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 without traverse of Species A (Claims 1-3, 7-14, and 18-20) in the reply filed on 1/22/2026 is acknowledged.
Claims 4-6, 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/22/2026.
Claims 1-3, 7-14, and 18-20 are under examination
Claim Objections
Claim 1 is objected to because of the following informality: Claim 1 recites “material coupled to an exterior of the casing” on line 5. Although the limitation is clear and not indefinite, please amend the limitation to recite “a material coupled to an exterior of the casing” to ensure proper antecedent basis.
Claim 12 is objected to for the same informality as claim 1. Claim 12 recites “material coupled to an exterior of the casing” on line 5. Although the limitation is clear and not indefinite, please amend the limitation to recite “a material coupled to an exterior of the casing” to ensure proper antecedent basis.
Claim 20 is objected to for the same informality as claim 1. Claim 20 recites “material coupled to an exterior of the casing” on line 5. Although the limitation is clear and not indefinite, please amend the limitation to recite “a material coupled to an exterior of the casing” to ensure proper antecedent basis.
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 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite. It is indefinite because the claim is written to depend on a withdrawn claim, claim 6, which is not proper. It would require an assumption by one reading the claim to determine the scope of the claim, creating indefiniteness. Additionally, “the non-red color” lacks antecedent basis.
Claim Interpretation
The term “matter from the at least one battery cell”, appearing in claims 1, 12, and 20 is interpreted to mean acid or electrolyte material, because that is the only supported definition in the specification.
The term “battery acid or other matter from inside the battery cell” is interpreted to mean acid or electrolyte material because that is the only definition supported by the specification.
In claim 10, the examiner is choosing to assume that “Claim 6” is meant to read “Claim 9” for the reasons stated in the above rejection of Claim 10.
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.
(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 1-3, 11-14, 18, 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US-20120148888-A1, Yun.
Regarding claim 1, Yun teaches an apparatus (100), comprising:
a battery (110), the battery comprising: at least one battery cell (111, 112, 113 taken together);
a casing (120) housing the at least one battery cell; and
material (150c) coupled to an exterior (124) of the casing, the material configured to change color based on interaction with matter (Paragraph 57, “electrolytic solution”) from the at least one battery cell based on the matter leaking from inside the casing (Paragraph 57).
Regarding claim 2, Yun teaches the material is paper-based (Paragraph 57).
Regarding claim 3, Yun teaches the material is impregnated with a litmus (Paragraph 57).
Regarding claim 11, Yun teaches the material is non-toxic (Paragraph 57). While this is not explicitly stated in the reference, Yun teaches the same materials (paper and litmus) that the instant lists in its specification as being non-toxic (Instant Paragraph 68), therefore paper and litmus must be non-toxic.
Regarding claim 12, Yun teaches an apparatus (100), comprising:
a casing (120) for at least one battery cell (111, 112, 113 taken together); and
material (150c) coupled to the casing, the material configured to change color based on contact with matter (Paragraph 57, “electrolyte solution”) from the at least one battery cell based on the matter being released external to the casing from inside the casing (Paragraph 57).
Regarding claim 13, Yun teaches the material is paper-based (Paragraph 57).
Regarding claim 14, Yun teaches the material is impregnated with a litmus (Paragraph 57).
Regarding claim 18, Yun teaches a surface of the material (121a3) facing away from the casing is laminated with nylon (Paragraph 47). The examiner has interpreted the language “and/or nitrile” to mean that the limitation is optional, and will not address this limitation.
Regarding claim 20, Yun teaches a method, comprising:
providing at least one battery cell (110, Paragraph 43, “FIG. 1 shows the electrode assembly 110 having a jelly roll structure formed by rolling the positive plate 111, the separator 113, and the negative plate 112”);
providing a casing (120) housing the at least one battery cell (Paragraph 44, “Referring to FIG. 1, the first case 121 and the second case 122 may be (initially) connected to each other on one side.”); and
providing material (151c) coupled to an exterior (124) of the casing (Paragraph 57, “may be disposed), the material configured to change color based on interaction with matter from the at least one battery cell based on the matter being released from inside the casing (Paragraph 57).
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 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over US-20120148888-A1, Yunin view of US-4220695-A, Ishida.
Regarding claims 7 and 8, the teachings of Yun are explained in the 102 rejections.
Yun does not teach a surface of the material facing away from the casing is laminated with nylon that dissolves based on contact with battery acid or other matter from inside the battery cell.
Yun does not teach a surface of the material facing away from the casing is laminated with nitrile that dissolves based on contact with battery acid or other matter from inside the battery cell.
However, Ishida teaches a leak-proof alkaline cell (Fig. 1) comprising a gasket (7) comprising a sealing material taken from list of materials including nylons (Paragraph 8, Nylon 6, Nylon 66, Nylon 610, Nylon 11, Nylon 12) and nitrile rubber (Paragraph 8). Ishida teaches the sealing material enhances the leak-proof property.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing of the instant invention to combine the sealing material of Ishida with the battery of Yun by putting the sealing material at the openings in 151 of Yun in order to improve the seal and prevent electrolyte leaks.
Claim 7 recites “the casing is laminated with nylon,” and does not impart any additional requirements on the nylon laminate to achieve the claimed function (“dissolves based on contact with battery acid or other matter”). Additionally, the specification of the instant does not provide any additional structural requirements to the nylon (Paragraph 52-53). When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Claim 8 recites “the casing is laminated with nitrile,” and does not impart any additional requirements on the nitrile laminate to achieve the claimed function (“dissolves based on contact with battery acid or other matter”). Additionally, the specification of the instant does not provide any additional structural requirements to the nitrile (Paragraph 52-53). When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Claims 9, 10, 19 are rejected under 35 U.S.C. 103 as being unpatentable over US-20120148888-A1, Yun, in view of JP-2005251597-A, Kazunori.
Regarding claims 9, 10, and 19, Yun teaches the litmus changes color as a result of the acidity of the leaked electrolytic solution.
Yun does not the material changes to a red color from a non-red color.
However, red litmus is a known pH indicator in the art for use in a battery malfunction indicator, as taught in Kazunori as well as that litmus changes from blue to red when the electrolyte is acidic (“Best Mode”, Paragraph 5).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing of the instant invention to use red litmus as the litmus in Yun because it would amount to no more than selecting a known option for litmus in the field of battery malfunction detectors to achieve an expected outcome of the litmus changing from blue to red when exposed to the acidic battery electrolytic solution with a reasonable chance of success. Blue is a non-red color therefore claims 9 and 19 are unpatentable.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of copending Application No. 18320902 (Reference Application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons listed in the table below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Bold and underlined text indicates differences in the claims between the instant and reference applications.
Instant
Reference Application
Claim 1
Claim 1
An apparatus, comprising: a battery, the battery comprising: at least one battery cell; a casing housing the at least one battery cell; and material coupled to an exterior of the casing,
An apparatus, comprising: a battery, the battery comprising: at least one battery cell; a casing housing the at least one battery cell; and material coupled to an exterior of the casing,
the material 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.
the material configured to dissolve based on interaction with matter from the at least one battery cell based on the matter leaking from inside the casing.
Claim 9
The apparatus of Claim 1, wherein the material has one or more first colors, and wherein the material dissolves to reveal a second color that is different from the one or more first colors.
The result of the interaction of the material and the battery in both applications is a color change. Claim 1 of the instant is simply a broader version of claims 1 and 9 of the reference application. Therefore, claim 1 is not patentably distinct from claims 1 and 9 of the reference application.
Conclusion
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..
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/LOUISE JAMES IANNUCCI/Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721