DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. Applicant’s response filed 3/12/2026 was received. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Drawings
2. The objections to the drawings are withdrawn in view of the correction filed to the specification.
Specification
3. The amendment filed to the specification is accepted by the Examiner.
Claim Rejections - 35 USC § 112
4. The rejections of claim 6; claim 7; claim 8, and thus dependent claims 9-14; claim 11, and thus dependent claims 12-14, and claim 13 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention are withdrawn in view of the corrections filed.
5. The rejections of claim 4, and thus dependent claims 5-7; and claim 11, and thus dependent claims 12-14, 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 are maintained because no correction or specific traversal is presented.
Claims 4 and 11 each recite: “wherein a cross-linking treatment method used in the cross-linking process varies depending on the material of the insulator.” Claims 1 and 8, upon which claims 4 and 11 depend, respectively, are drawn to product claims (i.e., claim 1: a cylindrical secondary battery; claim 8: a cap assembly). The claim limitation adds no further structural limitation to the product claims, and is instead drawn to a method step of determining the cross-linking process used dependent upon the insulator. Claims 4 and 11 are thus directed to the process and not the product, rendering the claim indefinite (MPEP § 2173.05(p)).
Appropriate correction is required.
6. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
7. Claim 1, and thus dependent claims 2-7; claim 8, and thus dependent claims 9-14; claim 5, and thus dependent claims 6-7, claim 6; claim 7; claim 12, and thus dependent claims 13-14; claim 13; and claim 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
A) Each of claims 1 and 8 was amended to recite the following:
“wherein a melting temperature of the insulator is greater than 400 degrees Celsius.”
The range does not exist in the written description. Applicant cites P53 for support; however, this paragraph teaches:
PNG
media_image1.png
322
512
media_image1.png
Greyscale
Accordingly, while the written description supports that that the insulator (specifically made of crosslinked polypropylene) does not melt at 400 °C, the range of “wherein the melting temperature of the insulator is greater than 400 degrees Celsius” does not exist in the written description. It is noted that no range(s) is/are taught for the melting temperature of the insulator. The case law to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) is noteworthy in that the court held the following:
The ranges described in the original specification included a range of "25%- 60%" and specific examples of "36%" and "50%." A corresponding new claim limitation to "at least 35%" did not meet the description requirement because the phrase "at least" had no upper limit and caused the claim to read literally on embodiments outside the "25% to 60%" range, however a limitation to "between 35% and 60%" did meet the description requirement (emphasis mine).
In the instant application fact pattern, the instant application teaches no ranges for the melting temperature of the insulator, wherein and the phrase "greater than" has no upper limit and thus does not meet the description requirement as the range reads on embodiments not contemplated by the inventors at the effective filing date of the invention. The range allows for, as one example, an insulator to be have a melting temperature of 2,000 °C. The disclosure does not support such because it does not support the range of “greater than 400 °C” presented.
B) The above value of “does not melt at 400 °C” only exists for the specific embodiment of the insulator is made of cross-linked polypropylene. The instant claim does not limit the material of the insulator to any material. Accordingly, the breadth of the feature amended into the claim is not commensurate in scope with the embodiment it is disclosed for. No other portion of the instant application provides any teaching as to the melting points, or melting ranges, of any of the other materials taught. Accordingly, it is not known or taught from the disclosure whether insulator can be comprised of the materials recited in claims 5-7 or 12-14 and meet the melting point range requirement. The claim is in effect a newly presented genus claim for an insulator made of any material that has the quoted property, whereas the written description only supports a singular species (crosslinked polypropylene) that is taught as not melting at 400 °C.
Appropriate correction and/or explanation is required.
Claim Analysis
8. This section was previously provided and pertinent portions to the rejection below are repeated here for convenience. Claims 1 and 8 are product claims drawn to a cylindrical secondary battery and a cap assembly. Each recites: “…wherein the insulator is formed through an injection process, an assembly process, and a cross-linking process, sequentially.”
The limitation transforms the product claims into product-by-process claims, the courts holding:
“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) (see MPEP § 2113).
The limitation is evaluated solely for the explicit or implicit structure imparted to the product. The features of an injection process or an assembly process impart no explicit or implicit structural characteristics to the product, nor does the order of steps. The same is true of a cross-linking process: if there is no entity capable of being cross-linked, there is no implicit or explicit structure added the claim. For example, perhaps the insulator forming process is one in which after the steps recited in the claim, there is a dissolution step in which the cross-linked component is dissolved/removed from the insulator. Given the claim does not positively recite a cross-linked material, there is no implicit or explicit structure provided by the product-by-process limitation in which there is a cross-linking process performed. Thus, prior art teaching an insulator would appear to meet these limitations; alternatively, any differences provided by the product-by-process limitation would appear to provide a product that is obvious from an insulator of the prior art achieved by alternative methods of making.
9. The same evaluation of the dependent claims reciting product-by-process limitations is applied: each of the claims is evaluated solely for the implicit or explicit structure imparted to the product claim. 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. Thus, the Examiner finds:
Claims 2 and 9: the product-by-process step appears to impart no further implicit or explicit structural features to the product claims.
Claims 3 and 10: the product-by-process step appears to impart no further implicit or explicit structural features to the product claims.
Claims 4 and 11: the claims are indefinite and the process features impart no further implicit or explicit structural features to the product claims.
Claims 5 and 12: the insulator is required to be made of one of the recited materials.
Claims 6 and 13: the insulator is required to be made of the recited materials; the specific cross-linking method(s) add no further implicit or explicit structure to the product claims.
Claims 7 and 14: the insulator is required to be made of the recited materials; the specific cross-linking method adds no further implicit or explicit structure to the product claims.
Claim Rejections - 35 USC § 102/ § 103
10. The rejection of claims 1-14 under 35 U.S.C. 102(a)(1) as anticipated by Hwang et al. (KR 10-2016-0029230) (machine translation previously provided) is withdrawn in view of the amendments filed. The alternative rejection under 35 U.S.C. 103 as obvious over Hwang et al. (KR 10-2016-0029230) is maintained and moved under the appropriate header below.
Claim Rejections - 35 USC § 103
11. The rejection of claims 1-14 under 35 U.S.C. 103 as unpatentable over Hwang et al. (KR 10-2016-0029230) (machine translation previously provided) is maintained, and is optionally further rejected in view of An et al., “Structure and Properties of High Melt Strength Polypropylene Prepared by Combined Method of Blending and Crosslinking,” J. Applied Polymer Science, Volume 116, Issue 3, May 2010, pp. 1237-1856 (copy provided).
Regarding claims 1 and 8, the claim analysis sections above are incorporated in their entirety in the rejection of all claims and not repeated here.
Hwang teaches a cylindrical secondary battery (Figs. 2-7; P2) comprising:
a cylindrical can 200a1 (P2, 10);
an electrode assembly 110a accommodated in the cylindrical can 200a (P2-3, 10); and
a cap assembly 400 (P33-54; Figs. 2-7) comprising
a top cap 410a (“a cap-up”),
a cap-down 330 disposed under the top cap 410a (“cap-up”),
a vent plate 300 disposed between the top cap 410a (“cap-up”) and the cap-down 330 (Figs. 2, 3, 7), spaced apart from the cap-down 330 (P34; Figs. 2-3, 7) and having at least one notch 320 (P35; Fig. 2-3, 7), and
an adhesive insulation member 350 (“an insulator”) inserted between the vent plate 300 and the cap-down 330 to insulate the vent plate 300 and the cap-down 330 from each other (P13-15, 34).
The product-by-process language of, “wherein the adhesive insulation member 350 (“an insulator”) is formed through an injection process, an assembly process, and a cross-linking process, sequentially” does not add any additional explicit or implicit structure to the claim as analyzed in the claim analysis section above and incorporated here. It is noted that Hwang does teach an injection process (P44), an “assembly process” in which the adhesive insulation member 350 (“insulator”) is inserted between the vent plate 300 and the cap-down 300 and is then heat-sealed (P36-43); and that the adhesive insulation member 350 (“insulator”) is constituted of a material capable of crosslinking (P19, 42: “…a mixture of modified propylene resin capable of electron beam crosslinking…”). Accordingly, it appears all of the structure implicitly achieved by the claimed product-by-process is met by Hwang. Alternatively, any differences provided by the product-by-process limitation would appear to provide a product that is obvious from the adhesive insulation member 350 (“insulator”) of Hwang.
Hwang teaches the adhesive insulation member 350 (“insulator”) includes a multi-layer construct including a heat resistant part 353 and names the material of modified polypropylene resin capable of electron beam crosslinking (P42), and the heat resistant part is meant to secure a high melting temperature (P42). Hwang does not explicitly teach what the melting temperature of the heat resistant part 353 of insulator 350 is (i.e., “wherein a melting temperature of the insulator is greater than 400 °C); however, the goal of Hwang is that the heat resistant part secures a high melting temperature and serves to function as a heat resistant part.
Therefore, it is considered an entirely obvious expedient to one having ordinary skill in the art at the effective filing date of the invention determine the appropriate or workable values and/or ranges at which the heat resistant part 353 of insulator 350 melts at based on these teachings in order that the heat resistant part 353 may satisfactorily achieves its intended purpose and functionality of being a heat resistant part. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It is noted that in an alternative interpretation of the claimed subject matter, just heat resistant layer 353 (Figs. 3-4; P42, 46) having heat resistance and formed of insulating materials such as modified propylene resin capable of electron beam crosslinking (P42) reads on the claimed “insulator” (“Second Interpretation”).
Optional Additional Teaching Reference
Furthermore regarding the heat resistant part 353 of insulator 350 that secures a high melting temperature and serves to function as a heat resistant part and the claimed limitation of, “wherein a melting temperature of the insulator is greater than 400 °C,” Hwang teaches heat resistant part 353 may made of a modified polypropylene resin capable of electron beam crosslinking (P42). Looking to known options to meet this specific type of material that secures a high melting temperature, An teaches high melt strength polypropylene formed by crosslinking that has a melting temperature above 480 °C (p. 1745; entire disclosure relied upon).
Therefore, it would have been further obvious to one having ordinary skill in the art to look to known options for the heat resistant part 353 of insulator 350 that secures a high melting temperature and is made of a general genus of modified polypropylene resin capable of electron beam crosslinking (P42), and to select the high melt strength polypropylene formed by crosslinking of An that has a melting temperature above 480 °C (p. 1745) given the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) ("…selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.); MPEP 2144.07. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Regarding claims 2 and 9, the product-by-process step appears to impart no further implicit or explicit structural features to the product claims. It is noted that Hwang teaches the an “assembly process” in which the adhesive insulation member 350 (“insulator”) is inserted between the vent plate 300 and the cap-down 300 and is then heat-sealed (P36-43). Accordingly, it appears all of the structure implicitly achieved by the claimed product-by-process is met by Hwang. Alternatively, any differences provided by the product-by-process limitation would appear to provide a product that is obvious from the adhesive insulation member 350 (“insulator”) of Hwang.
Regarding claims 3 and 10, the product-by-process step appears to impart no further implicit or explicit structural features to the product claims. It is noted that Hwang teaches wherein the cross-linking process is a process in which the adhesive insulation member 350 (“insulator”) is made with a material capable of being cross-linked (P19, 42). Accordingly, it appears all of the structure implicitly achieved by the claimed product-by-process is met by Hwang. Alternatively, any differences provided by the product-by-process limitation would appear to provide a product that is obvious from the adhesive insulation member 350 (“insulator”) of Hwang.
Regarding claims 4 and 11, the claim limitation adds no further structural limitation to the product claims, and is instead drawn to a method step of determining the cross-linking process used dependent upon the insulator. Claims 4 and 11 are thus directed to the process and not the product, rendering the claim indefinite (MPEP § 2173.05(p)) (see rejection above under 35 U.S.C. 112(b)/second paragraph). For compact prosecution purposes, given the claim adds no further implicit or explicit structure to the product, it appears all of the structure implicitly achieved by the claimed product-by-process is met by Hwang. Alternatively, any differences provided by the product-by-process limitation would appear to provide a product that is obvious from the adhesive insulation member 350 (“insulator”) of Hwang.
Regarding claims 5 and 12, Hwang teaches wherein the adhesive insulation member 350 (“insulator”) is made of an insulating material including polyethylene (PE), polypropylene (PP), and ethylene-vinyl acetate copolymer (EVA) (P13, 18-19, 42-43).
Regarding claims 6 and 13, Hwang teaches wherein the adhesive insulation member 350 (“insulator”) is made of any one of polyethylene (PE) and polypropylene (PP) materials (P18-19, 42-43). The specific types of cross-linking methods add no further implicit or explicit structure to the claim; however, Hwang teaches these types of crosslinking methods (P19, 42). Accordingly, it appears all of the structure implicitly achieved by the claimed product-by-process is met by Hwang. Alternatively, any differences provided by the product-by-process limitation would appear to provide a product that is obvious from the adhesive insulation member 350 (“insulator”) of Hwang.
Regarding claims 7 and 14, Hwang teaches wherein the insulator is made of the adhesive insulation member 350 (“insulator”) is made of ethylene vinyl acetate copolymer (EVA) (P18, 43). The specific types of cross-linking methods add no further implicit or explicit structure to the claim; however, Hwang teaches these types of crosslinking methods (P19, 42). Accordingly, it appears all of the structure implicitly achieved by the claimed product-by-process is met by Hwang. Alternatively, any differences provided by the product-by-process limitation would appear to provide a product that is obvious from the adhesive insulation member 350 (“insulator”) of Hwang.
Response to Arguments
12. Applicant's arguments filed 3/12/2026 have been fully considered, wherein with respect to the above maintained rejections, they are not considered persuasive for the reasons addressed below.
With respect to the he rejection under 35 U.S.C. 112(b)/second paragraph against claims 4 and 11, Applicant reproduces the rejection and states:
PNG
media_image2.png
78
648
media_image2.png
Greyscale
Respectfully, this does not address the rejection made or how/why Applicant finds claims 4 and 11 to be “clearly drawn to the product.” The process recitation presented in claims 4 and 11 of, “wherein a cross-linking treatment method used in the cross-linking process varies depending on the material of the insulator” adds no further structural limitation to the product claims, and is instead drawn to a method step of determining the cross-linking process used dependent upon the insulator. Thus, claims 4 and 11 are thus directed to the process and not the product, rendering the claim indefinite (MPEP § 2173.05(p)). Applicant should clearly state with appropriate support citation what the structure recited in claims 4 and 11 is contended to be; it the position of the Examiner that there is no such structure recited in these claims. Accordingly, the rejection under 35 U.S.C. 112(b)/second paragraph is maintained.
With respect to the claim analysis section, Applicant “submits the claim analysis is unnecessary” and argues that “the process should be considered” with a page of case law (page 9) and MPEP citations stating the structure implied by the process steps should be considered citing MPEP 2113. The position argued pertaining to evaluating the implied structure of the product-by-process language is the same position of the Examiner set forth in the Claim Analysis section with respect to the product-by-process limitation as quoted below:
“The limitation is evaluated solely for the explicit or implicit structure imparted to the product. The features of an injection process or an assembly process impart no explicit or implicit structural characteristics to the product, nor does the order of steps. The same is true of a cross-linking process: if there is no entity capable of being cross-linked, there is no implicit or explicit structure added the claim. Thus, prior art teaching an insulator would appear to meet these limitations; alternatively, any differences provided by the product-by-process limitation would appear to provide a product that is obvious from an insulator of the prior art achieved by alternative methods of making.”
The page 9 body of case law in the response filed is drawn to case law where the Examiner in those cases did not address implied structure provided by the product-by-process limitation. For this reason, the Claim Analysis section was and is necessary, because unlike the case law quoted on page 9 of the response, the instant Examiner directly addressed the implicit structure, or in this case, lack thereof, lent to the product by the product-by-process language. Thus, the instant Examiner did not ignore or not address any resulting structural changes implied by the process features, and did not “fail to address the structural features implied by the recited steps” as in the case law on page 9, and instead, provided the (necessary) Claim Analysis section to explicitly evaluate whether there was or was not any implicit or explicit structure provided by the product-by-process language. Accordingly, it is concluded that it is contradictory to argue that the Claim Analysis section wasn’t necessary, and then provide a body of case law where the Examiner did not address/evaluate product-by-process limitations which the courts held to be improper.
It is noted that Applicant’s disagreement with the Examiner’s finding further demonstrates the necessity of the Claim Analysis section given Applicant believes there to be implicit structure provided by way of the product-by-process limitation given Applicant alleges the following (with added Examiner emphasis):
PNG
media_image3.png
379
651
media_image3.png
Greyscale
The product-by-process limitation set forth in the claim says nothing about the process of the insulator being “injected and fused to the cap assembly” as emphasized above by the Examiner. The limitation is simply that the insulator is formed “through an injection process, an assembly process, and a cross-linking process, sequentially, …” The steps of forming the insulator could all be performed entirely separate from the cap assembly, and then the fully-formed insulator could be combined with the cap assembly. In such an instance, there would be no such “fusing” of the insulator to the cap assembly or intrinsic “stable coupling of the insulator to the cap assembly” (by way of the fusing).
As to the cross-linking process, the Examiner noted that no implicit structure is present given if there is no entity capable of being cross-linked (in the process being utilized), there is no implicit or explicit structure added the claim. The claim would have to positively set forth a cross-linked material as a material of the insulator for such a structure to be positively required. For example, perhaps the insulator forming process is one in which after the steps recited in the claim, there is a dissolution step in which the cross-linked component is dissolved/removed from the insulator. Accordingly, given the claim does not positively recite a cross-linked material, there is no implicit or explicit structure provided by the product-by-process limitation in which there is a cross-linking process performed.
Accordingly, the Examiner’s original evaluation of the product-by-process limitation, evaluated for the implicit and/or explicit structure imparted to the product, is maintained, wherein there is no implicit structure provided to the product claim by the product-by-process language.
With respect to the prior art rejection, Applicant argues:
PNG
media_image4.png
249
636
media_image4.png
Greyscale
The rejection of anticipation has been withdrawn, and the obviousness rejection is maintained and updated to reflect why the limitation is obvious over Hwang, either as a stand-alone reference or optionally in view of the newly cited art to An as detailed above. Accordingly, for the reasons outlined in the updated rejection of record that are not repeated here, the limitation is not considered to overcome the obviousness rejection under 35 U.S.C. 103.
Conclusion
13. The prior art previously made of record and not relied upon is considered pertinent to applicant's disclosure.
The ISA cites D1, KR 10-2017-0082281, as novelty-destroying of the claims of the PCT/KR2021/014135 application of which the instant application is a national stage entry. Park et al. (US 2017/0207439) is the US family member of this prior art reference. The ISA findings are reproduced below:
PNG
media_image5.png
188
686
media_image5.png
Greyscale
See also:
Kim et al. (US 2015/0287965) (Figs. 1-3) teaching all of the structure set forth of claim 1;
Yamato et al. (US 2015/0333313) (Figs. 1-3B) teaching all of the structure set forth of claim 1.
14. 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.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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, Ula Ruddock can be reached at (571) 272-1481. 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.
/AMANDA J BARROW/Primary Examiner, Art Unit 1729
1 The reference numerals used to indicate the like portions in Fig. 1 are applied to Figs. 2-7 for ease of reference given Figs. 2-7 do not include all of the taught reference numerals for the same components.
Prosecution Insights