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 .
Election/Restrictions
Applicant’s election without traverse of claims 4-5 in the reply filed on 05/29/2026 is acknowledged.
Claims 1-3 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/29/2026.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters:
"50" and "51" have both been used to designate terminal members (para. [0021], Fig. 1)
“60” and “61” have both been used to designate terminal members (para. [0021], Fig. 1)
“70” and “71” have both been used to designate resin members (para. [0021], Fig. 1)
“80” and “81” have both been used to designate resin members (para. [0021], Fig. 1)
“20,” “120”, and “10” have all been used to designate the case body (para. [0021], Fig. 1, 2, 3A, 3B)
30” and “10” have both been used to designate the lid (para. [0020], Fig. 1, 2, 3A, 3B)
“40,” “41,” “42,” and “43” have all been used to designate the electrode body (para. [0026], Fig. 1, 2, 5, 6)
“40a” and “41r” have both been used to designate the positive electrode tab (para. [0026], Fig. 2, 5, 6)
“40b” and “42r” have both been used to designate the negative electrode tab (para. [0026], Fig. 2, 5, 6)
“21c” and “21” have both been used to designate the short-side opening portion (para. [0023], Fig. 2, 3A, 6)
“31c” and “31” have both been used to designate the short-side peripheral portions (para. [0024], Fig. 2, 6)
“50” and “60” have both been used to designate terminal members (para. [0021], Fig. 3A, 3B, 7A, 9A, 9B)
“70” and “80” have both been used to designate resin members (para. [0021], Fig. 3A, 3B, 7A, 7B, 9A, 9B)
“72” and “82” have both been used to designate insulating portions (para. [0028], Fig. 3A, 3B, 7A, 7B)
“33” and “34” have both been used to designate insertion hole surrounding portions (para. [0027], Fig. 3A, 3B, 7A, 7B, 9A, 9B)
“33f” and “34f” have both been used to designate short-side surrounding portions (para. [0027], Fig. 3A)
“52” and “62” have both been used to designate inner terminal portions (para. [0026], Fig. 3A, 3B, 7A, 7B)
“33h” and “34h” have both been used to designate insertion holes (para. [0026], Fig. 3A, 3B, 7A, 7B, 9A, 9B)
“33e” and “34e” have both been used to designate long-side surrounding portions (para. [0027], Fig. 3B, 7A, 7B, 9A)
“51” and “61” have both been used to designate rectangular plate-shaped outer terminal portions (para. [0026], Fig. 3B)
“71” and “81” have both been used to designate outer insulating portions (para. [0028], Fig. 3B)
“70e” and “80e” have both been used to peripheral proximity portions (para. [0030], Fig. 3B, 7A, 7B, 9A, 9B)
“21be,” “21b,” and “21” have all been used to proximate long-side opening portions (para. [0024], Fig. 3B, 7A, 7B, 9A, 9B)
“31be,” “31b,” and “31” have all been used to designate long-side peripheral portions (para. [0024], Fig. 3B, 7A, 7B, 9A, 9B)
“51” and “61” have both been used to designate rectangular plate-shaped outer terminal portions (para. [0026], Fig. 7A, 7B)
“71” and “81” have both been used to designate rectangular plate-shaped outer insulating portions (para. [0028], Fig. 7A)
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. 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
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 4-5 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 4, Applicant claims “[…] an opening portion having a rectangular ring shape […]” between lines 10-11 (pg. 3), however this limitation appears contradictory given that a ring is a circular shape and a rectangle has straight edges. Applicant appears to be referring to a continuous structure containing a pair of parallel sides, one pair exceeding the length of the other. It is still not clear if the limitation “ring shape” can be interpreted to mean, for instance, that the rectangular structure is continuous or may be interpreted as having rounded edges.
Applicant recites “[…] over an entire circumference […]” between lines 13-14 (pg. 3), however it is unclear to which structure’s circumference this limitation is directed to (e.g. the case body vs. the lid or the opening portion).
Applicant claims “[…] a resin member joined to the terminal member and joined to an insertion hole […] which surrounds the insertion hole […]” between lines 19-20 (pg. 3). It appears Applicant is referring to a resin member which occupies the space between a terminal member and lid, constituting the insulating hole surrounding portion. However, it is not clear how the resin member may be physically joined to an empty space rendering the scope of how close the resin member is to the insulating hole surrounding portion indefinite. To address a separate issue, it appears Applicant claims the resin member to be surrounding the insertion hole; however, it is not clear whether Applicant claims the resin member terminal member, or the insertion hole surrounding portion of the lid to be surrounding the insertion hole.
In line 25 (pg. 3), Applicant claims “[…] for at least proximate […]” however, it is unclear how to interpret the limitation “proximate” without a reference point suggesting relative distance or proximity. It appears Applicant is referring to the long-side opening portions contacting the long-side peripheral portions; however, it is unclear it the limitation “proximate” allows for a space or structural element between the long-side opening and long-side peripheral portions.
Applicant recites “[…] close to the resin member […]” between lines 25-26 (pg. 3). 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.
In lines 3-4 (pg. 4), Applicant claims “[…] after the opening portion and the peripheral portion are melted and mixed […]” Because no process involving melting and mixing is previously recited in claim 4, it is not clear if this is an optional intended use/further processing limitation or if the melted and mixed portions are being actively claimed.
In lines 1-2 (pg. 4), Applicant recites “[…] facing an outer side in the lid thickness direction […]” however, the limitation “outer side” is not given a reference point (i.e. relative to which side of the lid). It appears the applicant is referring to the side opposite the side of the lid facing the interior of the battery case as the outer side; however, it is not clear if outer side could also refer to the side of the lid facing the exterior of the battery on the bottom leaving the scope of the claim indefinite.
In line 4 (pg. 4), Applicant recites “[…] the peripheral portion […]” however, the antecedent basis for this limitation is unclear (i.e. it is not clear whether this limitation is directed to one of the pair of long-side peripheral portions discussed in the previous clause or the entire peripheral portion of the lid).
Claim 5, which depends on claim 4, is similarly rejected.
Regarding claim 5, Applicant recites “[…] the peripheral outer surface […] is located on the outer side relative to the melt-solidified portion […]” in lines 6-7 (pg. 4). However, as discussed for claim 4, the limitation “outer side” is not given a reference point (i.e. relative to which side of the lid) and it is unclear if the outer side could also refer to the side of the lid facing the exterior of the battery on the bottom.
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.
8. 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 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Byun (US Patent US 8512895 B2) in view of Suzuki (US Patent US 8551649 B2).
Regarding claim 4, Byun discloses a secondary battery (title) comprising a case having a bottomed tube-shape (Col. 4 Ln. 12-28, ref. 40, Fig. 1, 3A) and an opening portion covered by a cap plate (Col. 5 Ln. 43-52, ref. 30, Fig. 3A). The opening portion has a rectangular ring shape and includes a pair of long-side and short-side opening portions (see images of Fig. 1 below).
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Byun further discloses that the cap plate may be laser-welded to the case body along an interface encompassing the entire circumference of the case body opening (Col. 5 Ln. 43-52, Fig. 1) and includes a peripheral portion (see image of Fig. 3A below, depicting cross-sectional view of short-side peripheral portions) having a rectangular ring shape and including a pair of long-side peripheral portions and short side peripheral portions corresponding to the long-side and short-side opening portions depicted above.
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Byun further discloses terminal members (Col. 5 Ln. 61-67, ref. 21 and 22, Fig. 3A) inserted into insertion holes (Col. 6 Ln. 1-18, ref. 21a and 22a, Fig. 3A) which penetrate the cap plate (ref. 30, Fig. 3A) in the lid thickness direction (i.e. z-direction in Fig. 3A). Byun also discloses an upper gasket (Col. 6 Ln. 1-18, ref. 25, Fig. 3A) and a seal gasket (ref. 27, Fig. 3A) interposed between the terminal members and cap plate within the space surrounding the insertion hole of the cap plate, constituting an insertion hole for the terminal members. Furthermore, the upper gasket and terminal hole insertion unit (Col. 9 Ln. 4-27, ref. 27a, Fig. 3B), which is a part of the seal gasket, insulate the insertion hole of the cap plate and are joined to both the terminal and insertion hole. Byun also discloses a peripheral outer surface of the peripheral portion (see image of Fig. 3B below) which faces an outer side in the lid thickness direction (i.e. an outer surface in the z-direction). For proximate long-side opening portions and proximate long-side peripheral portions as well as proximate short-side opening portions and proximate short-side peripheral portions, the peripheral outer surface of the peripheral portion is located on the outer side relative to the interface between the cap plate (ref. 30, Fig. 3B) and the case body (ref. 40, Fig. 3B).
However, Byun fails to explicitly disclose the melted zone along this interface being below the peripheral outer surface in the thickness direction.
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Suzuki also teaches a battery having a case (abstract, ref. 10, Fig. 1) with a peripheral wall portion (ref. 14, Fig. 4) and a lid (ref. 60, Fig. 4) covering the case opening portion, with a peripheral outer surface (see image of Fig. 4 below) facing an outer surface in the lid thickness direction. Suzuki further teaches a barrier layer (ref. 70, Fig. 4) in the interface between the case peripheral wall portion and the lid, as well as a laser-welding region where the peripheral outer surface is located on an outer side relative to the melt-solidified region formed after a portion of the peripheral wall portion and lid are melted and mixed (Col. 8 Ln. 41-64, ref. 80, Fig. 4).
Suzuki teaches that the presence of a barrier layer impeding direct contact between the case wall portion and the lid can suppress shaving of metal particles off from the case or lid into the case interior during lid installation as well as sputtering of material into gaps within the case during laser welding the lid / case body interface (Col. 1 Ln. 17 – Col. 2 Ln. 17).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to use the barrier layer and welding method as taught by Suzuki to join the cap plate and case body of Byun to attain the predictable result of suppressing shavings and sputtered material from entering the case body interior to arrive at the claimed invention (i.e. where the peripheral outer surface is located on an outer side relative to the melt-solidified portion).
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Regarding claim 5, Byun fails to explicitly disclose the melt-solidified portion along the interface between the cap plate (ref. 30, Fig. 3B) and the case body (ref. 40, Fig. 3B).
Suzuki teaches a laser-welding region where the peripheral outer surface is located on an outer side relative to the melt-solidified region formed after a portion of the peripheral wall portion and lid are melted and mixed (Col. 8 Ln. 41-64, ref. 80, Fig. 4). Furthermore, Suzuki teaches a peripheral outer surface on the outer surface of the peripheral portion in the lid thickness direction (see image of Fig. 4 above) which is present over the entire circumference of the opening portion of the case body and peripheral portion of the lid (see Fig. 1) and that a barrier layer (abstract, ref. 70, Fig. 4) in the interface between the case peripheral wall portion and the lid suppresses shaving of metal particles off from the case or lid into the case interior during lid installation as well as sputtering of material into gaps within the case during laser welding the lid / case body interface (Col. 1 Ln. 17 – Col. 2 Ln. 17).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to use the method as taught by Suzuki to join the cap plate and case body of Byun along the entire circumference of the case body to attain the predictable result of suppressing shavings and sputtered material from entering the case body interior to arrive at the claimed invention.
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 4-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 18/462,408 (reference application), herein referred to as the ‘408 application, in view of Suzuki (US Patent US 8551649 B2).
Regarding claim 4 of the instant application, claim 3 of ‘408 claims a power storage device comprising a case body with a bottomed tube-shape having an opening portion which, according to claim 4 of ‘408, has a rectangular ring shape and a pair of long-side and short-side opening portions. Claim 3 of ‘408 further claims a lid that is laser-welded to the case body over an entire circumference, closing the opening portion and, according to claim 4 of ‘408, has a peripheral portion including a pair of long-side and short-side peripheral portions. Furthermore, claim 3 of ‘408 claims a terminal member inserted into an insertion hole that penetrates through the lid in a thickness direction and a resin member joined to the terminal member and joined to the insertion-hole surrounding portion of the lid. Claim 3 of ‘408 also claims a protruding portion between the peripheral portion and insertion-hole surrounding portion of the lid, which protrudes toward an outer side in the thickness direction. ‘408 does not, however, claim a portion solidified after the opening portion and peripheral portion are melted and mixed.
Suzuki discloses a battery having a case (abstract, ref. 10, Fig. 1) with a peripheral wall portion (ref. 14, Fig. 4) and a lid (ref. 60, Fig. 4) covering the case opening portion with a peripheral outer surface (see image of Fig. 4 above) facing an outer surface in the lid thickness direction. For proximate long-side opening portions opposed to proximate long-side peripheral portions as well as proximate short-side opening portions opposed to proximate short-side peripheral portions (see image of Fig. 1 below), the peripheral outer surface of the peripheral portion is located on the outer side in the lid thickness direction relative to the melt-solidified portion formed after a portion of the peripheral wall portion and lid are melted and mixed (Col. 8 Ln. 41-64, ref. 80, Fig. 4).
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Regarding claim 5 of the instant application, ‘408 does not claim a portion solidified after the opening portion and peripheral portion are melted and mixed.
Suzuki discloses a melt-solidified portion formed after a portion of the peripheral wall portion and lid are melted and mixed (Col. 8 Ln. 41-64, ref. 80, Fig. 4) and a peripheral outer surface (see image of Fig. 4 above) which is located on the outer side in the lid thickness direction relative to the melt-solidified portion (ref. 80, Fig. 4) along the entire circumference of the case body opening portion (see Fig. 1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Harayama (US Patent 9508963 B2) discloses a method of joining a battery lid member (Col. 10 Ln. 16-54, ref. 4, Fig. 6) and case body (Col. 10 Ln. 16-54, ref. 4, Fig. 6) having a peripheral outer surface (see image of Fig. 6 below) on the outer surface of the melt-solidified portion along the entire circumference of the case body opening.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN ANDREW JON MCMULLEN whose telephone number is (571)270-0127. The examiner can normally be reached 7:30 am - 5:00 pm.
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, Alicia Chevalier can be reached at (571) 272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/N.A.M./
Nathan A McMullen
Examiner, Art Unit 1788
6/24/2026
/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788
Prosecution Insights