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
Newly submitted Claims 1-3, 5-8, 11-14, 16-20 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The instant specification indicated distinct embodiments of Species A (Fig. 1), Species B (Fig. 2), Species C (Fig. 3), Species D (Fig. 4), and Species E (Fig. 5), see also [0017]-[0021].
The originally filled Claim 1 was generic to the embodiments of Figs. 1-5. However, originally filed Claims 2, 3, 4, 5 stated the member included the additional structural features, whereas, Claim 9 recited “the member is a covering insulating film.” This is interpreted to be a selection of the Species X in the originally filed claims.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claimed withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 102
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) 9 and 15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kobayashi et al. (US-20210367298-A1 as provided in the IDS dated 07/25/2024).
Regarding Claim 9, Kobayashi discloses:
A solid state battery comprising (battery 400 is described as a solid-state, laminated battery, see [0114], [0108] and [0040]-[0041]):
a solid state battery laminate including a positive electrode layer (the positive electrode layer 12, see Fig. 6 reproduced below),
a negative electrode layer (a negative electrode layer 14, see Fig. 6),
and a solid electrolyte layer interposed between the positive electrode layer and the negative electrode layer (a solid electrolyte layer 15 is shown as being in between the positive electrode layer 12 and a negative electrode layer 14, see Fig. 6)
and a covering insulating film in contact with the solid state battery laminate and covering the solid state battery laminate (The first and second portion 21/22 are shown to contact and cover the solid state laminate, see Fig. 6. The first and second portion 21/22 is described as containing an insulating material, see [0107] ),
the covering insulating film containing a moisture absorbing material (at least one selected from the first portion 21 and the second portion 22 contain the zeolite particles and the zeolite particles can adsorb moisture, see [0107]).
Claim Rejections - 35 USC § 103
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US-20210367298-A1 as provided in the IDS dated 07/25/2024) as applied to claim 9 above.
Regarding Claim 15, Kobayashi teaches:
the moisture absorbing material contains synthetic zeolite and/or silica gel (at least one selected from the first portion 21 and the second portion 22 contain the zeolite particles and the zeolite particles can adsorb moisture, see [0028] and [0072]),
Kobayashi is not particularly limited to the amount of zeolite used in the first portion 21 and/or the second portion 22. Therefore, Kobayashi does not teach:
and a content of the synthetic zeolite and/or the silica gel is 1 vol% to 45 vol% based on a whole of the covering insulating film
and/or based on a whole of the support board (optional limitation).
However, Kobayashi teaches the zeolite is provided to achieve the desired effects of adsorbing moisture from the outside or a sulfide gas generated inside the battery, see [0072]. Additionally, Kobayashi teaches the insulating material is provided to achieve the desired effect of suppressing short circuits, see [0069]. This disclosure teaches that the amount of zeolite and insulating material are both result effective variables that control the ability to adsorbing moisture or a sulfide gas and suppressing short circuits.
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have optimized the amount of zeolite and insulating material provided to achieve the desired effects of adsorbing moisture or a sulfide gas and suppressing short circuits.
It is the Examiner’s position that this routine optimization would have led one of ordinary skill in the art at the time the instant invention was filed to have arrived at the claimed content of zeolite “is 1 vol% to 45 vol% based on a whole of the covering insulating film,” without undue experimentation.
Response to Arguments
Applicant's arguments filed 09/30/2025 have been fully considered and are addressed below.
Non-statutory Double Patenting
Applicant’s arguments, see page 6, with respect to non-statutory double patenting have been fully considered. The non-statutory double patenting has been withdrawn because the amendments to Claims of this instant application and the Claims of 18147464 have been determined render the co-pending applications to be patentably distinct.
Rejections under U.S.C. 35 § 112b
Applicant’s arguments, see page 6, with respect to rejections under U.S.C. 35 § 112b have been fully considered. The rejection of Claim 7 has been withdrawn for at least the reason that Claim 7 is directed to non-elected Species E, restricted herein.
Rejections under U.S.C. 35 §§ 102 and 103
Applicant’s arguments, see pages 7-8, with respect to rejections under U.S.C. 35 §§ 102 and 103 have been fully considered and found unpersuasive. In light of the amendments to claims 9 and 15, the new grounds of rejection does not rely on any teaching or matter specifically challenged in the argument and arguments are considered moot.
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 Kayla E Clary whose telephone number is (571)272-2854. The examiner can normally be reached Monday - Friday 8:00-5:00 (PT).
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, Allison Bourke can be reached at 303-297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.E.C./
Kayla E. ClaryExaminer, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721