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 elected Group I, sub-species a1 for Species A, sub-species b1 for Species B, and sub-species c1 for Species C, where claims 1-9, and 18 encompass the elected invention.
Claims 10-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01 June 2026.
Applicant's election with traverse in the reply filed on 01 June 2026 is acknowledged. The traversal is on the ground(s) that the search and examination of the entire application can be made without serious burden because the subject matter of all the claims and species are sufficiently related; this argument is not found persuasive.
As stated in the restriction, there is serious search and/or examination burden because the inventions have acquired a separate status in the art in view of their different classification, the inventions have acquired a separate status in the art due to their recognized divergent subject matter (as evidence by the different classifications), and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). Similarly, there is a serious search and/or examination burden for the patentably distinct species because the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). The requirement is still deemed proper and is therefore made FINAL.
Claims 1-18 are pending, with claims 1-9 and 18 being considered in the present Office action.
Claim Objections
Claims 3 and 18 are objected to because of the following informalities: Both the first terminal and the second terminal are limited to transmitting a signal to and from “the electric device”; however, it is apparent from the disclosure the electric devices are NOT the same. That is, the first terminal transmits signals to a power tool, while the second terminal transmits signals to a charger, see e.g., instant claim 4. Thus, the examiner interprets the claims such that the first terminal is a terminal for transmitting a signal to and from the electric device, while the second terminal is a terminal for transmitting a signal to and from another electric device. Appropriate correction 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.
Claim(s) 1-2, and 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagahama (US 2021/0098757) in view of Ota (US 2003/0194893), and Van Tiburg (EP 0144128), hereinafter Nagahama, Ota, and Van Tiburg.
Regarding Claims 1, 2 and 6-7, Nagahama suggests a battery pack (2) configured to be attached to and detached from ([0055]) an electric device (200, 300) including a plurality of device-side terminals (208a, 208b, 210a, 210c, [0060]) having a planar shape (see Figs. 24A-24B), the battery pack (2) comprising: an outer case (12, Fig. 3); a battery cell (10) housed within the outer case ([0056]); a circuit board (82) housed within the outer case (see e.g., Figs); and a plurality of battery-side terminals (106a, 106b, 106c, 106d), wherein the plurality of battery-side terminals incudes a first terminal (e.g., 106c) used to transmit a signal to and from the electric device ([0081]), the first terminal includes a clamp portion and a non-clamp portion, the clamp portion being configured to receive a device-side terminal (e.g., 210c) of the plurality of device-side terminals and clamp the device-side terminal from both sides, and the non-clamp portion (part of 106c that does not contact 210c) being disposed at a position different from the clamp portion (see e.g., Fig. 24).
Nagahama does not suggest an inner surface of the clamp portion is plated with a first metal, an outer surface of the clamp portion is not plated with the first metal, and a part of a surface of the non-clamp portion is not plated with the first metal, wherein the first metal is a pure metal that is a noble metal, or a noble metal alloy, and the first metal is Ag. However, Ota suggests a surface of the base material of the electrical contact portion of the terminal (10, 20) is plated with Sn, Ni, Au, or Ag because corrosion resistance is enhanced and conductive contact characteristics can be enhanced, [0081]. Further, Van Tiburg notes that the plating process adds additional cost to the terminal; hence, plating is only provided in the inner surface of the clamp portion (i.e., contact zone 51) of the terminal (18) which contacts the pin, see e.g., pages 6-7 and Figs. 1-2. It would be obvious to one having ordinary skill in the art an inner surface of the clamp portion (which is the electrical contact portion of the terminal which mates with the terminal of the electric device) is plated with a first metal, wherein the first metal is a pure metal that is a noble metal or a noble metal alloy comprising Ag, with the expectation of enhancing corrosion resistance and conductive contact characteristics of the terminals, as suggested by Ota. Since an outer surface of the clamp portion and a part of a surface of the non-clamp portion do not provide an electrical contact surface to the terminal of the electric device, it would be obvious to one having ordinary skill in the art an outer surface of the clamp portion and a part of a surface of the non-clamp portion are not plated with the first metal, thereby allowing terminal plating costs to be reduced, as suggested by Van Tiburg.
Regarding Claim 8, Nagahama suggests the battery pack is configured to be attached to and detached from the electric device by sliding the battery pack with respect to the electric device in a sliding direction along the device-side terminals, each of the battery-side terminals includes: a base portion; and a pair of elastic clamping pieces extending from the base portion upward which is orthogonal to the sliding direction, wherein the base portion includes a bottom plate portion extending along the sliding direction, each of the elastic clamping pieces in the pair includes an inclined portion and the clamp portion disposed above the inclined portion, and the inclined portion is inclined with respect to the base portion such that an angle formed by the inclined portion and the bottom plate portion is an acute angle, wherein the base portion and the inclined portion are a part of the non-clamp portion, see figures.
Regarding Claim 9, Nagahama suggests the battery pack is configured to be attached to and detached from the electric device by sliding the battery pack with respect to the electric device in a sliding direction along the device-side terminals, and each of the battery-side terminals includes: a pair of planar portions connected to the circuit board; and a pair of elastic clamping pieces integrated with the pair of planar portions, disposed above the circuit board, and extending in the sliding direction, and each of the elastic clamping pieces in the pair includes the clamp portion, wherein a part of the pair of planar portions which is closer to the circuit board is a part of the non-clamp portion, see figures.
Claim(s) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagahama, Ota, and Van Tiburg further in view of Drew (US 20160344127), hereinafter Drew.
Regarding Claim 3, Nagahama suggests the plurality of battery-side terminals further incudes a second terminal (e.g., 106a-106d, if 106c is the first terminal,106a, 106b or 106d may serve as a second terminal since each is used to communicated with an electric device, [0081, 0097]; based on the objection to claim 3, 106d serves as a second terminal for another electric device) for transmitting a signal to and from the (another) electric device. Nagahama does not suggest the second terminal is not plated with the first metal. However, Drew (US 20160344127) suggests gold and silver plating materials increase plating costs and a tin based plating material can be used to enhance fretting corrosion, [0042]. It would be obvious to one having ordinary skill in the art the second terminal is not plated with the first metal (or is plated with a different metal from the first metal) to reduce costs of the terminal, while still enabling advantages like enhancing fretting corrosion resistance, as suggested by Drew.
Regarding Claim 4, the court has held that patentability of the claims cannot be based "upon a certain procedure for curling hair using th[e] device and involving a number of steps in the process." The court noted that "the process is irrelevant as is the recitation involving the hair being wound around the core" in terms of determining patentability of the particular device. Id. Therefore, the inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims. Further, In In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), an apparatus claim recited "[a] taping machine comprising a supporting structure, a brush attached to said supporting structure, said brush being formed with projecting bristles which terminate in free ends to collectively define a surface to which adhesive tape will detachably adhere, and means for providing relative motion between said brush and said supporting structure while said adhesive tape is adhered to said surface." An obviousness rejection was made over a reference to Kienzle which taught a machine for perforating sheets. The court upheld the rejection stating that "the references in claim 1 to adhesive tape handling do not expressly or impliedly require any particular structure in addition to that of Kienzle." Id. at 580-81. The perforating device had the structure of the taping device as claimed, the difference was in the use of the device, and "the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself." Id. at 580. See MPEP 2115. With respect to the features of claim 4, applicant recites limitations related to the intended use of the battery with an electric device (power tool, charger), such that the electric device appears to be a material or article worked upon by the battery; the manner in which the battery is used is not germane to the issue of patentabliilty of the battery itself, and the inclusion of the electric device worked upon by the claimed battery does not impart patentability to the claims.
Regarding Claim 5, the limitations of this claim are related to intended use (i.e., the use of the terminal for a particular application). Provided the first terminal is connected to the electric device and used to transmits signals to and from the electric device ([0081, 0097]), the first terminal is capable of the claimed intended use, i.e., transmitting a discharge enable/disable signal to and from the electric device.
Regarding Claim 18, the positively recited structural features of claim 18 have been address in the rejection of claims 1-3 and 8-9; hence, for brevity, they are not repeated here. Claim 18, like claim 4 (detailed above), further includes intended use recitation of the battery with an electric device (power tool, charger), i.e., “wherein in a case where the electric device is a power tool… under a state where the battery pack is attached to the power tool…” and “in a case where the electric device is a charger … under a state where the battery pack is attached to the charger…”, such that the electric device appears to be a material or article worked upon by the battery; the manner in which the battery is used is not germane to the issue of patentabliilty of the battery itself, and the inclusion of the electric device worked upon by the claimed battery does not impart patentability to the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Naito (US 20170012272) shape of the terminals (20) on the battery appears structurally identical to that of the instant disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA KOROVINA whose telephone number is (571)272-9835. The examiner can normally be reached M-Th 7am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at 5712721481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA KOROVINA/Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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