DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
2. The disclosure is objected to because of the following informalities: P67 of the specification as filed recites “the first bent portion 1321” which should be corrected to “the first bent portion 1451” (reference numeral 1321 does not exist in the drawings, wherein all other references to the first bent portion utilize reference numeral 1451).
Appropriate correction is required.
Drawings
3. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the cap plate comprising “a bent portion between the central region and the edge region” (see subsequent rejection under 35 U.S.C. 112(a)/first paragraph) must be properly annotated within the drawings if it exists or the feature canceled from the claim(s). No new matter should be entered.
See also MPEP 608.01(o) in this regard:
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
It is the position of the Examiner that the cap plate comprising “a bent portion between the central region and the edge region” (see rejection under 35 U.S.C. 112(a)/first paragraph) is not properly described or illustrated in the drawings such that the only appropriate course of action in this instance is to cancel the subject matter from the claims.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
4. 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.
5. Claim 1, and thus dependent claims 2-18; and claim 2, and thus dependent claims 3-14, 16, and 17, 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.
While the claims are original claims, issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the inventor had possession of the claimed invention at the time of filing (MPEP § 2163). Claim 1 requires the cap plate to comprise a central region, an edge region, a bent portion between the central region and the edge region, and a vent portion comprising a notch configured to be broken by a certain pressure. Clam 2 goes on to define the vent portion comprises:
a first bent portion concavely recessed from the cap plate toward an inside of the case; and
a second bent portion convexly protruding from the cap plate toward an outside of the case.
Aside from stating within the disclosure that the cap plate comprises a bent portion in the summary section (P8 – all references to the instant application PGPUB in the instant rejection) as well as claimed, there is no further description in the written description or illustration of such an entity within the drawings. The cap plate 140 is described as including a central region 141 and an edge region 142 coupled to the case 120 (P56; Fig. 2). There is also a vent portion 145 (P61) that includes a first bent portion 1451, a second bent portion 1452, and a notch 1451a (P61-62; Fig. 2):
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There is no further description or illustration of a cap plate comprising a bent portion between the central region and the edge region as claimed in claim 1, and also a vent portion comprising a first bent portion and a second bent portion as presented in claim 2. Arguendo, even if one were to assume the cap plate “bent portion” is one of 1451 or 1452, then claim 2 is problematic in terms of support and being definitive under 35 U.S.C. 112(b)/second paragraph because this amounts to duplicative claiming of the same entity/entities with different terminology that is not linked in any manner such that the claims 1 and 2 currently appear to require three bent pent portions:
the cap plate comprises a bent portion between the central region and the edge region (claim 1);
the vent portion includes a first bent portion concavely recessed from the cap plate toward an inside of the case (claim 2); and
the vent portion includes ‘a second bent portion convexly protruding from the cap plate toward an outside of the case.”
Accordingly, if one maps the illustrated and described features of claims 1 and 2, the cap plate does not appear to include “a bent portion between the central region and the edge region” as claimed:
Claim 1: “…wherein the cap plate 140 comprises a central region 141, an edge region 142, [a bent portion between the central region and the edge region???], and a vent portion 145 comprising a notch 1451a configured to be broken by a certain pressure,”
Claim 2: “wherein the vent portion 145 comprises:
a first bent portion 1451 concavely recessed from the cap plate 140 toward an inside of the case 120; and
a second bent portion 1452 convexly protruding from the cap plate 140 toward an outside of the case.”
Appropriate explanation and/or correction is required. With respect to future claim amendments, the following requirements are noted and failure to comply with said requirements may result in a Notice of Non-Compliance with no new time period for reply:
A) Future claim amendments should be accompanied with comments that specifically point out support for any claim amendments. See MPEP 2163, section 3(b); MPEP § 714.02; and MPEP § 2163.06:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007)
"Applicant should ... specifically point out the support for any amendments made to the disclosure."
B) If Applicant departs from language utilized in the specification and makes claim amendments on the sole basis of the drawings, then all of the following are required:
an appropriate explanation of how the drawing(s) supports the full scope of the language presented;
corresponding amendments to the specification for the new claim language to ensure certainty in construing the claims in light of the specification (MPEP § 608.01(o)); and
reference numerals in each of the drawings and specification for any structural limitations that involve new terminology (MPEP § 608.01(o)).
MPEP § 608.01(o) is reproduced below for convenience for support of the above requirements:
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
Usually the terminology of the claims present on the filing date of the application follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
New claims, including claims first presented after the application filing date where no claims were submitted on filing, and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103.
6. 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.
7. Claim 15 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 15 recites the limitation "the second bent portion protruding outward from the case…” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
It appears claim 15 should be amended to depend from claim 2 which is where “a second bent portion protruding outward from the case” is first recited. For compact prosecution purposes, the claim will be examined as if it depended from claim 2.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
8. 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.
9. Claims 1 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshida et al. (US 2022/0115756).
Regarding claim 1, Yoshida teaches a secondary battery (P17; Figs. 1, 4a-4b) comprising:
an electrode assembly 14 (P15; Fig. 1);
a can 16 (“case”) comprising a top end open to accommodate the electrode assembly 14 (P24-25; Fig. 1); and
a sealing assembly 17 in the shape of a plate (i.e., “a cap plate”) coupled to the top end of the can 16 (“case”) (P16, 26; Fig .1);
wherein the cap plate 17 comprises a central region (illustrated, Fig. 1), an edge region (including at least a portion of annual part 31 – Fig. 1), an inclined portion 33 including a bent portion between the central region and the edge region (P33; note all of 33 or just the described “bent portion” thereof reads on “a bent portion” as claimed), and a vent portion comprising a thin part 34 in the form of a notch (P26; Figs. 1, 4a-4b) configured to be broken by a certain pressure (P26).
Regarding claim 18, Yoshida teaches wherein the secondary battery is a cylindrical secondary battery (P15; Fig. 1).
Compact Prosecution Claim Analysis (Claims 2-17)
10. Per MPEP § 2143.03:
“"All words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
When evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter). Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984).
While a formal rejection is not entered given the above case law, if a hypothetical combined claim 1 and 2 were to be presented deleting the non-supported language (see rejection under 35 U.S.C. 112(a)/first paragraph), then at least the following reference fully anticipates the subject matter of at least claims 1 and 2 with this hypothetical deletion:
Kim (US 2005/0214634):
Regarding hypothetical claims 1 and 2 with deletion of non-supported feature:
Kim teaches a secondary battery 10 (P3, 35; Figs. 1-5) comprising:
an electrode assembly 20 (P35; Figs. 1, 3);
a container 11 (“a case”) comprising a top end open to accommodate the electrode assembly (P35; Fig. 3); and
a vent plate 35 (“a cap plate”) coupled to the top end of the container 11 (“case”) (P40, 53),
wherein the vent plate 35 (“cap plate”) cap plate comprises a central region (illustrated), an edge region (illustrated; at least a portion of the region inserted into gasket 32),
wherein the vent portion [further] comprises:
a first bent portion (annotated below) concavely recessed from the vent plate 35 (“cap plate”) toward an inside of the container 11 (“case”) (Fig. 2); and
a second bent portion 35a convexly protruding from the vent plate 35 (“cap plate”) toward an outside of the container 11 (“case”) (Fig. 2; 53; not limited to entire disclosure).
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Annotated Fig. 2 of Kim
11. Additionally, while a formal rejection is not entered given the above case law, if a hypothetical combined claim 1 and 2 were to be presented deleting the non-supported language (see rejection under 35 U.S.C. 112(a)/first paragraph), and considering the location of the first and second bent portions as illustrated in Fig. 1 of the instant application, then the following reference anticipates this hypothetical claim having the same location as that of the first and second bent portions:
Fang et al. (US 2023/0198108)
Regarding hypothetical claims 1 and 2 with deletion of non-supported feature and consideration of the location of the first and second bent portions as illustrated in Fig. 1 of the instant application:
Fang teaches a secondary battery (Figs. 4-8; P127-234) comprising:
an electrode assembly 10 (P128);
a case 20 comprising a top end open to accommodate the electrode assembly 10 (P128, 140); and
an end cap 30 or cap body 31 (“cap plate”) coupled to the top end of the case 20 (Figs. 5-6; P128),
wherein the cap plate 30/31 comprises a central region (illustrated), an edge region (illustrated),
wherein the vent portion [further] comprises:
a first bent portion 35 concavely recessed from the cap plate toward an inside of the case; and
a second bent portion (annotated below) convexly protruding from the cap plate toward an outside of the case,
wherein each of the first bent portion 35 and the second bent portion (annotated below) of Fang have the same location as that of the instant application first 1451 and second 1452 bent portions:
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Instant Application Fig. 2 rotated 180 ° for comparison
purposes so as to have the same orientation:
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The above construct of Fang also teaches at least-
claim 3: (note “at” is a broad term defined as “in, on, or near” such that the notch (V) is located at a bent portion of the first bent portion) with the notch (V) located at (i.e., “near”) a bent portion of the first bent portion;
claim 4: the notch V is located on (directly or indirectly) an outer surface of the cap plate (note the surface facing internally towards the cap plate is still “an outer surface” of the cap plate);
claim 9: the notch V is formed to a certain depth (i.e., that illustrated);
claim 13 – wherein the first bent portion 35 is recessed toward the inside of the case compared to the central region and the edge region of the cap plate 30/31 (Fig. 6);
claim 14 – wherein the second bent portion protrudes outward from the case compared to the central region of the cap plate (Fig. 6);
claim 15- wherein a height of the second bent portion protruding outward from the case may be equal to or smaller than a height of the edge region of the cap plate (Fig. 6);
claim 16- appears met based on the drawing (Fig. 6)
claim 17 – appears met based on the drawing (Fig. 6); alternatively given there is an angle shown and necessary to achieve the first bent portion (i.e., a general condition of the claim), in the absence of new or unexpected results for which objective evidence exists that is fully commensurate in scope with the claimed construct, the court has held: “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
claim 18 – wherein the secondary battery is a cylindrical battery (Fig. 4)
12. With respect to the shape of the notch (claims 5-7) (considered obvious variants one over the other)-
Kim et al. (US 2021/0184308) teaches a cylindrical secondary battery and that the top plate 141 (“cap plate”) can have a notch 141c broken or ruptured when the internal gas pressure of the secondary battery is larger than a predetermined pressure, wherein the notch 141c, may take the shape of circular “C” shape or elliptical (P45).
With respect to the depth(s) of notch (claims 8, 9, 11)-
Jiang et al. (US 2022/0059902) teaches a pressure relief groove that may be circular, elliptical, letter shaped, etc. and teaches (P45):
In addition, a depth of the groove-like structure also determines the exhausting difficulty of the explosion-proof exhaust structure 3. The deeper the depth of the groove-like structure, the less difficultly the explosion-proof exhaust structure 3 is to be burst. The shallower the depth of the groove-like structure, the more difficultly the explosion-proof exhaust structure 3 is to be burst.
Accordingly, the depth or depth(s) of a notch/groove structure for a pressure relief structure is a known-result effective variable, wherein one of ordinary skill would be motivated to determine appropriate depth(s) in order to provide a desired degree of difficulty for the explosion-proof exhaust structure 3 is to be burst, the court holding that the discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
With respect to the thickness of the cap plate where the notch is formed (claims 10, 12)-
Yoshida et al. (US 2023/0064158) teaches a rupture plate (functioning as the cap plate) and including thin portion(s) and the following:
[0027] The thickness of the rupture plate 20 is not particularly limited, but as an example, the thickness of portions other than the thin portion 21 and the projecting portion 22 is 0.3 mm to 2 mm. The thickness of the thin portion 21 is, for example, 10% to 50% of the thickness of the valve part 24. The thin portion 21 may be formed with the same thickness over its entire length, but in the present embodiment, a first thin portion 21A and a second thin portion 21B, each formed in an arc shape, are connected to form one annular shape. While both the first thin portion 21A and the second thin portion 21B are formed by grooves having a substantially V-shaped cross section, the remaining thickness of the first thin portion 21A is less than the remaining thickness of the second thin portion 21B.
Yoshida thus teaches suitable, overlapping ranges for the thickness of the cap plate where the notch is formed, wherein in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP § 2144.05). Furthermore, “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
13. Additional, highly relevant prior art to the instant application and claims is also cited below:
Cho et al. (US 8,802,255) teaches the following cap plate and vent portion:
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Yoshida (US 2023/0064158) teaches the following cap plate and vent portion:
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Jang et al. (WO 2018/199438) (copy provided) teaches the following construct in which cap plate comprises vent portion 180 including a notch 182a configured to break due to pressure and including at least a first bent portion concavely recessed from the cap plate toward an inside of the case:
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Kim et al. (US 2023/0231242) teaches the following cap plate and vent portion:
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See also: Kim (US 2022/0200108); Kimura et al. (US 2005/0153194); and Kim (US 8,993,138).
Conclusion
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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, 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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/AMANDA J BARROW/Primary Examiner, Art Unit 1729
Prosecution Insights