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 .
In paper filed 1/24/23, claims 1-18 are present in the application for prosecution thereof.
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.
Claim 18 is 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.
With regards to claim 18, the term “capable” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 18/069,312. Although the claims at issue are not identical, they are not patentably distinct from each other because include a solid state battery laminate including a positive electrode, negative electrode and solid electrolyte and contacting with a moisture barrier film.
Claim Rejections - 35 USC § 102
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 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)(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.
Claims 1-7,12,13 and 15 are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by Shimamura et al. (2009/0233164).
Shimamura et al. (2009/0233164) teaches a bipolar battery laminated in series whereby the bipolar battery includes positive electrode on a current collector and a negative electrode and an electrolyte sandwiched therebetween (abstract). Shimamura et al. (2009/0233164) teaches to prevent impact and environmental deterioration the bipolar laminate structure is encapsulated in a jacket material (10). Seal members (4b) are also utilized.
Regarding claims 1 and 7, the moisture absorbing film contact the laminate stack (Fig. 3).
Regarding claim 2, the encapsulant covers the side surface of the laminate stack (Fig. 3).
Regarding claim 3, external electrodes (terminals 8,9) are also partly covered by the encapsulant layer (10) (Fig. 3).
Regarding claim 4, the encapsulant extends from a surface of the terminal (8,9) to a side section of the laminate (Fig. 3).
Regarding claim 5, the encapsulant extends across an interface of the terminals (8,9) and the side section view (Fig. 3).
Regarding claims 6, the encapsulant covers the side surface of the laminate stack and excluding a portion of the external electrodes (8,9).
Regarding claims 12 and 13, the use of ceramic such as silica or an inorganic oxide (claimed barium or calcium) can be added to the seal member for absorbing water and prevention of water penetration [0064],[0268],[0269].
Regarding claim 15, the encapsulant covers the entire side surface of laminate stack between 5a and 5b (Fig. 3).
Claims 8,9,14,16 and 18 are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by Shih et al. (2013/0164607).
Shih et al. (2013/0164607) teaches a laminated lithium battery including electrodes and an electrolyte stack and a protective casing covering the stack (abstract and Fig. 1A and 1B). The protective casing is from gases or vapors which would be inclusive of moisture [0039],[0041].
Regarding claims 8 and 9, Shih et al. (2013/0164607) teaches the laminated battery stack to be on a support (24) which is also covered by the protective casing and are in parallel to each other (Fig. 1B).
Regarding claim 14, the protective casing as a thickness of less than 60 microns or 20-50 microns [0039].
Regarding claim 16, the battery stack is applied to a support substrate and therefore it “surface-mounted”.
Regarding claim 18, a lithium battery stack is formed and hence inserting and extracting lithium ions by the positive and negative electrode is capable and provided.
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.
Claims 10,11 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Shih et al. (2013/0164607) or Shimamura et al. (2009/0233164) in combination with Bates (2008/0003493).
Features detailed above concerning the teachings of Shih et al. (2013/0164607) or Shimamura et al. (2009/0233164) are incorporated here.
Shih et al. (2013/0164607) or Shimamura et al. (2009/0233164) fails to teach an inner via hole in the support for connecting wiring.
Bates (2008/0003493) depicts a thin film battery package whereby the substrate support include a via (48,50) which is connected thereto (Fig. 3 and [0042]).
Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Shih et al. (2013/0164607) or Shimamura et al. (2009/0233164) to include a via in the support for connecting the battery stack as evidenced by Bates (2008/.0003493) with the expectation of success.
Regarding claim 17, the laminated stacked has been heated and therefore meeting the claimed sintered [0053] to Shimamura et al. (2009/0233164).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN K TALBOT whose telephone number is (571)272-1428. The examiner can normally be reached Mon-Thurs 6:30-5PM - Fri OFF.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN K TALBOT/Primary Examiner, Art Unit 1715