DETAILED ACTION
Response to Amendment
Amendments, filed on March 19, 2026, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Claim Rejections - 35 USC § 102
Claims 1 - 7 are rejected under 35 U.S.C. 102(a)(1/(a)(2) as being anticipated by Nakamura et al. (U.S. Patent No. 9,899,646 B2) for the reasons of record as set forth in Paragraph No. 9 of the Office Action mailed on December 19, 2025.
Regarding the amended language that the cylindrical batteries are ‘fixed’ within the through-hole by contact with the inner circumferential surface of the through-hole, the Examiner notes that Nakamura et al. explicitly teaches this in the paragraph bridging columns 1 and 2:
PNG
media_image1.png
380
910
media_image1.png
Greyscale
PNG
media_image2.png
288
894
media_image2.png
Greyscale
I.e. that Nakamura et al. recognizes using the inner circumferential surfaces of the hole portions (through-holes) to retain (fix) the batteries in place.
Claim Rejections - 35 USC § 103
Claims 1 – 7 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nakamura et al. as applied above in either Paragraph No. 5 or 6, and further in view of Morimitsu et al. (U.S. Patent App. No. 2018/0366701 A1).
Nakamura et al. is relied upon as described above with regard to claim 1.
While the Examiner maintains that Nakamura et al. anticipates the claimed limitations for the reasons set forth above, the Examiner acknowledges that Nakamura et al. fails to explicitly illustrate embodiments wherein the smaller diameter of their through-hole directly contacts the outer surface of the battery as required in the amended claims (though the Examiner maintains that the citation referenced above clearly implies this concept is deemed within their invention).
However, Morimitsu et al. teach a similar battery holder concept (albeit one where the battery is ‘held’ at the top of the battery, slides through the holder and is then also secured at the bottom). In the battery holder of Morimitsu et al., they teach a similar stepped-shaped opening to allow the battery to both easily pass through when first inserted (i.e. the top having a bigger diameter) and also to securing orient and restrict the battery to the exact center of the hole (at least Paragraphs 0073 – 0087: “posture restricting portion”). While Morimitsu et al. does not explicitly state that the posture restricting portion should be in physical contact with the side of the batteries, a skilled artisan would readily appreciate that this is the optimal ‘posture restricting’ that could be obtained (with the trade off that inserting the batteries would be more difficult due to the friction fit).
Applicant(s) are reminded that “the test for obviousness is not whether features of the secondary reference may be bodily incorporated into the primary reference’s structure, nor whether the claimed invention is expressly suggested in any one or all of the references, rather the test is what the combined teachings would have suggested to those of ordinary skill in the art.” Ex parte Martin 215 USPQ 543, 544 (PO BdPatApp 1981). In the instant case, the Examiner deems that forming the first diameter to have the exact outer diameter of the cylindrical battery to meet the amended language of “to fix the cylindrical battery in the through hole by contact with the inner circumferential surface of the through hole” would have been a matter of routine optimization and design choice for a skilled artisan, with the recognized trade off that the tighter the fit, the harder it may be to insert the batteries into the through-hole in the first place.
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Nakamura et al. to utilize a first diameter meeting the amended language as taught by Morimitsu et al. as such an embodiment would have been readily envisioned by a skilled artisan as the smaller diameter is recognized as the ‘posture restricting portion’ designed to insure that the inserted battery is aligned as perfectly as possible to the center of the through-hole.
Regarding claims 3 – 7, these limitations are met for the reasons set forth above.
Regarding amended claim 2, Morimitsu et al. further disclose forming filling slots for filling the through-hole with a gapfiller adhesive to securing fix the batteries in place, once inserted (see citations above). The exact location and structure of the slot would have been well within conventional optimization knowledge for a skilled artisan based on other architecture aspects of the battery holder; busbar placement, terminals, etc. The language “wherein air is … to prevent formation of air bubbles in the predetermined gap” is a product-by-process limitation and is not further limiting in so far as the structure of the product is concerned. “[E]ven 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.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
In the instant case, the Examiner deems that it would have been obvious to a skilled artisan to desire no air bubbles in the adhesive, especially given the teaching in Morimitsu et al. about the concern of making sure the adhesive fixedly secures the batteries in the first place (e.g. see discussion of the concerns of failed adhesive fixture in the citations above).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Nakamura et al. to meet the limitations of claim 2 as taught by Morimitsu et al., as using a gapfiller with no bubbles and flow channels/slots to allow the placement of the gapfiller/adhesive is known in the art, as taught by Morimitsu et al. above.
Response to Arguments
The rejection of claims 1 and 3 - 7 under 35 U.S.C § 102 – Nakamura et al.
Applicant(s) argue(s) that Nakamura et al. fails to read on the claimed limitations because “the receiving surface 35 of Nakamura does not correspond to the support part of the presently claimed invention, wherein at least a portion of an inner circumferential surface of the support part comes into contact with an outer circumferential surface of the cylindrical battery cell to fix the cylindrical battery cell onto the inner circumferential surface of the through hole, as is presently claimed” (page 5 of response). Applicants further clarify that Nakamura et al. fails to disclose a ‘stepped part’ and, instead, discloses only a triangular part (pages 6 – 7 of response: “The Examiner has taken the position that the ridge portion 70 of Nakamura may correspond to the stepped part of the presently claimed invention respectively. See Office Action, page 5. Applicant respectfully disagrees because the ridge portion 70 of Nakamura is in shape of triangle in cross-section thereof, which does not correspond to a shape of step, as is presently claimed.”). The Examiner respectfully disagrees.
The Examiner notes that Applicants’ own disclosure is clear that triangular “step ridge portions” are within the scope of the term ‘step’ (e.g. Figure 6B:
PNG
media_image3.png
662
584
media_image3.png
Greyscale
and PGPUB Paragraphs 0068 – 0069:
PNG
media_image4.png
288
900
media_image4.png
Greyscale
). As such, the Examiner deems that triangular “cone-type” inclined surfaces are clearly encompassed by the “stepped part” of the invention.
The rejection of claim 2 under 35 U.S.C § 103(a) – Nakamura et al. in view of Nakano et al.
The above noted rejection has been withdrawn because Applicants’ amendment(s) have set forth new limitations (e.g. that a gapfiller with no air bubbles must be present) no longer anticipated, nor rendered obvious, by the above noted rejection.
The rejection of claims 1 - 7 under 35 U.S.C § 103(a) – Nakamura et al. in view of Morimitsu et al.
Applicants’ arguments have been considered but are moot in view of the new ground(s) of rejection. In so far as they apply to the present rejection of record, Applicant(s) argue that the shape of the through-hole and the contact with the battery surface provides patentability. The Examiner respectfully disagrees.
A skilled artisan would readily appreciate that there is a trade-off between how tight the smaller diameter (‘posture restricting portion’) is relative to the outer circumference of the battery and how easy it is to automate and insert the batteries into the through-holes. With direct surface contact, the alignment to the center of the through-hole would be perfect, but with additional automation/assembly trade-offs (friction fit). This does not convey patentability as a skilled artisan would clearly recognize these trade-offs.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited disclose similar “stepped” battery holding portions.
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.
Applicants’ amendment resulted in embodiments not previously considered (i.e. amended language to claims 1, 2 and 7) which necessitated the new grounds of rejection, and hence the finality of this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
May 7, 2026
Prosecution Insights