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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 04/08/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
All previous rejections are overcome by amendment.
Applicant could consider including product by process limitations or intermediary product limitations pertaining to a pre-welded structure having a coating of insulating material. The instant specifications appear to teach an insulating layer prior to welding is effective at capturing the welded material during the welding process. If there is a materially different interface between the first side surface and the insulating layer due to welding occurring after the insulating tape is applied, this difference could overcome the below rejection that applies an insulating material after welding. Please refer to MPEP 2113 to present critical steps that positively lead to materially different structure and how to present/argue them on the record. Currently, the product by process limitations of the instant claim “by coating” is not sufficient to read the specification significance of a pre-applied insulating film before the welding step. The instant invention has not been examined in this light and would require further search and consideration, but this could be a path to forward prosecution. This consideration is completely optional to the applicant and only presented as a means to improve stakeholder interactions on behalf of the examiner.
Claim Rejections - 35 USC § 112
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.
Claim 12 is 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. Instant claim recites “the insulating layer is formed ONLY on the first side surface of the pair of side surface of the electrode,” the instant specification at the time of filing does not explicitly recite this limitation. When we look at Figure 4-6 of the instant claim, we can see the insulating layer is formed on the first side surface of the pair of sides surfaces of the electrodes AND the electrode active material side layer (111). Since there is an additional layer that is coated at least in part by the insulating layer, the claim as amended is new matter.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 8-9, 12-14 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Ji-Jun (JP 2004/022534).
Claim 1, 13: Ji-Jun teaches a battery packaging that is capable of preventing short circuits [Abstract]. The battery cell (110) is taught to have an electrode (111, 113) that has one or both sides of an electrode current collector film coated with active material [0031]. The electrode of the prior art for the purposes of this rejection is the electrode that is in direct contact tab member (143) through welding step (S20) at the welding portion (145) [0038]. The electrode current collector is the portion which comprises active material coating in a width direction [Fig 1; 0031] and an electrode tab (16, 18) extend in a second direction having a pair of opposing first side surfaces extending from the electrode current collector having a fee end with a side surface opposing the side of the electrode current collector where the tab has a smaller width than that of the first direction width of the active material [Fig 1; 0008-0010]. An insulating layer (147) is formed on a first side surface of the electrode tab [Fig 7f, 7h; 0043]; the specific limitation to “coating” is method weight which does not further defined the structural scope of the instant claim over the prior art, the prior art teaching the same structural feature in the same location is sufficient to meet the positively recited scope of the instant claim. The electrode lead (143: tab member) is welded to the uncoated portion of the current collector, the electrode tab (145) [Fig 7f, 7h; 0038-0047]. The insulating material is formed on a first side surface opposite the second side surface and insulates from the storage part (322) of the packaging material (320) [Fig 17; 0052]. The insulating material layer and the active material are on the same side of the electrode current collector – prior art teaches that both sides of the current collector can be coated or a single side [0031]. The lead and the tab extend in a direction parallel to each other [Fig 7f, 10 17].
Prior art figure is annotated to show the features of the invention:
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Claim 2: Ji-Jun teaches an active material to be located on the current collector [0031] and the electrode tab portion (16, 18) are uncoated with active material [Fig 1; 0008-0011].
Claim 3: Ji-Jun teaches the insulating material to be present on at least a portion of the non-coated portion of the electrode tab [Fig 7f, Fig 17]. The specific method weight of “by coating” is a product by process limitation that fails to further limit the scope of the instant claim over the product and teaching of the prior art.
Claim 4: Ji-Jun teaches an insulating layer to have a width equal to the width of the electrode tab as the insulating layer covers the portion [0043-0050]. The specific method weight of “by coating” is a product by process limitation that fails to further limit the scope of the instant claim over the product and teaching of the prior art.
Claim 8: Ji-Jun teaches a lithium secondary battery (300) comprising the features of the electrode above [0052].
Claim 9: Ji-Jun teaches a battery in a pouch that is filled with injection of electrolyte into a packaging material and vacuum sealed – applicant’s pouch-shaped battery [Fig 17; 0052-0053].
Claim 12: Ji-Jun teaches a first insulating member to be the only insulating element between the tabs and the region (310) of the battery [Fig 17].
Claim 14: Ji-Jun teaches the insulating material to be exemplified to be polyimide or polyethylene [0016].
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN J YANCHUK whose telephone number is (571)270-7343. The examiner can normally be reached M-Th 10a-8p.
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/STEPHEN J YANCHUK/ Primary Examiner, Art Unit 1752
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