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 papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
3. The information disclosure statements (IDS) submitted on 6/14/2024 and 9/29/2025 has/have been received and complies with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. Accordingly, the information disclosure statement(s) is/are being considered by the examiner, and a copy with initials is attached herewith.
Drawings
4. The drawings were received on 6/14/2024. These drawings are acceptable.
Claim Rejections - 35 USC § 103
5. 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.
6. 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.
7. 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.
8. Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiraga et al (US 20180323419 A1) in view of Ku Specification No: "Cylindrical Lithium-ion Battery - MURATA US18650VTC5D - Product Specification", 1 December 2018 (2018-12-01), XP093286153, (URL:https://www.nkon.nl/amfile/file/download/file/202/product/3463/) and Masaaki et (WO 2015133568 A1).
Regarding claims 1-2, Shiraga discloses a cylindrical secondary battery (10) comprising an exterior housing can (21) having a cylindrical barrel part and one end sealed with a bottom plate and an electrode assembly (16) disposed inside the barrel part, wherein a positive electrode plate (13) and a negative electrode plate (11) are wound via a separator (15) in the electrode assembly (16) [Fig. ; paragraph 00170027-0029].
Shiraga remains silent about the outer diameter as claimed. However, it is known in the art that Murata battery has a proportion of an average value of outer diameters at a center of the barrel part being a center in an axial direction of the exterior housing can relative to an average value of outer diameters on a bottom end of the barrel part is greater than or equal to 100. 10% and less than or equal to 100.50% in the exterior housing can [section 6.1, 6.2]. Shiraga/Murata battery is silent that a standard deviation of the outer diameters at the center of the barrel part is greater than or equal to 0.020 mm and less than or equal to 0.050 mm. However, Masaaki teaches a battery wherein an axial core (7) has a shape in which the external diameter dimension decreases at a predetermined ratio from a central region (R2) in the longitudinal direction toward the two ends (11) and (13) in the longitudinal direction. The predetermined decreasing ratio is set to such a value that no wrinkles occur in the sheet-formed separator (3) during the initial winding in which an electrode plate group (5) is wound around the axial core (7) [Abstract; Fig. 3]. Assuming that the variation of the diameters is focused on the central part, as largely known in art (as taught by Masaaki), this corresponds to a max variation around 100.8%.
Therefore, the claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art (KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007)) and an ordinarily skilled artisan would have recognized such a substitution without undue experimentation and with a reasonable expectation of success.
9. Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiraga et al (US 20180323419 A1) in view of Ku Specification No: "Cylindrical Lithium-ion Battery - MURATA US18650VTC5D - Product Specification", 1 December 2018 (2018-12-01), XP093286153, (URL:https://www.nkon.nl/amfile/file/download/file/202/product/3463/) and Masaaki et (WO 2015133568 A1) as applied in claim 1 and further in view of Anonymous: "Cylindrical Cells - Battery Design", 1 January 2020 (2020-01-01), XP093286532,
(URL:https://www.batterydesign.net/battery-cell/formats/cylindrical-cells/).
Regarding claim 3, Shiraga teaches the battery as in claim 1 and further teaches the composition of the negative electrode comprises a graphite and a silicon material. And the silicon material in an amount of not less than 4 mass% and not more than 20 mass % of the total mass of the graphite and the silicon material [paragraph 0020-0021; claims 2, 7]. Shiraga teaches that the exterior housing can (21) is made from iron (Fe) [paragraph 0028] remains silent about the thickness of the housing can. However, this is a parameter which the skilled person would easily adjust, depending on the circumstances, without exercising inventive skill, as commonly employed in the state of the art (Wall thickness ~0.22 to 0.28mm) [page 2, Can Housing: models 18650 and 21700].
Therefore, the claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art (KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007)) and an ordinarily skilled artisan would have recognized such a substitution without undue experimentation and with a reasonable expectation of success.
Double Patenting
10. 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.
11. Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18720197(reference application). Although the conflicting claims are not identical, they are not patentably distinct from each other because the claimed subject matter in the instant patent application encompasses the claimed subject matter as recited in the ‘197 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUHAMMAD S SIDDIQUEE whose telephone number is (571)270-3719. The examiner can normally be reached Monday - Friday, 8:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached at (571) 272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MUHAMMAD S SIDDIQUEE/Primary Examiner, Art Unit 1723
Prosecution Insights