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 § 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 1-3, 6-7, 9-10, and 13-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (US 2016/0099444).
Regarding claim 1, Park discloses a secondary battery comprising an electrode assembly (10), a current collector plate (112, 122) electrically connected to the electrode assembly [0047], a case (30) configured to accommodate the electrode assembly and the current collector plate, a cap plate (40) coupled to the case, and an insulating member (20) between the cap plate and the current collector plate, wherein the insulating member comprises an insulating frame, and a thermally conductive member (515, 525) fixed by the insulating frame (All Figs, [0101-0104]).
Regarding claim 2, Park discloses the insulating frame defines a cavity passing through an upper surface and a lower surface thereof (Fig. 6).
Regarding claim 3, Park discloses the insulating frame has an opening (205) to accommodate electrolyte injection. Therefore, the insulating frame provides a ring shape in a plan view (Fig. 6).
Regarding claims 4-5, Park discloses the thermally conductive member is within the cavity thereby discloses that is “fills” the cavity as presently claimed, wherein a thickness of the insulating frame and a thickness of the thermally conductive member are substantially the same (Fig. 6).
Regarding claims 6-7, Park discloses a cavity as claimed. Given that there is no structural difference between the insulating frame and cover plate, the examiner is taking the position that the bottom of said cavity corresponds to the claimed cover plate. Park discloses the thermally conductive member is within the cavity thereby discloses that is “fills” the cavity to cover the cover plate as presently claimed.
Regarding claims 9-10, Park discloses the insulating frame defines cavities partitioned from each other (Fig. 6), wherein thermally conductive material members (515,525) respectively inserted into the cavities (Fig. 6).
Regarding claims 13-14, Park discloses a terminal (51, 52) contacting to the current collector plate and exposed through the cap plate (All Fig. 2-3 and 6, [[0093]). Park additionally discloses an electrode connection portion and a terminal connection portion as claimed (Fig. 6). Regarding the limitation “welded”, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”, (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113)
Regarding claim 15, Park discloses that the insulating member can also comprise of another insulating member (60), which is thereby between terminal connection portion and the cap plate (Fig. 2 and 6).
Regarding claim 16, Park discloses a through hole (205, 205) and the terminal (51, 52) as claimed.
Regarding claim 17, Park discloses a terminal plate (513) on the cap plate (40), and a terminal pillar (512) as presently claimed (Fig. 2).
Regarding claim 18, Park discloses insulating member with multiple structures (20, 60), thereby discloses the positioning as claimed (Fig. 2).
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 4-5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2016/0099444).
Regarding claims 4-5 and 7-8, Park discloses a secondary battery comprising an insulating member comprising an insulating frame and a thermally conductive member as set forth above. Although Park discloses the thermally conductive member is within the cavity as claimed (Fig. 4), however, fails to disclose that it “fills” the cavity in such that a thickness of the insulating frame and a thickness of the thermally conductive member are substantially the same, and that the thickness of the cover plate is about 0.5-3 mm.
However, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation. It is known in the art that thermally conductive member that are designed with the right materials and dimensions are able to minimize electrical resistance.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the dimension of the thermally conductive member since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed dimension is critical and has unexpected results. In the present invention, one would have been motivated to optimize dimension of the thermally conductive member such that it fills the cavity such that it has same thickness as the frame, wherein the cover plate is about 0.5-3 mm, dependent upon suitable current transfer, heat management, and battery safety.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2016/0099444) in view of Navarrette et al. (US 2017/0179495).
Park discloses a thermally conductive member as set forth above, however, Park is silent on the materials.
Navarrette discloses a thermally conductive member comprising silicon-based material (Abstract, [0024]). Navarrette discloses that this allows for an improved mechanical strength [0017].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Park’s thermally conductive member to comprise of silicon, as suggested by Naverrete, in order to improve mechanical strength. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Park’s thermally conductive member to comprise of silicon, since Naverrete discloses that this is a known material for a thermally conductive member and with reasonable expectation of success.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2016/0099444) in view of Tsutsumi et al. (US 2012/0189908).
Park discloses an insulating frame as set forth above, however, Park is silent on the materials.
Tsutsumi discloses a secondary battery comprising an insulating member comprising an insulating frame (10) and a thermally conductive member (8). Tsutsumi discloses that the insulating frame comprises PP and/or PE [0073].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Park’s insulating frame to comprise of PE and/or PP, since Tsutsumi discloses that these materials are known in the art to produce insulating properties [0073].
Conclusion
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.
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, 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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