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 .
Double Patenting
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-5 of copending Application No. 18616618 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter sough is covered by the subject matter in copending Application No. 18616618.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1, 3, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 214254487 (“Lei et al.”). The Examiner notes that US Pub. No. 20230087166 is the English language equivalent of CN ‘487 and all citations will refer to the US Publication. See provided Derwent Abstract translation illustrating the equivalency of these two references.
With regards to Claim 1, Lei et al. teaches a power cell (5) comprising an electrode assembly (10) including a sheet body wound to surround a winding axis, at least one insulating member (133, 135, or relevant thereof) provided in the electrode assembly, wherein the electrode assembly includes a first end portion located at an end in a direction in which the winding axis extends, and a second end portion located at an end opposite to where the first end portion is located,
the sheet body includes a first electrode sheet (11), a second electrode sheet (12), and a separator (13, 14, 131, or relevant thereof) disposed between the first electrode sheet and the second electrode sheet,
the first electrode sheet includes a first current collector (113), and a first electrode composite material layer (111) formed on the first current collector,
the first current collector includes a first uncoated portion (113 – tab) not coated with the first electrode composite material layer,
the first uncoated portion includes a plurality of first metal pieces (elements 113 – tabs in Fig. 8 and 12) located at the first end portion and arranged in a winding direction of the sheet body,
the first metal pieces extend toward the winding axis,
the second electrode sheet (12) includes a second current collector (123), and a second electrode composite material layer (121) formed on the second current collector,
the second electrode sheet includes a first edge portion located at the first end portion, and
at least one insulating member includes a first insulating member (133) formed at the first edge portion (Figs. 4-12, [0057], [0066]-[0071], [0073], [0074], and [0085]-0088]).
With regards to Claim 3, Lei et al. teaches the second current collector (123) includes a second uncoated portion (123 – tab) not coated with the second electrode composite material layer (121), the second uncoated portion includes a plurality of second metal pieces (elements 123 – tabs in Figs. 8 and 12) located at the second end portion and arranged in the winding direction, the second metal pieces extend toward the winding axis, the first electrode sheet (11) includes a second edge portion located at the second end portion, and the at least one insulating member includes a second insulating member (135) formed at the second edge portion (Fig. 12 and [0057]).
With regards to Claim 4, regarding the limitation(s) “a welded portion welded” in the claims, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes that this refers to a first insulating member fused/in contact with/united with a separator.
Regarding the method term “welded”, even 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 different 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).
According to Merriam-Webster Dictionary, the term “welded” is defined as to unite (metallic parts or plastics) by heating. Structurally, the instant limitation merely requires the first insulating member to be united with the separator. In that regard, Lei et al. teaches the first insulating member is united/joined with the separator and structurally meets the limitation recited in Claim 4 (Please see Figs. 5-12).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over CN 214254487 (“Lei et al.”) as applied to Claim 1 above.
Lei et al. teaches the first insulating member is continuous along the first edge portion (Figs. 8 and 12). While Lei et al. does not teach its first insulating member includes a plurality of insulating pieces, one of ordinary skill in the art would recognize that a plurality of insulating pieces comprising the same material and are in contact with each other is structurally equivalent to a continuous first insulating member. Thus, one of ordinary skill in the art would recognize that Lei et al.’s first insulating member may be viewed as comprising a plurality of insulating pieces of the same material, wherein a distance between adjacent pieces is zero and a distance between the insulating pieces would naturally be smaller than a width of each of the first metal pieces (Figs. 5-12).
While Lei et al. does not necessarily teach distinct, separated pieces, it has been held that "mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” Please see MPEP 2144.04 and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over CN 214254487 (“Lei et al.”) as applied to Claim 1 above, and further in view of US Pub. No. 20130059183 (“Ahn”).
Lei et al. teaches the first insulating member is continuous along the first edge portion (Figs. 8 and 12).
Lei et al. does not explicitly teach its first insulating member comprising a plurality of distinct, separated insulating pieces.
However, Ahn discloses a wound electrode assembly comprising at least one insulating member (601) that is either continuous or includes a plurality of insulating pieces (501, 502, and 503) (Figs. 2-6 and [0088]-[0099]). Fig. 5 depicts a distance between its insulating pieces (502 and 503) are smaller than a width of each of the first metal pieces (160 and 170). It would have been obvious to one or ordinary skill in the art prior to the effective filing date of the claimed invention to have Lei et al.’s first insulating member comprise a plurality of insulating pieces and a distance between the insulating pieces is smaller than a width of each of the first metal pieces in order to effectively insulate the first and second electrode sheets from each other to prevent any short circuit(s). Furthermore, it has been held that "mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” Please see MPEP 2144.04 and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over CN 214254487 (“Lei et al.”) as applied to Claim 1 above, and further in view of US Pub. No. 20160181652 (“Umehara”).
Lei et al. teaches the first insulating member is in contact with the separator (Figs 5-12).
Lei et al. does not explicitly teach a welded portion as claimed.
However, Umehara et al. teaches a first insulating member (26, 31, or relevant thereof) includes a welded portion welded to a separator (23) (Figs. 4-6, [0043], and [0051]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have a welded portion between the first insulation member and the separator in Lei et al. in order provide a good connection and adhesion strength between the two components and effectively insulate the first and second electrode sheets from each other to prevent any short circuit(s).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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