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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 7/27/2023 and 8/16/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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).0
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of co-pending Application No. 18/359,874 (Murata et al., reference application), hereinafter Murata ‘874, in view of Muroya et al., (U.S. Publication: US 2020/0212415A1), hereinafter Muroya and Wakimoto et al., (Publication number JP 2017041320), hereinafter Wakimoto . Although the claims at issue are not identical, they are not patentably distinct from each other because the structure of the terminal as claimed corresponds to the same subject matter of the co-pending application.
Claim 1 of the co-pending application (Murata ‘874) recites:
a first conductive member; (Murata ‘874)
a second conductive member that is electrically connected to the first conductive member; and (Murata ‘874)
the first conductive member and the second conductive member are composed of mutually different metals, (Murata ‘874)
a surface of the welded joint is covered with a tape or a resin member (Murata ‘874).
the first conductive member comprises a penetration hole (same as Claim 4 in the instant application),
Therefore, the first four limitations of claim 1 in Murata ‘874 are anticipated by claim 1 and claim 4 of the instant application.
The co-pending application does not recite the following limitations of claim 1:
a welded joint that is for welding and joining the first conductive member and the second conductive member
the welded joint is disposed to penetrate the first conductive member so as to reach the second conductive member, and
a surface of the welded joint is covered with a tape or a resin member.
Muroya discloses:
a welded joint that is for welding and joining the first conductive member and the second conductive member (Figure 4,[0034] Welded portion 63 joins external electroconductive member 15 and negative electrode terminal 9)
the welded joint is disposed to penetrate the first conductive member so as to reach the second conductive member, (Figure 4. Welded portion 63 shows the weld going through the conductive member 15 and into negative electrode terminal 9)
Wakimoto further teaches:
a surface of the welded joint is covered with a tape or a resin member. (Figure 7, [0042] resin 60 covers the weld 50 joining the electrode 9 to the conductive member 8.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a weld into the joint as taught by Muroya and covering with a tape or resin as taught by Wakimoto in order to provide a reliable connection between he first and second conductive members.
Claim 1 of Murata ‘874 further recites:
the second conductive member is arranged to cover the penetration hole
a boundary part between a vicinity of the penetration hole of the first conductive member and the second conductive member is covered with a tape and/or a resin member to prevent the boundary part from being exposed
For claim 2, Murata ‘874 also recites:
the penetration hole is covered by the flange part of the second conductive member, and
a fastening part that mechanically fixes the first conductive member and the flange part of the second conductive member, and/or a metal joint that performs metal joining on the first conductive member and the flange part of the second conductive member is provided.
Claims 3-7 of Murata ‘874 are nearly identical and provide coverage for an embodiment within the scope of claims 3, and 5-8 being examined.
Claims 1-7 of Murata ‘874 are in essence a “species” of the generic invention of the application claims 1-8. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 8 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.
Claim 8 recites the limitation "at the other end part" in line 6 (5th limitation) of the claim. There is insufficient antecedent basis for this limitation in the claim. This limitation is rejected because there is insufficient antecedent basis for "at the other end part" of this limitation in the claim. It is not clear if this limitation is referring to the second conductive member or a different part of the invention, and since there can be multiple end parts to a structural element, it is unclear which is “the other” end part. For purposes of this examination, this limitation will be considered as an end part of the second conductive member that opposes the claimed first “one end part" of the second conductive member.
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.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Muroya et al. (US Publication Number: US 2020/0212415A1), hereinafter Muroya, in view of Wakimoto et al. (Publication number JP 2017041320), hereinafter Wakimoto.
Regarding claim 1, Muroya teaches:
A terminal, comprising: (Abstract, Figure 4)
a first conductive member; (Figure 4, [0023]: external electroconductive member 15, analogous to the first conductive member of the claimed invention)
a second conductive member that is electrically connected to the first conductive member; and (Figure 4, [0023]: negative electrode terminal 9 is analogous to the second conductive member of the claimed invention is contacting/connected to external conductive member 15)
a welded joint that is for welding and joining the first conductive member and the second conductive member, wherein (Figure 4: welded portion 63 shows joining external conductive member 15 and negative electrode terminal 9)
the welded joint is disposed to penetrate the first conductive member so as to reach the second conductive member, and (Figure 4. Welded portion 63 shows joining external conductive member 15 and negative electrode terminal 9)
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Muroya does not teach:
the first conductive member and the second conductive member are composed of mutually different metals,
a surface of the welded joint is covered with a tape or a resin member.
However, in the same field of endeavor of battery terminal design, Wakimoto teaches:
the first conductive member and the second conductive member are composed of mutually different metals since one can contain only copper/copper alloy and the other can contain aluminum/aluminum alloy, ([0027] negative electrode current collector (a first conductive member) 8 preferably made of copper/copper alloy; [0030] negative electrode terminal 9 (a second conductive member) may be terminal obtained by combining aluminum/aluminum alloy with copper/copper alloy.)
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to form the first and second conductive member of Muroya using mutually different metals because Wakimoto teaches that this design is known in a similar battery configuration and the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Wakimoto further discloses:
a surface of the welded joint is covered with a tape or a resin member. (Figure 7, [0042] resin 60 covers the weld 50 joining the electrode 9 to the conductive member 8 to prevent ; Figure 9, [0049] tape 70 covers weld 50 joining electrode 9 to the conductive member 8; the tape or resin is used prevent burrs from the negative electrode from entering the battery)
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Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to apply a tape or resin over the weld to prevent material from entering the battery, because Wakimoto teaches that this design is known in a similar battery configuration and the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Regarding Claim 2, Muroya, modified by Wakimoto, teaches:
the first conductive member has a plate shape, (Figure 1: External conductive member 15 is plate-shaped, analogous to first conductive member in the claimed invention)
the second conductive member comprises a flange part, and (Figure 4, [0036]: flange part 9a is part of negative electrode terminal 9 and analogous to the second conductive member in the claimed invention)
a fastening part that mechanically fixes the first conductive member and the flange part is provided. (Figure 5: The protrusion 9d of the negative electrode terminal 9 is arranged in the through-hole 15a)
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Regarding claim 4, Muroya in view of Wakimoto teaches:
The terminal according to claim 1, wherein the first conductive member comprises a penetration hole. (Fig 5, [0037], The external electroconductive member 15 has a through-hole 15a)
Regarding claims 5, the teachings of Muroya in view of Wakimoto in claim 4 are incorporated herein. Muroya teaches in claim 5:
The terminal according to claim 4, wherein
the penetration hole comprises a first area and a second area, (Figure 5, [0037], electrode terminal is disposed in the through-hole 15a in electroconductive member 15)
the first area is an area whose diameter is smaller than the second area, and (Figure 5, 15a is a through-hole composed of a smaller first area within a larger second area in electroconductive member 15)
the first area is arranged at a position closer to the second conductive member, than the second area. (Figure 5, the inner diameter of the smaller first area is positioned closer to the electrode terminal 9 than the diameter larger second area)
Regarding claim 6, as explained in the rejection of claim 1, Muroya, in view of Wakimoto, teaches to paste tape on the first conductive member (Figure 7, [0042] resin 60 covers the weld 50 joining the electrode 9 to the conductive member 8).
Regarding claim 7, the teachings of Muroya, modified by Wakimoto, in claim 4 are incorporated herein. Muroya teaches:
The terminal according to claim 4, wherein
the resin member is arranged inside the penetration hole. (Figure 4, [0033] resin insulator 13 is disposed in the through-hole 2b)
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Regarding claim 8, Muroya, in view of Wakimoto, teaches:
A battery (Figure 1, [0006], 50), comprising:
the terminal according to claim 1;
an electrode body provided with a positive electrode and a negative electrode; and (Figure 2, [0007] negative electrode and positive electrode, )
a battery case configured to accommodate the electrode body (Figure 1, [0021], outer covering 1 accommodates flat wound electrode assembly), wherein
the battery comprises an electrode current collector that is electrically connected to the positive electrode or the negative electrode (Figure 2, [0022] positive electrode collector 6 connected to the positive electrode core; [0023] negative electrode connector 8 connected to the negative electrode core)
the battery case comprises a terminal attaching hole (Figure 3, [0030] positive electrode terminal attachment hole 2a, [0033] negative electrode terminal attachment hole 2b)
the second conductive member comprises a flange part at one end part and comprises a connecting part at the other end part, (Figure 4 and Figure 5, [0036] electrode terminal 9 includes a flange 9a, connection portion 9b is disposed on the end of terminal 9)
the flange part is connected to the first conductive member, (Figure 5, [0023] external electroconductive member 15 is connected to the negative electrode terminal 9)
the first conductive member is arranged at an outer side of the battery case, (Figure 2, [0023] external electroconductive member 15 is connected to the negative electrode terminal 9 outside the battery casing 200)
the connecting part of the second conductive member is configured to penetrate the terminal attaching hole of the battery case so as to be connected to the electrode current collector at an inner side of the battery case. (Figure 4, [0036] electrode terminal 9 is configured in the attachment hole 2b, and is connected to the electrode connector 8 disposed on the inner surface of the sealing plate 2)
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Muroya et al. (US Publication Number: US 2020/0212415A1), hereinafter Muroya, and further in view of Matsumoto et al., (US Publication Number: US2017/0229700A1), hereinafter Matsumoto. The teachings of Muroya as discussed in claim 2 above are incorporated herein.
Regarding Claim 3, Muroya modified by Wakimoto does not teach:
Wherein,
the first conductive member comprises a recess that is configured to accommodate at least a part of the flange part.
Matsumoto teaches:
the first conductive member comprises a recess that is configured to accommodate at least a part of the flange part. (Figure 12d, [0120-0124] flange portion 753c of the connection (electrode) terminal is fitted to the recessed portion 752e of the metal body (external conductive member)
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a recess portion into the conductive member to accommodate joining the flange portion of the connection terminal, improving the battery reliability.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mario Gamboa whose telephone number is (571)272-9213. The examiner can normally be reached Mon-Thur 8:00 -5:00, Fri 8:00- 12:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIO R GAMBOA/Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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