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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities:
In the instant specification, the capitalization and bolding of Figure labels and part numbers is inconsistent throughout the instant specification. The examiner recommends the Figure labels be capitalized, and to either have all Figure/part numbers bolded or have none of them bolded.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-20 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
The instant specification, in paragraph 11, states: “The cylindrical shape can have an ellipse and/or a polygon as the base area. The latter can also be and/or comprise a prism. "Cylindrical" can also comprise a substantially cylindrical shape.” However, a common definition of a polygon is “a closed plane figure bounded by straight lines” (as defined by the Merriam-Webster Online Dictionary). As such, a “cylindrical shape”, as defined by paragraph 11 of the instant specification, would include all shapes that are a combination of polygons and circular/elliptical shapes. However, paragraph 46 of the instant specification states: “Alternatively, it is conceivable that the rechargeable battery 16 has a non-cylindrical shape. For example, said rechargeable battery 16 and/or the cell core 22 can be cuboid or at least substantially cuboid.” This contradicts the previous definition defining what is a cylinder, making the terms “non-cylindrical shape” in claim 1, and “cylindrical” in claims 5, 12 and 15 indefinite. For the purposes of claim interpretation, the term “non-cylindrical shape” will be interpreted in view of the definition provided in paragraph 46; thus, “non-cylindrical shapes” can include prisms, as the cuboid structure mentioned in paragraph 46 is inherently a prism.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5, 12 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In the instant case, claims 5, 12 and 15 do not include the limitation of the battery being non-cylindrical in shape, as required in claim 1, and attempt to replace the shape limitation with the limitation “cylindrical”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. At such a time, claims 5, 12 and 15 will not be examined on their merits.
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 1-4, 6, 8-10, 13-14, 16, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Verbrugge et al. (US 20140131059 A1; Henceforth, Verbrugge).
Regarding claim 1, Verbrugge teaches a machine tool powered by a rechargeable battery pack (The hand-held power tool includes a removable and rechargeable battery pack, Abstract), wherein the battery pack comprises a plurality of lithium-based battery cells (the battery pack including a plurality of lithium-based battery cells, Claims 1, 21 and 25 of Verbrugge). Verbrugge teaches the rechargeable battery can have a non-cylindrical shape (In some embodiments, the battery cells are lithium-based prismatic battery cells, [0086]), with the battery including a cell core (the prismatic battery cells can be implemented using, for example, a wound configuration, a wound and flattened configuration, a wound and folded configuration, or a layered and folded configuration, [0086]; the examiner notes this implies the electrode assembly/core cell of the prismatic battery may exist in one of these configurations, thus teaching an electrode assembly/core cell). Verbrugge teaches no point within the cell core being at a distance of more than 5 mm from a surface of the rechargeable battery (In some embodiments, the battery cells are lithium-based prismatic cells […] having dimensions of, for example, approximately 50 mm to approximately 80 mm in length, approximately 60 mm to approximately 90 mm in width, and approximately 3 mm to approximately 8 mm in height, [0086]; the examiner notes that every point within battery will be no more than 4 mm from the surface of the battery in the height direction, since the maximum height is approximately 8 mm) and the rechargeable battery has a capacity of at least 2.2 Ah (In some embodiments, the battery cells are lithium-based prismatic cells (e.g. between 1.5 Ah-5.0 Ah in battery capacity), [0086] and in exemplary embodiments, the battery cells have capacities of approximately, 1.5 Ah, 2.4 Ah, 3.0 Ah, 4.0 Ah, between 1.5 Ah and 5.0 Ah, etc., [0087]). The examiner notes the values of capacity (being 2.4, 3.0, and 4.0 Ah) and the distance to the surface of the rechargeable battery taught by Verbrugge lie within the instant ranges and therefore anticipates them. See MPEP 2131.03 (I).
Regarding claim 2, Verbrugge teaches the rechargeable battery as claimed in claim 1, and that the rechargeable battery contains lithium (In some embodiments, the battery cells are lithium-based prismatic cells, [0086], and The battery cells are lithium-based battery cells having a chemistry of, for example, lithium-cobalt ("Li--Co"), lithium-manganese ("Li--Mn"), or Li--Mn spinel. In some embodiments, the battery cells 1010 have other suitable lithium or lithium-based chemistries, such as a lithium-based chemistry that includes manganese, etc. [0087]).
Regarding claim 3, Verbrugge teaches the rechargeable battery as claimed in claim 1. Verbrugge teaches a sectional area of the rechargeable battery is at least 20 cm2 (In some embodiments, the battery cells are lithium-based prismatic cells […] having dimensions of, for example, approximately 50 mm to approximately 80 mm in length, approximately 60 mm to approximately 90 mm in width, and approximately 3 mm to approximately 8 mm in height, [0086]; the examiner notes that the prismatic batteries will have a sectional area, along the length-width direction of at least 5.0 cm x 6.0 cm = 30 cm2). The examiner notes the sectional area taught by Verbrugge lies within the instant range and therefore anticipates it. See MPEP 2131.03 (I).
Regarding claim 4, Verbrugge teaches the rechargeable battery as claimed in claim 1. Verbrugge teaches the ratio of surface area of the rechargeable battery to volume of the rechargeable battery is at least ten times greater than a reciprocal of a cube root of the volume (In some embodiments, the battery cells are lithium-based prismatic cells […] having dimensions of, for example, approximately 50 mm to approximately 80 mm in length, approximately 60 mm to approximately 90 mm in width, and approximately 3 mm to approximately 8 mm in height, [0086]; see Table 1, below). The examiner notes the factors between the ratio of surface area to volume and a reciprocal of a cube root of the volume taught by Verbrugge (see Table 1, below) lies within the instant range and therefore anticipates it. See MPEP 2131.03 (I).
Table 1: Examiner-calculated factors between the ratio of surface area to volume and a reciprocal of a cube root of the volume, using the minimum and maximum prismatic battery dimensions taught by Verbrugge in [0086]
Width (cm)
Length
(cm)
Height (cm)
Surface Area (cm2)
Volume (cm3)
Surface Area/ Volume (A)
1
V
3
(B)
Factor Different (A/B)
Min
Values
6.0
5.0
0.3
66.6
9
7.4
0.48
15.28
Max Values
9.0
8.0
0.8
171.2
57.6
2.97
0.26
11.32
Regarding claim 6, Verbrugge teaches the rechargeable battery as claimed in claim 1. Verbrugge teaches the rechargeable battery is specified to provide a discharge current of at least 20 A over at least 10 s (Table 7, reproduced below, teaches examples where an average sustained current of 27 A and 32 A are maintained over the course of 334 and 310 seconds, respectively). The examiner notes the values for sustained current lie within the instant range and therefore anticipates it. See MPEP 2131.03 (I).
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Table 7, reproduced from Verbrugge.
Regarding claim 8, Verbrugge teaches a rechargeable battery pack for a machine tool (the hand-held power tool includes a removable and rechargeable battery pack, Abstract) comprising at least two batteries as claimed in claim 1 (the battery pack including a plurality of lithium-based battery cells, Claims 1, 21, and 25 of Verbrugge; also see the claim 1 rejection, above).
Regarding claim 9, Verbrugge teaches a machine tool (the hand powered tool, Abstract) comprising at least one rechargeable battery as claimed in claim 1 and at least one rechargeable battery pack as claimed in claim 8 (the hand-held power tool includes a removable and rechargeable battery pack, Abstract; and the battery pack including a plurality of lithium-based battery cells, Claims 1, 21, and 25 of Verbrugge; see the rejections for claims 1 and 8, above).
Regarding claim 10, Verbrugge teaches the rechargeable battery as claimed in claim 1. Verbrugge teaches a battery cell with a capacity of at least 2.5 Ah (In some embodiments, the battery cells are lithium-based prismatic cells (e.g. between 1.5 Ah-5.0 Ah in battery capacity), [0086] and in exemplary embodiments, the battery cells have capacities of approximately, 1.5 Ah, 2.4 Ah, 3.0 Ah, 4.0 Ah, between 1.5 Ah and 5.0 Ah, etc., [0087]). The examiner notes the values of capacity (being 3.0, and 4.0 Ah) taught by Verbrugge lie within the instant ranges and therefore anticipates them. See MPEP 2131.03 (I).
Regarding claim 13, Verbrugge teaches the rechargeable battery as claimed in claim 2. Verbrugge teaches a sectional area of the rechargeable 3battery is at least 20 cm2 (In some embodiments, the battery cells are lithium-based prismatic cells […] having dimensions of, for example, approximately 50 mm to approximately 80 mm in length, approximately 60 mm to approximately 90 mm in width, and approximately 3 mm to approximately 8 mm in height, [0086]; the examiner notes that the prismatic batteries will have a sectional area, along the length-width direction of at least 5.0 cm x 6.0 cm = 30 cm2). The examiner notes the sectional area taught by Verbrugge lies within the instant range and therefore anticipates it. See MPEP 2131.03 (I).
Regarding claim 14, Verbrugge teaches the rechargeable battery as claimed in claim 2. Verbrugge teaches the ratio of surface area of the rechargeable battery to volume of the rechargeable battery is at least ten times greater than a reciprocal of a cube root of the volume (In some embodiments, the battery cells are lithium-based prismatic cells […] having dimensions of, for example, approximately 50 mm to approximately 80 mm in length, approximately 60 mm to approximately 90 mm in width, and approximately 3 mm to approximately 8 mm in height, [0086]; see Table 1, above). The examiner notes the factors between the ratio of surface area to volume and a reciprocal of a cube root of the volume taught by Verbrugge (see Table 1, above) lies within the instant range and therefore anticipates it. See MPEP 2131.03 (I).
Regarding claim 16, Verbrugge teaches the rechargeable battery as claimed in claim 2. Verbrugge teaches the rechargeable battery is specified to provide a discharge current of at least 20 A over at least 10 s (Table 7, reproduced above, teaches examples where an average sustained current of 27 A and 32 A are maintained over the course of 334 and 310 seconds, respectively). The examiner notes the values for sustained current lie within the instant range and therefore anticipates it. See MPEP 2131.03 (I).
Regarding claim 18, Verbrugge teaches a rechargeable battery pack for a machine tool (the hand-held power tool includes a removable and rechargeable battery pack, Abstract) comprising at least two batteries as claimed in claim 2 (the battery pack including a plurality of lithium-based battery cells, Claims 1, 21, and 25 of Verbrugge; see the claim 2 rejection, above).
Regarding claim 19, Verbrugge teaches a machine tool (the hand powered tool, Abstract) comprising at least one rechargeable battery as claimed in claim 2 and at least one rechargeable battery pack as claimed in claim 8 (the hand-held power tool includes a removable and rechargeable battery pack, Abstract; and the battery pack including a plurality of lithium-based battery cells, Claims 1, 21, and 25 of Verbrugge; see the rejections for claims 2 and 8, above).
Regarding claim 20, Verbrugge teaches the rechargeable battery as claimed in claim 10. Verbrugge teaches the rechargeable battery contains lithium (In some embodiments, the battery cells are lithium-based prismatic cells, [0086], and The battery cells are lithium-based battery cells having a chemistry of, for example, lithium-cobalt ("Li--Co"), lithium-manganese ("Li--Mn"), or Li--Mn spinel. In some embodiments, the battery cells 1010 have other suitable lithium or lithium-based chemistries, such as a lithium-based chemistry that includes manganese, etc. [0087]).
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.
Claims 7, 11 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Verbrugge.
Regarding claim 7, Verbrugge teaches the rechargeable battery as claimed in claim 1. Verbrugge teaches the rechargeable battery is specified to provide a discharge current of at least 50 A over at least 1 s (For example, the battery cells are capable of producing an average short-run discharge current of greater than or equal to approximately 55 amperes or between approximately 55 amperes and approximately 75 amperes, [0091]). The examiner notes that Verbrugge teaches a conventional method for determining the maximum power delivery of a hand-held power tool and/or the maximum efficiency the hand-held power tool (or motor) employs a dynamometer ([0119]) and the time length of the test is between approximately 10 seconds and approximately 25 seconds (e.g., 20.5 seconds) ([0119]). Thus, since Verbrugge teaches a short-run or short-duration is about 20-25 seconds ([0121]), the range taught by Verbrugge overlaps/encompasses the range taught by the instant claim. It has been held that, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to select the short-run discharge current from the prior art range, because the prior art teaches the desired property/utility over the entire range.
Regarding claim 11, Verbrugge teaches the rechargeable battery as claimed in claim 3. Verbrugge teaches the battery cells are lithium-based prismatic cells having dimensions of, for example, approximately 50 mm to approximately 80 mm in length, approximately 60 mm to approximately 90 mm in width, and approximately 3 mm to approximately 8 mm in height ([0086]). The examiner notes that the prismatic batteries will have a sectional area, along the length-width direction of at least 5.0 cm x 6.0 cm = 30 cm2 and at most 8.0 cm x 9.0 cm = 72 cm2. The examiner notes the range taught by Verbrugge overlaps/encompasses the range taught by the instant claim. It has been held that, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to select the capacity from the prior art range, because the prior art teaches the desired property/utility over the entire range.
Regarding claim 17, Verbrugge teaches the rechargeable battery as claimed in claim 2. Verbrugge teaches the rechargeable battery is specified to provide a discharge current of at least 50 A over at least 1 s (For example, the battery cells are capable of producing an average short-run discharge current of greater than or equal to approximately 55 amperes or between approximately 55 amperes and approximately 75 amperes, [0091]). The examiner notes that Verbrugge teaches a conventional method for determining the maximum power delivery of a hand-held power tool and/or the maximum efficiency the hand-held power tool (or motor) employs a dynamometer ([0119]) and the time length of the test is between approximately 10 seconds and approximately 25 seconds (e.g., 20.5 seconds) ([0119]). Thus, since Verbrugge teaches a short-run or short-duration is about 20-25 seconds ([0121]), the range taught by Verbrugge overlaps/encompasses the range taught by the instant claim. It has been held that, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to select the short-run discharge current from the prior art range, because the prior art teaches the desired property/utility over the entire range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN P MURPHY whose telephone number is (571)272-9321. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas A Smith can be reached at (571) 272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RPM/Examiner, Art Unit 1752
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752
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