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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/043,015
`
`09/29/2020
`
`Oose OKUTANI
`
`094704-0072
`
`8465
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`ROE, CLAIRE LOUISE
`
`1724
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/20/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Application No.
`Applicant(s)
`17/043,015
`OKUTANI etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`CLAIRE L ROE
`1724
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 9/29/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-9 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)(] The specification is objected to by the Examiner.
`11) The drawing(s)filed on 9/29/20 is/are: a)¥) 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:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.2) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4 Copies of the certified copies of the priority documents have been receivedin 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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`
`Paper No(s)/Mail Date9/29/20and5/27/22.
`U.S. Patent and Trademark Office
`
`3)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220713
`
`

`

`Application/Control Number: 17/043,015
`Art Unit: 1724
`
`Page 2
`
`Notice of Pre-AlA 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 moreclaims 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-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 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-AlA 35 U.S.C.
`
`112, the applicant), regards as the invention.
`
`Claim 9 recites “protruding portion configured to restrict insertion of the sealing body
`
`into the open rim” which is indefinite because it is unclear whether the protruding portion
`
`prevents the sealing body from being inserted at all or in entirety.
`
`In accordance with the
`
`Instant Specification paragraphs 13-14 and Figure 1A the Examiner interprets this limitation as
`
`intending to recite that the protruding portion restricts the sealing body from being inserted
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`entirely into the open rim.
`
`

`

`Application/Control Number: 17/043,015
`Art Unit: 1724
`
`Page 3
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`Claim Rejections - 35 USC § 102
`
`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)(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 effectivefiling date of the claimed invention.
`
`Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Starketal.
`
`(US 3,723,184).
`
`Regardingclaim 1, Stark et al. discloses a battery (10) comprising:
`
`A battery can (22) having a cylindrical portion (col 2 line 1; Figure 1), a bottom wall
`
`closing one end of the cylindrical portion, and an open rim continuous with the other end of the
`
`cylindrical portion (col. 2, lines 31-40; Figure 1), an electrode body / assembly (12 & 14 & 16)
`
`housedin the cylindrical portion (col. 2, lines 31-40; Figure 1), and a sealing body (18 & 20)
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`fixed to the open rim so as to seal an opening defined by the open rim (col. 2, lines 31-40;
`
`Figure 1),
`
`The sealing body including a sealing plate (18) and a gasket (20) disposed at a peripheral
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`portion of the sealing plate (col. 2, lines 31-40; Figure 1),
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`The gasket having at least one protruding portion configured to restrict the sealing body
`
`from being inserted entirely into the open rim (col. 2, lines 31-47; Figure 1).
`
`The following illustration (modified Figure 1 of Stark et al.) is provided for clarification:
`
`

`

`Application/Control Number: 17/043,015
`Art Unit: 1724
`
`Page 4
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`gaske
`
`projection|
`
`cylindrical
`
`electrode
`body!
`assembly
`
`«|4———
`
`ae
`
`protruding
`portions
`IB sealing plate
`
`
`
`
`
`
`openrim
`
`
`
`portion / 22 Pgg
`‘Ss Ope
`
`
`
`AE Nie Se?
`
`i
`
`_a4
`
`
`oa
`
`radial
`
`~
`
`bottom wail
`
`Regarding claim 2, Stark et al. teaches that the insertion of the sealing body into the
`
`open rim is restricted when the protruding portion comes in abutment with the open rim from
`
`outside in an axial direction of the battery can (col. 2, lines 31-47; Figure 1).
`
`Regarding claim 3, Stark et al. teaches the protruding portion is provided in a plurality of
`
`numbers along the open rim (col. 2, lines 37-47; Figure 1).
`
`Regarding claim 4, Stark et al. teaches the protruding portion is formed as a flange
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`shape along the open rim (col. 2, lines 37-47; Figure 1).
`
`Regarding claim 5, Stark et al. teaches that the gasket is compressed between an end
`
`surface of the peripheral portion and the open rim in a radial direction of the opening (col. 2,
`
`lines 37-47; Figure 1).
`
`

`

`Application/Control Number: 17/043,015
`Art Unit: 1724
`
`Page 5
`
`Regarding claim 6, Stark et al. teaches that the open rim has a projection protruding
`
`inward in the radial direction (col. 2, lines 48-63; Figure 1), and the gasket is compressed in the
`
`radial direction by the projection (col. 2, lines 48-63; Figure 1).
`
`Regarding claim 7, Stark et al. teaches that the sealing plate and the gasket are integrally
`
`molded (col. 37-40; Figure 1).
`
`The Examiner notes that the product-by-limitation “to be welded” of claim 7 is not given
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`patentable weight since the courts have held that patentability is based on a productitself,
`
`even if the prior art product is made by a different process (MPEP 2113). Moreover, a product-
`
`by-processlimitation is held to be obvious if the productis similar to a prior art product (MPEP
`
`2113). Claim 7 as written does not distinguish the product of the instant application from the
`
`product of the prior art.
`
`Regarding claim 8, Stark et al. teaches that the battery can is configured not to have a
`
`constricted portion interposed between the gasket and the electrode body (Figure 1).
`
`Claim Rejections - 35 USC § 103
`
`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
`
`

`

`Application/Control Number: 17/043,015
`Art Unit: 1724
`
`Page 6
`
`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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Stark et al. (US
`
`3,723,184), as applied to claim 1 above.
`
`Regarding claim 9, Stark et al. teaches a sealing body (18 & 20) and electrode body /
`
`assembly (12 & 14 & 16, col. 2, lines 31-40; Figure 1), but fails to specifically state the distance
`
`between the sealing body and electrode body.
`
`While Stark et al. fails to specifically state the distance between the sealing body and electrode
`
`body, it would have been obvious to one of ordinaryskill in the art at the time of filing date of the
`
`application to adjust the dirnensions of the battery parts including sealing body and electrode bady as
`
`desired.
`
`it has been held that where the only difference between the prior art and the claims was a
`
`recitation of relative dimensions of the claimed device and a device having the claimed relative
`
`dimensions would not perform differently than the prior art device, the claimed device was not
`
`patentably distinct from the prior art device.
`
`In re Rose , 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re
`
`Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220
`
`USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Also see MPEP 2144.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CLAIRE LOUISE ROE whosetelephone number is (571)272-9809.
`
`

`

`Application/Control Number: 17/043,015
`Art Unit: 1724
`
`Page 7
`
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`
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`
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`
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`
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`
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`
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`
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`
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`
`/C.L.R/
`Examiner, Art Unit 1724
`
`/STEWARTA FRASER/
`Primary Examiner, Art Unit 1724
`
`