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 .
Applicant’s amendments were received on 6/11/26. Claim 1 has been amended. Claim 6 is cancelled.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office Action.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 9, 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Max et al. (TW202233425).
Regarding claim 1, the Max et al. reference discloses a battery comprising a unit cell with a cathode, an anode, a cathode, and a solid electrolyte layer positioned between the anode and the cathode. A pressurizing pad layer positioned on each side of the unit cell and comprising an upper, lower and porous core layers positioned between the upper and lower layer (Fig 1b). The upper layer and lower layer are non-porous (two to ten thermally insulating multilayer sheets, that is one multilayer sheet and the other multilayer sheet comprises two non-porous component 10) and a material of each of the upper layer (elastic insulating from one multilayer sheet), the lower layer (elastic insulating from another multilayer sheet stacked on the prior) and the core layer (flame retardant or foam layer) comprises one or more of silicone-based material, a rubber-based material or a polymer material.
It is noted that claim limitation all-solid state is “intended use” language and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding claims 2 and 3, the Max et al. reference discloses the claimed invention. The limitation “the unit cell is configured such that a lithium electrodeposition layer is formed on a surface of the anode during discharge,” and “the core layer is configured to be contracted by the lithium electrodeposition layer” appears to be product-by-process claims. “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, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since battery is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
Regarding claim 5, the Max et al. reference discloses the pressurizing pad layer is subject to pressure management of the battery pack which would also press the unit cell.
Regarding claim 9, the Max et al. reference discloses the pressurized pad layer arranged in a horizontal direction above and below the unit cell based on the cross section of the unit cell (Fig. 4) depending on how the battery stack is arranged, the directional arrangement is considered broad.
Regarding claim 11, the Max et al. reference discloses the pressurized pad layer comprises a total thickness is 6mm or less and the nonporous layers 0.25 to 1mm (claims). The claimed invention would require at least two pressured pad layer of Max et al. Hence, it can be calculated that each nonporous layers (claimed upper and lower layer) are within 30% of the thickness of the pressurized pad layer.
Regarding claim 12, the Max et al. reference discloses the pressurized pad layer comprises a total thickness is 6mm or less and the porous layer to be 0.1-2mm and 0.1-5mm or 0.2-7mm which is within 80% of the total thickness of the pressurizing pad layer.
Regarding claim 13, the Max et al. reference discloses a flexible packaging of the battery (Applicant’s claimed support) is stacked on the pressurizing pad layer.
Claim Rejections - 35 USC § 102/103
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 4, 8 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Max et al. (TW202233425).
Regarding claim 4, the Max et al. reference discloses the claimed invention above and is further incorporated herein. The Max et al. reference discloses the porosity of the porous core is greater than 50%. Therefore, at the range of 51-85%, the claims are anticipated. For the range outside of the claimed range, it is the Examiner’s position that the amounts in question are so close that it is a prima facie obvious that one skilled in the art would have expected them to have the same properties Titanium Metals Corp. v. Banner, 227 USPQ 773
Regarding claim 8, the Max et al. reference discloses the claimed invention above and is further incorporated herein. The Max et al. reference discloses the pressurized pad layer comprises a total thickness is 6mm or less. The claimed invention would require at least two pressurized pad layer of Max et al. Therefore, at the range of 5mm or less, the claim limitation is anticipated. For the range outside of the claimed range, it is the Examiner’s position that the amounts in question are so close that it is a prima facie obvious that one skilled in the art would have expected them to have the same properties Titanium Metals Corp. v. Banner, 227 USPQ 773
Claim Rejections - 35 USC § 103
The rejection under 35 U.S.C. 103 as being unpatentable over Park et al. (US Publication 2021/0202981) in view of Sasaki (US Patent 10,727,490), on claims 1, 4-6, 8, 9, 11-13 are withdrawn because the Applicant has amended the claims.
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.
Claim(s) 7 and 10 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Max et al. (TW202233425).
Regarding claim 7, the Max et al. reference discloses the claimed invention above and is further incorporated herein. The Max et al reference discloses the pressured pads can be 6 mm or less and discloses the desired size of the battery cells can vary widely. The Max et a. reference does not specify the thickness of the battery, however, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate a battery with more thickness than the pressurized layer since varying the size of a battery stack for different implementation while maximizing the energy output would require a bigger battery with bigger thickness than other components such as the pressurized pads that do not contribute to direct energy output. Hence, B < A . If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, §103 likely bars its patentability. KSR v. Teleflex
The limitation, “such that a lithium electrodeposition layer is formed on a surface of the anode during discharge” is a product-by-process claim limitation. “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, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since battery unit is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
Regarding claim 10, the Max et al. reference discloses the claimed invention above and further incorporated herein. The Max et al. reference discloses the desired size of the battery cells can vary widely. The Max et a. reference is silent in disclosing the area of the pressurizing pad layer is larger than areas of each of the anode, the cathode and the solid electrolyte layer, however, it would have been obvious matter of design choice to change size, including the area of the battery cells to be less than the area of the pressurizing pad layer, since such a modification would have involved a mere change in the size, shape of a component. A change in size and shape is generally recognized as being within the level of ordinary skill in the art (MPEP 2144.04 (IV))
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5, 7-15 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 HELEN OI CONLEY whose telephone number is (571)272-5162. The examiner can normally be reached 8:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Smith can be reached at 5712728760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752
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