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 .
Claim Interpretation
In regard to claims 1 and 4-8, the limitations regarding structures being welded together or being connected by welding are considered to be product-by-process limitations. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process limitation is the same as or obvious from a product of the prior art, the limitation does not further limit the patentability of the recited structure even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
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 2 and 4-7 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.
In regard to claims 2 and 4-6, the claims are rejected on the basis that they contain an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of claim 2 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the recited alternatives regard different additional features such as a housing made from one of two materials, a lid plate made from one of two materials, a lid component having a separate positive terminal pole made from one of two materials, and wherein the housing and separate positive terminal pole are made from one of two materials.
The Markush grouping of claim 4 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the recited alternatives regard different additional features such the contact sheet metal member having a uniform thickness in a recited range, having two opposing flat sides and extending substantially only in one dimension, being a disc or a rectangular plate, dimensioned such that it covers at least 60% of the first terminal end face, has at least one aperture, has at least one bead with a specific structure, and having a specific construction wherein it is welded to a first edge of the anode current collector.
The Markush grouping of claim 5 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the recited alternatives regard different additional features such as wherein the energy storge element comprises a second contact sheet metal member which is seated on the first sedge of the cathode current collector, electrically connected to the housing part, and is formed of one of two different materials.
The Markush grouping of claim 6 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the recited alternatives regard different additional features such as a tubular or cup-shaped first member having a first contact portion, a tubular or cup-shaped first member made from one of seven different materials, a tubular or cup-shaped first member having a sheath made of one of four different materials, the negative terminal comprising one of two different materials as the second contacting portion, the second part being fixed to the first part, and the second part comprising a pin-shaped portion of a specific construction.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claim 2 recites the limitation "the separate positive terminal pole" in lines 9-10. There is insufficient antecedent basis for this limitation in the claim as the previous recitation of the limitation is recited in an optional limitation. Therefore, the Examiner is unable to determine if the limitation requires the same structure as for the limitation of “a separate positive terminal pole” as introduced in line 6.
Claim 4 recites the limitation "the bead" in line 21. There is insufficient antecedent basis for this limitation in the claim. It is noted that the limitation of “at least one bead” is recited in line 15 in an optional limitation.
Claim 5 recites the limitation "the second contact sheet metal member" in line 9 and again in line 11. There is insufficient antecedent basis for this limitation in the claim as the previous recitation of the limitation is recited in an optional limitation. Therefore, the Examiner is unable to determine if the limitation requires the same structure as for the limitation of “a second contact sheet metal member” as introduced in lines 4-5.
Claim 6 recites the limitation "the tubular or cup-shaped part" in line 6. There is insufficient antecedent basis for this limitation in the claim. It is noted that the limitation of “a tubular or cup-shaped first member” is recited in line 4-5 as an optional limitation and has a different wording.
Claim 6 recites the limitation "the second part" in lines 13 and 15. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 6, the phrase "in particular" in line 9 renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 7 recites the limitation "the metal membrane" in line 13. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation is interpreted as reciting --the metallic membrane--.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakanishi et al. (US 2004/0023108; hereinafter “Nakanishi”)
In regard to claim 1, Nakanishi discloses an energy store element (“battery”) comprising an air- and liquid-tight sealed housing (battery can 5) comprising a metallic, cup-shaped housing part (cylinder 51 with base lid 53) with a housing bottom (base lid 53) and a terminal opening (closed by upper lid 52), a lid component (upper lid 52) welded (see [0079]) into and closing the terminal opening of the cup-shaped housing part, the lid comprising a metallic lid plate (battery can, which includes the lids, is made of one of the metals recited in [0071]) and a negative terminal (negative electrode terminal 8) passed through an aperture (see figure 1) in the lid plate and electrically insulated from the lid plate (by first and second insulators 72, 73); an electrode-separator assembly (electrode unit 4) comprising: a first flat terminal end face (top of unit 4), a second flat terminal end face (bottom of unit 4), an anode (negative electrode 41) with an anode current collector (current collector 45) comprising a first edge (current collector edge 48) and a second edge (the bottom edge of electrode 41) parallel thereto, the anode current collector comprising a main region loaded with a layer of negative electrode material (negative electrode active material 44) and a free edge strip (defined by the current collector 45 which is free of material 45), extending along the first edge of the anode current collector, which is not loaded with the electrode material, a cathode (positive electrode 43) with a cathode current collector (current collector 47) comprising a first edge (current collector edge 48) and a second edge (the top edge of electrode 43) parallel thereto, the cathode current collector comprising a main region loaded with a layer of positive electrode material (positive electrode active material 46) and a free edge strip (defined by the current collector 47 which is free of material 46), extending along the first edge of the cathode current collector, which is not loaded with the electrode material, wherein the anode and the cathode are arranged within the electrode-separator assembly such that the first edge of the anode current collector protrudes from the first terminal end face and the first edge of the cathode current collector protrudes from the second terminal end face of the electrode-separator assembly (see Figure 3); and a contact sheet metal member (current collector plate 6) seated on the first edge of the anode current collector (see Figure 3) and connected thereto by welding (see [0084]), the contact sheet metal member being electrically connected to the negative terminal passing through the aperture in the lid plate (via connecting pieces 63 and terminal connector 71; [0099]), wherein the negative terminal comprises a first contacting portion (nickel layer 81) made of nickel, and a second contacting portion (aluminum layer 82) made of aluminum, and wherein the second contacting portion can be contacted mechanically from outside the housing (layer 82 is the outermost structure of the negative terminal). See Figures 1-6 and paragraphs [0070]-[0096].
In regard to claim 2, Nakanishi discloses at least wherein the cup-shaped housing part (cylinder 51 with base lid 53) comprises aluminum or aluminum alloy as it is disclosed that the battery “can is made from aluminum or aluminum alloy.” See Figure 1 and [0071].
In regard to claim 3, Nakanishi discloses at least wherein the contact sheet metal member (current collector plate 6) comprises nickel or copper. See [0084]-[0085].
In regard to claim 4, Nakanishi discloses at least wherein the contact sheet metal member (current collector plate 6) is a disc (see Figure 3), is dimensioned such that it covers at least 60% of the first terminal end face (see Figures 1 and 3 which depict the plate 6 being roughly the same diameter as the end face of the unit 4) and has at least one aperture (see Figure 3).
In regard to claim 5, Nakanishi discloses at least wherein the battery includes a second contact sheet metal member (current collector plate 61; see Figure 3) which is seated on the first edge of the cathode current collector and is connected thereto by welding. See [0087]-[0089].
In regard to claim 6, Nakanishi discloses at least discloses wherein the negative terminal comprises a tubular first member (rivet means 76) that comprises the first contacting portion (i.e. is made from nickel or copper; [0095]).
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi as applied to claim 5 above and further in view of Kim et al. (US 9,203,060; hereinafter “Kim”).
In regard to claim 7, Nakanishi is silent in regard to wherein the bottom of the cub-shaped housing part comprises an aperture closed by a metallic membrane.
Kim discloses a battery wherein the bottom wall of the housing (bottom 23) includes a metallic membrane (wall forming the bottom 23) which necessarily closes an aperture (has the bottom would be open without the bottom wall). As noted above, the limitation of the metallic membrane being fixed to the housing part and to the second contact sheet metal member by welding does not further limit the claim as the limitation is a product-by-process limitation. The bottom wall 23 is disclosed to have an indentation (central notch 242) in the region from which the wall extends through the aperture (as the wall is concave) into the interior of the housing, the second contact sheet metal member (analogous to the current collecting plate 50) is electrically insulated from the bottom of the housing by insulator 60, and the second contact sheet metal member (current collecting plate 50) is connected to the part of the metal membrane extending into the housing interior at the connection portion CP. See Figures 1 and 4 and col. 6, line 1 through col. 7, line 65.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the bottom wall structure of Kim with the battery of Nakanishi for the purpose of allowing for the bottom terminal to be disconnected upon an increase of internal pressure in the housing.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi as applied to claim 1 above and further in view of Noh (KR 20020072770 with reliance upon the English-language machine translation).
In regard to claims 8-9, Nakanishi discloses that the disclosed batteries can be connected in series and that the coating layer of the electrode terminals of different batteries are made to have the same material, such as aluminum or aluminum alloy, in order to prevent electrical corrosion from occurring. See [0070]-[0075].
Nakanishi is silent in regard to wherein an electrical conductor made of aluminum or aluminum alloy is welded to the negative terminal of one battery and to another terminal pole of a second battery.
Noh discloses wherein batteries can be formed into an assembly by connecting positive and negative terminals of batteries in parallel by ultrasonically welding aluminum and nickel lead wires to the terminals, respectively. See page 6 of the translation.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the assembly method of Noh with the apparatus of Nakanishi for the purpose of forming a battery assembly to power devices such as portable electronic devices, electric bicycles and electric vehicles.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY C CLEVELAND whose telephone number is (571)270-5041. The examiner can normally be reached M-F 7:30 AM - 3:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774
