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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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 1-20 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.
Claims 1 and 13 recites “the alignment region comprises same materials as the other regions of the second membrane”. Although the instant specification discloses “active lithium in the alignment region” and “active lithium in other regions” does not provide support to broadly claim “same materials”. For example, the instant specification discloses that the second membrane includes carbon and silicon or the like [0051]. Nowhere in the instant specification discloses that the alignment region is of the same material to that of the second membrane such that it additionally comprises carbon and silicon.
Additionally, given that the claims recites “the alignment region comprises same materials as the other regions of the second membrane” (emphasis added), thereby, having more than one material to be present and to be same, there is no support in the specification to broadly claim “materials” (specification only discloses active lithium) let alone to be the same as set forth above.
Claims 1-20 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.
Claims 1 and 13 recites “the alignment region comprises same materials as the other regions of the second membrane” (emphasis added). Claims 1 and 13 requires for the “materials” to be the same. The examiner is unclear how it is possible to have multiple materials present but yet must be the same. If it must be the same, wouldn’t it considered to be one material? Or does this mean that the alignment region and the regions of the second membrane are a composite which is a mixture of composition, thereby comprises multiple elements or materials? Clarification is needed.
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.
Claims 1-6, 8-9, 13-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujikawa et al. (US 2007/0172736).
Regarding claims 1 and 13, Fujikawa discloses a battery and a case comprising an electrode assembly [0057, 0068], comprising a first electrode plate (10, 10’), a second electrode plate (20, 20’), and a separator located between the first electrode plate and the second electrode plate ([0021, 0068]), wherein the first electrode plate comprises a first current collector (12) and a first membrane (13) disposed on the first current collection, and the first membrane is provided with a first tab groove, and the second electrode plate includes a second current collector (22) and a second membrane (23) disposed on the second current collector, the second membrane is provided with a blocking groove and an alignment region (24) defined by the blocking groove, and an orthogonal projection of the alignment region on the first electrode plate covers the first tab groove (Fig. 6-7). Fujikawa further discloses that the alignment region is insulated from other regions of the second membrane by the blocking groove and/or the second current collector (Fig. 6-7). Further, Fujikawa discloses that the alignment region comprises of nickel or a nickel alloy [0025], and the other regions of the second membrane is Ni-Si alloy [0053]. This thereby corresponds to the claimed the alignment region comprises same materials as the other regions of the second membrane.
Regarding claims 2 and 14, please see Fig. 6-7.
Regarding claims 3-6 and 15-18, Fujikawa discloses that the cross section of the groove is square, thereby would comprise of plurality of groove as claimed (4 sides). Additionally, since Fujikawa discloses a cross section being square, it would include that the first preset angle and the second present angle is 90°. Further, Fujikawa also discloses that the cross section of the groove is U-shaped, thereby a cross-section of U would include annular groove overall (combining two cross sections) and circular shape, which thereby surrounds the alignment region.
Regarding claim 8, Fujikawa discloses the plates as claimed (Fig. 6-7).
Regarding claim 9, Fujikawa discloses an insulating film (30) as claimed (All Figs).
Regarding claim 20, Fujikawa discloses an electrical device as claimed [0118].
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 3-7, 10-12, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Fujikawa et al. (US 2007/0172736).
Regarding claims 3-6, Fujikawa discloses that the cross section of the groove is square, thereby would comprise of plurality of groove as claimed (4 sides). Additionally, since Fujikawa discloses a cross section being square, it would include that the first preset angle and the second present angle is 90°. Further, Fujikawa also discloses that the cross section of the groove is U-shaped, thereby a cross-section of U would include annular groove overall (combining two cross sections) and circular shape, which thereby surrounds the alignment region. Thereby, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose any shape as claimed, since Fujikawa are open to variety of suitable shapes. Furthermore, it has been held that a mere change in shape without affecting the functioning of the part would have been within the level of ordinary skill in the art, In re Dailey et al., 149 USPQ 47; Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Regarding claims 7, 10-12 and 19, Fujikawa recognizes that the groove’s dimensions and their relationship with the plates and the insulating film helps achieve both excellent safety and high output power [0006], [0022-0029]. The courts have held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, see MPEP 2144.05, II, B. At the time of the invention, it would have been obvious to one of ordinary skill in the art to optimize the dimensions of the plate, insulating film, and the blocking groove to satisfy the claimed relationship and dimensions to read on the claims because that the groove’s dimensions and their relationship with the plates and the insulating film in order to obtain excellent safety and high output power. In addition, the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device, see MPEP 2144.04, IV, A.
Additionally, the law is replete with cases in which the mere difference between the claimed invention and the prior art is some range, variable or other dimensional limitation within the claims, patentability cannot be found.
It furthermore has been held in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range(s); see In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Moreover, the instant disclosure does not set forth evidence ascribing unexpected results due to the claimed dimensions; see Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984), which held that the dimensional limitations failed to point out a feature which performed and operated any differently from the prior art.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 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.
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 LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/ Examiner, Art Unit 1785
/Holly Rickman/ Primary Examiner, Art Unit 1785
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