www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`15/463,618
`
`03/20/2017
`
`SHINTARO TANAKA
`
`20296.0096USW1
`
`7904
`
`53148
`
`759°
`
`01/04/20”
`
`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
`
`MINNEAPOLIS, MN 55402-1683
`
`AKHTAR' KIRAN QURAISHI
`
`ART UNIT
`1723
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/04/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`PTOMail@hsml.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/463,618
`Examiner
`KIRAN Q AKHTAR
`
`Applicant(s)
`TANAKA, SHINTARO
`Art Unit
`AIA Status
`1723
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1. 136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 20 March 2017.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) fl is/are pending in the application.
`
`5a) Of the above claim(s) fl is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`E] Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10):] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 20 March 2017 is/are: a)C] accepted or b). objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a). All
`
`b)|:] Some”
`
`c)C] None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`21:] Certified copies of the priority documents have been received in Application No.
`
`3D Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`3)
`
`Interview Summary (PTO-413)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail DateW.
`U.S. Patent and Trademark Office
`
`Paper No(s)/Mail Date 2018/12/24.
`4) D Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20181224
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 2
`
`DETAILED CORRESPONDENCE
`
`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.
`
`Abstract
`
`The abstract of the disclosure is objected to because the abstract is over 150
`
`words. The abstract should be within the range of 50 to 150 words in length. Correction
`
`is required. See MPEP § 608.01 (b).
`
`Applicant is reminded of the proper language and format for an abstract of the
`
`disclosure.
`
`The abstract should be in narrative form and generally limited to a single
`
`paragraph on a separate sheet within the range of 50 to 150 words in length. The
`
`abstract should describe the disclosure sufficiently to assist readers in deciding whether
`
`there is a need for consulting the full patent text for details.
`
`The language should be clear and concise and should not repeat information
`
`given in the title.
`
`It should avoid using phrases which can be implied, such as, “The
`
`disclosure concerns,” “The disclosure defined by this invention,” “The disclosure
`
`describes,” etc.
`
`In addition, the form and legal phraseology often used in patent claims,
`
`such as “means” and “said,” should be avoided.
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 3
`
`Election/Restrictions
`
`This application contains claims directed to the following patentably distinct
`
`species:
`
`A1. Claims 1-3 & 7-8 An embodiment in which the battery has guide grooves
`
`A2. Claims 4-5 & 6-9 An embodiment in which the battery has guide rails
`
`The species are independent or distinct because they are mutually exclusive. In
`
`addition, these species are not obvious variants of each other based on the current
`
`record.
`
`Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or
`
`a single grouping of patentably indistinct species, for prosecution on the merits to which
`
`the claims shall be restricted if no generic claim is finally held to be allowable. Currently,
`
`there is no generic claims.
`
`There is a search and/or examination burden for the patentably distinct species
`
`as set forth above because at least the following reason(s) apply: Given that the
`
`inventions have different limitations, the search method will require different search
`
`strategies, and the time to consider the relevancy of collective references for
`
`independent and distinct inventions would increase proportionally.
`
`Applicant is advised that the reply to this requirement to be complete must
`
`include (i) an election of a species to be examined even though the requirement
`
`may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing
`
`the elected species or grouping of patentably indistinct species, including any
`
`claims subsequently added. An argument that a claim is allowable or that all claims are
`
`generic is considered nonresponsive unless accompanied by an election.
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 4
`
`The election may be made with or without traverse. To preserve a right to
`
`petition, the election must be made with traverse. If the reply does not distinctly and
`
`specifically point out supposed errors in the election of species requirement, the election
`
`shall be treated as an election without traverse. Traversal must be presented at the time
`
`of election in order to be considered timely. Failure to timely traverse the requirement
`
`will result in the loss of right to petition under 37 CFR 1.144. lf claims are added after
`
`the election, applicant must indicate which of these claims are readable on the elected
`
`species or grouping of patentably indistinct species.
`
`Should applicant traverse on the ground that the species, or groupings of
`
`patentably indistinct species from which election is required, are not patentably distinct,
`
`applicant should submit evidence or identify such evidence now of record showing them
`
`to be obvious variants or clearly admit on the record that this is the case. In either
`
`instance, if the examiner finds one of the species unpatentable over the prior art, the
`
`evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35
`
`U.S.C. 103(a) of the other species.
`
`Upon the allowance of a generic claim, applicant will be entitled to consideration
`
`of claims to additional species which depend from or otherwise require all the limitations
`
`of an allowable generic claim as provided by 37 CFR 1.141.
`
`During a telephone conversation with Douglas Mueller on 12/27/18 a provisional
`
`election was made with traverse to prosecute the invention of Species |, claims 1-3 & 7-
`
`8. Affirmation of this election must be made by applicant in replying to this Office action.
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 5
`
`Claims 4-9 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b),
`
`as being drawn to a non-elected invention.
`
`Drawings
`
`The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5)
`
`because they include the following reference character(s) not mentioned in the
`
`description: “24d”. Corrected drawing sheets in compliance with 37 CFR 1.121 (d), or
`
`amendment to the specification to add the reference character(s) in the description in
`
`compliance with 37 CFR 1.121 (b) 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. 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 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 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.
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 6
`
`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 othenNise available to the public before the effective filing date of the claimed
`invention.
`
`Claims 1 & 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`lwamoto et al. (US PG Publication 2011/0076523).
`
`With respect to claim 1, lwamoto et al. discloses an electronic device
`
`comprising:
`
`a battery pack 50 (battery); and
`
`a housing section 40 (housing) including an inlet opening 45 (battery
`
`compartment) for the battery;
`
`wherein the battery pack 50 (battery) has a flat surface 51 (main surface) and a
`
`left and right side surfaces 53 (pair of side surfaces) perpendicular to the flat surface 51
`
`(main surface), [Figure 6; 0043];
`
`wherein the inlet opening 45 (battery compartment) is a recess in a ceiling wall
`
`portion 41 (main surface) of the housing section 40 (housing), [0040-0052; Figure 6];
`
`wherein the inlet opening 45 (battery compartment) has a ceiling wall portion 41
`
`(main surface) and a pair of side surfaces, the ceiling wall portion 41 (main surface) of
`
`the inlet opening 45 (battery compartment) being configured to face the flat surface 51
`
`(main surface) of the battery pack 50 (battery) and the left and right side wall portions
`
`43 (side surfaces) of the inlet opening 45 (battery compartment) being configured to
`
`face the respective left and right side surfaces 53 (side surfaces) of the battery pack 50
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 7
`
`(battery) when the battery pack 50 (battery) is disposed in the inlet opening 45 (battery
`
`compartment), [0040-0052; Figure 6];
`
`wherein each of the side surfaces 43 of the inlet opening 45(battery
`
`compartment) has a guide rail 47 for guiding the battery pack 50 (battery) into the inlet
`
`opening 45(battery compartment), [0040; Figure 6]’
`
`wherein each of the side surfaces 53 of the battery pack 50 (battery) has a slot
`
`portion 57 (guide groove) for engaging with a corresponding guide rail 47 of the inlet
`
`opening 45 (battery compartment), [0040-0052; Figure 6]; and
`
`wherein each of the guide rails 47 has a first end at the primary end of the
`
`housing section 40 (housing) and a second end at an opposite end of the primary end of
`
`the housing section 40 (housing), each of the guide rails 47 being inclined with respect
`
`to the ceiling wall portion 41 (main surface) of the inlet opening 45 (battery
`
`compartment) from the first end to the second end such that a distance between the first
`
`end of the guide rail 47 and the main surface 41 of the inlet opening 45 (battery
`
`compartment) is greater than a distance between the second end of the guide rail 47
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 8
`
`and the main surface of the inlet opening 45 (battery compartment). [Figure 6]
`
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`
`
`5...‘ttcrl.
`
`
`
`fig. 5
`
`1:5.not
`
`..M:S;
`
`
`
`
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 9
`
`The further limitation regarding “the recess being formed by cutting away an area
`
`including a primary end of the housing” is a product-by-process limitation that does not
`
`further limit the scope of the claim.
`
`“[E]ven though product-by-process claims are limited by and defined by the
`
`process, determination of patentability is based on the product itself. The patentability of
`
`a product does not depend on its method of production. If the product in the product-by-
`
`process claim is the same as or obvious from a product of the prior art, the claim is
`
`unpatentable even though the prior product was made by a different process.”
`
`In re
`
`Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
`
`Once the Examiner provides a rationale tending to show that the claimed product
`
`appears to be the same or similar to that of the prior art, although produced by a
`
`different process, the burden shifts to applicant to come forward with evidence
`
`establishing an unobvious different between the claimed product and the prior art
`
`product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP
`
`2113).
`
`With respect to claim 7, lwamoto et al. discloses a battery pack 50 (battery)
`
`configured ie be disposed in an inlet opening 45 (battery compartment) of an electronic
`
`device for supplying electricity to the electronic device, the battery pack 50 (battery)
`
`comprieieg:
`
`a flat surface 51 (main surface); and
`
`a left and right side surfaces 53 (pair of side surfaces) perpendicular te the
`
`flat surface 51 (main surface), [Figure 6; 0043]
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 10
`
`wherein each at the left and right side surfaces 53 (side surfaces) nae 23 slot
`
`portion 57 (guide groove) tet guiding the battery pack 50 (battery) inte the inlet opening
`
`45 (battery compartment), and
`
`wherein each of the slot portions 57 (guide grooves) has a first end and a
`
`second end cppeeite tc the first end, each of the slot portions 57 (guide grooves) being
`
`ineitned with reepeet te the flat surface 51 (main surface) from the first end at the slot
`
`portion 57 (guide groove) te the eecend end et the slot portion 57 (guide groove) eueh
`
`that a distance between the first end ct the slot portion 57 (guide groove) and the flat
`
`surface 51 (main surface) is greater than a distance between the eeeend end of the
`
`guide greeve and the flat surface 51 (main surface)" [Figure 6]
`
`
`
`'~ ' \\ < w
`
`
`
`
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 11
`
`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 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.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied 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.
`
`Claims 2-3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over lwamoto et al. (US PG Publication 2011/0076523).
`
`With respect to claim 2, lwamoto et al. discloses wherein each of the slot
`
`portions 57 (guide grooves) has a first end at the primary end of the housing and a
`
`second end at the opposite end of the primary end of the housing wherein each of the
`
`slot portions 57 (guide grooves) is inclined with respect to the main surface of the
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 12
`
`battery from the first end of the slot portion 57 (guide groove) to the second end of the
`
`slot portion 57(guide groove) such that a distance between the first end of the slot
`
`portion 57 (guide groove) and the main surface of the battery is greater than a distance
`
`between the second end of the slot portion 57 (guide groove) and the main surface of
`
`the battery [Figure 6].
`
`
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 13
`
`Iwamoto et al. further discloses that when the battery is inserted and pulled into
`
`the housing there is a possibility of inducing sliding resistance and leading to degrading
`
`the operability in inserting/pulling the battery pack furthermore repeatedly
`
`inserted/pulled batteries will induce degradation of the surface state, such as the
`
`occurrences of surface damages in the mounting flat surface of the battery pack and
`
`the ceiling wall surface of the housing section
`
`Therefore the gap between the battery pack and housing and the shape of the
`
`guide rails can be varied to help prevent degradation, damage and “fluttering”.
`
`[0005-
`
`0006; 0050]
`
`Although Iwamoto et al. doesn’t specifically disclose wherein an inclination angle
`
`of the guide rails is equal to an inclination angle of the guide grooves.
`
`Since the shape of the guide rails and guide grooves is a result effective variable
`
`that determines the amount of damage, degradation and movement of the battery, it
`
`would have been obvious to one having ordinary skill in the art as of the effective filing
`
`date of the claimed invention to have a varied the shape of the guide rails and guide
`
`grooves in order to prevent damage and degradation of the battery and battery housing
`
`as suggested by Iwamoto et al. [Iwamoto et al. 0005-0009; 0050-0055].
`
`With respect to claim 3, Although Iwamoto et al. doesn’t specifically disclose
`
`wherein each of the slot portions 57 (guide grooves) has a greater width at the first end
`
`than at the second end. [Figure 6].
`
`Iwamoto et al. discloses that when the battery is inserted and pulled into the
`
`housing there is a possibility of inducing sliding resistance and leading to degrading the
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 14
`
`operability in inserting/pulling the battery pack furthermore repeatedly inserted/pulled
`
`batteries will induce degradation of the surface state, such as the occurrences of
`
`surface damages in the mounting flat surface of the battery pack and the ceiling wall
`
`surface of the housing section
`
`Therefore the gap between the battery pack and housing and the shape of the
`
`guide rails and guide grooves can be varied to help prevent degradation, damage and
`
`“fluttering”.
`
`[0005-0006; 0050]
`
`Since the shape of the guide rails and guide grooves is a result effective variable
`
`that determines the amount of damage, degradation and movement of the battery, it
`
`would have been obvious to one having ordinary skill in the art as of the effective filing
`
`date of the claimed invention to have a varied the shape of the guide rails and guide
`
`grooves in order to prevent damage and degradation of the battery and battery housing
`
`as suggested by lwamoto et al. [lwamoto et al. 0005-0009; 0050-0055].
`
`With respect to claim 8, Although lwamoto et al. doesn’t specifically disclose
`
`wherein each of the slot portions 57 (guide grooves) has a greater width at the first end
`
`than at the second end. [Figure 6].
`
`lwamoto et al. discloses that when the battery is inserted and pulled into the
`
`housing there is a possibility of inducing sliding resistance and leading to degrading the
`
`operability in inserting/pulling the battery pack furthermore repeatedly inserted/pulled
`
`batteries will induce degradation of the surface state, such as the occurrences of
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 15
`
`surface damages in the mounting flat surface of the battery pack and the ceiling wall
`
`surface of the housing section
`
`Therefore the gap between the battery pack and housing and the shape of the
`
`guide rails and guide grooves can be varied to help prevent degradation, damage and
`
`“fluttering”.
`
`[0005-0006; 0050]
`
`Since the shape of the guide rails and guide grooves is a result effective variable
`
`that determines the amount of damage, degradation and movement of the battery, it
`
`would have been obvious to one having ordinary skill in the art as of the effective filing
`
`date of the claimed invention to have a varied the shape of the guide rails and guide
`
`grooves in order to prevent damage and degradation of the battery and battery housing
`
`as suggested by lwamoto et al. [lwamoto et al. 0005-0009; 0050-0055].
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KIRAN QURAISHI AKHTAR whose telephone number is
`
`(571)270-7589. The examiner can normally be reached on Monday-Friday 9AM-7PM.
`
`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, Milton l Cano can be reached on 571-272—1398. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 15/463,618
`Art Unit: 1723
`
`Page 16
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
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`/K|RAN QURAISHI/
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`Examiner, Art Unit 1723
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`/M|LTON | CANO/
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`Supervisory Patent Examiner
`Art Unit 1723
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