DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims Status.
This Office Action is responsive to the amendment filed on 03/23/2026. Claims 1-19 were pending. Claims 3, 4 and 10 have been amended. Claim 20 has been added. Claims 1-20 are now pending. Claims 1-20 are presented for examination. Applicant's arguments have been considered. Please note that unlike Applicant statement from 03/23/2026 only claim 10 is independent.
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.
Claim 4 and 10 are rejected under 35 U.S.C. 112(b) 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.
The term larger porosity in claims 4 and 10 is a relative term which renders the claim indefinite. The term larger is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 11-19 depend from claim 10 directly or indirectly and fall therewith.
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 rejected under 35 U.S.C. 102(a)(1) as anticipated by WO 2019181909 to Ueno (Ueno, machine translation).
Regarding claim 1, Ueno discloses a solid state battery comprising: a solid state battery laminate including at least one battery constituent unit, the at least one battery constituent unit including a positive electrode layer, a negative electrode layer, and a solid electrolyte layer interposed between the positive electrode layer and the negative electrode layer (claim 1, Fig. 1,2) a first external terminal on a first side surface of the solid state battery laminate a second external terminal on a second side surface of the solid state battery laminate, the second side surface facing the first side surface across the solid state battery laminate; and an exterior member covering the solid state battery laminate ( 51, Fig. 1, 62, Fig. 2, para 51-53). In addition, Ueno teaches that pore ratio is 0.4 or less (para 51), that reads on the limitation “ the exterior member including one or more pores on an inner side of the exterior member adjacent to the solid state battery laminate”. As such, instant claim 1 anticipated by Ueno.
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Regarding claim 2, Ueno discloses wherein the porosity is 0.12, i.e. 12 %, i.e. 12 % (Table 2, ln.3). It is noted that a specific example in the prior art which is within a claimed range anticipates the range. See MPEP 2131.03
Regarding claims 5,7, Ueno discloses exterior glass member (claim 5), such as silicate and borosilicate glass (para 71).
Regarding claim 9, Ueno discloses wherein the exterior member further contains an inorganic filler (para 198).
Regarding claim 7, Ueno discloses the invention as discussed above as applied to claim 1 and incorporated therein. discloses the invention as discussed above as applied to claim 1 and incorporated therein. Regarding the limitation: water vapor transmission rate of less than 1.0 × 10-3 g/(m2·Day): since the exterior member of Ueno is substantially similar to the instant exterior member as claimed, the claimed properties are inherently present. Products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. the specific output energy density), is necessarily present in the prior art material. The courts have held that “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.
Regarding claim 9, Ueno discloses the positive electrode layer and the negative electrode layer are layers capable of occluding and releasing lithium ions (para 3, 65).
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.
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 3 rejected under 35 U.S.C. 103 as being unpatentable over WO 2019181909 to Ueno (Ueno, machine translation).
Regarding claim 3, Ueno discloses the invention as discussed above as applied to claim 1 and incorporated therein. Ueno does not expressly disclose wherein the one or more pores are present in an inner half of the exterior member adjacent to the solid state battery laminate. However, one would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to place one or more pores in the inner part of the exterior member in order to avoid introduction of water vapors and air from the environment to the electrode assembly as an obvious design choice.
Alternatively, since the criticality of positioning the one or more pores in an inner half of the exterior member adjacent to the solid state battery laminate -a position claimed by Applicant is not supported by any showing of criticality of such placement in the instant specification, nor did Applicant stated that such placement serves any specific purpose or performs any specific function other that the function disclosed in Ueno, it would have been obvious top those skilled in the art at the time the invention was made to place the one or more pores in the inner part of the exterior member as an obvious design choice.
Allowable Subject Matter
Claim 20 is allowed.
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action. Claims 11-19 depend from claim 10 and would allow as well.
The closest prior art of record- WO 2020/054544, US 2020/0381774, JP 2015220107, WO 2019181909-fail to teach or suggest each and every limitation of claims 4, 10 and 20.
Response to Arguments
Applicant’s arguments, see Remarks , filed 03/23/2026, with respect to rejection of claims 1-9 over Yoshioka have been fully considered and are persuasive. The rejection of claims 1-9 set forth the the Office Action from 12/22/2025 has been withdrawn. However, the rejection of claims 1-9 over Ueno set forth in the current Office Action is moot new ground of rejection.
Applicant’s arguments regarding rejection of claims 10-19 filed 03/23/2026 have been fully considered but moot due to new ground of rejection (112 (2b)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER USYATINSKY whose telephone number is (571)270-7703. The examiner can normally be reached IFP.
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/Alexander Usyatinsky/Primary Examiner, Art Unit 1751
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