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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on July 20, 2026 has been entered.
Response to Amendment
In response to the amendment received July 20, 2026:
Claims 1-12 are pending.
Prosecution on the merits of this application is reopened on claims ??? considered unpatentable for the reasons indicated below:
The application of a reference provided on the July 20, 2026 IDS. See the rejection below for full details.
Information Disclosure Statement
The information disclosure statement filed July 20 has been placed in the application file and the information referred to therein has been considered as to the merits.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-7 9, and 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020/0044276 (Sakai et al.) (note: US 2020/0044276 is relied upon as the English translation of the WO document, as both pertain to the same PCT).
As to claim 1, Sakai et al. teach a secondary battery comprising:
a cylindrical can (case main body [156]) (fig. 4’s embodiment as applied to fig. 1; para 0013-0015, 0044-0045);
an electrode assembly having a base finish part electrically contacting the cylindrical can (negative electrode current collector [35] touching the case main body [16]) (fig. 4);
a cap assembly (sealing body [17]) sealing the electrode assembly by blocking the cylindrical can (case main body) (fig. 4’s embodiment as applied to fig. 1; para 0013-0015, 0044-0045); and
a swelling tape (pressing member [4]) positioned inside the base finish part to press the base finish part (negative electrode current collector [35] touching the case main body [16]) to the cylindrical can (case main body [16]) (fig. 4; para 0032, 0044).
(Note: The teaching of the embodiment of fig. 4 is pertinent to the casing seen in fig. 1, as para 0044 sets forth that the only difference is the relationship of the pressing member [40]; thus the other structural features of the battery would still necessarily be present.)
As to claim 2, Sakai et al. teach the can includes a bottom portion and a side portion extending from the bottom portion, and the swelling tape presses the base finish part (negative electrode current collector [35] touching the case main body [16]) to the side portion (fig. 4’s embodiment as applied to fig. 1; para 0013-0015, 0044-0045).
As to claim 3, Sakai et al. teach the electrode assembly includes a first electrode plate (negative electrode [12]), a separator [13] positioned on the first electrode plate, and a second electrode plate (positive electrode [11]) positioned on the separator, wherein the first electrode plate, the separator, and the second electrode plate are laminated and wound, and the base finish part (negative electrode current collector [35] touching the case main body [16]) (fig. 4) is provided by wrapping an outermost periphery of the electrode assembly with the first electrode plate ) (fig. 4’s embodiment as applied to fig. 1; para 0013-0015, 0044-0045).
(Again, note: The teaching of the embodiment of fig. 4 is pertinent to the casing seen in fig. 1, as para 0044 sets forth that the only difference is the relationship of the pressing member [40]; thus the other structural features of the battery would still necessarily be present.)
As to claim 4, Sakai et al. teach the first electrode plate (negative electrode) includes a conductive first base (negative electrode current collector) having inner and outer surfaces, a coating portion provided by coating a first active material on the inner and the outer surfaces of the conductive first base (para 0050), and a non-coating portion provided by not coating the first active material on the inner and the outer surfaces of the conductive first base, and the non-coating portion covers the outermost periphery of the electrode assembly (exposed portion) (para 0050) (also the embodiment of fig. 4 applied thereto).
As to claim 5, Sakai et al. teach the base finish part includes the non-coating portion (fig. 4; para 0044-0045).
As to claim 6, Sakai et al. teach the swelling tape (pressure member [40]) is adhered to an inner surface of the base finish part (negative electrode current collector [35] touching the case main body [16]) (fig. 4; para 0044-0045).
As to claim 7, Sakai et al. teach the swelling tape is interposed between the inner surface of the base finish part and the separator (teaching of fig. 4, in light of the battery formed (i.e. see para 0054, wherein a separator would be to the interior of the swelling tape in a wound manner).
As to claim 9, Sakai et al. teach a length of the swelling tape is 1 % to 100% of a length of the non-coating portion (3-30% of the circumference length of the electrode body; para 0040, as applied to fig. 4) (prior art would lie within claimed invention, as fig. 4 shows less than 100% coverage, and covering 3% of the circumference length would be greater than 1% of the non-coating portion (less than the circumference length)). (Note: The teaching of para 0040 is applicable to the embodiment of fig. 4, as para 0044 sets forth that the only difference is the placement of the pressing member [40].)
As to claim 11, Sakai et al. teach the swelling tape (pressing member [40]) absorbs an electrolyte to be swollen (abs; para 0006).
As to claim 13, Sakai et al. teach the swelling tape includes an acrylic binder (wherein an adhesive is embodied to be part of the swelling tape) (para 0035).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakai et al. (The teachings of Sakai et al. as set forth above and applicable herein, are incorporated herein but are not reiterated herein for brevity’s sake.)
As to claim 8, Sakai et al.’s example of fig. 4 does not teach the first electrode plate (negative electrode) further includes a first tab welded to the conductive first base (negative current collector), and the first tab is electrically connected to the cylindrical can.
However, Sakai et al. teach of a negative electrode lead that is welded to a bottom portion of a main case (cylindrical can as claimed) and exposing section (conductive first base as claimed) (para 0057). The substitution of one connection to the cylindrical can (one that does not use a lead electrically connected to the can and welded to the conductive first base) with another (one that does use a lead electrically connected to the can and welded to the conductive first base) would yield the predictable result of acting as an electrical link between the electrode and can, wherein the substituted components and their functions were known in the art (as set forth in Sakai). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed (as applicable to AIA applications) to substitute one connection to the cylindrical can (one that does not use a lead electrically connected to the can and welded to the conductive first base) with another (one that does use a lead electrically connected to the can and welded to the conductive first base), as the substitution would yield the predictable result of acting as an electrical link between the electrode and can, wherein the substituted components and their functions were known in the art. “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
As to claim 10, Sakai et al. teach a winding-turn length of the swelling tape is 0.1-1 turn compared to a winding-turn length of the base finish part (3-30% of the circumference length of the electrode body; para 0040, as applied to fig. 4) (overlaps claimed range, as 3-30% would be 0.03-0.3 of the outermost winding). (Note: The teaching of para 0040 is applicable to the embodiment of fig. 4, as para 0044 sets forth that the only difference is the placement of the pressing member [40].)
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, 3, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of copending Application No. 18/481150 (reference application).
The pertinent copending claims are provided below.
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Although the claims at issue are not identical, they are not patentably distinct from each other because:
Copending claim 1 reads on pending claims 1 and 3.
Copending claim 6 reads on pending claim 11.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENIA WANG whose telephone number is (571)272-4942. The examiner can normally be reached a flex schedule, generally Monday-Thursday 5:00 -7:30 (AM) and 9:45-3:15 ET.
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/EUGENIA WANG/Primary Examiner, Art Unit 1759
