DETAILED ACTION
This Office Action is responsive to the August 6th, 2026 arguments and remarks (“Remarks”). The
text of those sections of Title 35, U.S. Code not included in this action can be found in a prior
Office 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 .
Response to Amendment
In response to the amendments received on August 6th, 2026:
Claims 1-8 and 10-11 are pending in the present application. Claim 1 is amended. Claim 9 is cancelled. Claim 11 is newly added.
Response to Arguments
Applicant’s arguments filed August 6th, 2026 have been fully considered as further described below:
Applicant argues that Yamasaki in view of Mizusawa does not teach the deactivation processing step as recited in Claim 1 as amended; and the proposed combination lack motivation and teach away from the claimed method (see pgs. 6-7 of the Remarks). Applicant’s arguments with respect to Claim 1 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.
Regarding Claims 5-8, applicant argues that the inversion posture and fallen posture do not constitute mere rearrangement of parts and helps to efficiently and rapidly drain the deactivation process liquid from the battery case (see pgs. 7-8 of the Remarks). Rotating a battery requires merely rearranging the battery’s orientation in which is within the capabilities of a skilled artisan. The advantage of turning a battery upside down or on its side to allow drainage is highly expected and obvious due to the law of gravity (see Martin et al. (US Pat. No. 6686086 B1) that teaches placing cells upside down for draining during a processing method, para. 19 of the description).
Further, as described in the rejection, it is within the capabilities of a PHOSITA to arrange the battery in any suitable position to effectively perform the cutting step; the positional arrangement of the battery depends on many factors including the orientation of the cutting machine and parts therefore, the size of the battery, and the external environment such as the spacing available to perform said cutting process. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rearrange the battery to be positioned where the lid of the exterior body faces a horizontal direction, a downward inclined direction, or a downward vertical direction, as doing so involves merely rearranging the battery with respect to the cutting device. One of ordinary skill in the art would have been motivated to rearrange the battery exterior body in consideration of the factors described above to improve stability, accuracy, and consistency of the cutting step. The orientation of the battery is deemed obvious, absent evidence of new and unexpected results.
Therefore, applicant’s arguments are deemed unpersuasive.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 and 10-11 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without the voltage checking step (S1) and/or subsequent discharging processing step (S2) ([0036]-[0038]) which are critical or essential to the practice of the invention but not included in the claims. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). Claim 1 recites “the deactivation processing step is a process in which the battery is completely discharged after feeding the conductive liquid into the exterior body.” The claim language suggests that complete discharge is achieved as a result of the deactivation processing step. However, this is unsupported by the specification. The specification rather specifies essential and necessary steps in obtaining a completely discharged battery which includes a voltage checking step (S1) and a subsequent discharging processing step (S2) if a voltage is detected; said steps are performed prior to the deactivation step to obtain the completely discharged battery. Therefore, essential subject matter and process steps in obtaining a completely discharged battery are not present in the claims. Appropriate correction is required.
Claims 2-8 and 10-11 are rejected as being dependent upon a rejected base claim.
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 1-8 and 10-11 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.
"A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970)" (see MPEP 2173.03)
Claim 1 recites “the deactivation processing step is a process in which the battery is completely discharged after feeding the conductive liquid into the exterior body.” Support for said limitation is not found in the specification. A skilled artisan understands discharging and deactivation to be separate and distinct processes. The present disclosure specifies a voltage checking step (S1) and a discharge process (S2) if a voltage is detected ([0036]-[0038] of the spec.); the hole working step (S3) ([0040]) and deactivation processing step (S4) ([0044]) are performed after the discharging step according to applicant’s disclosure. Thus, the battery is completely discharged before the deactivation step, while complete deactivation is achieved after the deactivation processing step. It is only apparent that the deactivation step is used for complete deactivation rather than complete discharge. However, the recited claimed language suggests that complete discharge is a result of the deactivation processing step in which is unsupported by the specification; it appears that the voltage checking step (S1) and discharging step (S2) are essential to obtaining the complete discharged battery (as recited in amended Claim 1), but are not included in the claims.
Claims 2-8 and 10-11 are rejected as being dependent upon a rejected base claim.
Claim Interpretation
Claim 1 recites “the deactivation processing step is a process in which the battery is completely discharged after feeding the conductive liquid into the exterior body.” The claim language is interpreted as “the deactivation processing step is a process in which the battery is completely deactivated after feeding the conductive liquid into the exterior body.”
Claim Rejections - 35 USC § 103
Previously presented figures may be omitted below.
Claims 1-2, 5-8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN Pat. No. 113540580 A) in view of and evidenced by Yamasaki et al. (U.S. Pat. No. 20110059339 A1).
Regarding Claim 1, Lin teaches a processing method for a battery (para. 1) that includes an exterior body and an electrode body accommodated in the exterior body, the exterior body including (para. 45, see annotated Fig. 3):
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a case main body including a bottom wall, an opening that faces the bottom wall, and side walls that extend from the bottom wall to the opening (see annotated Fig. 3);
and a lid body that seals the opening of the case main body (see annotated Fig. 3). (Lin does not describe the battery structure in detail; however, the claimed battery structure is apparent in view of the drawings thereof and is a typical structure of a prismatic battery cell. As further evidence, Yamasaki et al. teaches analogous art of a processing method for a battery wherein the battery comprises an exterior body 110 (case) and an electrode body 150 (assembly) accommodated in the exterior body ([0069], Fig. 2), the exterior body including: a case main body 111 including a bottom wall, an opening that faces the bottom wall, and side walls that extend from the bottom wall to the opening ([0069], see annotated Fig. 2), and a lid body 112 that seals the opening of the case main body ([0068], Fig. 2)).
Lin teaches the processing method comprising the following steps in this order;
a hole working step of making a hole at the exterior body (para. 49 teaches a step of grinding the liquid injection hole)
a deactivation processing step of feeding a deactivation processing liquid into the exterior body (injecting liquid into the faulty cell to deactivate the faulty cell) (para. 8, para. 49 teaches the claimed order), wherein the deactivation processing liquid is a conductive liquid containing a conductive solute (saturated sodium chloride solution) (para. 78), and the deactivation processing step is a process in which the battery is completely deactivated after feeding the conductive liquid into the exterior body (para. 56);
Lin further teaches a posture in which the lid body is positioned directly above in a vertical direction and the side walls extend along the vertical direction equivalent to the “normal posture” of the claimed invention (see Fig. 3).
Lin does not teach the processing method comprising a cutting step of cutting the exterior body along the opening to divide the housing part and the lid body; and cutting the exterior body in a posture other than the normal posture along the opening.
In the same field of endeavor, Yamasaki et al. teaches analogous art of a processing method for a battery that includes a cutting step of cutting the exterior body along an opening to divide the housing part and the lid body ([0069]). The cutting step allows for separation of the case main body and lid body to allow the battery components (i.e., electrode assembly) to be removed for further processing and recovery of valuable metals ([0069], [0001]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the processing method of Lin to include a cutting step of cutting the exterior body along an opening to divide the housing part and the lid body as taught by Yamasaki et al. One of ordinary skill in the art would have been motivated to perform the described modification to separate the lid and main body of the casing to allow the electrode assembly to be removed for further processing to recover valuable metals as described. Although Lin is directed to a processing method that does not require removal of the faulty battery, a skilled artisan would find the teachings of Yamasaki et al. useful in determining a method of further processing the faulty batteries once removal is deemed necessary (e.g., majority of batteries within the battery pack are faulty/exhausted, to recover valuable metals).
Further, it is within the capabilities of a person having ordinary skill in the art (PHOSITA) to arrange the battery in any suitable position that allows the cutting step to be effectively performed; the positional arrangement of the battery depends on many factors including the orientation of the cutting machine and parts therefore, the size of the battery, and the external environment such as the spacing available to perform said cutting process. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rearrange the battery to be positioned in a posture other than the normal posture (such as where the lid faces a horizontal direction, a downward inclined direction, or a downward vertical direction), as doing so involves merely rearranging the battery with respect to the cutting device. The mere rearrangement of parts, without any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Japikse, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04). One of ordinary skill in the art would have been motivated to rearrange the battery exterior body in consideration of the factors described above to improve stability, accuracy, and consistency during the cutting step.
Regarding Claim 2, as applied above, the processing method of Lin is modified to include a cutting step of cutting the exterior body along an opening to divide the housing part and the lid body as taught by Yamasaki et al. The cutting position corresponds to a place between the electrode body and the lid body (Yamasaki et al., [0069] discloses that the battery case is cut to divide the housing part and the lid part; and the electrode body is removed). One of ordinary skill in the art would have been motivated to perform the described modification to separate the lid and main body of the casing at said cutting position to allow the electrode assembly to be removed for further processing to recover valuable metals as described above. Therefore, all claim limitations are met.
Regarding Claim 5, Lin as modified by Yamasaki et al. does not specify a preference for a particular posture or orientation of the battery exterior body when the cutting is performed.
However, it is within the capabilities of a PHOSITA to arrange the battery in any suitable position to effectively perform the cutting step; the positional arrangement of the battery depends on many factors including the orientation of the cutting machine and parts therefore, the size of the battery, and the external environment such as the spacing available to perform said cutting process. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rearrange the battery to be positioned where the lid of the exterior body faces a horizontal direction, a downward inclined direction, or a downward vertical direction, as doing so involves merely rearranging the battery with respect to the cutting device. The mere rearrangement of parts, without any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Japikse, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04). One of ordinary skill in the art would have been motivated to rearrange the battery exterior body in consideration of the factors described above to improve stability, accuracy, and consistency of the cutting step.
Regarding Claim 6, Lin as modified by Yamasaki et al. does not specify a preference for a particular posture or orientation of the battery exterior body when the cutting is performed.
However, it is within the capabilities of a PHOSITA to arrange the battery in any suitable position that allows the cutting step to be effectively performed; the positional arrangement of the battery depends on many factors including the orientation of the cutting machine and parts therefore, the size of the battery, and the external environment such as the spacing available to perform said cutting process. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rearrange the exterior body of the battery to be positioned in an inversion posture/downward vertical direction, as doing so requires merely rearranging the battery with respect to the cutting device. The mere rearrangement of parts, without any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Japikse, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04). One of ordinary skill in the art would have been motivated to rearrange the battery exterior body in consideration of the factors described above to improve stability, accuracy, and consistency during the cutting step.
Regarding Claim 7, Lin teaches wherein the side walls include a pair of short side walls and a pair of long side walls (see Fig. 3, typical construction of a prismatic battery).
Lin as modified by Yamasaki et al. does not specify a preference for a particular posture or orientation of the battery exterior body when the cutting is performed.
However, it is within the capabilities of a PHOSITA to arrange the battery in any suitable position that allows the cutting step to be effectively performed; the positional arrangement of the battery depends on many factors including the orientation of the cutting machine and parts therefore, the size of the battery, and the external environment such as the spacing available to perform said cutting process. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rearrange the exterior body of the battery to be positioned on a long side wall (in which the pair of long side walls are positioned above and below in the vertical direction and the lid body faces in a horizontal direction), as doing so involves merely rearranging the battery with respect to the cutting device. The mere rearrangement of parts, without any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Japikse, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04). One of ordinary skill in the art would have been motivated to rearrange the battery exterior body in consideration of the factors described above to improve stability, accuracy, and consistency during the cutting step.
Regarding Claim 8, Lin teaches wherein the side walls include a pair of short side walls and a pair of long side walls (see Fig. 3, typical construction of a prismatic battery).
Lin as modified by Yamasaki et al. does not specify a preference for a particular posture or orientation of the battery exterior body when the cutting is performed.
However, it is within the capabilities of a PHOSITA to arrange the battery in any suitable position that allows the cutting step to be effectively performed; the positional arrangement of the battery depends on many factors including the orientation of the cutting machine and parts therefore, the size of the battery, and the external environment such as the spacing available to perform said cutting process. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rearrange the exterior body of the battery to be positioned on a short side wall (in which the pair of short side walls are positioned above and below in the vertical direction and the lid body faces in a horizontal direction), as doing so requires merely rearranging the battery with respect to the cutting device. The mere rearrangement of parts, without any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Japikse, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04). One of ordinary skill in the art would have been motivated to rearrange the battery exterior body in consideration of the factors described above to improve stability, accuracy, and consistency during the cutting step.
Regarding Claim 11, as applied to Claim 1, Lin teaches wherein the conductive liquid contains sodium chloride as the conductive solute (saturated sodium chloride solution) (para. 78).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN Pat. No. 113540580 A) in view of Yamasaki et al. (U.S. Pat. No. 20110059339 A1) and further in view of Harayama et al. (U.S. Pat. No. 20150325833 A).
Regarding Claim 3, Lin does not teach wherein the lid body includes a penetration hole, and the battery further includes a blind rivet that covers the penetration hole.
Harayama et al. teaches a lid body comprising a penetration hole 12H, and the battery further includes a blind rivet 60 that covers the penetration hole ([0027]). The penetration hole functions as a liquid injection port in which allows injection of an electrolyte; and the blind rivet functions to effectively seal said hole ([0003]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the lid body of Lin to include a penetration hole, and a blind rivet that covers the penetration hole as taught by Harayama et al. One of ordinary skill in the art would have been motivated to perform the described modification to allow injection of an electrolyte and a method of effectively seal said hole as described above. In addition, the use of a known technique to improve similar products (methods) in the same way is likely to be obvious. See KSR International Co. V. Teleflex Inc., 550 U.S._,_, 82 USPQ2d 1385, 1395 - 97 (2007) (see MPEP § 2143, C.).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN Pat. No. 113540580 A) in view of Yamasaki et al. (U.S. Pat. No. 20110059339 A1) and further in view of Kim (U.S. Pat. No. 20120189889 A1).
Regarding Claim 4, Lin does not teach that the battery further includes an insulating member that is provided between the electrode body and the lid body, and the insulating member includes a base part that extends along an inner surface of the lid body and a protrusion part that protrudes to a side of the electrode body compared to the base part.
Kim teaches a battery further comprising an insulating member that is provided between the electrode body 120 and the lid body (cap plate), and the insulating member includes a base part 160a that extends along an inner surface of the lid body 170 and a protrusion part 160 that protrudes to a side of the electrode body compared to the base part ([0040]-[0042], Fig. 4). The electrode terminals are fixed to the lid body and electrically insulated by using the first insulation members ([0039]). The insulation members also function to prevent leakage of the electrolyte ([0042]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the battery of Lin by Kim to include an insulating member that is provided between the electrode body and the lid body, in which the insulating member includes a base part that extends along an inner surface of the lid body and a protrusion part that protrudes to a side of the electrode body compared to the base part. One of ordinary skill in the art would have been motivated to perform the described modification to effectively secure the electrode terminals, provide electrical insulation between the electrode terminals and the lid body, and prevent leakage of the electrolyte as described above. In addition, the use of a known technique to improve similar products (methods) in the same way is likely to be obvious. See KSR International Co. V. Teleflex Inc., 550 U.S._,_, 82 USPQ2d 1385, 1395 - 97 (2007) (see MPEP § 2143, C.).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN Pat. No. 113540580 A) in view of Yamasaki et al. (U.S. Pat. No. 20110059339 A1) and further in view of Kawakami et al. (U.S. Pat. No. 20010008723 A1).
Regarding Claim 10, Lin does not teach wherein in the cutting step, the exterior body is cut by a water jet cutting machine.
Kawakami et al. teaches a processing (recovery) method comprising a cutting step of opening a battery housing in which the exterior body is cut by a water jet cutting machine ([0046]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cutting step of Lin. wherein the exterior body is cut by a water jet cutting machine as taught by Kawakami et al. One of ordinary skill in the art would have been motivated to perform the described modification to provide an appropriate method to open a battery housing of a sealed battery to recover components such as the electrode body there within ([0066], [0128]). In addition, "applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.)."
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.
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/C.R.D./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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