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 .
Response to Arguments
Applicant’s arguments with respect to claims 1-3, 12-14, 20-33 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
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.
Claims 1-3, 12-14, 20-33 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.
In claims 1, 12, 20, 21, 24, 25, 30, 31, the limitation “one or more letters” is not properly described in the specification as filed. The closest support for this limitation is found in [0070], which is also the section indicated by the applicant in their arguments section filed on 04/07/2026 (“bottom of page 21, continuing onto page 22”). The specification reads the warning may be a color-changing agent spelling “replace” or “caution”, but does not list any letters that are not included in those words. The specification also does not use the word “letters” to describe the shape of the color changing material. This means that the scope of the claim language contains matter which is not disclosed in the specification, because only the letters making up “replace” and “caution” are supported by the specification.
Claims 2-3, 13-14, 23, 26, 27-29, and 32-33 are rejected based on their dependency on the aforementioned claims.
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.
Claims 1-3, 23-27 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.
Regarding claim 1, the limitation “a user” on line 11 is indefinite because a claim limitation “a user” has already been introduced on line 10. One of ordinary skill in the art would not be able to determine if this is the same user or a different user.
Claims 2-3, 23-27 are rejected based on their dependency on claim 1.
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.
Claims 1-3, 12-14, 20-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP-H11271933-A (N).
Regarding claim 1, N teaches:
An apparatus, comprising: a battery (40), the battery comprising: at least one battery cell; a casing (102, 103) housing the at least one battery cell; and material (121, 122) coupled to an exterior of the casing, a first portion of the material (portion of 122 which is litmus [0048]) configured to change color based on interaction with matter from the at least one battery cell based on the matter leaking from inside the casing [0048], a second portion of the material not configured to change color (the portion of 122 which is red but not made of litmus [0048]) based on interaction with the matter from the at least one battery cell based on the matter leaking from inside the casing [0048], the first portion configured to change color to form one or more letters indicating battery malfunction to a user (“leakage” is written in red on the label and is formed out of the negative space of the litmus on 122 [0048]. This means that the color change of the litmus forms one or more characters even if the characters aren’t made of the litmus, so this satisfies the requirements of the instant claim 1.).
Regarding claim 2, N teaches the material is paper-based [0050].
Regarding claim 3, N teaches the first portion is impregnated with a litmus and the second portion is not impregnated with a litmus [0048].
Regarding claim 12, N teaches
An apparatus, comprising: a casing (102, 103) for at least one battery cell (40); and material coupled to the casing (121, 122), a first portion of the material (portion of 122 which is litmus [0048]) configured to change color based on contact with matter from the at least one battery cell based on the matter being released external to the casing from inside the casing [0048], the first portion configured to change color to form one or more letters indicating battery malfunction (“leakage” is written in red on the label and is formed out of the negative space of the litmus on 122 [0048]. This means that the color change of the litmus forms one or more characters even if the characters aren’t made of the litmus, so this satisfies the requirements of the instant claim 12.).
Regarding claim 13, N teaches the material is paper-based [0050].
Regarding claim 14, N teaches the first portion comprises a litmus [0048].
Regarding claim 20, while N does not explicitly teach a method of making the apparatus, N teaches all of the same structures which are to be provided in the claimed method of claim 20, which are listed below.
N provides:
An apparatus, comprising: a battery (40), the battery comprising: at least one battery cell; a casing (102, 103) housing the at least one battery cell; and material (121, 122) coupled to an exterior of the casing, a first portion of the material (portion of 122 which is litmus [0048]) configured to change color based on interaction with matter from the at least one battery cell based on the matter leaking from inside the casing [0048], a second portion of the material not configured to change color (the portion of 122 which is red but not made of litmus [0048]) based on interaction with the matter from the at least one battery cell based on the matter leaking from inside the casing [0048], the first portion configured to change color to form one or more letters indicating battery malfunction to a user (“leakage” is written in red on the label and is formed out of the negative space of the litmus on 122 [0048]. This means that the color change of the litmus forms one or more characters even if the characters aren’t made of the litmus, so this satisfies the requirements of the instant claim 20.).
In the assembly of the apparatus of N, all of the claimed method steps of the instant claim 20 must be performed, therefore claim 20 is unpatentable over N.
Regarding claim 21, N teaches the first portion is configured to change color to form the one or more letters indicating battery malfunction (“leakage” is written in red on the label and is formed out of the negative space of the litmus on 122 [0048]. This means that the color change of the litmus forms one or more letters even if the letters aren’t made of the litmus, so this satisfies the requirements of the instant claim 21).
Regarding claim 22, N teaches the first portion is configured to change color to form the one or more graphics indicating battery malfunction (writing is a form of graphic, so because N teaches 122 forms letters when exposed to the electrolyte of the battery, N teaches the first portion is configured to change color to form one or more graphics indicating battery malfunction [0048]).
Regarding claim 23, N teaches the second portion surrounds the first portion. This is because the letters “e” and “a” include portions of negative space. This means that even though the lettering of N isn’t formed out of the color changing litmus, there are portions of the litmus which are surrounded by the non-color changing part of 122, rendering claim 23 unpatentable.
Regarding claim 24, N teaches the first portion is configured to change color to form the one or more letters indicating battery malfunction to the user (“leakage” is written in red on the label and is formed out of the negative space of the litmus on 122 [0048]. This means that the color change of the litmus forms one or more letters even if the letters aren’t made of the litmus, so this satisfies the requirements of the instant claim 24).
Regarding claim 25, N teaches the one or more letters spell a warning to the user (“leakage” is written in red on the label and is formed out of the negative space of the litmus on 122 [0048]. This means that the color change of the litmus forms one or more letters even if the letters aren’t made of the litmus. “Leakage” is a warning to the user, so this satisfies the requirements of the instant claim 25.).
Regarding claim 26, N teaches the first portion is configured to change color to form the one or more graphics indicating battery malfunction to the user (writing is a form of graphic, so because N teaches 122 forms letters when exposed to the electrolyte of the battery, N teaches the first portion is configured to change color to form one or more graphics indicating battery malfunction [0048]).
Regarding claim 27, N teaches the one or more graphics form a caution symbol (letters are symbols, so each of the graphics form a symbol. The symbols signal caution to the user [0048], [0050]).
Regarding claim 28, N teaches the material comprises a second portion (the portion of 122 which is red but not made of litmus [0048]) not configured to change color based on interaction with the matter from the at least one battery cell based on the matter leaking from inside the casing.
Regarding claim 29, N teaches the second portion surrounds the first portion. This is because the letters “e” and “a” include portions of negative space. This means that even though the lettering of N isn’t formed out of the color changing litmus, there are portions of the litmus which are surrounded by the non-color changing part of 122, rendering claim 29 unpatentable.
Regarding claim 30, N teaches the first portion is configured to change color to form the one or more letters indicating battery malfunction (“leakage” is written in red on the label and is formed out of the negative space of the litmus on 122 [0048]. This means that the color change of the litmus forms one or more letters even if the letters aren’t made of the litmus, so this satisfies the requirements of the instant claim 30).
Regarding claim 31, N teaches the one or more letters spell a warning to a user (“leakage” is written in red on the label and is formed out of the negative space of the litmus on 122 [0048]. This means that the color change of the litmus forms one or more letters even if the letters aren’t made of the litmus. “Leakage” is a warning to the user, so this satisfies the requirements of the instant claim 31.).
Regarding claim 32, N teaches the first portion is configured to change color to form the one or more graphics indicating battery malfunction (writing is a form of graphic, so because N teaches 122 forms letters when exposed to the electrolyte of the battery, N teaches the first portion is configured to change color to form one or more graphics indicating battery malfunction [0048]).
Regarding claim 33, N teaches the one or more graphics form a caution symbol (letters are symbols, so each of the graphics form a symbol. The symbols signal caution to the user [0048], [0050]).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUISE JAMES IANNUCCI whose telephone number is (571)272-6917. The examiner can normally be reached 7:00 A.M. - 5:00 P.M..
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, Allison Bourke can be reached at (303) 297-4684. 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.
/LOUISE JAMES IANNUCCI/Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
Prosecution Insights