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 .
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.
Claims 3 and 5-8 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 term “cut surface” in claims 3 and 5-8 is used by the claims to mean “cross section,” while the accepted meaning is “a surface that has been cut.” The term is indefinite because the specification does not clearly redefine the term.
For the purpose of examination, the limitations will be read as “cross section.”
Specification
The disclosure is objected to because of the following informalities: the specification repeatedly and incorrectly uses the phrase “cut surface” in place of “cross section.”
Appropriate correction is required.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuchimoto et al. (JP 2014110317 A; citations refer to attached English translation).
Regarding claim 1, Fuchimoto discloses an electrical storage device comprising electrodes (21 and 22) and separator (23) in a case comprising a first portion (13) with a bottom portion (13a) and a tubular portion (13b), a second portion (12) with a lid-like portion (12a) that covers the opening in the first portion and a surrounding wall portion (12b) that covers the tubular portion from the outside, and a gasket (31) between the first and second portions with non-contact portions (30) between the gasket and case portions (Fuchimoto Figs. 2-6 and [0030]-[0031]).
Fuchimoto does not teach that the storage device is a battery. Fuchimoto teaches that the device may be a lithium-ion secondary battery (Fuchimoto [0045]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any of the embodiments listed by Fuchimoto, including a battery, since they are listed as acceptable options.
Regarding claim 2, the examples include non-contact portions between the gasket and second portion (Fuchimoto Figs. 2-6).
Regarding claim 3, Fuchimoto does not teach that the length of the gap should be 20-95% of the length of the outer surface of the second portion. Fuchimoto teaches that the gap should be 20% or more of the gasket height, which overlaps the range of the instant claim. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any gap length within the range of Fuchimoto, including values within the range of the instant claim.
Regarding claim 4, the examples include non-contact portions between the gasket and first portion (Fuchimoto Figs. 2-6).
Regarding claim 5, Fuchimoto does not teach that the length of the gap should be 40-80% of the length of the tubular portion of the first portion. Fuchimoto teaches that the gap should be 20% or more of the gasket height, which overlaps the range of the instant claim. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any gap length within the range of Fuchimoto, including values within the range of the instant claim.
Regarding claim 6, the tubular portion has a cylindrical shape (Fuchimoto [0022]), and there are two gaps 60% and 20% of the gasket height in length (Fuchimoto [0030]), which is necessarily more than 10 µm.
Regarding claim 7, the tubular portion of the first member has a cylindrical shape (Fuchimoto [0022]) and includes a first outer diameter portion adjacent to the bottom portion, a wider second diameter portion, and a step portion connecting them (Fuchimoto Fig. 1).
The gap 34, which overlaps the step portion, is 60% of the height of the gasket (Fuchimoto Fig. 1 and [0022]). The step portion is therefore necessarily less than L1/3 from the center of the overlap portion. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select such a configuration, as there is no guidance given beyond the figures.
Regarding claim 8, the gasket extends beyond the crimped portion of the lid (Fuchimoto Fig. 1) and is therefore necessarily longer than the length of the second portion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A CORNO JR whose telephone number is (571)270-0745. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
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/J.A.C/ Examiner, Art Unit 1722
/ANCA EOFF/ Primary Examiner, Art Unit 1722
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