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 Amendment
The amendment received 12/22/2025 (“Amendment”) has been entered.
Response to Arguments
Applicant's arguments filed 12/22/2025 have been fully considered but they are not persuasive.
Applicant argues the cited prior art references do not teach a rough surface area on element 12 of Okutani, as modified based on the description in Kato, would not include "at least a part of a portion contacting with the insulating member," as recited in claim 1.” Additionally, Applicant argues that the resulting structure fails to teach or suggest the recited claim language because element 12 of Okutani fails to contact element 20a, the asserted insulating member. That is, the resulting structure would fail to teach or suggest that the rough surface area is at a part where the surface of the battery case of Okutani contacts the insulating member at least because the asserted battery case of Okutani fails to contact the insulating member. The Office failed to assert that Kato includes a rough surface area for a terminal; therefore, the alternative location of the rough surface area from the claims is not asserted as being included in the modified structure of Okutani. Okutani states "The positive electrode external terminal 17 and the negative electrode external terminal 19 are fixed to a sealing body 13, with insulating members 20 and 21, respectively, interposed therebetween." (Okutani at paragraph 0078). (Remarks p.7-8). Examiner respectfully disagrees. While it appears Okutani does not teach the rough surface as claimed, Kato is relied upon for the teaching of the rough surface. As noted in the Non-final rejection mailed 10/02/2025l Okutani teaches a battery case that comprises a terminal attachment hole and is configured to accommodate an electrode body; a terminal member that is attached to the terminal attachment hole and comprises an opposed surface opposed to a surface of the battery case at a periphery of the terminal attachment hole; and an insulating member that is made of resin and is disposed between the battery case and the terminal member; Kato teaches wherein the surface of the battery case and/or the opposed surface of the terminal member comprises a rough surface area on at least a part of a portion contacting with the insulating member, and an arithmetic average roughness Sa of the rough surface area is equal to or more than 1 µm. The claim does not require that the battery case is directly in contact with the insulating member, therefore, it is the Examiner’s position, Okutani does teach the battery case #12 (i.e casing) is in contact with the insulating member (i.e. #20a) as #12 is further sealed with the sealing body #13 [0079], that covers the top of the electrode assembly. The sealing body is welded to the outer casing which is in contact with the insulating member [i.e. 0090- Thereby, the positive electrode external terminal 17 is electrically connected to the conductive member 32 in such a state as to be electrically insulated from the sealing body 13 by the upper first insulating member 20 a and the lower first insulating member 20 b. Both the upper first insulating member 20 a and the lower first insulating member 20 b correspond to the first insulating member of the invention].
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to roughen the surface the battery case that is in contact with the insulating portion, as Kato teaches roughening the surfaces of the battery case improves the adhesion between the terminal and the case [0045]. It is also a well known technique in the battery technology area wherein a skilled artisan would understand roughening surfaces of the battery case enables increased adhesion and prevents internal short circuiting.
Furthermore, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Thus, the argument in not persuasive.
In addition, the newly added claims are rejected and found below.
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) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20130196220A1 (Okutani) and further in view of US20110020691A1 (Kato).
Regarding claim 1, Okutani teaches a prismatic secondary battery [abs]; comprising: a battery case [#12, 0079] that comprises a terminal attachment hole [#17b; 0090] and is configured to accommodate an electrode body; a terminal member [#17;0090] that is attached to the terminal attachment hole and comprises an opposed surface opposed to a surface of the battery case at a periphery of the terminal attachment hole; and an insulating member [#20a] and is disposed between the battery case and the terminal member [depicted below in annotated fig 2].
Okutani is silent with respect to wherein the surface of the battery case and/or the opposed surface of the terminal member comprises a rough surface area on at least a part of a portion contacting with the insulating member, and an arithmetic average roughness Sa of the rough surface area is equal to or more than 1µm.
Okutani does not explicitly teach the insulating member is made of resin #20a. However, Okutani does teach other insulating members i.e. #34 is made of resin [0108], therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a resin material for insulating member #20a of Okutani, as doing so would achieve a predictable result. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Kato teaches a battery [abs] and teaches where in n arithmetic surface roughness (Ra) of an inner wall surface of the battery case 1 varied within a range of 0.5 to 3.0 μm [0045]. As shown in Table 4, the internal short circuit resulting from the gel leakage (rank A, B) became less likely to occur with the increase in arithmetic surface roughness (Ra) of the inner wall surface of the battery case 1. This indicates that the increased surface roughness of the inner wall surface of the battery case 1 improved the adhesion between the positive electrode and the battery case [0045]. Therefore, it would have been obvious in view of a skilled artisan to modify the battery case of Okutani to have a surface roughness of 0.5 to 3.0 μm as taught by Kato so the adhesion is improved between the electrode and the battery case [0045].
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Regarding claim 2, Okutani teaches wherein the terminal member comprises an outside terminal part [part of the terminal that is exposed to the outside of the case as noted in instant spec 0021] comprising: a shaft part that is inserted into the terminal attachment hole [17b]; and a flange part that is formed in a plate shape and extends from the shaft part along an outer surface of the battery case at an outside of the battery case, the insulating member comprises a gasket [#20a] that is disposed between the outer surface of the battery case and an opposed surface of the flange part [depicted in claim 1]. Okutani is silent with respect to the outer surface of the battery case and/or the opposed surface of the flange part comprises the rough surface area on at least a part of a portion contacting with the gasket. Kato teaches a battery [abs] and teaches where in n arithmetic surface roughness (Ra) of an inner wall surface of the battery case 1 which contacts the gasket #5 in fig. 2] and has roughness Ra within a range of 0.5 to 3.0 μm [0045]. As shown in Table 4, the internal short circuit resulting from the gel leakage (rank A, B) became less likely to occur with the increase in arithmetic surface roughness (Ra) of the inner wall surface of the battery case 1. This indicates that the increased surface roughness of the inner wall surface of the battery case 1 improved the adhesion between the positive electrode and the battery case [0045]. Therefore, it would have been obvious in view of a skilled artisan to modify the battery case that comprises the rough surface area on at least a part of a portion contacting with the gasket of Okutani to have a surface roughness as taught by Kato so the adhesion is improved between the electrode and the battery case [0045].
Regarding claim 3, Okutani teaches wherein the terminal member further comprises an inside plate-shaped part [as defined in the instant spec para 0016, it’s a plate shaped conductive member- part of #32 of Okutani is conductive-0090] connected to the outside terminal part inside the battery case and extending along an inner surface of the battery case, the insulating member comprises an insulating plate disposed between the inner surface of the battery case and an opposed surface of the inside plate-shaped part [depicted in claim 1]. Okutani is silent with respect to the inner surface of the battery case and/or the opposed surface of the inside plate-shaped part comprises the rough surface area on at least a part of a portion contacting with the insulating plate. Kato teaches a battery [abs] and teaches where in n arithmetic surface roughness (Ra) of an inner wall surface of the battery case 1 varied within a range of 0.5 to 3.0 μm [0045; it is noted in Fig. 2 of Kato, part of the battery case 1 contacts the insulating plate, i.e. gasket #5, therefore reads on the claim language]. As shown in Table 4, the internal short circuit resulting from the gel leakage (rank A, B) became less likely to occur with the increase in arithmetic surface roughness (Ra) of the inner wall surface of the battery case 1. This indicates that the increased surface roughness of the inner wall surface of the battery case 1 improved the adhesion between the positive electrode and the battery case [0045]. Therefore, it would have been obvious in view of a skilled artisan to modify the part of the battery case in contact with the insulating plate of Okutani to have a surface roughness as taught by Kato so the adhesion is improved between the electrode and the battery case [0045].
Regarding claim 4, Okutani teaches wherein the inside plate-shaped part is a long plate-shaped member [#32] arranged along the inner surface of the battery case and is a plate-shaped electrical collector part whose one end part is connected to the outside terminal part and whose another end part is connected to the electrode body [0090; The conductive member 32 has a tubular portion 32 a formed at its battery interior end, while at its battery exterior end—that is, sealing body 13 end, where the diameter narrows—there is formed opening 32 b into which the tubular portion 17 a of the positive electrode external terminal 17 is inserted].
Regarding claim 5, Okutani teaches wherein the terminal member comprises: a current interrupt device [0100-#35] that is connected to the outside terminal part inside the battery case and is configured to interrupt an electrically conductive passage when an internal pressure of the battery case exceeds a predetermined pressure [0103; Okutani teaches - If counter-electromotive current is generated in the state in which the nonaqueous electrolyte is present in the second through-hole 34 e immediately after the battery internal pressure increases to bring the current interruption mechanism 35 into operation and the inversion plate 33 is deformed to cut off the electrical connection between the inversion plate 33 and the positive electrode collector 16, sparks may occur in the second through-hole 34 e, and the heat therefrom may fuse and carbonize the second insulating member 34 around the second through-hole 34 e.] and an electrical collector part [0101-#16] that is connected between the current interrupt device and the electrode body [seen in fig 2 and para 0103], the current interrupt device comprises: a sealing tab comprising: a base part that is connected to the outside terminal part inside the battery case and is arranged along the inner surface of the battery case; and a ring-shaped protruding part that protrudes from the base part to the electrode body [0112]; and an inversion plate [#33- the periphery of the inversion plate 33 is hermetically welded and sealed on the inner surface side of the flange portion 32 c. The inversion plate 33 is shaped to slightly protrude toward the battery interior side from the periphery toward the center; that is, arranged to be in a slanted positional relationship with the sealing body 13] that is connected to the protruding part of the sealing tab, is connected to the electrical collector part, and is configured to be deformed and spaced away from the electrical collector part when an internal pressure of the battery case rises to a value equal to or more than a predetermined value, and the inside plate-shaped part is the base part of the sealing tab [0091 -Okutani teaches The inversion plate 33 contains a conductive material and has a function as a valve that is deformed toward the outer side of the battery when the pressure in the battery outer casing 12 increases].
Regarding claim 6, Okutani teaches wherein the terminal member comprises: an outside terminal part whose one part is exposed to an outside of the battery case; and an inside plate-shaped part [as defined in the instant spec para 0016, it’s a plate shaped conductive member- part of #32 of Okutani is conductive-0090] that is connected to the outside terminal part inside the battery case and extends along an inner surface of the battery case, the insulating member [depicted in claim 1, i.e. #20a] comprises an insulating plate disposed between the inner surface of the battery case and an opposed surface of the inside plate-shaped part. Okutani is silent with respect to the inner surface of the battery case and/or the opposed surface of the inside plate-shaped part comprises the rough surface area on at least a part of a portion contacting with the insulating plate.
Kato teaches a battery [abs] and teaches where in n arithmetic surface roughness (Ra) of an inner wall surface of the battery case 1 varied within a range of 0.5 to 3.0 μm [0045]. As shown in Table 4, the internal short circuit resulting from the gel leakage (rank A, B) became less likely to occur with the increase in arithmetic surface roughness (Ra) of the inner wall surface of the battery case 1. This indicates that the increased surface roughness of the inner wall surface of the battery case 1 improved the adhesion between the positive electrode and the battery case [0045]. Therefore, it would have been obvious in view of a skilled artisan to modify the battery case of Okutani to have a surface roughness as taught by Kato so the adhesion is improved between the electrode and the battery case [0045].
Regarding claim 7, Okutani teaches wherein a projection part [depicted below] protruding toward the insulating member and surrounding the terminal attachment hole in a plane view is formed on the surface of the battery case and/or the opposed surface of the terminal member.
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Regarding claim 8, Okutani is silent with respect to wherein the surface of the battery case and/or the opposed surface of the terminal member comprises the rough surface area on a part equal to or more than 5% of the portion contacting with the insulating member. Kato teaches a battery [abs] and teaches where in n arithmetic surface roughness (Ra) of an inner wall surface of the battery case 1 varied within a range of 0.5 to 3.0 μm [0045]. As shown in Table 4, the internal short circuit resulting from the gel leakage (rank A, B) became less likely to occur with the increase in arithmetic surface roughness (Ra) of the inner wall surface of the battery case 1. This indicates that the increased surface roughness of the inner wall surface of the battery case 1 improved the adhesion between the positive electrode and the battery case [0045]. Kato does not explicitly teach the surface area on a part equal to or more than 5%. However, it is noted: Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Therefore, it would have been obvious in view of a skilled artisan to modify the battery case of Okutani to have the rough surface area on a part equal to or more than 5% of the portion contacting with the insulating member as taught by Kato so the adhesion is improved between the electrode and the battery case [0045].
Regarding claim 9, Okutani is silent with respect to wherein the arithmetic average roughness Sa of the rough surface area is equal to or less than 100 µm. Kato teaches a battery [abs] and teaches where in n arithmetic surface roughness (Ra) of an inner wall surface of the battery case 1 varied within a range of 0.5 to 3.0 μm [0045]. As shown in Table 4, the internal short circuit resulting from the gel leakage (rank A, B) became less likely to occur with the increase in arithmetic surface roughness (Ra) of the inner wall surface of the battery case 1. This indicates that the increased surface roughness of the inner wall surface of the battery case 1 improved the adhesion between the positive electrode and the battery case [0045]. Therefore, it would have been obvious in view of a skilled artisan to modify the battery case of Okutani to have a surface roughness of 0.5 to 3.0 μm as taught be Kato so the adhesion is improved between the electrode and the battery case [0045].
Regarding claim 10, Okutani in view of Kato teaches wherein the surface of the battery case comprises the rough surface area on at least the part of the portion contacting with the insulating member. As noted above in claim 1, Okutani teaches the battery case [fig. 1a #12 that has a sealing body #13 which is welded to the casing, which covers the entire periphery of the external portion of the assembly [0079, 0090], including the top assembly (which is part of the claimed battery casing) and as seen in fig. 1 the battery casing/sealing body is in contact with the insulating member [20a] and the opposed surface of the terminal member [#17] [0090]. Okutani does not teach the rough surface area for the battery case. Kato teaches the rough surface of the inner wall surface of the battery case as claimed [0045]. Therefore, it would have been obvious in view of a skilled artisan to modify the battery case of Okutani to have a surface roughness of 0.5 to 3.0 μm as taught by Kato so the adhesion is improved between the electrode and the battery case [0045].
Regarding claim 11, Okutani in view of Kato teaches wherein the opposed surface of the terminal member comprises the rough surface area on at least the part of the portion contacting with the insulating member. Please refer to the rejection of claims 1 and 10, as the limitations recited herein are rejected above.
Regarding claim 12, Okutani in view of Kato teaches wherein the surface of the battery case and the opposed surface of the terminal member comprises the rough surface area on at least the part of the portion contacting with the insulating member. Please refer to the rejection of claims 1 and 10, as the limitations recited herein are rejected above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/S.G./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729