 are set forth above.
While teaching the electrode lead is made of copper coated with Ni ([0062]), Yang ‘060does not discloses the claimed thickness of the Ni coating.
Isozaki teaches a total Ni coating thickness of 4 to 6 μm of both side of a copper plate in a secondary battery is required to maintain corrosion resistance toward electrolyte and the safety of the battery while optimize the manufacturing cost ([0048]), i.e., each side with a coating thickness of 2 to 3 μm, which meets the claimed thickness.
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to utilize copper coated with 2 to 3 μm thickness of Ni of Isozaki as the electrode lead material of Yang’060. The rationale to do so would have been the motivation provided by the teachings of Isozaki that to do so would predictably provide corrosion resistance toward electrolyte and the safety of the battery ([0048]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yang’060 .
The teachings of Yang’060 are set forth above.
Yang’060 does not expressly discloses the relative area of the venting holes to the total area of the electrode lead , however, a person of ordinary skill in the art would have been motivated to adjust the area of the venting holes relative to the area of the electrode lead in order to obtain a workable product, in the instant case, effective gas venting and sealing of the battery pouch case. Case law has held that Changes in Size/Proportion are considered routine expedients :
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.).
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
See MPEP 2144.04 IV. A.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
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