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 .
Response to Amendment
The preliminary amendment submitted 01/26/2024 was received and is being examined on its merits herein. As such, claims 1-8 have been cancelled and claims 9-16 are currently pending.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted 06/17/2025 (x2) were received and have been considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the press stamped metallic coated steel sheet including a steel sheet coated with a metallic coating (claim 9) on an inner side of the battery pack (claim 11), the metallic coating then being coated in two organic coating layers (claim 9), and the metallic coating and organic coating layers being applied to both sides of the metallic coated steel sheet (claim 12) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 12 is 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “coating weight” in claim 12 is used by the claim to mean “metallic coating weight” (in accordance with applicant’s specification) while the accepted meaning is “total coating weight.” The term is indefinite because the specification does not clearly redefine the term. For purpose of examination, claim 12 will be examined in accordance with the specification to limit the amount of metallic coating weight.
Claim Rejections - 35 USC § 102
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 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) 9 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kameya et al. (EP 0365682B1; presented in IDS submitted 06/17/2025; applicant’s provided document used as reference).
With respect to claim 9, Kameya discloses a top cover of a battery pack (pre-painted steel sheet) (pg. 3; L3) comprising:
a press stamped metallic coated steel sheet including a steel sheet and a metallic coating(zinc-aluminum alloy coated steel sheet) (p. 7; L 54-57), the metallic coating (zinc-aluminum alloy) being topped by an organic coating (surface painting film layer) having a first layer and a second layer (two-coat layer – under-paint and top-paint) (pg. 6, L 54-57 through pg. 7; L1-2), the first layer (under-painting layer) of the organic coating (surface painting film layer) being in contact with the metallic coating (zinc-aluminum alloy) and having a thickness of 2 to 15 micrometers (pg. 7; L 16-17), thus being encompassed by the claimed range of 2 to 25 micrometers with sufficient specificity, and the second layer (top-paint paint) of the organic coating (surface painting film layer) being based on polyester or polyurethane (silicone polyester resin or polyurethane resin) (pg. 7; L25-28).
Applicant is reminded that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). In this case, since Kameya sets forth all of the limitations of the claimed invention, the intended use of a top cover for a battery pack is not considered a limitation and is of no significance to claim construction.
Additionally, the steel sheet being press stamped is an example of a product-by-process limitation. Applicant is reminded that "[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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). As the steel sheet produced by stamping would be the same as a steel sheet produced by another method, the process of stamping is not a patentable feature.
With respect to claims 13-15, Kameya discloses the first layer (under-painting paint) of the organic coating (surface painting film layer) in contact with the metallic coating (zinc-aluminum alloy) is based on one of oil-free polyester (claim 13), urethane resin (claim 14), or epoxy resin (claim 15) (pg. 7; L 13-14).
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.
Claim(s) 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kameya et al. as applied to claim 9 above.
With respect to claim 10, Kameya discloses the metallic coating is based on zinc (zin-aluminum alloy) and that aluminum is present in 0.3 wt% to 3.5 wt% (pg. 5; L 26-29), thus overlapping the claimed range of up to 2 wt % aluminum.
Applicant is reminded that 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, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
With respect to claim 11, Kameya discloses the metallic coating (zinc-aluminum alloy coating) (see rejection of claim 9), but does not disclose the thickness of the metallic coating.
However, as described in the below rejection of claim 12, the amount of coating (coating weight) of the metallic coating added was taught to be in the same range as that of the instant application. Further, the composition of the metallic coating (majority zinc-based with low aluminum content; see rejection of claim 10 above) was also taught to be in the same range as that of the instant application. Therefore, it stands to reason that if the composition of the metallic coating and weight of the metallic coating added to the steel sheet are the same in Kameya as that of the prior art, the resultant thickness of the metallic coating on either side of the steel sheet in Kameya would inherently be in the claimed range. Additionally, applicant is reminded that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)). In this instance, absent to persuasive evidence in the contrary that the resulting thickness of the metallic coating layer in Kameya would result in a difference in performance of the metallic coating layer, it is not a patentable feature.
With respect to claim 12, Kameya discloses the metallic coating steel sheet has a metallic coating weight of 120 to 260 g/m2 (Example 1, pg. 9), thus overlapping the claimed range of 50 to 200 g/m2. It is inherent that this metallic coating weight is the total, as Example 1 clearly defines the method as dipping, which would apply a coat on both sides of the steel.
Applicant is reminded that 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, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kameya et al. as applied to claim 9 above, and further in view of Schulz et al. (U.S. 20220052410).
With respect to claim 15, Kameya discloses a steel sheet used for construction material for electric appliances (pg. 3; L 2), but does not disclose a battery pack comprising a top cover comprising the steel sheet.
Schulz discloses a zinc-based coated steel sheet ([0017]) and teaches its use as a cover for a battery ([0017]; [abstract]). Schultz further teaches the zinc-based coated steel sheet is preferable as it permits sufficient corrosion protections ([0017]).
It would have been obvious to one having ordinary skill in the art at the time that the application was effectively filed to use the metallic coating (zinc-based; see rejection of claim 10) disclosed by Kameya as a battery pack cover as taught by Schulz as the zinc-based coated steel sheet permits sufficient corrosion protections,
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JORDAN E BERRESFORD whose telephone number is (571)272-0641. The examiner can normally be reached M-F 8:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (572)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.E.B./Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727
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