DETAILED 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 .
Specification
2. The disclosure is objected to because of the following informalities: consistency within the claims and specification. The claims recite, “a first elastic part” and “a second elastic part.” The specification utilizes the terms ““a first elastic member” and “a second elastic member.” Consistency should be maintained throughout the specification and claims (see MPEP 608.01(o)):
Usually the terminology of the claims present on the filing date of the application follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
Accordingly, the claims should be amended such that the claims follow the nomenclature of the specification and such that a variety of terms for the same thing is not present.
Appropriate correction is required.
Specification & Drawings
3. The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o):
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification. See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103.
Correction of the following is required (if adequately and fully supported by the drawings alone1):
“the first spring extends along an inner surface of the exterior” (claim 7)
“the second spring extends along the inner surface of the exterior”) (claim 8)
“a first portion of the circumferential part” (claims 12 and 16)
“a second portion of the circumferential part” (claim 16)
The language above and corresponding reference numerals in each of the specification and drawings are required for any claim terms. With respect to claims 7 and 8, it is noted that the Examiner does not see how the first spring 610 or the second spring 620 extends along an/the inner surface of the exterior 200, wherein said surface has to be different from the already claimed “one inner surface of the circumferential part 200a” (parent claim 3) and the “another inner surface of the circumferential part 200a” (parent claim 4).
As best understood by the Examiner, one of the following is considered “an inner surface of the exterior” given the exterior is made up of two exterior sheets such that these would be separate options from one another:
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The first spring 610 and the second spring 620 (see Fig. 6) do not extend along either of these options (i.e., the exist only within the circumferential part 200).
Appropriate correction and/or explanation is required.
4. The drawings are objected to under 37 CFR 1.83(a). The drawings must show and label (see MPEP 608.01(o) above) every feature of the invention specified in the claims. Therefore, the following features:
“an inner surface of the exterior” (claim 1)
“the first spring extends along an inner surface of the exterior” (claim 7)
“the second spring extends along the inner surface of the exterior”) (claim 8)
“a first portion of the circumferential part” (claim 12)
must be labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
5. Claims 1, 5, 10, 11, and 16 are objected to because of the following informalities:
Claim 1: proper subject-verb agreement (prevent should be prevents)
Claim 5: shorthand writing and failure to invoke full and proper antecedent basis. Claim 5 should be rewritten as follows:
“..wherein the first elastic [member] is a first spring, and the second elastic [member] is a second spring.”
Claim 10: shorthand writing and failure to invoke full and proper antecedent basis (see “the first and second vent members”).
Claims 11 and 16: proper subject-verb agreement (including should be includes)
Claim 11: invocation of full antecedent basis; correction can be made by amending “the gas being discharged to the outside” to include when this occurs (e.g., see claim 9).
Claim 11: shorthand writing and and failure to invoke full and proper antecedent basis (“the first and second vent member” should be corrected to “the first vent member and the second vent member”).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
6. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
7. Claim 1, and thus dependent claims 2-17, claim 2, and thus dependent claims 3-9; claim 7, and thus dependent claim 8; claim 8; claim 10; claim 13; claim 17; and claim 18, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 18 incorporates the subject matter of claim 1 and is thus addressed concurrently therewith.
A) Claim 1 recites the use of “a predetermined value.” The disclosure as a whole only ever uses the term “a certain value,” wherein the scope of the terms is not the same such that claiming of a predetermined value violates the written description. Correction can be made by changing amending this to “a certain value” wherever it occurs in the claim set.
B) Claim 1 recites in part:
“…wherein the first vent member and the second vent member are biased towards each other such that when the internal pressure of the exterior is below the predetermined value the first vent member contacts the second vent member within a circumferential part to prevent the gas from the exterior to be discharged and when the internal pressure of the exterior is equal to or greater than the predetermined value the first vent member and the second vent member do not contact each other to allow the gas from the exterior to be discharged to the outside of the secondary battery.”
The language of the first and second vent members being biased towards each other to achieve the results obtained in the subsequent lines has no basis in the written description and Applicant makes no comments as to support of the newly added claims2, wherein per Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007), this is sufficient to make such a rejection:
Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.")
Future claim amendments should be accompanied with comments that specifically point out support for any claim amendments. See MPEP 2163, section 3(b); MPEP § 714.02; and MPEP § 2163.06:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007)
"Applicant should ... specifically point out the support for any amendments made to the disclosure."
C) Regarding the quoted section in section B (claim 1) that has no written description basis in the original disclosure: the limitation recites a result obtained that has no limits structurally and covers every conceivable means for achieving the stated result/functionality, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim and violates the written description requirement. A claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). It appears both are true in the current instance.
MPEP 2173.05(g) notes that unlimited functional/property claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167.
Accordingly, the limitation of:
“…wherein the first vent member and the second vent member are biased towards each other such that when the internal pressure of the exterior is below the predetermined value the first vent member contacts the second vent member within a circumferential part to prevent the gas from the exterior to be discharged and when the internal pressure of the exterior is equal to or greater than the predetermined value the first vent member and the second vent member do not contact each other to allow the gas from the exterior to be discharged to the outside of the secondary battery”
is an unlimited functional/result feature reciting results achieved that covers every conceivable structure/(means) for achieving the stated results while the specification discloses at most only those known to the inventor and is comparable to the Hyatt single means claim scenario (Id.); the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved; and the claim is in effect a broad genus claim with the specification failing to clearly delineate what is structurally rquried to meet the functional clause. Accordingly, the full scope of the claim is not considered adequately supported by the written description for the reasons outlined above.
D) Claim 2 recites, “wherein the first vent member and the second vent member are biased twoards each other by at least one elastic part.” There is no such disclosure or written description of the use of more than one elastic part (i.e., “at least one”) or that the inventor’s contemplated such at the effective filing date of the disclosure. Moreover, “at least one” is a range that allows for any number of elastic parts, wherein the disclosure only teaches the use of a single elastic part 600 that includes a first elastic member 610 and a second elastic member 620 that make up a singular elastic part 600. The written description does not allow for three elastic parts, four elastic parts, etc., all of which are encompassed by “at least one elastic part.” Accordingly, the feature violates the written description. The issue extends to the dependent claims reciting same.
E) Claims 7 and 8 each recite features having no written description basis, are not shown in the drawings, and Applicant makes no comments as to how the features are supported (see section A, Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) quoted case law in terms of this statement being sufficient to make the rejection). Although more is not required, it is noted that claim 3 defines the first elastic part 610 (i.e., the first spring 610) is between one inner surface of the circumferential part 210a and the first vent member 410. As shown in Figs. 5-6, the first spring 610 does not extend along an inner surface of the exterior 200. Appropriate explanation is required if it is contended that the feature is somehow supported; see additional commentary and the annotated figure within the specification/drawings objection above with respect to these claims.
F) Claim 10 requires the first and second vent members to extend from the inner surface of the exterior. The feature has no written description basis and Applicant makes no comments as to how the feature is supported. As best understood by the Examiner, one of the following is considered “an inner surface of the exterior” given the exterior is made up of two exterior sheets such that these would be separate inner surfaces from one another:
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The first vent member 410 and the second vent member 420 do not extend from the same surface such that the feature is not supported.
G) Claim 13 recites language with no written description basis and Applicant does not comment how the feature is supported. It appears based on P36-37 of the PGPUB that this language could be clarified with respect to the inner surface that the electrode lead 300 protrudes.
H) Claim 17 recites language with no written description basis and Applicant does not comment how the feature is supported (see Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) quoted case law in terms of this statement being sufficient to make the rejection). A claim may lack written description support when the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). MPEP 2173.05(g) further notes that unlimited functional/property claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description.
Appropriate correction is required.
8 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.
9. Claim 1, and thus dependent claims 2-17; claim 5, and thus dependent claims 6-9; claim 7, and thus dependent claim 8; claim 9; claim 16; claim 17; and claim 18 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 18 incorporates the subject matter of claim 1 and is thus addressed concurrently therewith.
A) Claim 1 recites the limitation of:
“…wherein the first vent member and the second vent member are biased towards each other such that when the internal pressure of the exterior is below the predetermined value the first vent member contacts the second vent member within a circumferential part to prevent the gas from the exterior to be discharged and when the internal pressure of the exterior is equal to or greater than the predetermined value the first vent member and the second vent member do not contact each other to allow the gas from the exterior to be discharged to the outside of the secondary battery”
The language has no basis within the original description (see rejections under 35 U.S.C. 112(a)/first paragraph above) and no comments are made by Applicant as to support such that the Examiner is unclear what is structurally necessary to meet the claim. For example, just by way of having one of the first vent member and/or second vent member having a shape as shown in Fig. 2, is this sufficient to meet the result-obtained feature that does not exist in the instant application? Or does the functional/result-obtained language require claim 1 to have the structural requirements of the embodiment of Figs. 5-6 (i.e., an elastic part 600; see P51-54 of the PGPUB)? The answer is not clear from the claim terms or disclosure, such that metes and bounds of the claim are not clear such that the claim is rendered indefinite.
Given the metes and bounds of the claim are not clear for the reasons outlined above, the quoted limitation is held as reciting ambiguous functional language in which there is not a clear cut indication of the scope of the subject matter covered by the claim, the boundaries are not well-defined as the claim language only states a problem solved or result obtained, and one or ordinary skill in the art would not know from the claim terms what structural requirements is/are encompassed by the claim (MPEP 2173.05(g)). When claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); MPEP 2173.05(g).
B) Claim 1 recites in part, “the first vent member and the second vent member contacts the second vent member within a circumferential part to prevent the gas from the exterior to be discharged…” The claim is unclear given it is not clear what entity the “circumferential part” exists within/as. In other words, a circumferential part [of what entity?]. It is not clear from the claim whether the circumferential part is a portion of the second vent member (i.e., the second vent member has a circumferential part, and the first vent member contacts the second vent member within a circumferential part [of the second vent member])? The entity that the circumferential part is a part of is required to understand the construct of the claim and the structural cooperative relationships of the elements recited.
C) Claim 5 recites the limitation of:
“wherein the first and second elastic parts are first and second springs.”
It is not clear from the claim if [each] first and second elastic part are first and second springs, or if this is meant to define the first elastic part is a first spring, and the second elastic part is a second spring. Accordingly, the metes and bounds of the claim are unclear rendering the claim indefinite.
D) Claim 7 recites, “an inner surface of the exterior.” Claim 1 already recites “an surface of the exterior.” The claim is thus indefinite as it is not clear if this is a failure to invoke proper antecedent basis, or this is intended to be a [second] inner surface. The issue compounds at claim 8 as it is not clear if the inner surface of the exterior is the one in claim 1, or the one in claim 7, or if they are the same.
E) Claim 9 recites, “wherein a gas discharge path of the gas being discharged from the exterior to the outside of the secondary battery…” Claim 1 already recites, “…a path through for the gas within the exterior to be discharged to the outside of the secondary battery…” Accordingly, the claim is thus indefinite as it is not clear if this is a failure to invoke proper antecedent basis, or this is intended to be a [second] gas discharge path.
F) Claim 16 recites “the sealing part on the second portion..” There is insufficient antecedent basis for a sealing part that is on the second portion. This should be “of the second portion”
G) Claim 17 recites a feature having no basis within the written description feature and recites a functionality not matched to any specific structure, composition, or orientation of the vent part that achieves the functionality claimed. Accordingly, it is not clear from the specification or the claims what is structurally necessary to achieve the functionality claimed that lacks any basis within the instant application. No such feature or capability is taught for the first and second vent members in the instant application. Thus, the claim is held as reciting ambiguous functional language in which there is not a clear cut indication of the scope of the subject matter covered by the claim, the boundaries are not well-defined as the claim language only states a problem solved or result obtained, and one or ordinary skill in the art would not know from the claim terms what structural requirements is/are encompassed by the claim (MPEP 2173.05(g)).
Appropriate correction is required. The claims will be examined as best as possible for prior art examination and double patenting examination purposes.
Claim Rejections - 35 USC § 102
10. 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.
11. Rejection A: Claims 1-4, 10-13, and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (US 2010/0239895).
First Interpretation
Regarding claim 1, Yang teaches a secondary battery 100 comprising:
an electrode assembly having a structure in which electrodes and separators are alternately disposed (P5, 21);
a battery case 110 (“an exterior”) having a receiving part 120 (“an inner space”) in which the electrode assembly is accommodated (Fig. 1; P20, 49);
a porous film 220 that is “a gas and liquid separation film that is capable of allowing a gas component to pass therethrough while maximally restraining a liquid component, i.e., an electrolyte, from passing therethrough” (P37, 58; Figs.1-4) (i.e., “a waterproof part”) provided within the battery case 110 (“the exterior”) to surround at least a portion of a circumference of the electrode assembly (i.e., intrinsically the portion adjacent to one-way valve 200 where porous film 220 is present) (Figs. 1-4; P34) and configured to allow a gas to pass through the waterproof part, but prevents a liquid (the electrolyte) within the exterior from passing through the waterproof part, the waterproof part facing an inner surface of the battery case 110 (“exterior”) (P37, 58; Figs. 1-4; intrinsically understood from the figures); and
a vent part (230, 210) including a variable film 230 (“first vent member”) and a first film 210 (“second vent member”) (Fig. 2-33), the vent part (230, 210) configured to provide a path through for the gas within the battery case 110 (“exterior”) to be discharged to an outside of the second battery 100 when an internal pressure of the battery case 110 (“exterior”) exceeds a [certain] value (P56-59);
wherein the variable film 230 (“first vent member”) and the first film 210 (“second vent member”) 210 are biased towards each other such that when the internal pressure of the battery case 110 (“exterior”) is below the [certain] value the first vent member 230 contacts the second vent member 210 within a circumferential part [see Figs. 1-4- sealed portion 130 of the battery case 110 (“exterior”)] to prevent the gas from the battery case 110 (“exterior”) to be discharged (Fig. 2; P23, 26-28, 31, 51-60), and when the internal pressure of the battery case 110 (“exterior”) is equal to or greater than the [certain] value the first vent member 230 and the second vent member 210 do not contact each other to allow the gas from the battery case 110 (“exterior”) to be discharged to the outside of the secondary battery (Fig. 3; P23, 26-28, 31, 51-60; entire disclosure relied upon).
The “biased towards each other” feature is expanded upon for clarity of the record. The first film 210 (“second vent member”) is directly attached to the sealed portion 130 of the battery (P52), wherein the first film is taught as being made of a material having a specific elastic force or a restoring force (P31). The variable film 230 (“first vent member”) is taught as being made of a flexible, elastic material with the upper end thereof bent toward the first film 210 (“second vent member”), and the variable film (“second vent member”) is coupled to the first film during normal operation with this feature maintained after the exhaust of the gas (P26-28). Given the description above and Figs. 2-3, it appears reasonable to conclude that the variable film 230 (“first vent member”) 230 and the first film 210 (“second vent member”) 210 are biased towards each other such that when the internal pressure of the exterior is below the [certain] value the first vent member 230 contacts the second vent member 210 within a circumferential part to prevent the gas from the battery case 110 (“exterior”) to be discharged. In other words, if they are both made of elastic materials with a restoring force, and have the configuration shown in Figs. 2-3, it appears the feature that they are biased towards each other is met and the claim is anticipated.
Second Interpretation
Regarding claim 1, Yang teaches a secondary battery 100 comprising:
an electrode assembly having a structure in which electrodes and separators are alternately disposed (P5, 21);
a battery case 110 (“an exterior”) having a receiving part 120 (“an inner space”) in which the electrode assembly is accommodated (Fig. 1; P20, 49);
a porous film 221 that is “a gas and liquid separation film that is capable of allowing a gas component to pass therethrough while maximally restraining a liquid component, i.e., an electrolyte, from passing therethrough” (P37, 58; Figs.1-6) (i.e., “a waterproof part”) provided within the battery case 110 (“the exterior”) to surround at least a portion of a circumference of the electrode assembly (i.e., intrinsically the portion adjacent to one-way valve 200 where porous film 220 is present) (Figs. 1-4; P34) and configured to allow a gas to pass through the waterproof part, but prevents a liquid (the electrolyte) within the battery case 110 (“exterior”) from passing through the waterproof part, the waterproof part facing an inner surface of the battery case 110 (“exterior”) (P37, 58; Figs. 1-6; intrinsically understood from the figures); and
a vent part [211, 241; optionally also variable film 230] including a first film 211 (“first vent member”) and a second film 241 (“second vent member 241”), the vent part (211, 241, 230) configured to provide a path through for the gas within the battery case 110 (“exterior”) to be discharged to an outside of the secondary battery when an internal pressure of the battery case 110 (“exterior”) exceeds a [certain] value (P61-63; entire disclosure relied upon);
wherein the first film 211 (“first vent member”) and a second film 241 (“second vent member 241”) are biased towards each other such that when the internal pressure of the battery case 110 (“exterior”) is below the [certain] value the first vent member 211 contacts the second vent member 241 within a circumferential part [see Figs. 4-6; sealed portion 130 of the battery case 110 (“exterior”)] to prevent the gas from the battery case 110 (“exterior”) to be discharged (see Fig. 5), and when the internal pressure of the exterior is equal to or greater than the [certain] value the first vent member 211 and the second vent member 241 do not contact each other to allow the gas from the exterior to be discharged to the outside of the secondary battery (Fig. 6). See also the alternative embodiment shown in Fig. 7.
The “biased towards each other” feature is expanded upon for clarity of the record. The first film 211 (“first vent member”) and a second film 241 (“second vent member 241”) are taught as being made of a material having a specific elastic force or a restoring force against the deformation of the first film or the second film (P31). Yang teaches during abnormal operation the first and second films 211, 241 (“vent members”) are separated from one another whereby the gas is exhausted and that after the exhaust of the gas, the first film and second film are brought back into contact with each other (by the elastic/restoring force of the material) in order that external gas or moisture egress into the battery is prevented (P31-33). Accordingly, the first film 211 (“first vent member”) and a second film 241 (“second vent member 241”) are thus “biased towards each other” as claimed.
Regarding claim 2, Yang teaches the variable film 230 (“first vent member”) is taught as being made of a flexible, elastic material with the upper end thereof (i.e., “at least one elastic part”) bent toward the first film 210 (“second vent member”) (P26-28), and the variable film (“first vent member”) is coupled to the first film 210 (“second vent member”) during normal operation with this feature maintained after the exhaust of the gas (P26-28). Yong also teaches that first film 210 is made of an elastic material with a restoring force (i.e., another “at lesat one elastic part”) (P31). Accordingly, the variable film 230 (“first vent member”) and the first film 210 (“second vent member”) are biased towards each other by “at least one elastic part” (i.e., the upper end, bent, elastic portion of variable film 230 or the material of the first vent film 210 (“second vent member”)) (First Interpretation).
Alternatively, Yong teaches the first film 211 (“first vent member”) and a second film 241 (“second vent member 241”) are biased towards each other by “at least one elastic part” (i.e., upper end 251 of 241 – Figs. 5-6) or upper end 252 of 242 in Fig. 7 (Second Interpretation) (P31-35; 61-63).
Regarding claim 3, Yang teaches the “at least one elastic part” includes a first elastic part (upper, bent end of variable film 230) between one inner surface of the circumferential part and the variable film 230 (“first vent member”) configured to bias the the variable film 230 (“first vent member”) toward the first film 210 (“second vent member”) (First Interpretation).
Regarding claim 4, Yang teaches the “at least one elastic part” includes a second elastic part (i.e., the material of the first vent film 210 (“second vent member”) having an elastic, restoring functionality – P31) between another inner surface of the circumferential part and the first film 210 (“second vent member”) configured to bias the the first film 210 (“second vent member”) toward the variable film 230 (“first vent member”) (First Interpretation).
Regarding claim 10, Yang teaches wherein the first and second vent members extend from the inner surface of the exterior (Figs. 1-3) (First Interpretation).
Regarding claim 11, Yang teaches wherein the battery case 110 (“exterior”) comprises a pouch (“two sheets”) that face each other (P20) to form the circumferential part (i.e., the sealed portion 130) (Fig. 1),
wherein the gas being discharged to the outside is discharged from the the battery case 110 (“exterior”) through an opening (see Fig. 3) defined by the first [vent member] 230 and [the] second vent member 210 and to an opening 250 between the two exterior sheets in the circumferential part (i.e., the sealed portion 130) (First Interpretation).
Regarding claim 12, Yang teaches wherein a first portion of the sealing part 130 (“circumferential part”) extends away from the inner surface of the battery case 110 (“exterior”) at which the vent part (230, 210) is provided (see Figs. 1-4) (First Interpretation).
Regarding claim 13, Yang teaches the secondary battery of claim 1, further comprising an electrode lead (illustrated in Fig. 1) protruding outward from a side of the battery case 110 (“exterior”) different than the inner surface of the battery case 110 (“exterior”) at which the vent part (230, 210) is provided (see Figs. 1-4) (First Interpretation).
Regarding claim 15, Yang teaches wherein a distance between the wherein the variable film 230 (“first vent member”) and the first film 210 (“second vent member”) 210 decreases in a direction from the inner surface of the exterior toward the outside of the secondary battery (see Figs. 1-3) (First Interpretation).
Regarding claim 16, Yang teaches wherein the battery case 110 (“exterior”) comprises a pouch (“two sheets”) that face each other (P20) to form the circumferential part (i.e., the sealed portion 130) (Fig. 1), wherein a second portion (multiple interpretations, selecting for example, the right seam in Fig. 1 opposite to the left seam where valve 200 is located) of the sealed portion 130 (“circumferential part”) of the two exterior sheets are bonded to each other to provide a sealing part (i.e., right sealed seam), and the first portion (selecting the location where valve 200 exists – Fig. 1) are not (directly) bonded to each other given the valve 200 exists therebetween (Fig. 1; entire disclosure relied upon).
Regarding claim 17, Yang teaches wherein the first vent member and second vent member are configured to repeatedly contact each other and separate from each other based on the internal pressure of the battery case 110 (“exterior”) (P33) (Second Interpretation). It would appear that all the structure necessary to achieve this functionality is met by either Interpretation set forth.
Regarding claim 18, Yang teaches a battery pack comprising the secondary battery of claim 1 (P40; claim 13 of Yang).
Claim Rejections - 35 USC § 103
12. 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.
13. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2010/0239895) as applied to at least claim 1.
Regarding claim 14, Yang fails to disclose that the porous film 220 that is “a gas and liquid separation film that is capable of allowing a gas component to pass therethrough while maximally restraining a liquid component, i.e., an electrolyte, from passing therethrough” (P37, 58; Figs.1-4) (i.e., “waterproof part”) surrounds an entire circumference of the electrode assembly.
It is noted that the change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04). In addition, it is the position of the examiner that disclosure provides no evidence of criticality with regard to whether the waterproof surrounds at least a portion of a circumference of the electrode assembly (claim 1) or the entire circumference of the electrode assembly (claim 4).
Therefore, in the absence of new or unexpected results for which objective evidence exists pertaining to the form and shape of the waterproof part relevant to its coverage of the circumference of the electrode assembly, the change in form and shape of porous film 220 (“waterproof part”) of Yang such that it surrounds an entire circumference of the electrode versus just a portion thereof is considered an obvious expedient in view of the case law above.
15. Claim 14 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2010/0239895) as applied to at least claim 1, and further in view of Van Lerberghe (US 6,040,081).
Regarding claim 14, Yang fails to disclose that the porous film 220 that is “a gas and liquid separation film that is capable of allowing a gas component to pass therethrough while maximally restraining a liquid component, i.e., an electrolyte, from passing therethrough” (P37, 58; Figs.1-4) (i.e., “waterproof part”) surrounds an entire circumference of the electrode assembly.
In the same field of endeavor, Van Lerberghe teaches analogous art in the same field of endeavor of a secondary battery, wherein an analogous electrode assembly 100 includes an encapsulating envelope 40 that is configured to allow a gas to pass through the waterproof (to analogous vent part 30, 31), but prevent a liquid (the electrolyte) from passing therethrough (i.e., is a “waterproof part” (see column 4, lines 29-43). The encapsulating envelope 40 is provided within the analogous exterior (70A, 70B, and adhesives 72.1-72.2).
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 porous film 220 (“waterproof part”) of Yang such that it has the construct of Van Lerberghe and is provided as an encapsulating envelope 40 that surrounds an entire circumference of the electrode assembly given the technique is known in the art and provides the predictable result of preventing the electrolyte held therein from escaping via other portions of the exterior.
16. Rejection B: Claims 1-10 and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Matsui (JP 2018-195745) (machine translation provided) in view of Van Lerberghe (US 6,040,081).
Regarding claim 1, Matsui teaches a secondary battery (P84) comprising:
an electrode unit 20 (“an electrode assembly”) having a structure in which electrodes and separators are alternately disposed (P20);
an outer package 30 (“exterior”) having an inner space in which the electrode unit 20 (“an electrode assembly”) is accommodated; and
a vent part (see Fig. 7 components) including a first vent member (portion 333 of 31) and a second vent member (portion 333 of 32), the vent part configured to provide a path through for the gas within the exterior to be discharged to an outside of the secondary battery when an internal pressure of the exterior exceeds a predetermined value (P57-83);
wherein the first vent member (portion 333 of 31) and the second vent member (portion 333 of 32) are biased towards each other [via flexible upper seal member 611 and flexible lower seal member 612, respectively] such that when the internal pressure of the exterior is below the predetermined value the first vent member (portion 333 of 31) contacts the second vent member (portion 333 of 32) within gas flow path defining portion 60 (“a circumferential part4”) to prevent the gas from the exterior to be discharged, and when the internal pressure of the exterior is equal to or greater than the predetermined value the the first vent member (portion 333 of 31) and the second vent member (portion 333 of 32) do not contact each other to allow the gas from the exterior to be discharged to the outside of the secondary battery (P57-83; Fig. 7; entire disclosure relied upon). See also the other embodiments shown in Figs. 9 & 11. Figures 7, 9, and 11 of Matsui are reproduced below for convenience:
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Matsui fails to disclose: “…a waterproof part provided within the exterior to surround at least a portion of a circumference of the electrode assembly and configured to allow a gas within the exterior to pass through the waterproof part, but prevent a liquid within the exterior from passing through the waterproof part, the waterproof part facing an inner surface of the exterior” as claimed.
In the same field of endeavor, Van Lerberghe teaches analogous art in the same field of endeavor of a secondary battery, wherein an analogous electrode assembly 100 includes an encapsulating envelope 40 that is configured to allow a gas to pass through the waterproof (to analogous vent part 30, 31), but prevent a liquid (the electrolyte) from passing therethrough (i.e., is a “waterproof part” (see column 4, lines 29-43). The encapsulating envelope 40 (“waterproof part”) is provided within the analogous exterior (70A, 70B, and adhesives 72.1-72.2), the waterproof part facing an inner surface of the exterior (see Figures).
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 secondary battery of Matsui with the encapsulating envelope 40 (“waterproof part”) of Van Lerberghe that surrounds an entire circumference of the electrode assembly given the technique is known in the art and provides the predictable result of preventing the electrolyte held therein from escaping via the vent or other portions of the exterior.
Regarding claims 2-4, Matsui teaches the first vent member (portion 333 of 31) and the second vent member (portion 333 of 32) are biased towards each other via flexible upper seal member 611 (“a first elastic part”) and flexible lower seal member 612 (“a second elastic part”), respectively that make up the claimed “at least one elastic part” (claim 2), wherein the upper seal member 611 (“first elastic part”) is between one inner surface of the gas flow path defining portion 60 (“circumferential part”) and the first vent member (portion 333 of 31) and is configured to bias the first vent member (portion 333 of 31) toward the second vent member (portion 333 of 32), and wherein the flexible lower seal member 612 (“second elastic part”) is between another inner surface of the gas flow path defining portion 60 (“circumferential part”) and the second vent member (portion 333 of 32) and is configured to bias the second vent member toward the first vent member (portion 333 of 31) (Fig. 7, 9, 11 embodiments; P57-83; entire disclosure relied upon).
Regarding claim 5, Matsui teaches the upper and lower seal members 611, 612 (“first and second elastic parts”) are flexible members that press against the respective vent members and allow for opening thereof to discharge gas. Figure 7 illustrates the shape of upper and lower seal members 611, 612 (“first and second elastic parts”), wherein they are functioning as “first and second springs” in the manner described by Matsui in that they store and release mechanical energy by flexing or bending in the manner illustrated and described (entire disclosure relied upon).
Regarding claim 6, Matsui teaches wherein the upper seal member 611 (“first spring”) is parallel to the lower seal member 612 (“second spring”) (see Fig. 7).
Regarding claim 7, Matsui teaches wherein the the upper seal member 611 (“first spring”) extends along an inner surface of the exterior (see Fig. 7).
Regarding claim 8, Matsui teaches wherein the lower seal member 612 (“second spring”) extends along the inner surface of the exterior (see Fig. 7).
Regarding claim 9, Matsui teaches wherein a gas discharge path of the gas being discharged from the exterior to the outside of the secondary battery when the internal pressure of the exterior is equal to or greater than the predetermined value is perpendicular to the upper seal member 611 (“first spring”) (Fig. 7; entire disclosure relied upon).
Regarding claim 10, Matsui teaches wherein the first and second vent members extend from [respective] inner surface[s] of the exterior (see Fig. 7).
Regarding claim 12, Matsui teaches wherein a first portion of the circumferential part (either interpretation) extends away from the inner surface of the exterior at which the vent part is provided (Fig. 7).
Regarding claim 13, Matsui teaches the secondary battery of claim 1, further comprising an electrode lead protruding outward from a side of the exterior different than the inner surface of the exterior at which the vent part is provided (see Figs. 1, 5, 7).
Regarding claim 14, Matsui as modified by Van Lerberghe teaches wherein the waterproof part surrounds an entire circumference of the electrode assembly (see rejection of claim 1)..
Regarding claim 15, Matsui teaches wherein a distance between the first vent member and the second vent member decreases in a direction from the inner surface of the exterior toward the outside of the secondary battery (see Fig. 7; this interpretation would include the inclined walls shown in Fig. 7 as part of the first and second vent members, respectively).
Regarding claim 16, Matsui teaches wherein the exterior including two exterior sheets that face each other to form the circumferential part (second interpretation), such that there is a first portion (long-sided sealing portion 333) utilized for venting and bonded to each other with a bonding force that is less than that of the sealing part on a second portion (any of sides 331, 331, and/or 332) of the circumferential part of the two exterior sheets 31, 32 (P10-11; 38-83; entire disclosure relied upon).
Regarding claim 17, Matsui teaches all the structure that appears necessary to meet the functional feature of, “wherein the first vent member and second vent member are configured to repeatedly contact each other and separate from each other based on the internal pressure of the exterior” as claimed.
Regarding claim 18, Matsui teaches a battery pack comprising the secondary battery of claim 1 (see Figs. 3 and 6).
17. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Matsui (JP 2018-195745) (machine translation provided) in view of Van Lerberghe (US 6,040,081) as applied to at least claim 1, and further in view of Yang et al. (US 2010/0239895).
Regarding claim 11, Matsui teaches wherein the outer package 30 (“exterior”) including two exterior sheets that face each other to form the circumferential part (Second Interpretation), wherein the gas being discharged to the outside is discharged from the exterior through an opening defined by the the first vent member (portion 333 of 31) and the second vent member (portion 333 of 32).
Matsui fails to disclose the gas is further discharged to to an opening between the two exterior sheets in the the circumferential part (Second Interpretation). In the same field of endeavor, Yang teaches analogous art of a secondary battery including all the structure of claim 1 (see Interpretation 1 set forth above, incorporated here and not repeated), Yang teaching it is a known technique and construct to provide a battery case 110 (“exterior”) comprising a pouch (“two sheets”) that face each other (P20) to form a circumferential part (i.e., the sealed portion 130) (Fig. 1),
wherein the gas being discharged to the outside is discharged from the the battery case 110 (“exterior”) through an opening (see Fig. 3) defined by the first [vent member] 230 and [the] second vent member 210 and to an opening 250 between the two exterior sheets in the circumferential part (i.e., the sealed portion 130). Yang teaches this allows the introduction of external gas or moisture into the battery to be prevented such that reuse of the battery is possible (P33).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to configure the gas discharge path and exterior in the ame manner as Yang within the construct of Matsui in order to provide the predictable, taught result of preventing the introduction of external gas or moisture into the battery such that reuse of the battery is possible (P33).
Double Patenting
18. 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.
19. Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 U.S. Patent No. 12,051,822. The dependent claims may optionally be held as rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 U.S. Patent No. 12,051,822 in view of either of Yang et al. (US 2010/0239895) or
Matsui (JP 2018-195745) (machine translation provided).
This rejection is made as best as possible in view of the indefinite issues outlined above.
Although the claims at issue are not identical, they are not patentably distinct from each other because all of the subject matter of the instant independent claim 1 is found in the claim(s) of ´822 with the exception of the “wherein” clause (final 7 lines of the claim); instead the ´822 patent claims the following:
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Accordingly, it appears the ´822 patent claim set is maybe (?)5 drawn to a supported, narrower species version of what is now presented as a broadening, genus claim construct that is not supported (see rejection under 35 U.S.C. 112(a)/first paragraph).
The remainder of the limitations of the instant application independent claim 1 are found in claims 1-9 of the ´822 patent, wherein the ´822 independent claim sets forth structure not recited in the instant application set (i.e., this is not an In re Schneller situation presently).
The remainder of the dependent claims of the instant application are either found in the claims 1-9 of the ´822 patent, or met by Yang et al. (US 2010/0239895) or Matsui (JP 2018-195745) (machine translation provided) in the manner they are applied above to the dependent claims above in the prior art rejection(s).
Conclusion
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BILLIET, nee Barrow, whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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/AMANDA J BILLIET/Primary Examiner, Art Unit 1729
1 The features of claims 7 and 8 do not exist in the written description and also does not appear to be shown in the drawings and is rejected under 35 U.S.C. 112(a)/first paragraph for this reason. Accordingly, this correction should only be made if Applicant argues the 35 U.S.C. 112(a)/first paragraph is somehow improper, such that the specification and drawings requirements pertaining to these claims is met.
2 The application is a continuation application such that the claims are not original claims and cannot be relied upon for support. Support must thus be found in the written description and/or drawings.
3 All embodiments are relied upon such that within Figs.5-6, this would correspond to first vent member 231 and second vent member 211; within Fig. 7 this would be first vent member 232 and second vent member 212. Note the designation of the “first” and “second” vent members may be reversed in any of the relied upon embodiments (e.g., 210 could be the first vent member and 230 could be the second vent member).
4 This could alternatively be the circumferential part of the outer package 30; this interpretation will be referenced as the Second Interpretation.
5 See rejection under 35 U.S.C. 112(b)/second paragraph as to the lack of clarity as to what is structurally requried to meet claim 1.
