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 .
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.
Claims 1-10 and 12-15 are rejected under 35 U.S.C. 103 as obvious over Mukaitani et al, EP 3125341 B1 (as cited in IDS).
Regarding Claim 1, Mukaitani teaches a positive electrode current collector made of a lead alloy containing 1.2 to 2.2% by mass Sn, tin, which falls within the claimed range of 0.4% by mass or more and 2% by mass or less of tin, and at least 0.001 to 0.04% by mass of Bi, bismuth, which falls within the claimed range of 0.004% by mass or less of bismuth, the remainder being Pb, lead, and unavoidable impurities [Mukaitani, 0011], but is silent to teach an average value of the distances is 50 μm or less. The limitation “created by analyzing a surface by an electron backscatter diffraction method is performed, intersection points of misorientation boundaries between crystal grains with a crystal misorientation of 5° or more and a straight line extending in one specific direction are extracted, distance between two of the intersection points adjacent to each other among the extracted intersection points are measured” is a product-by-process limitation. According to MPEP 2113, "even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer).
While Mukaitani does not explicitly teach the average value of the distances is 50 μm or less, based on MPEP 2112.01, Part II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Since the lead alloy of Mukaitani is comprised of the same material as the instant invention, it should inherently have an average value of the distances being 50 μm or less.
Moreover, according to MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim,541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990).
Regarding Claim 2, Mukaitani teaches the lead alloy of claim 1, wherein the amount of Bi, bismuth, within the lead alloy, is at least 0.001 to 0.04% by mass [Mukaitani, 0011], which falls within the range required by the claim.
Moreover, according to MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim,541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990).
Regarding Claim 3, Mukaitani teaches the lead alloy of claim 2, but is silent to teach an average value of the distances is 30 μm or less.
While Mukaitani does not explicitly teach the average value of the distances is 30 μm or less, based on MPEP 2112.01, Part II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Since the lead alloy of Mukaitani is comprised of the same material as the instant invention, it should inherently have an average value of the distances being 30 μm or less.
Regarding Claim 4, Mukaitani teaches a lead-acid battery with a positive electrode comprising a positive current collector, which is made of the lead alloy of claim 2, and corresponds to the lead layer of the claim, on which a positive active material is held [Mukaitani, 0017], indicating the active material is on a surface of the lead layer. The thickness of the lead alloys after processing, as shown in examples 1-7, is between 0.5 mm and 4mm [Mukaitani, 0018], therefore, the thickness of the lead alloy for example 7, 0.5 mm, meets the requirement of the claim.
Moreover, according to MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim,541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990).
Regarding Claim 5, Mukaitani teaches the lead alloy of claim 1, but is silent to teach an average value of the distances is 30 μm or less.
While Mukaitani does not explicitly teach the average value of the distances is 30 μm or less, based on MPEP 2112.01, Part II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Since the lead alloy of Mukaitani is comprised of the same material as the instant invention, it should inherently have an average value of the distances being 30 μm or less.
Regarding Claim 6, Mukaitani teaches a lead-acid battery with a positive electrode comprising a positive current collector, which is made of the lead alloy of claim 5, and corresponds to the lead layer of the claim, on which a positive active material is held [Mukaitani, 0017], indicating the active material is on a surface of the lead layer. The thickness of the lead alloys after processing, as shown in examples 1-7, is between 0.5 mm and 4mm [Mukaitani, 0018], therefore, the thickness of the lead alloy for example 7, 0.5 mm, meets the requirement of the claim.
Moreover, according to MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim,541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990).
Regarding Claim 7, Mukaitani teaches a lead-acid battery with a positive electrode comprising a positive current collector, which is made of the lead alloy of claim 1, and corresponds to the lead layer of the claim, on which a positive active material is held [Mukaitani, 0017], indicating the active material is on a surface of the lead layer. The thickness of the lead alloys after processing, as shown in examples 1-7, is between 0.5 mm and 4mm [Mukaitani, 0018], therefore, the thickness of the lead alloy for example 7, 0.5 mm, meets the requirement of the claim.
Moreover, according to MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim,541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990).
Regarding Claim 8, Mukaitani teaches the positive electrode of claim 7, wherein the lead-acid battery includes an electrode group [Mukaitani, 0017], and the electrode group includes two positive electrodes, three negative electrodes, and two separators stacked, with a separator between the positive and negative electrode so fabricate an electrode group [Mukaitani, 0030], therefore, indicating a bipolar lead storage battery.
Regarding Claim 9, Mukaitani teaches a lead-acid battery comprising a positive electrode of claim 8 [Mukaitani, 0011].
Regarding Claim 10, Mukaitani teaches a lead-acid battery comprising a positive electrode of claim 7 [Mukaitani, 0011].
Regarding Claim 12, Mukaitani teaches a positive electrode current collector made of a lead alloy containing 0.05 to 0.1% by mass of Ca, calcium, which falls within the claimed range of at least 0.1% by mass of calcium, 1.2 to 2.2% by mass Sn, tin, which falls within the claimed range of 0.4% by mass or more and 2% by mass or less of tin, and at least 0.001 to 0.04% by mass of Bi, bismuth, which falls within the claimed range of 0.004% by mass or less of bismuth, the remainder being Pb, lead, and unavoidable impurities [Mukaitani, 0011]. The alloy can further contain 0.003 to 0.2% by mass of Ag [Mukaitani, 0013], silver, which falls within the claimed range of 0.1% by mass or less of silver. However, Mukaitani is silent to teach an average value of the distances is 50 μm or less.
The limitation “created by analyzing a surface by an electron backscatter diffraction method is performed, intersection points of misorientation boundaries between crystal grains with a crystal misorientation of 5° or more and a straight line extending in one specific direction are extracted, distance between two of the intersection points adjacent to each other among the extracted intersection points are measured” is a product-by-process limitation. According to MPEP 2113, "even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer).
While Mukaitani does not explicitly teach the average value of the distances is 50 μm or less, based on MPEP 2112.01, Part II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Since the lead alloy of Mukaitani is comprised of the same material as the instant invention, it should inherently have an average value of the distances being 50 μm or less.
Moreover, according to MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim,541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990).
Regarding Claim 13, Mukaitani teaches the lead alloy of claim 12, wherein the amount of Bi, bismuth, within the lead alloy, is at least 0.001 to 0.04% by mass [Mukaitani, 0011], which falls within the range required by the claim.
Moreover, according to MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim,541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990).
Regarding Claim 14, Mukaitani teaches the lead alloy of claim 12, but is silent to teach an average value of the distances is 30 μm or less.
While Mukaitani does not explicitly teach the average value of the distances is 30 μm or less, based on MPEP 2112.01, Part II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Since the lead alloy of Mukaitani is comprised of the same material as the instant invention, it should inherently have an average value of the distances being 30 μm or less.
Regarding Claim 15, Mukaitani teaches a lead-acid battery with a positive electrode comprising a positive current collector, which is made of the lead alloy of claim 12, and corresponds to the lead layer of the claim, on which a positive active material is held [Mukaitani, 0017], indicating the active material is on a surface of the lead layer. The thickness of the lead alloys after processing, as shown in examples 1-7, is between 0.5 mm and 4mm [Mukaitani, 0018], therefore, the thickness of the lead alloy for example 7, 0.5 mm, meets the requirement of the claim.
Moreover, according to MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim,541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990).
Claim 11 is rejected under 35 U.S.C. 103 as obvious over Mukaitani et al, EP 3125341 B1 (as cited in IDS) as applied to claim 10 above, in further view of Nagaura et al, JP 2017059512 A (English translation provided for citation).
Regarding Claim 11, Mukaitani teaches the lead power storage battery of claim 10, but is silent to teach on a power storage system comprising said battery or the power storage system being configured to store power in the lead storage battery.
Nagaura teaches a lead-acid battery power storage system with efficient power storage performance [Nagaura, 0024], wherein the energy storage system is configured by connecting a plurality of lead-acid battery packs in parallel [Nagaura, 0025], wherein the energy storage system stores the power in n sets of assembled lead-acid batteries [Nagaura, 0026].
Therefore, it would have been obvious to a person with ordinary skill in the art, before the effective filing date of the instant application to modify the lead-acid battery taught Mukaitani to be included in the power storage system taught by Nagaura, because it is well-known to use lead-acid batteries in power storage systems. Further, a simple substitution of one known element for another to obtain predictable results supports prima facie obviousness determination (MPEP 2143, I, B).
Conclusion
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/LILIAN ALICE ODOM/Examiner, Art Unit 1722
/ANCA EOFF/Primary Examiner, Art Unit 1722