deDETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claims 1, 3, 4, 7-9 are objected to because of the following informalities:
Claims 1, 4, 7-9 are replete with instances where two words run together without appropraite spacing. All instances of these should be corrected. For example, within claim 1, there is at least, but not limited to, words running together at: claim 1, line 1 (one occurrence); line 2 (two occurences). The list is not non-limiting; Appilcant should review the entire claim set including all claims for proper grammar and spacing and make appropriate corrections.
Claim 3: “according to either of claim 1” is not appropriate and should be corrected to “according to claim 1…”
Appropriate correction is required.
Claim Interpretation
3. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
4. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
5. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: in claim 1:
“a restoring member mounted to the output electrode base, the restoring member being configured to apply an acting force to the protective cover to switch same from the open state to the closed state.”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function (see claim 3), and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
6. 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.
7. Claim 1, and thus dependent claims 2-9, claim 2, claim 3, and thus dependent claims 4-6, claim 7, and thus dependent claim 8, claim 8, claim 9, claim 10, and thus dependent claim 11, and claim 11 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.
Claim 10 incorporates the subject matter of claim 1 as an independent claim; claim 11 incorporates the subject matter of claim 10 as an independent claim. Accordingly, claims 1, 10, and 11 are addressed concurrently.
Claim 1 recites in part, “…configured to apply an acting force to the protective cover to switch same from the open state to the closed state.” The meaning of “same” is not clear and does not invoke proper antecedent basis to any entity with the claim set, thereby rending the claim indefinite. It appars this should be corrected to “to switch the protective cover…”
Claim 2 recites a functional wherein statement that is entirely unclear in its meaning. It is not clear how the external force achieves the “so as” statement in the context of claims 1 and 2. As best understood by the Examiner from the specificaiton, the restoring member1 applies the acting force, defined in claim as switching the protective cover from the open state to the closed state, as a torsion spring unit; there is no “action of external force” that is utilized “so to apply the acting force” to the protective cover; rather, it is the restoring member that achieves this function. The metes and bounds of the claim are entirely clear as it recites ambiguous functional language with no clear structure that achieves said functionality, wherein looking to the specificaiton does not illumiante a person having ordinary skill in the art what is required to meet the functional, result-obtained language that appears counter to what is taught in the specification (see MPEP 2173.05(g)).
Claim 3 recites, “a torsion spring body, restricted to the output electrode base…” The meaning of a torsion spring body “restricted to” the output electrdoe base is entirely unclear.
Claim 7 recites “the direction of the axis of rotation of the protective cover” in lines 2-3. There is insufficent antecedent basis for either of these limtiations.
Claim 8 recites, “the other end of the guide recess..” in line 3. There is insufficient antecedent basis for this limitation.
Claim 8 recites, “one end of the guide recess communicates with the mounting hole, the other end of the guide recess extends in a radial direction of the mounting hole, and the mounting post is allowed to slide into the mounting hole along the guide recess…” The claim is indefinite given claim 8 depends on claim 7 which defines that there is a mounting hole on each of two opposite sides (i.e., there are, in effect, two mounting holes), and there are also two mounting posts defined. Accordingly, the claim fails to invoke proper antecedent basis to the prior features and does not present an understandable construct in terms of what is necessary to meet the claim. For example, is there a single guide recess that is communcating with [each] mounting hole, or are there respective guide recesses communicating with a corresponding mounting hole of the two mounting holes defined in claim 7? It would also appear that “is allowed” should be corrected to “is capable of” or “is configured to” as this is awkward language. Furthermore regarding claim 8, it is not clear how a guide recess “communicates with” the mounting hole (i.e., how do a recess and a hole communicate with one another?). Accordingly, all of these issues render the claim indefinite as to what is requried to meet the claim.
Claim 9 recites, “the output electrode protective structure covercomprises…” There is insufficent antecedent basis for this limitation. It is believed (?) this is intended to claim “the protective cover”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
8. 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.
9. Claims 1-2 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ohtsuka et al. (US 2002/0168566).
Regarding claim 1, Ohtsuka teaches a battery conncecting portion-protecting cover including a conventional protecting cover 101 (“an output electrode protective structure”) (Figs. 8-10; P1-14) comprising:
a cover body 101a (“an output electrode base”) having a mounting face (Figs. 8-9);
a cover piece portion 101b (“a protective cover”) mounted to the cover body 101a (“output electrode base”), the cover piece portion 101b (“protective cover”) being rotatable relative to the cover body 101a (“output electrode base”) to switch between an open state in which the mounting face is exposed and a closed state in which the mounting face is concealed (P10); and
a hinge portion 107 (“restoring member”) mounted to the cover body 101a (“output electrode base”), the hinge portion 107 (“restoring member”) being configured to apply an acting force to the cover piece portion 101b (“protective cover”) to switch [the cover piece portion 101b (“protective cover”)] from the open state to the closed state (P13-14).
Regarding claim 2, the claim is not entirely unclear in its meaning; however, it is examiend as best as possible for compact prosecution purposes. The hinge portion 107 (“restoring member”) of Ohtsuka is taught as allowing opening and closing of the cover piece portion 101b, wherein opening is achieved by an operator holding the cover piece portion 101b with one hand so as to open it (P13-14) (i.e., it is held open under an action of external force) such that the hinge portion 107 elastically deforms (P13-14). The the hinge portion 107 (“restoring member”) is elastically returned to its clsoed condition when the action of external force is removed (P13-14). As best understood by the Examiner, this is the same way the restoring member of the instant application specification is operating.
Regarding claim 10, Ohtsuka teaches a battery, comprising an output electrode protective structure according to claim 1 (P2-4).
Regarding claim 11, Ohtsuka teaches a vehicle (“a power consuming device”), comprising a battery according to claim 10 (P2-4).
10. Claims 1-2 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou (CN 214542703)2 (machine translation provided).
Regarding claim 1, Zhou teaching analogous art of a terminal 31 (“an output electrode3”) protection apparatus (“protective structure”) (see Figs. 1-11) comprising:
a housing 20 (“outuput electrode base”) having a mounting face,
a protective cover 10 mounted to the housing 20 (“outuput electrode base”), the protective cover 10 being rotatable relative to the output electrode base 20 to switch between an open state in which the mounting face is exposed and a closed state in which the mounting face is concealed; and
a restoring member (elastic component 40 in Figs. 1-7 OR reset torsion spring 48 in Figs. 8-11) mounted to the output electrode base 20, the restoring member being configured to apply an acting force to the protective cover to switch same from the open state to the closed state (P72, 89-90; entire disclosure relied upon).
Regarding claim 2, the claim is not entirely unclear in its meaning; however, it is examiend as best as possible for compact prosecution purposes. The restoring member (elastic component 40 in Figs. 1-7 OR reset torsion spring 48 in Figs. 8-11) is taught as applying the acting force to the protective cover (to switch it from the open state to the closed state – P72, 89-90), wherein it takes an external force (i.e., a user) to open the protective cover. Accordingly,
as best understood by the Examiner, this is the same way the restoring member of the instant application specification is operating.
Regarding claim 7, Zhou teaches teaches wherein the housing 20 (“output electrode base 20”) is provided with two pins 46 (“mounting posts”) spaced apart in [a] direction of [an] axis of rotation of the protective cover 10, the protective cover 10 is provided with a mounting hole on each of two opposite sides in the direction of the axis of rotation thereof [see Fig. 10; one of which is pointed to below in truncated Fig. 10 and intrinsically pairs with the corresponding pin 46 (“mounting post”) to provide an operable construct], and each of the pins 46 (“mounting posts”) is rotatably inserted in one of the mounting holes correspondingly (P72, 89-90):
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Claim Rejections - 35 USC § 103
11. 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.
12. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ohtsuka et al. (US 2002/0168566) as applied to at least claim 1 above, and further in view of Liu et al. (WO 2020/244308) (published Dec. 10th 2020; using US 2022/0094012 family member as an English-language translation thereof).
Regarding claim 9, Ohtsuka teaches wherein the [cover piece portion 101b (“protective cover”) (?)4] comprises:
a protective cover top wall (see Figs. 8-9); and
a protective cover side wall (see Figs. 8-9) extending from the protective cover top wall toward the cover body 101a (“an output electrode base”).
Ohtsuka fails to teach the cover piece portion 101b (“protective cover”) also comprises:
a detachable side wall connected to one side of the protective cover side wall away from the protective cover top wall, wherein a break slot is disposed at a joint between the detachable side wall and the protective cover side wall.
In the same field of endeavor, Liu teaches a terminal protection device for a battery module, wherein an analogous protective cover 200 includes a protective cover top wall 210, a protective cover side wall extending from the top wall 210 toward the analgous “output electrode base” 100, wherein the protective cover 200 also includes a removable side wall 221 (“detachable side wall”) (Figs. 5, 9) connected to one sie of the protective side wall away from the protective cover top wall, wherein a break slot 230 is disposed at a joint between the detachable side wall and the protective cover side wall (see Fig. 5 reproduced below; entire disclosure relied upon):
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Liu teaches the construct allows for protection of the terminal when the battery modules do not need to be connected to each other, and allows for a portion of the plate to be removed when needed so that electrical connections may be made (P77-82).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to provide the cover piece portion 101b (“protective cover”) of Ohtsuka with the removable side wall 221 (“detachable side wall”) (Figs. 5, 9) with the details as claimed given the technique and construct are known in the art and provides the predictable, taught result of allowing for protection of the terminal when the battery modules do not need to be connected to each other, and allows for a portion of the plate to be removed when needed so that electrical connections may be made (P77-82).
Compact Prosecution – Claim Analysis
13. Per MPEP § 2143.03:
“"All words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). (The Board erred because it ignored claim language that it considered to be indefinite, and reached a conclusion that the claim would have been obvious based only on the rest of the claim.). However, an examiner should not simply speculate about the meaning of the claim language and then enter an obviousness rejection in view of that speculative interpretation. In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (The "considerable speculation" by the examiner and the Board as to the scope of the claims did not provide a proper basis for an obviousness rejection.)
MPEP § 2173.06 further notes that when there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Within claim 3, the claim recites “a torsion spring body, restricted to the output electrode base” which is not clear in its meaning or its requirements. As such, a prior art rejection is not entered as to what would require speculations about the meaning thereof; however, based on the structure of the specification of the at least one torsion spring unit, Applicant is directed to Zhou (CN 214542703) as applied above to at least claim 1, wherein Zhou teaches a restoring member (reset torsion spring 48 in Figs. 8-11) mounted to the output electrode base 20, the restoring member being configured to apply an acting force to the protective cover to switch same from the open state to the closed state (P72, 89-90), and having all of the structure recited in claim 3 less the unclear “restricted to” feature (it is unclear whether this is or is not met given the meaning is not clear), and claims 4-6 dependent thereon are also either taught by Zhou or obvious modifications thereof pertaining to basic structural design of a reset torsion spring and how to configure it using pin base 47 and pins 46 in conjunction with protective cover 10:
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It is noted claim 8 is also indefinite to the point of precluding prior art examination as detailed above for the reasons set forth under 35 U.S.C. 112(b)/second paragraph. A rejection is not made under 35 U.S.C. 103 based on what would be considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Conclusion
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All of the following are drawn to battery output electrode/terminal protective structures with hinge (i.e., “resotring member”) features: Liu et al. (US 2020/0127253)
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Yoshimura et al. (US 5,977,485):
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Kameyama et al. (US 5,576,516):
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Siedlik et al. (US 5,910,029) teaches a two-piece batetry shield with hinge member design options (see Figs. 1-14C).
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15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BILLIET whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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, Ula C Tavares-Crockett can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BILLIET/Primary Examiner, Art Unit 1729
1 Iterpreted under 35 U.S.C. 112(f)/sixth paragraph as outlined above to cover the corresponding structure described in the specification as performing the claimed function (claim 3), and equivalents thereof
2 Cited as “D1” by the ISA and D2 by the EP Search Opinion
3 An output electrode or a terminal is simply a metal constituent used to pair one electronic device with another; whether it is intended for “output,” “input,” or both does not alter the basic structure of the output electrode or terminal.
4 See rejection under 35 U.S.C. 112(b)/second paragraph
Prosecution Insights