DETAILED ACTION
Claims 1-4 are presented for examination.
The instant application is a CIP of US 11,973,197, issued on April 30, 2024.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Vogel, 422 F.2d 438 (CCPA 1970); In re Thorington, 418 F.2d 528 (CCPA 1969).
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 1-2 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 or 3 of U.S. Patent No. 11,973,197, from which the instant application is filed as a CIP. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Regarding the limitation “a ratio (F1/E1) of an elastic modulus F1 of Admer QE060 at any one temperature in the range of 80° C. or more and 100° C. or less to an elastic modulus E1 of the first insulating layer at the same temperature as in the Admer QE060, is 1.07 or more and 1.76 or less” of claim 1, the ‘197 patent claims an elastic modulus E1 (claim 2: E1 of 20-900 MPa and claim 3: E1 of 20-500MPa) at a temperature within a temperature range of 80°C to 125°C (see claim 1) in ranges that overlap the instant E1 (instant claim 2: E1 of 90-170MPa) at a temperature in the range of 80°C to 100°C; and further, the elastic modulus of Admer QE060 at said temperature within said range of 80°C to 100°C is a constant at said temperature, establishing a prima facie case of obviousness of the claimed ratio range, see also e.g. MPEP § 2144.05(I), see also the disclosure of instant specification, at e.g. ¶¶ 0009, 18-19, 30-32, 37-38, 65-68, 86-87, and 130-131).
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.
Claims 1-4 are 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.
Regarding independent claim 1, from which claims 2-3 depend and claim 4 incorporates by reference, the “elastic modulus E1” in the limitations “an elastic modulus E1 of the first insulating layer at the same temperature as in the Admer QE060, is 1.07 or more and 1.76 or less” (emphasis added) and “a ratio (E1/E2) of an elastic modulus E1 of the first insulating layer at any one temperature in the range of 80° C. or more and 100° C. or less” (emphasis added) is not clear as to whether each E1 is the same or different from one another (note the point of temperature, “the same temperature as in the Admer QE060” and “at any one temperature”).
For purposes of examination, the limitation is interpreted as provided infra.
Regarding claim 2, the limitation “the elastic modulus E2 is 180 MPa or more and 750 MPa or less” is not clear as to whether it refers to the first “elastic modulus E1” of claim 1 (see lines 10-13) or the second “elastic modulus E1” of claim 1 (see lines 14-17) (note E1 is at a point of temperature in claim 1, “the same temperature as in the Admer QE060” and “at any one temperature”).
For purposes of examination, the limitation is interpreted as provided infra.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Takada (JP 2016/091939).
Regarding independent claim 1, Takada teaches a lithium-ion secondary battery with an electrolyte solution that may be e.g. a mixture of diethyl carbonate and ethylene carbonate with lithium hexafluoride phosphate, said battery including an improved resin film for terminals, said battery (e.g. item 10) comprising:
(i) an energy storage device body (e.g. item 11);
(ii) a packaging material (e.g. item 13) folded in half at a midpoint of a long side;
(iii) a pair of metal terminals (e.g. item 14, also “terminal,” “tab,” and “tab lead”) that may be composed of copper or aluminum; and,
(iv) a terminal resin film (e.g. item 16, also “tab sealant”) with electrically insulating properties,
said packaging material fused by heat sealing to said tabs with said terminal resin film therebetween,
wherein said terminal resin film (e.g. item 16) comprises a multilayer structure, which may include an expressly taught three layers, said layers laminated together, to control a tensile storage modulus at 120°C within a range of 10 MPa to 1000 MPa; further, by adjusting a composition of each layer in said multilayer structure, both a high tensile storage modulus at 120°C and high adhesion to metal terminals may be achieved,
said taught three layers of said multilayered structure of said terminal resin film (e.g. item 16) comprising:
(iv.a) a first outermost layer (e.g. item 31) directly contacts an outer circumferential surface of said metal terminal (e.g. item 14) to ensure close contact between said terminal resin film (e.g. item 16) and said metal terminal (e.g. item 14),
said first outermost layer may have a thickness of 10-100 µm, with examples of e.g. 25 and 33 µm;
(iv.b) an intermediate layer (e.g. item 33) directly adjacent to said first outermost layer (e.g. item 31) and on an opposite side of said first outermost layer to that of said terminal (e.g. item 14),
said intermediate layer may have a thickness of e.g. 20-100 µm, with examples of e.g. 30 µm and 50 µm; and,
(iv.c) a second outermost layer (e.g. item 32) directly adjacent to said intermediate layer and on an opposite side to that of said first outermost layer, said second outermost layer is an outside surface of said terminal resin film, and has a function of sealing an inside of said packaging material (e.g. item 13) by being fused to said packaging material,
said second outermost layer may have a thickness of 10-100 µm, with examples of e.g. 25 and 33 µm,
wherein said first outermost layer (e.g. item 31) and said second outermost layer (e.g. item 32) each may be preferably composed of an acid-modified polyolefin resin, so that adhesion with said metal terminal may be further improved,
said acid-modified polyolefin resin may be e.g. polypropylene, polyethylene, and random copolymer of propylene and ethylene,
said acid-modified polyolefin may have a melting point of preferably 120-145°C, with examples of e.g. 140°C and 164°C; a melt mass flow rate (MFR) of 00.1-15 g/10 min, 1 g/10 min, 1.5 g/10 min, and 3 g/10 min; and, a tensile storage modulus of 10-1,000 MPa; and,
wherein said intermediate layer (e.g. item 33) may be composed of a cross-linked resin and may be composed of e.g. block polypropylene and homopolypropylene and may have a melting point of preferably 130-165°C
(e.g. ¶¶ 0001, 04-08, 11-16, 27-30, 42-43, 45-56, 58, 74, 109-126, 139, and 141-142 plus Figures 1-4), an assembly of said metal terminal (e.g. item 14) and said terminal resin film (e.g. item 16) reading on “lead wire for a nonaqueous electrolyte battery,” aid assembly comprising:
(1) said pair of metal terminals (e.g. item 14, also “terminal,” “tab,” and “tab lead”) that may be composed of copper or aluminum (e.g. supra), reading on “a conductor;” and,
(2) said terminal resin film (e.g. item 16, also “tab sealant”) with electrically insulating properties,
wherein said terminal resin film (e.g. item 16) comprises said multilayer structure, which may include said expressly taught three layers, said layers laminated together, to control said tensile storage modulus at 120°C within said range of 10 MPa to 1000 MPa; further, by adjusting said composition of each layer in said multilayer structure, both said high tensile storage modulus at 120°C and high adhesion to metal terminals may be achieved
(e.g. supra), reading on “an insulating film having a plurality of layers and covering at least a part of the outer peripheral surface of the conductor,”
said taught three layers of said multilayered structure of said terminal resin film (e.g. item 16) comprising:
(2a) said first outermost layer (e.g. item 31) directly contacts said outer circumferential surface of said metal terminal (e.g. item 14) to ensure close contact between said terminal resin film (e.g. item 16) and said metal terminal (e.g. item 14),
wherein said first outermost layer (e.g. item 31) may be preferably composed of said acid-modified polyolefin resin, so that adhesion with said metal terminal may be further improved (e.g. supra),
said taught first outermost layer (e.g. item 31) corresponding with the claimed “conductor-covering layer,”
reading on “the insulating film has a conductor-covering layer laminated on a surface of the conductor” and “the conductor-covering layer comprises an acid-modified polyolefin;”
(2b) said intermediate layer (e.g. item 33) directly adjacent to said first outermost layer (e.g. item 31) and on said opposite side of said first outermost layer to that of said terminal (e.g. item 14) (e.g. supra),
said taught intermediate layer (e.g. item 33) corresponding with the claimed “second insulating layer,”
reading on “the insulating film has … a second insulating layer laminated on an inner surface of the first insulating layer;” and,
(2c) said second outermost layer (e.g. item 32) directly adjacent to said intermediate layer and on said opposite side to that of said first outermost layer, said second outermost layer is said outside surface of said terminal resin film, and has said function of sealing said inside of said packaging material (e.g. item 13) by being fused to said packaging material (e.g. supra),
said taught second outermost layer (e.g. item 32) corresponding with the claimed “first insulating layer,”
reading on “the insulating film has … a first insulating layer laminated on an outermost surface of the insulating film.”
Takada teaches said second outermost layer (e.g. item 32) directly adjacent to said intermediate layer and on said opposite side to that of said first outermost layer, said second outermost layer is said outside surface of said terminal resin film, and has said function of sealing said inside of said packaging material (e.g. item 13),
wherein said second outermost layer (e.g. item 32) may be preferably composed of said acid-modified polyolefin resin, so that adhesion with said metal terminal may be further improved,
said acid-modified polyolefin resin may be e.g. polypropylene, polyethylene, and random copolymer of propylene and ethylene,
said acid-modified polyolefin may have said melting point of preferably 120-145°C, with examples of e.g. 140°C and 164°C; said melt mass flow rate (MFR) of 00.1-15 g/10 min, 1 g/10 min, 1.5 g/10 min, and 3 g/10 min,
said second outermost layer may have said thickness of 10-100 µm, with examples of e.g. 25 and 33 µm; and,
wherein said intermediate layer (e.g. item 33) may be composed of said cross-linked resin and may be composed of e.g. block polypropylene and homopolypropylene and may have a melting point of preferably 130-165°C,
said intermediate layer may have said thickness of e.g. 20-100 µm, with examples of e.g. 30 µm and 50 µm (e.g. supra),
said taught second outermost layer (e.g. item 32) corresponding with the claimed “first insulating layer;” and,
said taught intermediate layer (e.g. item 33) corresponding with the claimed “second insulating layer,”
but does not expressly teach the limitations “a ratio (E1/E2) of an elastic modulus E1 of the first insulating layer at any one temperature in the range of 80° C. or more and 100° C. or less to an elastic modulus E2 of the second insulating layer at the same temperature as in the first insulating layer, is 0.19 or more and 0.78 or less” or “a ratio (F1/E1) of an elastic modulus F1 of Admer QE060 at any one temperature in the range of 80° C. or more and 100° C. or less to an elastic modulus E1 of the first insulating layer at the same temperature as in the Admer QE060, is 1.07 or more and 1.76 or less.”
However, Takada teaches a substantially identical second outermost layer (e.g. item 32) to the claimed “first insulating layer” (see e.g. supra, compared with instant specification, at e.g. ¶¶ 0059-68); and, a substantially identical intermediate layer (e.g. item 33) to the claimed “second insulating layer” see e.g. supra, compared with instant specification, at e.g. ¶¶ 0053-58), severably establishing a prima facie case of obviousness of the claimed limitations, see also e.g. MPEP § 2112.01; and/or, Takada teaches a substantially identical second outermost layer (e.g. item 32) and intermediate layer (e.g. item 33) to the claimed “first insulating layer” and “second insulating layer” see e.g. supra, compared with instant specification, at e.g. ¶¶ 0059-68 and 53-58), severably establishing a prima facie case of obviousness of the claimed limitations, see also e.g. MPEP § 2112.01.
Regarding claim 2, Takada teaches the assembly of claim 1, wherein said second outermost layer (e.g. item 32) directly adjacent to said intermediate layer and on said opposite side to that of said first outermost layer, said second outermost layer is said outside surface of said terminal resin film, and has said function of sealing said inside of said packaging material (e.g. item 13),
wherein said second outermost layer (e.g. item 32) may be preferably composed of said acid-modified polyolefin resin, so that adhesion with said metal terminal may be further improved,
said acid-modified polyolefin resin may be e.g. polypropylene, polyethylene, and random copolymer of propylene and ethylene,
said acid-modified polyolefin may have said melting point of preferably 120-145°C, with examples of e.g. 140°C and 164°C; said melt mass flow rate (MFR) of 00.1-15 g/10 min, 1 g/10 min, 1.5 g/10 min, and 3 g/10 min,
said second outermost layer may have said thickness of 10-100 µm, with examples of e.g. 25 and 33 µm; and,
wherein said intermediate layer (e.g. item 33) may be composed of said cross-linked resin and may be composed of e.g. block polypropylene and homopolypropylene and may have a melting point of preferably 130-165°C,
said intermediate layer may have said thickness of e.g. 20-100 µm, with examples of e.g. 30 µm and 50 µm (e.g. supra),
said taught second outermost layer (e.g. item 32) corresponding with the claimed “first insulating layer;” and,
said taught intermediate layer (e.g. item 33) corresponding with the claimed “second insulating layer,”
but does not expressly teach the limitations “the elastic modulus E2 is 180 MPa or more and 750 MPa or less” and “the elastic modulus E1 is 90 MPa or more and 170 MPa or less.”
However, Takada teaches a substantially identical second outermost layer (e.g. item 32) to the claimed “first insulating layer” (see e.g. supra, compared with instant specification, at e.g. ¶¶ 0059-68); and, a substantially identical intermediate layer (e.g. item 33) to the claimed “second insulating layer” see e.g. supra, compared with instant specification, at e.g. ¶¶ 0053-58), severably establishing a prima facie case of obviousness of the claimed limitations, see also e.g. MPEP § 2112.01; and/or, Takada teaches a substantially identical second outermost layer (e.g. item 32) and intermediate layer (e.g. item 33) to the claimed “first insulating layer” and “second insulating layer” see e.g. supra, compared with instant specification, at e.g. ¶¶ 0059-68 and 53-58), severably establishing a prima facie case of obviousness of the claimed limitations, see also e.g. MPEP § 2112.01.
Regarding claim 3, Takada teaches the assembly of claim 1, wherein said intermediate layer may have said thickness of e.g. 20-100 µm, with examples of e.g. 30 µm and 50 µm; and, said first outermost layer may have said thickness of 10-100 µm, with examples of e.g. 25 and 33 µm (e.g. supra), wherein said thickness is understood to be an average thickness; alternatively, it would have been obvious to a person of ordinary skill in the art to form said layers with uniform thicknesses in order to ensure a uniform property of said layers and/or to ease manufacturability,
said taught intermediate layer (e.g. item 33) corresponding with the claimed “second insulating layer;” and,
said taught second outermost layer (e.g. item 32) corresponding with the claimed “first insulating layer,”
severably establishing a prima facie case of obviousness of the claimed ranges, see also e.g. MPEP § 2144.05(I), reading on “an average thickness T2 of the second insulating layer is 20 μm or more; and an average thickness T1 of the first insulating layer is 20 μm or more.”
Regarding independent claim 4, Takada is applied as provided supra, reading on “insulating film, to be used for a lead wire for a nonaqueous electrolyte battery according to claim 1.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOSHITOSHI TAKEUCHI whose telephone number is (571)270-5828. The examiner can normally be reached M-F, 8-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TIFFANY LEGETTE-THOMPSON can be reached at (571)270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YOSHITOSHI TAKEUCHI/Primary Examiner, Art Unit 1723
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