DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-13 are pending examination as discussed below.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
The information disclosure statements filed on 3/4/24, 7/23/25 & 6/9/26 have been placed in the application file and the information referred to therein has been considered as to the merits.
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18718425 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because while the ‘425 application includes swelling tape on the electrode assembly, this feature is well known in the art and is considered obvious over the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 4 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 “the surface of the negative electrode covers a surface of the positive electrode”. It is unclear what is meant by this limitation since if the two electrode surfaces touch, the battery would short circuit and not operate. The term “cover” is being interpreted as not touching but can have layers in between.
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 & 2 are rejected under 35 U.S.C. 102 (a1) as being anticipated by US 2015/0093620 (Miyazaki).
Regarding claim 1, Miyazaki teaches a prismatic secondary battery with a case, an electrode assembly inside the case, a lid sealing the opening of the case and positive and negative electrode terminals in the lid (Figs. 1-3; Abstract, [0041-0044, 0053]). A concave bead is formed on at least two sides opposite each other on the perimeter of the case (Figs. 3, 6-8).
Regarding claim 2, the beading compresses the electrode assembly (Figs. 3, 6-8; [0078]).
Claims 1-7 & 9-12 are rejected under 35 U.S.C. 102(a1) as being anticipated by JP 2011253763 (Matsuura).
Regarding claim 1, Matsuura teaches a prismatic secondary battery with a case, an electrode assembly inside the case, a lid sealing the opening of the case and positive and negative electrode terminals in the lid (Figs. 1-4; Abstract, [0025-0027, 0029-0032, 0033]). A concave bead is formed on at least two sides opposite each other on the perimeter of the case (Figs. 4, 5).
Regarding claim 2 & 3, the beading compresses the negative electrode (62) of the electrode assembly (Fig. 4; [0033]).
Regarding claim 4, the surface of the negative electrode covers the surface of the positive electrode, since they are wound together (Fig. 4).
Regarding claim 5, the first beading is spaced apart from the electrode tabs (Figs. 1-3, 5, 8 & 9).
Regarding claim 6, the beading is adjacent to the cap plate, compressing the upper part of the electrode assembly (Figs. 1-4 & 8).
Regarding claim 7, the beading is on the front and rear surfaces (Fig. 3).
Regarding claims 9, 10 & 12, a second beading is on least two sides and supports the electrode assembly which have the longest length in the width direction (Figs. 1-3).
Regarding claim 11, the second beading contacts and supports the lower part of the electrode assembly and doesn’t compress the surface of the electrode assembly (Figs. 3 & 4). Note, that when looking at figure 4, first beading 11 compresses the surface (63) but lower second beading 12 does not compress the surface (63).
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.
Claims 8 & 13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2011253763 (Matsuura) in view of US 2016/0104914 (Lee).
The teachings of Matsuura as discussed above are incorporated herein.
Matsuura teaches the beadings can have many variations in style and are not limited. However, Matsuura is silent to a first or second beading being formed continuously.
Lee teaches a wound secondary battery with a beading that is formed continuously on the battery case (Abstract; Figs. 1 & 3; [0081-0084]).
Therefore it would be obvious to one of ordinary skill in the art at the time of filing to combine the beading style of Lee for the beading of Matsuura as another means for keeping the electrode assembly in place. Furthermore, use of known technique to improve similar devices in the same way and applying a known technique to a known device ready for improvement to yield predictable results is obvious to one of ordinary skill in the art (MPEP 2141 III).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEITH WALKER whose telephone number is (571)272-3458. The examiner can normally be reached Monday - Friday 8am - 4pm.
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/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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