DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-8 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Claim 8 recites the limitation "the plurality of gas release valves" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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 Farzana (US 20120061923).
Regarding claim 1, Farzana discloses a gasket 10 Fig. 2 being made of a porous body of an elastomer. However, Farzana fails to explicitly disclose a functional limitation of sealing a 300° C gas. Nevertheless, [A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Regarding claim 2, Farzana discloses wherein the porous body 10 of the elastomer has a plurality of pores (Para. 0018), the plurality of pores including a pore having a diameter in a range from 10 pm to 30 pm, inclusive (Para. 0018).
Regarding claim 3, Farzana discloses wherein the plurality of pores, but fails to explicitly disclose where the pores include a pore having an aspect ratio of 1.3 or less, the aspect ratio being a ratio between a diameter a and a diameter b, the diameter a being a maximum diameter of a cross section of the porous body of the elastomer, the diameter b being a diameter in a direction perpendicular to the diameter a. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pore diameter ratio to any number of ranges (i.e. 1.3 or less) disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Regarding claim 4, Farzana discloses wherein the plurality of pores but fails to explicitly disclose where the pores have another aspect ratio of 1.3 or less, the other aspect ratio being a ratio between a diameter c and a diameter d, the diameter c being a maximum diameter of another cross section perpendicular to the cross section of the porous body of the elastomer, the diameter d being a diameter in a direction perpendicular to the diameter c. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pore diameter ratio to any number of ranges (i.e. 1.3 or less) disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 5, Farzana discloses the invention as claimed above but fails to explicitly disclose wherein a percentage of the pore having the aspect ratio of 1.3 or less in the cross section is 70% or more and a percentage of the pore having the other aspect ratio of 1.3 or less in the other cross section is 70% or more. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pore diameter ratio to any number of ranges (i.e. 1.3 or less) disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6, Farzana discloses wherein the porous body 10 of the elastomer is a porous body but fails to explicitly disclose the specific material of a silicone elastomer. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended used as a matter of obvious design choice. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) Regarding claim 7, Farzana discloses having: a pair of surfaces 12 facing away from each other; and at least one through hole penetrating the pair of surfaces Fig. 2.
Regarding claim 8, Farzana discloses a gasket 10, but fails to explicitly disclose the intended use of the gasket being attached so that a flow path between a gas release valve of each of a plurality of battery cells of a battery module and a gas release path, the gas release path forming a space to guide a gas released from the plurality of gas release valves. Nevertheless, [A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENE G BYRD whose telephone number is (571)270-1824. The examiner can normally be reached Monday-Friday 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina Fulton can be reached at 5712727376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EUGENE G BYRD/Primary Examiner, Art Unit 3675
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