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 .
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 1-2 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.
Claim 1’s recitation that the resin member includes at least any one of a recess and a projection portion (ln. 10) is unclear because it could be interpreted to mean that any one of a recess and any one of a projection portion are required (i.e., both a recess and projection portion are required) or it could be interpreted to mean that any one of a recess or a projection portion is required, i.e., one or the other of a recess or projection portion is required. For the purposes of prosecution, the examiner interprets claim 1 to require at least any one of a recess or a projection portion.
Claim 2 recites a limitation referencing the recess of an annular shape on line 24. There is insufficient antecedent basis for this limitation in the claim. Claim 1 recites a recess but does not recite a recess of an annular shape. Thus, it is unclear which recess of an annular shape claim 2 is referring to. For the purposes of prosecution, the examiner interprets claim 2 to require the recess wherein the recess has an annular shape.
Claim Rejections - 35 USC § 102
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 1 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Chen et al. (US 2019/0280257 A1), hereinafter “Chen”.
Regarding claim 1, Chen teaches a power battery (corresponding to the claimed power storage device), a power battery case (corresponding to the claimed case member), a through-hole (corresponding to the claimed insertion hole) through which an extension portion of an electrode terminal comprising a terminal plate (corresponding to the claimed terminal member) passes through (corresponding to the claimed terminal member inserted in the insertion hole of the case member) ([Chen, [004]);
a first fixing component (corresponding to the claimed resin member) which may be made of a high-temperature resistant insulating plastic material such as polyphenylene sulfide (corresponding to the claimed resin composition of the resin member) (Chen, [0062]), is depicted having an outer surface (Chen, Fig. 2-14), and a protrusion (corresponding to the claimed projection portion) (Chen, Fig. 3 for example) which is shown to be exposed on the outer side of the case member and by increasing the radial distance from one edge of the first fixing member to the other, one skilled in the art would recognize that the protrusion necessarily satisfies the functional language of the limitation that a creepage distance from a terminal outer surface of the terminal member to a case outer surface exposed on the outer side of the case member is increased by the protrusion;
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the first fixing component may be arranged between the terminal plate (corresponding to the claimed terminal member) and the top cap plate (Chen, [0063]) which is included in the power battery case (Chen, [004]) (corresponding to the claimed resin member being joined to the case member and the terminal member while insulating between the case member and the terminal member) and the first fixing component may be sufficient for the fixing to prevent the terminal plate from disconnecting above the top cap plate (corresponding to the claimed resin member fixing the terminal member to the case member) (Chen, [0061]).
Claim Rejections - 35 USC § 103
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Ito (WO 2017159760 A1) in view of Tanaka (JP 2007220391 A), wherein English machine translations of both are used and cited herein.
Regarding claim 1, Ito teaches an electric storage element (corresponding to the claimed power storage device), a container (corresponding to the claimed case member), an electrode terminal (corresponding to the claimed terminal member) (Ito, [0012]) which is inserted in a circular through hole (corresponding to the claimed insertion hole) formed in the lid which is described as a wall of the container (corresponding to the claimed terminal member inserted in the insertion hole of the case member) (Ito, [0002]) and has an outer surface (corresponding to the claimed case member outer surface) (Ito, [0043]);
intermediate members which are resin members formed from insert-moldable resin (Ito, [0039]) disposed between the lid and the electrode terminals to insulate the lid (corresponding to the claimed resin member insulating the case member and the terminal member) (Ito, [0037]), the intermediate members are fixed to the lid by being integrated with the lid together with the intermediate members (corresponding to the claimed resin member fixing the terminal member to the case member) (Ito, [0035]) and may be seen to have a resin outer surface exposed on the outer side of the case member (Ito, Fig. 3 for example).
Ito does not teach a recess or projection portion arranged as instantly claimed.
However, Tanaka teaches an assembled battery (corresponding to the claimed power storage device), a positive electrode total output terminal structure (corresponding to the claimed terminal member), an inter-terminal insulation exposed surface (corresponding to the claimed resin outer surface) and defines a creeping path having a creepage distance (corresponding to the claimed creepage distance) which minimizes the creepage path across the inter-terminal insulation exposed surface to either a negative total output terminal or another metal body, (Tanaka, [009]-[0010]) interpreted as the shortest distance between the total output terminal structure and the closest conductive surface. Tanaka further teaches a groove with a U-shaped cross section (corresponding to the claimed recess) (Tanaka, [0044], Fig. 6) or a protrusion having a conical section (corresponding to the claimed projection portion) (Tanaka, [0034], Fig. 4) both designed to extend the creepage distance (Tanaka, [0008], [0035-[0036], [0045]-[0046]), thereby preventing creeping discharge (Tanaka, [0008], [0036], [0046]). Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Tanaka’s groove or protrusion to Ito’s intermediate member (corresponding to the claimed resin member) surrounding the electrode terminal (corresponding to the claimed terminal member) in order to increase the radial creepage distance between the electrode terminal and the closest conductive surface (i.e., the container’s lid) across the intermediate member as taught by Tanaka (Tanaka, [0008], [0035]-[0036], [0045]-[0046]).
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Regarding claim 2, Ito further teaches the electrode terminal includes a flat plate-like portion (corresponding to the claimed terminal outer portion) disposed above the lid (corresponding to the claimed terminal outer portion located on the outer side of the case member) and having a first flat surface (corresponding to the claimed terminal top surface of a flat shape) (Ito, [0043]).
Ito depicts the intermediate member with an outer portion (corresponding to the claimed resin outer frame portion) located on the outer side of the container having a shape (corresponding to the claimed frame shape) that surrounds the periphery of the terminal outer portion of the electrode terminal and which is shown to have top surface flush with the electrode terminal first flat surface of the flat plate-like portion.
The intermediate member of the electric storage device suggested by Ito modified by Tanaka having Tanaka’s groove (corresponding to the claimed recess) surrounding Ito’s entire electrode terminal (as described with regard to claim 1 above) thereby provides the groove with an annular shape surrounding a periphery of the first flat surface (corresponding to the claimed terminal top surface).
Double Patenting
Claims 1-2 of this application are patentably indistinct from claim 2 of Application No. 18/475,211. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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 1-2 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/475,211 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1, claim 2 of the 211 application recites a power storage device, a case member including an insertion hole, a terminal member inserted in the insertion hole of the case member, an insert-molded resin member (corresponding to the claimed resin member which the instant specification discloses is insert molded, [0020]) joined to the case member and the terminal member while insulating between the case member and the terminal member, to fix the terminal member to the case member;
a resin outer frame portion (corresponding to the claimed resin outer surface) located on the outer side of the case member (corresponding to the claimed resin outer surface being exposed on an outer side of the case member wherein the outer side of the case member also corresponds to the claimed case outer surface), a terminal top surface (corresponding to the claimed terminal outer surface), and an annular groove (corresponding to the claimed recess). The groove recited by the 211 application’s claim 2 may further be understood by one skilled in the art to satisfy the functional language of the instant claim 1 that it increase a creepage distance from the terminal outer surface of the terminal member to the case outer surface both exposed on the outer side of the case member.
Regarding claim 2, claim 2 of the 211 application further recites the terminal member includes a terminal outer portion located on an outer side of the case member, the terminal outer portion including a terminal top surface having an entirely exposed flat shape (corresponding to the claimed flat shape of the terminal outer surface),
the resin member includes a resin outer frame portion located on the outer side of the case member, having a frame shape that surrounds the terminal outer portion of the terminal member (corresponding to the claimed a periphery of the terminal outer portion of the terminal member), and including a frame top surface flush with the terminal top surface of the terminal outer portion, and an annular groove (corresponding to the claimed recess having an annular shape) along an entire circumference of the resin outer frame portion (corresponding to the claimed recess surrounding a periphery of the terminal top surface).
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. Lee et al. (WO 2018056628 A1) teaches a protrusion to increase creepage distance. You (CN 113794072 A) teaches an annular groove to increase the creepage distance between two electrodes. Ringel et al. (WO 2019145186 A1) and Xu et al. (CN 109216597 A) disclose an annular recess for increasing creepage distance. Zhang et al. (CN 114552092 A) discloses various fin structures for increasing creepage distance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIMRAN S SAUND whose telephone number is (571)270-0845. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at (571) 272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIMRAN S. SAUND/Examiner, Art Unit 1734
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734
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