DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 Amendment
In response to the amendment received on 7/14/2026:
a. Claims 1-3, 6, 8 and 9-15 are pending in the current application. Claim 1 has been amended and claims 4, 5, and 7 are cancelled. Claims 9-15 are newly added.
b. The double patenting rejection of the claims has been overcome in light of the amendment.
c. The previous rejections under 35 USC 112 are overcome in light of the amendment.
d. The previous prior art rejections are overcome in light of the amendment, and new rejections are presented below under previously relied-upon prior art. All changes to the rejection are necessitated by the amendment.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/6/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 103
Claims 1-3, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al, (US 2017/0229700A1), hereinafter Matsumoto as applied to the claims above, and further in view of Wakimoto et al., (JP 2017041320), hereinafter Wakimoto.
Regarding claim 1, (Currently Amended) Matsumoto teaches a terminal, comprising:
a first conductive member; (Fig. 12C shows metal body 752)
a second conductive member that is electrically connected to the first conductive member; and (Fig. 12C [0123] shows metal body 752 electrically connected to connection terminal 753.)
a welded joint that is for welding and joining the first conductive member and the second conductive member, (Fig. 12C [0123] welded portion joins connection terminal 753 and metal body 752)
wherein the first conductive member and the second conductive member are composed of mutually different metals, ([0121] metal body 752 made of aluminum or an aluminum alloy and a connection terminal 753 made of copper or a copper alloy)
no penetration hole is formed in the thin-walled part, (Fig. 12C shows a thin-walled part at the top of the terminal, and no penetration hole)
the welded joint is disposed to penetrate the thin-walled part of the first conductive member so as to reach the second conductive member, and (Fig. 4C. shows a welded portion 151a that penetrates the thin-walled section of the metal body into the connection terminal)
the first conductive member includes a thin-walled part that is recessed from a surface of the first conductive member opposite to a surface facing the second conductive member
Matsumoto shows a thin-walled section on the metal body 752 (first conductive member) that is recessed on the same surface facing the connection terminal (second conductive member) in Fig. 12C. Although the recessed area is not on the side opposite to the surface facing the connection terminal, the thinner portion of the conductive member (metal body) makes it possible to reduce the required energy at the welding location to the connection terminal and enhance the welding property. Therefore, the change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04).
Matsumoto does not teach:
a surface of the welded joint located in the thin-walled part is covered with a tape and/or a resin member.
Wakimoto teaches pasting a tape on the first conductive member where the tape 70 covers the weld 50 joining the electrode 9 to the conductive member 8 to prevent burrs from the electrode to enter the battery Fig. 9, [0049]. 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 of Matsumoto 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 (original), the limitations of Matsumoto as modified by Wakmoto are incorporated herein. Matsumoto teaches the terminal according to claim 1, wherein
the first conductive member has a plate shape, (Figs. 12b and 12C - metal body 752 is plate shaped)
the second conductive member comprises a flange part, (Fig. 12C [0122] - flange portion 753c of connection terminal 753) and
a fastening part that mechanically fixes the first conductive member and the flange part is provided. (Fig. 12C, [00123] the connection terminal 753 and the metal body 752 are mechanically joined with each other by press-fitting the proximal end portion.)
Regarding claim 3 (original), the limitations of Matsumoto as modified by Wakimoto are incorporated herein. Matsumoto teaches the terminal according to claim 2, wherein
the first conductive member comprises a recess that is configured to accommodate at least a part of the flange part. (Fig. 12C, 12D - shows recessed portion of metal body 752 at the flange portion of connection terminal 753c)
Regarding claim 6 (original), the limitations of Matsumoto as modified by Wakimoto are incorporated herein. Matsumoto teaches the terminal according to claim 1, wherein
the tape is pasted on the first conductive member.
As explained in the rejection of claim 1, Matsumoto, in view of Wakimoto, teaches to attach tape on the first conductive member Figure 9, [0049].
Regarding claim 8 (Currently Amended), the limitations of Matsumoto as modified by Wakimoto are incorporated herein. Matsumoto teaches a battery, comprising:
the terminal according to claim 1; ([0010] a prismatic battery with external terminals)
an electrode body provided with a positive electrode and a negative electrode; and 9[0010] external terminals of a positive and negative electrode are disposed on one surface)
a battery case configured to accommodate the electrode body, wherein ([0010] electrodes are disposed on one surface of a prismatic battery container)
the battery comprises an electrode current collector that is electrically connected to the positive electrode or the negative electrode, ([0059] The positive electrode external terminal 141 is electrically connected to a positive electrode 174 of the flat wound group 170 via a positive electrode current collector 180, and a negative electrode external terminal 151 is electrically connected to a negative electrode 175 of the flat wound group 170 via a negative electrode current collector 190.)
the battery case comprises a terminal attaching hole, ([0075], Figs 4C and 5C - the connection terminal 153 of the negative electrode external terminal 151 is inserted into a through-hole)
the second conductive member comprises a flange part at [[one]] a first end part and comprises a connecting part at [[the other]] a second end part opposite the first end part (Figs. 12C and 12D shows the conductive member 752 with a flange part 752e and a connecting part at the opposite end)
the flange part is connected to the first conductive member, (Fig. 12C shows the metal body 752 connected to the connection terminal 752)
the first conductive member is arranged at an outer side of the battery case, and (Fig. 12C shows the metal body 752 arranged outside the battery case 101)
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. (Fig. 12C the connection terminal 753 penetrates the attaching hole and is connected to the negative current collector 190 inside the battery case.)
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Claims 9-15 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, and in further view of Matsumoto et al, (US 2017/0229700A1), hereinafter Matsumoto.
Regarding claim 9, 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)
the first conductive member includes a thin-walled part that is recessed from a surface of the first conductive member opposite to a surface facing the second conductive member (Figure 4 - external conductive member 15 has a recessed area above thin-walled portion opposite surface facing negative electrode terminal 9)
the welded joint is formed at a bottom of the thin-walled part, (Figure 4 – welded joint is at the bottom of the thin-walled portion of the external conductive member)
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Muroya does not teach:
the first conductive member and the second conductive member are composed of mutually different metals,
a tape is pasted around the thin-walled part of the first conductive member
the tape covers a surface of the welded joint while being spaced apart from the surface of the welded joint.
However, in the same field of endeavor of battery terminal design, Matsumoto teaches:
the first conductive member and the second conductive member are composed of mutually different metals
Matsumoto teaches a metal body 752 (first conductive member) made of aluminum or an aluminum alloy and a connection terminal 753 (second conductive member) made of copper or a copper alloy [0121]. 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 Matsumoto 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 teaches:
a tape is pasted around the thin-walled part of the first conductive member
the tape covers a surface of the welded joint while being spaced apart from the surface of the welded joint.
Wakimoto teaches a tape 70 that covers the weld 50 joining the electrode 9 to the conductive member 8 to prevent burr material from the electrode from entering the battery. The tape has a substrate 70a and an adhesive layer 70b between the tape and the weld. Figure 9, [0049]. 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 around the thin-walled part and the welded joint of Muroya modified by Matsumoto and Wakimoto 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.).
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Regarding Claim 10, Muroya, modified by Matsumoto and Wakimoto, teaches the terminal according to claim 9:
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 11, 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]
Matsumoto shows flange portion 753c of the connection (electrode) terminal is fitted to the recessed portion 752e of the metal body (external conductive member). The flange portion 753c and the recessed portion 752e are press-fit together to form a mechanical joint that helps with battery reliability (Figure 12d [0120-0124]). 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 of Muroya in view of Matsumoto and Wakimoto to accommodate joining the flange portion of the connection terminal because Matsumoto teaches that this helps improve the battery reliability.
Regarding claim 12, Muroya in view of Matsumoto and Wakimoto, teaches the terminal according to claim 10, wherein:
the first conductive member comprises a penetration hole. (Fig 5, [0037], The external electroconductive member 15 has a through-hole 15a)
Regarding claim 13, the teachings of Muroya in view of Matsumoto and Wakimoto in claim 12 are incorporated herein. Muroya teaches:
The terminal according to claim 12, 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 14, the teachings of Muroya, modified by Matsumoto and Wakimoto, are incorporated herein. Muroya teaches the terminal according to claim 12, wherein
a 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 15, Muroya, in view of Matsumoto and Wakimoto, teaches:
A battery (Figure 1, [0006], 50), comprising:
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 at a first end part of the second conductive member and comprises a connecting part at a second end part of the second conductive member opposite to the first 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)
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Response to Arguments
Applicant’s arguments with respect to the claims are based on the claims as amended. The amended claims have been addressed in the new rejection above.
Applicant's arguments with respect to Claim 1 have been fully considered but they are not persuasive.
Applicant argues that the applied references fail to teach, alone or in combination the following recited features in amended Claim 1: "the first conductive member includes a thin- walled part that is recessed from a surface of the first conductive member opposite to a surface facing the second conductive member," "no penetration hole is formed in the thin-walled part," "the welded joint is disposed to penetrate the thin-walled part of the first conductive member so as to reach the second conductive member," and "a surface of the welded joint located in the thin-walled part is covered with a tape and/or a resin member." (Page 7, paragraph 2) As discussed in the new rejection, Matsumoto in view of Wakimoto teaches the recited limitations of Claim 1. Furthermore, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Therefore, Claim 1 is rejected under new grounds necessitated by the Applicant’s amendment and as taught by Matsumoto in view of Wakimoto.
Further, Applicant's arguments with respect to Claim 3 have been fully considered but they are not persuasive.
Applicant argues that the Office failed to apply Matsumoto in a manner sufficient to cure the deficiencies of Muroya. (Page 9, paragraph 2) Applicant did not provide any evidence or additional information to support this argument; thus, the rejection is maintained.
Further, Applicant's arguments with respect to Claim 9 have been fully considered but they are not persuasive.
Applicant argues the applied references, alone or in combination, fail to teach the following limitations in new Claim 9: "the welded joint is formed at a bottom of the thin-walled part, a tape is pasted around the thin-walled part of the first conductive member, and the tape covers a surface of the welded joint while being spaced apart from the surface of the welded joint." As discussed in the new rejection above, Muroya, in view of Matsumoto and Wakimoto, teaches the recited limitations of new Claim 9.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Therefore, new Claim 9 is rejected under new grounds necessitated by the Applicant’s amendment and as taught by Muroya in view of Matsumoto and Wakimoto.
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 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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