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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-7 and 17-19 in the reply filed on 6/11/2026 is acknowledged. The traversal is on the ground(s) that the subject matter of all claims and species is sufficiently related that a thorough search for the subject matter of any Group of claims or species would encompass a search for the subject matter of the remaining claims and species. Thus, search and examination of the entire application could be made without serious burden. This is not found persuasive because the restriction was based on a lack of unity. The technical feature in the Groups is not a special technical feature as it does not make a contribution over the prior art in view of JP 2009256404, provided in the IDS. JP ‘404 discloses a resin film that is excellent in water absorption and heat resistance and is useful as a separator for a nonaqueous electrolyte battery (Abstract).
The requirement is still deemed proper and is therefore made FINAL.
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 1-7 and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-7 and 23 of copending Application No. 18286014 (reference application) and over Claims 1, 3-7, 9, and 10 of copending Application No. 19111570 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter sought is covered by the subject matter in the copending applications.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 19 is objected to because of the following informalities: It appears that the recited components in the limitation, “An electrical storage device in which an electrical storage device element” need to refer back to the respective components in Claim 1. Appropriate correction is required.
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 3, 4, and 7 are 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.
Claim 3 recites the limitation "the inorganic water absorbent". There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the resin". There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the layer of the resin film" and “100 parts by mass of the resin”. There is insufficient antecedent basis for these limitations in the claim.
Claim 7 further recites the layer of the resin film contains 0.5 masses or more of the absorbent based on 100 parts by mass of the resin. It is unclear to the Examiner the use of the term “masses” in the instant claim (i.e. is it mass, mass percent, weight, atomic, volume, etc.). For the purpose of evaluating prior art, “0.5 masses” is interpreted as “0.5 parts by mass”.
Appropriate clarification and/or correction is required in the next response.
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.
(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 and 17-19 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US Pub. No. 20080206636 (“Sanada et al.”).
With regards to Claim 1, Sanada et al. teaches a resin film for electrical storage devices which is disposed between an exterior material of an electrical storage device and an electrical storage device element, the resin film comprising a water absorbent (Abstract, Figs. 9-13, [0029], [0032], and [0038]).
With regards to Claims 2 and 3, Sanada et al. teaches the water absorbent is an inorganic water absorbent, wherein the inorganic water absorbent is at least one selected form the group consisting of anhydrous magnesium sulfate, calcium chloride, and zeolite ([0029], [0055], and [0057]).
With regards to Claim 4, Sanada et al. teaches a content of the water absorbent is 0.1 parts by mass or more based on 100 parts by mass of the resin contained in the resin film for electrical storage devices ([0028], [0055] disclosing 15 parts by mass of anhydrous magnesium sulfate based on 100 parts by mass of resin, and Table 1).
With regards to Claims 5 and 6, Sanada et al. teaches the resin film comprising two or more layers, wherein among the two or more layers, at least one layer contains the water absorbent, and at least one layer contains a sulfur-based gas absorbent (acid absorption function) ([0028] and [0031]).
With regards to Claim 7, Sanada et al. teaches the layer of the resin film for electrical storage devices, which contains the water absorbent, contains 0.5 masses or more of the absorbent based on 100 parts by mass of the resin ([0028], [0055], and Table 1).
With regards to Claims 17 and 18, Sanada et al. teaches the resin film comprising a heat-sealable resin, wherein the heat-sealable resin contains at least one selected form the group consisting of polyolefin ([0032] and Table 1).
With regards to Claim 19, Sanada et al. teaches an electrical storage device in which an electrical storage device element includes at least a positive electrode, a negative electrode, and an electrolyte is housed in a packaging formed of an exterior material (Abstract and Figs. 3-13).
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.
Claims 1-7 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020187855 (“Kato et al.”) in view of US Pub. No. 20080206636 (“Sanada et al.”).
With regards to Claim 1, Kato et al. teaches a resin film for electrical storage devices, wherein the resin film comprises a water absorbent ([0016], [0018], [0020], and [0026]).
While Kato et al. teaches its resin film is an exterior material of an electrical storage device element ([0018] and [0020]), Kato et al. does not explicitly teach the resin film is disposed between an exterior material of an electrical storage device and an electrical storage device element.
However, Sanada et al. teaches a resin film for electrical storage devices which is disposed between an exterior material of an electrical storage device and an electrical storage device element, the resin film comprising a water absorbent (Abstract, Figs. 9-13, [0029], [0032], and [0038]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to place Kato et al.’s resin film between an exterior material of an electrical storage device and an electrical storage device element to prevent deterioration of the electrical storage device and electrical storage device element from moisture (Abstract and [0005]).
With regards to Claims 2 and 3, Kato et al. teaches the water absorbent is an inorganic water absorbent, wherein the inorganic water absorbent is at least one selected form the group consisting of calcium oxide, magnesium sulfate, calcium chloride, zeolite, aluminum oxide, and silica gel ([0029], [0030], and [0120]).
With regards to Claim 4, Kato et al. teaches a content of the water absorbent is 0.1 parts by mass or more based on 100 parts by mass of the resin contained in the resin film for electrical storage devices ([0032] and [0120]).
With regards to Claims 5 and 6, Kato et al. teaches the resin film comprising two or more layers, wherein among the two or more layers, at least one layer contains the water absorbent, and at least one layer contains a sulfur-based gas absorbent ([0026] and [0027]).
With regards to Claim 7, Kato et al. teaches the layer of the resin film for electrical storage devices, which contains the water absorbent, contains 0.5 masses or more of the absorbent based on 100 parts by mass of the resin ([0032] and [0120]).
With regards to Claims 17 and 18, Kato et al. teaches the resin film comprising a heat-sealable resin, wherein the heat-sealable resin contains at least one selected form the group consisting of polyester and polyolefin ([0040] and [0041]).
With regards to Claim 19, Kato et al. teaches an electrical storage device element as set forth above [0007].
Kato et al. does not explicitly teach its electrical storage device element comprising the nominal positive electrode, a negative electrode, and an electrolyte housed in a packaging formed of an exterior material.
However, Sanada et al. teaches that conventional electrical storage device element comprises a positive electrode, a negative electrode, and an electrolyte housed in a packaging formed of an exterior material (Abstract and Figs. 3-13). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have these nominal components in Kato et al.’s electrical storage device element in order to function properly (i.e. a battery).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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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.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
Prosecution Insights