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 .
Election/Restrictions
Applicant’s election of Group II, claims 3 and 4 in the reply filed on 15 June 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07 September 2023 have been considered by the examiner.
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, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (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 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/462,411 (reference application), herein referred to as the ‘411 application, in view of Tsutsumi (WO 2012043578 A1, “Tsutsumi ”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 3, the 411’ application does not claim the lid comprising a protruding portion located between a peripheral portion and the insertion-hole surrounding portion of the lid, which protrudes toward an outer side in the lid thickness direction, which blocks scattered light of a laser beam irradiated to the opening portion and the peripheral portion from being irradiated to the resin member, and which is formed by forging such that a distance D of the protruding portion from an end surface of the peripheral portion to a side surface of a proximal portion of the protruding portion on the peripheral portion side is within 0.5t (D ≤ 0.5t) with respect to a thickness t of the lid.
However, Tsutsumi teaches a battery case (case, ref. 10, pg. 5, ln. 245) and a cover plate (lid, ref. 10b, pg. 5, ln. 245-246) that is fitted into the opening of the battery case. The cover plate and a peripheral edge portion (peripheral portion, pg. 5, ln 246) are laser-welded to form a box-like shape (pg. 5, ln. 245-246). Disposed on the outer surface of the cover plate is an upper insulating gasket that is molded from a resin (resin member, ref. 20, pg. 5, ln. 268]) and that has electrical insulating properties. The upper insulating gasket comprises an upper installation portion and a flange portion connected to the upper end of the upper installation portion (lid, ref. 10, pg. 5, ln. 268-270), wherein the flange portion protrudes outward from the outer peripheral surface of the upper installation portion (pg. 5, ln. 270-273). A shielding member (protruding portion, ref. 4, pg. 5, ln. 279) surrounds the entire circumference of the upper insulating gasket (pg. 5, ln. 292).The shielding portion can shield the spatter scattering toward the upper installation portion so the upper installation portion of the upper insulation gasket is not damaged (pg. 7, ln, 394-396). The shield member may also be formed integrally with the cover plate (pg. 7, ln. 405-406).
Tsutsumi further teaches the height (thickness of the lid, ref. H, pg. 5, ln 298, shown below in FIG. 2) from the base end to the tip of the shielding member being at least 3mm (pg. 5-6, ln. 298-299). The distance (ref. D, pg. 6, ln. 300) between the outer peripheral surface of the shielding member and the peripheral portion of the outer surface of the cover plate is 1mm or less (pg. 6, ln, 300-302, shown below in FIG. 2).
It also would have been obvious to one having ordinary skill in the art at the time the invention was made to include a shielding member to the lid of the 411’ application and for the shielding member to have the distance between the outer peripheral surface of the shielding member and the peripheral portion of the outer surface of the lid to be less than 0.5 of the height of the shielding member in order to reduce the probability that the sputter will contact the upper insulating gasket (Tsutsumi, pg. 8, ln 422-423).
In addition and/or in the alternative, 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”). In this case, Tsutsumi does not specify the workable ranges for the height from the top of the shielding member to the bottom of the cover plate, but they do describe the general conditions of the claim, namely that the height of shielding member from the base end to the tip of the shielding member is at least 3mm wherein the distance is already less than half of the height (D = 1mm or less). It would not be inventive to discover the workable ranges by routine experimentation of the invention taught by Tsutsumi. The 411’ application and Tsutsumi each constitute prior art which is analogous to the claimed invention – a battery. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. In re Aller, USPQ 233 (CCPA 1955).
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-5 of copending Application No. 18/462,411 (reference application), herein referred to as the ‘411 application, in view of Tsutsumi (WO 2012043578 A1, “Tsutsumi ”), and further in view of Li et al. (US 11757123 B2, “Li”).
Regarding claim 4, the 411’ application in view of Tsutsumi teaches the power storage device according to claim 3.
The 411’ application does not claim the protruding portion includes a pair of protruding strip portions located one by one between the pair of long-side peripheral portions and the insertion-hole surrounding portion of the lid.
However, Li teaches a cap plate assembly for a secondary battery comprising a cap plate (lid, ref. 10, col. 6, ln 21), an electrode terminal (terminal member, col. 6, ln. 21), and a lower insulator that is attached to a surface of the cap plate (col. 11, ln. 36-38). The lower insulator includes two through holes and first insulators (protruding portion, ref. 41, col. 11, ln. 40-41)wherein the first insulators are inserted into electrode lead-out holes (insertion hole, col. 11, ln. 53-54). The first insulator includes an engaging portion connected to the body portion of a battery (col. 14, ln. 38-40). The first insulators are divided into a plurality of sheet structures on the basis of the cap assembly(col. 14, ln. 41-44).
The 411’ application, Tsutsumi and Li each constitute prior art which is analogous to the claimed invention – a battery and a cap assembly for a battery. It would have been obvious to one having ordinary skill in the art at the time the invention was made to include a first insulator divided into a plurality of sheet structures to the lid in the 411’ application in order to facilitate the fitting between the engaging portion and the cap plate (Li, col, 14, ln. 41-42) and to prevent the failure of insulation between the cap plate the electrode assembly (Li, col. 15, ln. 7-10).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 3-4 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 claim 3, lines 3-4 recite “[…] over an entire circumference […]” . It is unclear to which structure’s circumference this limitation is directed to (e.g. the case body vs. the lid) thereby rendering the claim indefinite.
For examination on the merits, claim 3 is interpreted wherein the the circumference is either the case body or the lid.
Claim 4, is indefinite and rejected under 112(b) as it is directly dependent upon claim 3 and therefore includes, and does not remedy the indefiniteness issue identified above.
Regarding claim 4, line 2 recites “[…] the opening portion of the case body has a rectangular ring shape […]”. It is unclear whether the opening portions is supposed to have a rectangular shape or has rounded edges; the metes and bounds of patent protection sought are not clearly set forth and cannot be readily determined by one of ordinary skill in the art or the public.
For examination on the merits, this limitation is interpreted wherein the opening portion has rounded edges (shown below in FIG. 1).
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In line 32 (pg. 4), Applicant recites “[…] close to the long-side peripheral portions” in. This limitation lacks definite scope, as the word “close: fails to further define the metes and bounds of the claimed invention. It is not possible to evaluate the meaning of this limitation without a comparison (e.g. “close” relative to another structural feature.) Therefore, within the broadest reasonable interpretation (BRI) of the claim, this limitation has not been given patentable weight.
Appropriate action is required.
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byun et al. (US 8512895 B2, "Byun") in view of Tsutsumi (WO 2012043578 A1, “Tsutsumi ”).
Regarding claim 3, Byun teaches a case including a bottomed tube-shaped case body having an opening portion (Col. 4, Ln. 12-28, ref. 40, [FIG. 1])) and a lid that is laser-welded to the case body over an entire circumference and closes the opening portion (e.g. cap plate, Col. 5, Ln 45-52, ref. 30, [FIG. 1]); a terminal member inserted into an insertion hole that penetrates through the lid in a lid thickness direction (e.g. positive and negative electrode terminal, Col. 5, Ln 5-32, ref. 21 and 22, [FIGS. 1 and 3A]); wherein the lid includes a protruding portion which is located between a peripheral portion and the insertion-hole surrounding portion of the lid, which protrudes toward an outer side in the lid thickness direction (e.g. protrusion unit, Col. 8, Ln 52-67, ref. 25a, [FIG. 4]).
Byun fails to teach a resin member joined to the terminal member and joined to an insertion-hole surrounding portion of the lid, which surrounds the insertion hole, while insulating between the insertion-hole surrounding portion of the lid and the terminal member, wherein the lid includes a protruding portion which is located between a peripheral portion and the insertion-hole surrounding portion of the lid, which protrudes toward an outer side in the lid thickness direction which is formed by forging such that a distance D of the protruding portion from an end surface of the peripheral portion to a side surface of a proximal portion of the protruding portion on the peripheral portion side is within 0.5t (D ≤ 0.5t) with respect to a thickness t of the lid, and the resin member has been prevented by the protruding portion of the lid from formation of a scorched portion.
Tsutsumi I teaches a battery case (case, ref. 10, pg. 5, ln. 245) and a cover plate (lid, ref. 10b, pg. 5, ln. 245-246) that is fitted into the opening of the battery case. The cover plate and a peripheral edge portion (peripheral portion, pg. 5, ln 246) are laser-welded to form a box-like shape (pg. 5, ln. 245-246). Disposed on the outer surface of the cover plate is an upper insulating gasket that is molded from a resin (resin member, ref. 20, pg. 5, ln. 268]) and that has electrical insulating properties. The upper insulating gasket comprises an upper installation portion and a flange portion connected to the upper end of the upper installation portion (lid, ref. 10, pg. 5, ln. 268-270), wherein the flange portion protrudes outward from the outer peripheral surface of the upper installation portion (pg. 5, ln. 270-273). A shielding member (protruding portion, ref. 4, pg. 5, ln. 279) surrounds the entire circumference of the upper insulating gasket (pg. 5, ln. 292).The shielding portion can shield the spatter scattering toward the upper installation portion so the upper installation portion of the upper insulation gasket is not damaged (pg. 7, ln, 394-396). The shield member may also be formed integrally with the cover plate (pg. 7, ln. 405-406).
Tsutsumi further teaches the height (thickness of the lid, ref. H, pg. 5, ln 298, shown below in FIG. 2) from the base end to the tip of the shielding member being at least 3mm (pg. 5-6, ln. 298-299). The distance (ref. D, pg. 6, ln. 300) between the outer peripheral surface of the shielding member and the peripheral portion of the outer surface of the cover plate is 1mm or less (pg. 6, ln, 300-302, shown below in FIG. 2).
Byun and Tsutsumi each constitute prior art which is analogous to the claimed invention – a battery. It would have been obvious to one having ordinary skill in the art at the time the invention was made for the lid of Byun to have a shielding member to have the distance between the outer peripheral surface of the shielding member and the peripheral portion of the outer surface of the lid to be less than 0.5 of the height of the shielding member in order to reduce the probability that the sputter will contact the upper insulating gasket (Tsutsumi, pg. 8, ln 422-423).
In addition and/or in the alternative, ”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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”). In this case, Tsutsumi does not specify the workable ranges for the height from the top of the shielding member to the bottom of the cover plate, but they do describe the general conditions of the claim, namely that the height of shielding member from the base end to the tip of the shielding member is at least 3mm wherein the distance is already less than half of the height (D = 1mm or less). It would not be inventive to discover the workable ranges by routine experimentation of the invention taught by Tsutsumi. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. In re Aller, USPQ 233 (CCPA 1955).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byun et al. (US 8512895 B2, "Byun") in view of Tsutsumi (WO 2012043578 A1, “Tsutsumi ”), and further in view of Li et al. (US 11757123 B2, “Li”).
Regarding claim 4, Byun in view of Tsutsumi teaches the power storage device of claim 3.
Byun further teaches the opening portion of the case body has a rectangular ring shape including a pair of long-side opening portions and a pair of short-side opening portions (Col. 5, Ln. 42-52, [FIG. 3A)], the peripheral portion of the lid has a rectangular ring shape including a pair of long-side peripheral portions and a pair of short-side peripheral portions (shown below in FIG. 1 and 3A).
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Byun fails to teach the protruding portion including a pair of protruding strip portions located one by one between the pair of long-side peripheral portions and the insertion-hole surrounding portion of the lid, the protruding strip portions extending along the long-side peripheral portions.
Li teaches a cap plate assembly for a secondary battery comprising a cap plate (lid, ref. 10, col. 6, ln 21), an electrode terminal (terminal member, col. 6, ln. 21), and a lower insulator that is attached to a surface of the cap plate (col. 11, ln. 36-38). The lower insulator includes two through holes and first insulators (protruding portion, ref. 41, col. 11, ln. 40-41) wherein the first insulators are inserted into electrode lead-out holes (insertion hole, col. 11, ln. 53-54). The first insulator includes an engaging portion connected to the body portion of a battery (col. 14, ln. 38-40). The first insulators are divided into a plurality of sheet structures on the basis of the cap assembly(col. 14, ln. 41-44).
Byun, Tsutsumi and Li each constitute prior art which is analogous to the claimed invention – a battery and a cap assembly for a battery. It would have been obvious to one having ordinary skill in the art at the time the invention was made for the lid of Byun in view of Tsutsumi to include a first insulator divided into a plurality of sheet structures in order to facilitate the fitting between the engaging portion and the cap plate (Li, col, 14, ln. 41-42) and to prevent the failure of insulation between the cap plate the electrode assembly (Li, col. 15, ln. 7-10).
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Suzuki (US 8551649 B2) teaches a battery comprising a case (ref. 10, col. 7, ln. 1) and a lid (ref. 60, col. 7, ln.1) which closes the opening portion of the case. The case comprises a peripheral wall portion (peripheral portion, ref. 14, col. 7, ln. 2-3). A barrier layer is formed at a position which impeded direct contact between the peripheral wall portion and the lid (col, ln. 24-26). Although the barrier layer does not protrude, it’s presence can suppress sputtered material in the case (col. 8, ln. 26-31).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANDRA BROWN whose telephone number is (571)270-0345. The examiner can normally be reached Monday thru Thursday 6:15 am - 4:45 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANDRA BROWN/Examiner, Art Unit 1782
/AARON AUSTIN/Supervisory Patent Examiner, Art Unit 1782
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