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 .
Drawings
Applicant’s amendment to Figure 1 to include a “Prior Art” legend is acknowledged, and the previous objection to the drawings is withdrawn.
Claim Objections
Claim 6 is objected to because of the following informalities. Appropriate correction is required.
The limitation “wherein the side-part plates are disposed at least two adjacent sites of the side part” appears to be missing a preposition, and should read “wherein the side-part plates are disposed at at least two adjacent sites of the side part” (emphasis added).
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 5-7 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.
Claim 5 recites, “the side part between the board connection of and the electrode connection of the metal member has a polygonal prism shape, and side-part plates are disposed at sites corresponding to n/2 or more sites of the side part when a sectional shape of the polygonal prism shape is an n-gonal shape” (emphasis added). Here, the structural relationship between “side-part plates” and “the side part” is unclear.
Under a first interpretation, it could be interpreted that the “side-part plates” and the “side part” are separate structures, and the “side-part plates” are added at “sites of the side part”. Under this interpretation, if only two adjacent side-part plates are disposed at sites of the side part, the remaining sites would still have the structure of the side part.
Under a second interpretation, it could be interpreted that the side part is a region which comprises the side-part plates. Under this interpretation, if only two adjacent side-part plates are disposed at sites of the side part, the remaining sites would not have any structure (i.e. they would be an open hole/gap). Under this interpretation, however, it is unclear how the side part, which is understood to be a region, is meant to have a “a polygonal prism shape”. The difference between these interpretations is depicted below with respect to instant Fig. 7B.
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Although Applicant has pointed to [0046] of the PGPub (corresponds to [0026] of the instant application) for support for this limitation (see Applicant’s arguments filed 03/27/2026) which appears to support the second interpretation of the claim, the Examiner notes that the structural relationship between the side part and the side-part plates is still unclear, as laid out above. As such, Claim 5 and dependent Claims 6-7 remain rejected as being indefinite. For the sake of compact prosecution, the second interpretation will be applied, as appears to be supported by the instant specification [instant specification: 0024-0026].
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (US-20090068501-A1) in view of Hashimoto et al. (WO-2020012848-A1; see English equivalent US-20210273284-A1 for citations; cited in IDS filed 12/29/2022).
Regarding Claim 1, Hong discloses a battery pack [0032, 0055]. Hong discloses that the battery pack includes a bare cell and a protection circuit board [0003-0007, 0016-0018, 0038].
Although Hong does not teach an exterior case, Hashimoto teaches that battery packs having insufficient strength are likely to be damaged by impacts such as dropping [0003], and that a battery electrically connected to a circuit board can be housed in an exterior case [0007, 0017].
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have formed the battery pack of Hong to include an exterior case with a reasonable expectation that such a configuration would result in a successful battery pack capable of reducing damage caused by impacts.
Hong further discloses that the battery pack comprises:
a circuit board (protection circuit board 1200; [0032]);
a battery (bare cell 1100, Fig. 1) including a metal exterior can (can 1120; [0033, 0039]); and
a metal member (first lead terminal 1300; [0032, 0048]) electrically connecting the battery and the circuit board [0032, 0048, 0053],
wherein
an electrode part (electrode terminal 1132; [0039]) is provided on at least one end side of the battery (i.e. top side; see Figs. 1 and 2A),
the circuit board (protection circuit board 1200) and the electrode part (first lead terminal 1300) are disposed to face each other (see Fig. 2A),
the metal member includes (see annotation of Hong Fig. 2A, below) a board connection (corresponds to the top surface of the metal member) connected to the circuit board [0032], an electrode connection (corresponds to the bottom surface of the metal member) connected to the electrode part [0032], and a side part (corresponds to side surfaces of the metal member),
the board connection is disposed to face the electrode connection with the side part interposed therebetween (see annotation of Hong Fig. 2A, below),
the board connection, the side part, and the electrode connection are integrally formed (i.e. they are all portions of the metal member), and
the side part of the metal member is configured in a protruded shape (i.e. the side part protrudes vertically above the electrode connection) thereby allowing a space (see annotation of Hong Fig, 2A, below; [0016, 0055]) to be provided between the circuit board and the electrode part provided on the battery.
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Annotation of Hong Fig. 2A.
Regarding Claim 2, modified Hong renders obvious all of the limitations as set forth above, including that the side part is erected substantially perpendicular to the electrode connection from a peripheral edge (see annotation of Hong Fig. 2A, below) of the board connection.
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Annotation of Hong Fig. 2A.
Regarding Claim 3, modified Hong renders obvious all of the limitations as set forth above, including that the metal member has a substantially polygonal prism shape (i.e. a rectangular prism; see Fig. 2A).
Regarding Claim 10, modified Hong renders obvious all of the limitations as set forth above. Hong discloses that the board connection (top surface of the metal member) can be connected to the circuit board by soldering or welding [0050, 0053]. 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 solder joined the board connection and the circuit board with a reasonable expectation that such a connection would result in a successful electrical connection between the metal member and the circuit board.
Regarding Claim 11, modified Hong renders obvious all of the limitations as set forth above. Hong further discloses that the metal member may include a slit (aperture 1320, Fig. 2C) which extends through the metal member [0049], and is therefore formed in the electrode connection.
Claim(s) 2 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (US-20090068501-A1) in view of Hashimoto et al. (WO-2020012848-A1; see English equivalent US-20210273284-A1 for citations) as applied to Claim 1, above, and in further view of Jang et al. (US-20090155684-A1; cited in IDS filed 05/01/2025).
Regarding Claims 2 and 4-5, modified Hong renders obvious all of the limitations as set forth above. Modified Hong discloses that the metal member (1300) is a rectangular member (see Hong: Figs. 2A and 2C) which can have various structures (see Figs. 2C vs 3A). Hong discloses that a successful electrical connection between the electrode terminal and the circuit board can be accomplished using various configurations (see Figs. 2A vs 2B vs 3B vs 6A vs 6b vs 6C). Hong also indicates the desire for light-weight secondary batteries with a higher energy density per unit of weight [0006, 0016, 0038], and discloses that the metal member may be soldered to the circuit board [0048, 0051, 0055]. Hong does not teach that the board connection is a flange extending perpendicularly from the side part.
Jang teaches a similar battery pack [0034] including a metal member (second lead 270; [0050-0051]) which electrically connects an electrode part (electrode terminal 34; [0047]) and a circuit board (protection circuit board 210; [0050]) [0053]. Jang teaches that the metal member has a shape which includes a planar welding part (271, corresponds to electrode connection), a support (273, corresponds to side part), and a connection part (275, corresponds to board connection) comprising a groove [0054]. Alternatively, Jang contemplates that the metal member (second lead plate 270) can be planar with a groove [0057-0058]. Advantageously, Jang teaches that such a configuration allows for increased contact area between the board connection (i.e. connection part 275) and circuit board, and thereby prevents detachment of the metal member [0051-0055].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have substituted the metal member of Hong to have the shape taught by Jang including the planar welding part, the support, and the connection part, in order to prevent detachment of the metal member from the circuit board, and in order to decrease the weight of the battery. One of ordinary skill in the art would have had a reasonable expectation of success since Jang teaches the shape of a metal member including a planar welding part, a support, and a connection part as substitutable with a metal member having a planar shape [Jang: 0057-0058], and since the simple substitution of one known element for another to obtain predictable results represents a prima facie case of obviousness (MPEP 2143, B).
Accordingly, modified Hong renders obvious that “the side part is erected substantially perpendicular to the electrode connection from a peripheral edge of the board connection” as required by Claim 2 (see annotation of Jang Fig. 4A, below).
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Annotation of Jang Fig. 4A.
Furthermore, modified Hong renders obvious “wherein the board connection is a flange extended perpendicularly from the side part” as required by Claim 4 (see annotation of 4A, above).
Additionally, modified Hong renders obvious “wherein the side part between the board connection of and the electrode connection of the metal member has a polygonal prism shape” as required by Claim 5. Here a “polygonal prism shape” is broadly and reasonably interpreted, in light of the instant specification (e.g. see 232 in instant Fig. 4B), as a shape which is similar to a polygonal prism. Since modified Hong teaches a shape similar to a rectangular prism, the limitation is met.
Modified Hong further renders obvious that side-part plates (i.e. support parts 273) are disposed “at sites corresponding to n/2 or more sites of the side part when a sectional shape of the polygonal prism shape is an n-gonal shape” (i.e. the support parts are disposed at two sides, and the polygonal prism shape is a rectangular shape) as required by Claim 5.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (US-20090068501-A1) in view of Hashimoto et al. (WO-2020012848-A1; see English equivalent US-20210273284-A1 for citations) and in further view of Jang et al. (US-20090155684-A1) as applied to Claim 5, above, and in further view of Yamazaki et al. (US-20030211385-A1; cited 12/29/2025).
Regarding Claims 6-7, modified Hong renders obvious all of the limitations as set forth above. Modified Hong renders obvious that the side-part plates are disposed at two opposite sides of the side part of the metal member (see rejection of Claim 5, above). Modified Hong does not teach that the side-part plates are disposed at at least two adjacent sides of the side part of the metal member.
Jang teaches that the metal member (lead plate 270) may have various shapes [0057].
Yamazaki teaches a conductive member (electrically conductive material) which electrically connects an electrode part (battery cell terminal) to a circuit board [0045-0047, 0054]. The conductive member has a shape wherein side-part plates are disposed at all sites of the side part (see annotation of Yamazaki Fig. 5, below).
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Annotation of Yamazaki Fig. 5.
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have substituted the metal member disclosed by modified Hong for the metal member taught by Yamazaki with a reasonable expectation that such a configuration would result in a successful metal member capable of electrically connecting the electrode part and the circuit board. One of ordinary skill in the art would have had a reasonable expectation of success since Jang teaches that the shape of the metal member is not critical [Jang: 0057], and since the simple substitution of one known element for another to obtain predictable results represents a prima facie case of obviousness (MPEP 2143, B).
Accordingly, modified Hong renders obvious that “the side-part plates are disposed at at least two adjacent sites of the side part of the metal member” as required by Claim 6, and that “the side-part plates are disposed at all sites of the side part” as required by Claim 7.
Claim(s) 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (US-20090068501-A1) in view of Hashimoto et al. (WO-2020012848-A1; see English equivalent US-20210273284-A1 for citations) as applied to Claims 1 and 11, above, and in view of Phillips et al. (US-20080113262-A1; cited 12/29/2025).
Regarding Claim 13, modified Hong renders obvious all of the limitations as set forth above. Hong discloses that the metal member (first lead terminal 1300) can be electrically connected by, for example, resistance welding [0050, 0053]. Hong does not teach that the slit is extended to at least a part of the side part of the metal member
Phillips teaches that resistance welding requires current to be passed through a resistance to create enough heat to flow two materials together [0078]. In order to improve resistance welding for highly conductive materials, a metal member (i.e. cell straps 710; [0077, 0079]) can be modified to include a slit (711, Fig. 7B) which directs the current through both members to be welded [0078-0080]. Advantageously, the use of the slit maximizes the distance that the current needs to travel during welding which forces the current to flow into both work pieces, while retaining sufficient cross-sectional area that the metal member (cell strap 710) can carry high levels of current [0080].
Additionally, Phillips teaches that there is no criticality as to the size or location of the slit (see Figs. 7B-7F; [0077, 0080, 0090-0093, 0096]). Specifically, Phillips teaches that various configurations of slits can successfully be employed (Figs. 7B-7F), and that the size, number, and location of the slit can be varied depending on the desired properties of the metal member (i.e. cell strap) [0077, 0080, 0090-0093, 0096]. In a specific embodiment, Phillips teaches that the slits (721, Fig. 7C) extend through the side of the metal member (cell strap) [0091].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the slit such that it is extended to at least a part of the side part of the metal member, since a change in shape normally requires only ordinary skill in the art (MPEP 2144.04, IV, B), and since Phillips teaches that there is no criticality to the shape or location of the slit. One of ordinary skill in the art would have had a reasonable expectation that providing the slit such that it “is extended to at least a part of the side part of the metal member” would result in a successful metal member.
Regarding Claims 14-15, Hong renders obvious all of the limitations as set forth above. Although Hong discloses a battery pack (see rejection of Claim 1, above), and Hong indicates that battery packs can be used in handheld electronic devices [0003-0007], Hong does not teach an electronic device or an electric tool comprising the battery pack.
Phillips teaches that battery packs may be coupled to cordless devices in order to power the cordless device [0005-0006]. Phillips teaches a power tool as an example of a cordless device [0003].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have provided an electronic device (i.e. cordless device) comprising the battery pack of Hong as required by Claim 14 with a reasonable expectation that an electronic device comprising the battery pack according to Claim 1 would result in a successful electronic device capable of being powered by the battery pack. It would have further been obvious to have selected the electronic device to be an electric tool (i.e. power tool) as required by Claim 15, with a reasonable expectation that providing an electric tool with the battery pack according to Claim 1 would result in a successful electric tool capable of being powered by the battery pack.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new grounds of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 DREW C NEWMAN whose telephone number is (571)272-9873. The examiner can normally be reached M - F: 10:00 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Leong can be reached at (571)270-1292. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.C.N./Examiner, Art Unit 1751
/Haroon S. Sheikh/Primary Examiner, Art Unit 1751
Prosecution Insights