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 .
Specification
The disclosure is objected to because of the following informalities: in Paragraph [0061], reference is made to Fig. 3 and insertion groove 5220, 6220 and groove 522a, 622a. These articles are not present in Fig. 3. Appropriate correction is required.
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.
Claim 3 is 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. The claim recites “a current collection plate of the current collection plates between the cap plate and the current collection plate” and the position of the subject is unclear due to the duplicate referrals to a current collection plate when the same current collection plate is only indicated as one of a plurality of current collection plates and the other current collection plate(s) of this plurality are not distinguished. A singular current collection plate is referred to as the subject, but how would it be present between the cap plate and itself? Are the current collection plates immediately adjacent to each other? Is the claim drawn to more than one current collection plate per longitudinal end assembly?
To proceed with this Action, the claim language is interpreted as “a current collection plate of the current collection plates between the cap plate of its same end assembly and the current collection plate of the OPPOSITE end assembly”; in other words, the current collection plates are located inwards towards the electrode assembly and the cap plates are located further outwards in each end assembly. The burden is on the Applicant to clarify otherwise and revise the claim language used on the record.
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.
Claims 1-20, 23, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (US 2023/0411777 A1).
Regarding Claim 1, Shin teaches a prismatic secondary battery cell (Paragraph [0036]) with cap plate assemblies coupled to both sides of the case in a longitudinal direction or a cap plate assembly coupled to one side of the case (Paragraph [0039]), with an electrode assembly accommodated in the case (Paragraph [0038]) and current collecting plates disposed on the cap plates (Paragraph [0044]). Shin teaches rivet terminals that pass from the terminal plates to the current collecting plates in a thickness direction (Paragraph [0045]), wherein the rivet terminal of Shin is analogous to the “terminal post” of the instant application.
Regarding Claim 2, Shin teaches cap plate assemblies coupled to both sides of the case or a cap plate assembly coupled to one side of the case (Paragraph [0039]), and an external insulating plate further disposed between the terminal plate and the cap plate (Paragraph [0043]).
Regarding Claim 3, Shin teaches current collecting plates disposed on the cap plates wherein the cap plates are coupled to both sides of the case as in Claim 1 above. Shin also teaches a current collection plate between the cap plate of its same end assembly and the current collection plate of the opposite end assembly (Fig. 2, Items 121, 123, and 133).
Shin does not teach the terminal plate connected to a sub-terminal member which is further connected through to the current collection plate. However, coupling the terminal plate with a sub-terminal body having a terminal post through to a current collection plate as in the instant claim does not result in a significant structural or functional difference from a rivet terminal through the terminal plate to a current collection plate of Shin (Fig. 2, Items 121, 122, and 125) since it is merely a matter of where the through-bolt functionality begins and its immediate structure as a bolt through multiple layers versus originating at an interlocked layer on which the bolt itself is attached. The terminal plate assembly of Shin would be capable of performing the intended use, i.e. electrically connecting the terminal through to the current collection plate as presently claimed in Claim 3 of the instant application, and thus the prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and MPEP §2111.02(II).
Regarding Claims 4 and 5, Shin does not teach the sub-terminal and terminal plate as being separately or integrally provided. However, in view of the discussion regarding Claim 3 above where the functionality is analogous, making the sub-terminal and terminal plate as separate members is regarded as obvious since the court held that "if it were considered desirable for any reason to obtain access to the end of [the prior art' s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.") and making the sub-terminal and terminal plates as integral members would also be regarded as obvious since the court held that "the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice”. See In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) and In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) respectively, in MPEP §2144.04(V). A separable or integrated sub-terminal and terminal plate as claimed still does not result in a structural or expected functional difference from the prior art assembly taught by Shin in Claim 3 above.
Regarding Claim 6, Shin does not teach a terminal post being in the sub-terminal. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the terminal plate and rivet assembly of Shin with integrated parts and/or functionalities to arrive at the claimed configuration of an integrated terminal plate with a sub-terminal having a terminal post since the court held that "the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice”. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) and MPEP §2144.04(V). In the instant case, a terminal plate with a sub-terminal having a terminal post as claimed does not result in a structural difference or expected functional difference from the prior art assembly as taught by Shin in Claim 3 above.
Furthermore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to change the sequence of adding the parts as taught by Shin and arrive at the claimed invention, since simply changing the sequence of part joinery for the end assembly (such as having a sub-terminal with a pre-attached terminal post as in the instant claims) would result in the same fully joined assembly as Shin with a separate rivet that functions to fasten through all inward assembly components in an analogous way to the terminal post. “Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) in MPEP §2144.04.
Regarding Claim 7, Shin teaches holes from the terminal plates to the current collecting plates which are present in the cap plate and insulator(s) to accommodate a rivet terminal (Paragraph [0045]; Fig. 2, Items 121, 122, 123, 124a, 125, 126, 131, 132, 133, 134a, and 135).
Regarding Claims 8-10, Shin teaches a flat surface of the current collection plate facing the cap plate and the current collection plate has a circular hole (Fig. 2, Item 123), wherein the hole is analogous to the “groove” of the instant application.
Regarding Claim 11, Shin teaches a rivet terminal with a circular cross-section in the shape of a hollow cylinder (Fig. 2, Item 125), wherein the rivet terminal of Shin is analogous to the “terminal post” of the instant application.
Regarding Claims 12 and 13, Shin teaches holes in cap plates, terminal plates, current collecting plates, and insulating plates into which the rivet terminals and optional gaskets are inserted (Paragraph [0045]). While Shin does not discuss the diameter of the holes as larger than a diameter of the terminal post, it is reasonable to conclude that the property is inherent based on the teachings of Shin. The rivet and optional gaskets of Shin can only be inserted in through-holes having larger diameters than that of the rivet, and would necessarily arrive at the claimed configuration. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). The burden is upon the Applicant to prove otherwise.
Regarding Claim 14, Shin teaches holes in cap plates, terminal plates, current collecting plates, and insulating plates into which the rivet terminals and optional gaskets are inserted (Paragraph [0045]). Shin does not teach the hole as being used for welding.
However, the recitation in the claims that the hole communicating with the terminal post is a “welding hole” is merely an intended use. Applicant’s attention is drawn to MPEP §2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner's position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, and further that the prior art structure is capable of performing the intended use. Given that Shin discloses holes into which the rivet terminals are inserted, which is analogous to holes communicating with the terminal post as presently claimed, it is clear that the holes of Shin would be capable of performing the intended use, i.e. enabling welding as presently claimed in Claim 14 of the instant application, and thus the prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and MPEP §2111.02(II).
Regarding Claim 15, Shin does not teach a pair of current collection plates between the electrode assembly and the current collection plate. However, increasing the number of current collection plates is merely a duplication of parts, and the court held that “mere duplication of parts has no patentable significance unless a new and unexpected result is produced”. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). In the instant case, multiple current collection plates would not be expected to produce unexpected results because it is also not specified if the multiple current collection plates would be multiple in count but sum to the same area of effect as the instant, thereby rendering the same effect and expected result. The burden is upon the Applicant to prove otherwise.
Regarding Claim 16, Shin teaches a 3-dimensional current collection plate with a first surface facing the cap plate, a side surface connecting the first surface to a second surface, and the second surface faces the electrode assembly (Fig. 2, Items 10, 121, and 123) wherein the current collecting plates may be connected to an electrode tab of the negative electrode or positive electrode of the electrode assembly (Paragraph [0044]).
Claim 16 includes product by process language with regards to the recitation of “welded”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP §2113.
Regarding Claim 17, Shin teaches an insulator portion outside of the cap plate in an outward direction and inside the cap plate toward the current collection plate (Paragraph [0044]; Fig. 2, Items 121, 124a, and 126).
Shin does not teach the singular insulator outside and inside the cap plate. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the insulation portions of Shin as integrated parts and/or functionalities to arrive at the claimed configuration of an insulator with a first and second coupling portion since the court held that "the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice”. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) and MPEP §2144.04(V). In the instant case, an integrated insulator as claimed does not result in a structural difference or expected functional difference from the prior art assembly as taught by Shin, because the two-piece insulation of Shin is part of the end assembly which is ultimately bolted or fixed together in a way that would not be substantially different in structure or function from the instant example of one piece surrounding the cap plate and would not produce unexpected results. The burden is upon the Applicant to prove otherwise.
Regarding Claim 18, Shin does not teach a sub-terminal or terminal; see discussion of Claims 4-5 above. Shin teaches the terminal as seated concavely in the first insulation coupling portion (Fig. 2, Items 122 and 126) and the current collection plate is seated concavely in the second insulation coupling portion (Fig. 2, Items 134a and 133).
Regarding Claims 19 and 20, Shin does not teach that the height of the groove of the first and second insulation coupling portions are smaller than that of the terminal and current collection plates within, respectively. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Shin to optimize the height of the concave insulator portions to arrive at the claimed configuration since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present invention, one would have been motivated to optimize the height of the concave insulator portions by the desire to enable sufficient surface contact of the terminal and current collection plates to their respective end units such as outward electrical connection of one secondary battery cell to another disposed adjacently in a module or pack via the terminal plates as taught by Shin (Paragraph [0042]) while insulating other non-contact regions, and also enable sufficient connection of the current collecting plates to an electrode tab of the negative electrode or the positive electrode of the electrode assembly as also taught by Shin (Paragraph [0044]) while insulating other non-contact regions.
Regarding Claim 23, Shin does not teach a sub-terminal; see discussion of Claims 4-5 above. However, sizing the terminal to correspond with adjacent components such as a sub-terminal in the end assembly is merely routine optimization and it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Shin to optimize the corresponding sizes of adjacent components to arrive at the claimed configuration since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present invention, one would have been motivated to optimize the corresponding sizes of adjacent components by the desire to effectively fit adjacent components together.
Regarding Claim 25, Shin teaches a rivet terminal which has a hollow hole in its structure and the entire rivet body corresponds to a through-hole in the current collection plate (Fig. 2, Items 123 and 125). Shin does not teach that the rivet and current collection plate are welded together.
Claim 25 includes product by process language with regards to the recitation of “welded” and “welding”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP §2113.
Claims 21-22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (US 2023/0411777 A1) as in Claims 1-20 above, further in view of Kozuki et al. (US 2023/0137433 A1).
Regarding Claims 21 and 22, Shin teaches a rectangular terminal plate (Fig. 2, Item 122). Shin does not teach a terminal plate having a step between an outer surface and the inner surface where a sub-terminal would be; see discussion of Claims 4-5 above.
Kozuki teaches an electrode terminal which is cylindrical in shape and may have a lower flange formed on an outer peripheral surface of the terminal portion near the base (Paragraph [0041]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to reshape the cylindrical terminal of Kozuki to a rectangular-shaped plate since the court held that “the configuration…was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant”. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) in MPEP §2144.04(IV). In the instant case, the configurations would perform the same because a circular or rectangular cross-section can be configured to yield the same contact surface area to the same effect.
Furthermore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the flanged terminal of Kozuki with the rectangular terminal plate of Shin in order to arrive at the claimed invention and gain the benefits of the adaptation, such as using the flange for joinery to a base by welding or the like as taught by Kozuki (Paragraph [0041]). See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 89 USPQ2d 1535 (Fed. Cir. 2008) in MPEP §2143 for KSR obviousness rationale (A).
Regarding Claim 24, Shin does not teach a flange of the terminal plate and the sub-terminal to be inserted to the concave insertion groove of the first insulator coupling portion. Regarding a terminal and sub-terminal, see discussion of Claims 4-5 above. Shin teaches a concave insertion groove of a first insulator coupling portion as in Claim 17 above, which further accommodates the terminal (Fig. 2, Items 122 and 126). Kozuki teaches a flanged terminal as in Claims 21-22 above.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the flanged terminal of Kozuki with the terminal and concave insertion groove of a first insulator coupling portion of Shin in order to arrive at the claimed invention and gain the benefits of the adaptation, such as enabling sufficient surface contact of the terminal plate’s outward electrical connection of one secondary battery cell to another disposed adjacently in a module or pack via the terminal plates as taught by Shin (Paragraph [0042]) while insulating other non-contact regions and using the flange for joinery to a base by welding or the like as taught by Kozuki (Paragraph [0041]). See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 89 USPQ2d 1535 (Fed. Cir. 2008) in MPEP §2143 for KSR obviousness rationale (A).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Cheng whose telephone number is (571)270-1930. The examiner can normally be reached Mon-Thu 7:30am-5pm ET, Fri 7:30am-12pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.S.C./Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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