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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
`
`17/045,282
`
`10/05/2020
`
`Shinya GESHI
`
`094704-0074
`
`1041
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`CAUGHRON,KATHARINE ANN
`
`1728
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/15/2022
`
`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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-13 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 2-6 and 12-13 is/are withdrawn from consideration.
`() Claim(s)__ is/are allowed.
`Claim(s)
`1 and 7-11 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`C] 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)M The drawing(s) filed on 10/5/2020 is/are: a)¥) accepted or b)C) 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)() None ofthe:
`b)( Some**
`a) All
`1.2 Certified copies of the priority documents have been received.
`2.1.) 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 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220307
`
`Application No.
`Applicant(s)
`17/045,282
`GESH| etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`Katharine (Kate) A Caughron
`1728
`Yes
`
`
`
`-- The MAILING DATEofthis 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 2/2/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)L) 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.
`
`

`

`Application/Control Number: 17/045,282
`Art Unit: 1728
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
`
`Election/Restrictions
`
`2.
`
`Applicant’s election of Species B (a second embodiment of the battery, Figs. 4 and 5) in the reply
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`filed on 2/2/2022 is acknowledged. Because applicant did not distinctly and specifically point out the
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`supposederrorsin the restriction requirement, the election has been treated as an election without
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`traverse (MPEP § 818.01(a)).
`
`3.
`
`Claims 2-6 and 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as
`
`being drawn to a nonelected species, there being no allowable generic or linking claim. Election was
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`made withouttraverse in the reply filed on 2/2/2022.
`
`4.
`
`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
`
`Priority
`
`Claim Rejections - 35 USC § 102
`
`5.
`
`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-AlA 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 eitherstatus.
`
`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:
`
`

`

`Application/Control Number: 17/045,282
`Art Unit: 1728
`
`A person shall be entitled to a patent unless —
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`Page 3
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`(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.
`
`7.
`
`Claim(s) 1 and 7-10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Baeetal.
`
`(US 2020/0083494 Al).
`
`8.
`
`Regarding claim 1, Bae teachesa battery (“Secondary Battery”, Title) comprising:
`
`a battery can 120 including a cylindrical portion 121, a bottom wall 122 closing one end of the
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`cylindrical portion, and an open rim continuing to the other end of the cylindrical portion (“The case 120
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`includesa lateral plate 121 shaped of a cylinder having a predetermined diameter to produce a space in
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`which the electrode assembly 110 is accommodated, and the bottom plate 122 sealing a bottom portion
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`of the lateral plate 121. The top opening of the case 120 is opened to seal the case 120... a crimping part
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`124 for fixing the cap assembly 130 and the gasket 140 is formed at the topmost end of the case”,
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`[0030], figs. 1-3; crimping part 124 may be considered an open rim sinceit is the upper edge of the case
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`120 opposite the bottom plate 122 and is open to receive the electrode assembly prior to sealing);
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`an electrode body 110 housedin the cylindrical portion 121 (“The case 120 includesa lateral
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`plate 121 shaped of a cylinder having a predetermined diameter to produce a space in which the
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`electrode assembly 110 is accommodated”, [0030], fig. 3);
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`and a sealing body fixed to the open rim 124 so as to seal an opening defined by the open rim,
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`the sealing body including a sealing plate 130, and a gasket 140 disposed at a peripheral portion of the
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`sealing plate 130 (“The crimping part 124 is formed to have a substantially round shapein the course of
`
`a forming processfor fixing the cap assembly 130 with the gasket 140”, [0030], fig. 3; cap 130 and gasket
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`140 are collectively a sealing body, since they act together to seal the battery, and this sealing body is
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`located at the opening defined by the rim 124 with the gasket around the edge of the sealing plate 130;
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`cap 130 is plate-shaped, being composedof several plates joined into one larger sealing plate),
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`

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`Application/Control Number: 17/045,282
`Art Unit: 1728
`
`Page 4
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`the gasket 140 having an inner ring portion disposed on the peripheral portion on a side facing
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`the electrode body, an outer ring portion disposed on the peripheral portion on a side opposite to the
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`side facing the electrode body, and a side wall portion covering an end surface of the peripheral portion
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`(fig. 3 shows a side cutaway of the gasket, with the inner ring portion on the bottom edge of the sealing
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`plate 130 with respect to the figure, the outer ring portion on the top edgeof the sealing plate 130, and
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`the side wall portion covering the outer side edge of the sealing plate 130),
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`the sealing plate and the gasket being integrally molded to be in close contact with each other
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`(fig. 3 shows that the sealing plate 130 and the gasket 140 are touching such that the gasket appears to
`
`be molded around the sealing plate).
`
`9.
`
`Regarding claim 7, Bae teaches the battery according to claim 1,
`
`wherein the sealing body has a first principal surface facing an interior of the battery can, a
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`second principal surface opposite to the first principal surface, and a side surface connecting the first
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`principal surface with the second principal surface (fig. 3 showsa first/bottom surface of the sealing
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`body, plate 130 and gasket 140, that faces the inside of the case 120, a second/top surface opposite the
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`first surface that faces up away from the inside of the case, and a side edge facing outward in a
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`horizontal direction with respect to the figure; the side edge connects the first/bottom surface and the
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`second/top surface of the sealing body, plate 130 and gasket 140; the second/top surfaceis also visible
`
`in figs. 1-2),
`
`and the battery further comprising a cap 150 with electrical conductivity covering at least part of
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`the open rim and electrically connected to the open rim, the cap being electrically insulated from the
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`sealing plate (“The conductive cover 150 is coupled to the upper part of the case 120... and is electrically
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`connected to the case 120..., therefore the conductive cover 150 may function as an electrode having
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`the same polarity with the case..., the conductive cover 150 covers the crimping part 124 positioned at
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`the topmost part of the case 120”, [0039], figs. 1-4; fig. 3 in particular shows that the cap 150 contacts
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`

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`Application/Control Number: 17/045,282
`Art Unit: 1728
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`Page 5
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`the crimping rim 124 and would therefore be electrically connectedto it; “In detail, the insulation
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`member 160, which is positioned between the crimping part 124 and the flat part 151, prevents the flat
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`part 151 from being shorted to the cap-up 131”, [0047], in other words insulation 160 electrically
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`insulates part 151, and the rest of the cap 150, from part 131, and the rest of sealing plate 130).
`
`10.
`
`Regarding claim 8, Bae teachesthe battery according to claim 7, wherein the cap has a first
`
`portion 152 covering at least part of the side surface of the sealing body, with the open rim of the
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`battery can between the first portion and the side surface (“The extending part 152 downwardly
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`extends a predetermined length from the flat part 151 and covers the lateral plate 121 of the case 120”,
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`[0042]; fig. 3 shows how portion 152 covers the side edge of the sealing body, plate 130 and gasket 140,
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`with the crimping rim 124 in between).
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`11.
`
`Regarding claim 9, Bae teachesthe battery according to claim 7, wherein the cap has a second
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`portion 151 covering at least part of an outer periphery of the second principal surface of the sealing
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`body (“Consequently, the flat part 151 is positioned to correspond to the outer periphery of the cap-up
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`131 to cover the crimping part 124”, [0041], where flat part 151 covers the outer edge of the
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`second/top surface of sealing body, plate 130 and gasket 140,fig. 3).
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`12.
`
`Regarding claim 10, Bae teaches the battery according to claim 8, wherein
`
`the first portion 152 of the cap has an annular shape(figs. 1, 2 and 4 show thatthe first portion
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`152 is annular, or ring-shaped, and encircles the battery case 120),
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`in a no-load state, the first portion 152 of the cap has a minimum inner diameter smaller than a
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`maximum outer diameter of a portion of the open rim of the battery can, the portion to be covered with
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`the cap (figs. 3 and 4 show portions 153 protruding inward from part 152, such that the distance
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`between an innermost part 153a of part 153 and the part 153a directly across from the first part 153a
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`may be considered the minimum, or smallest, inner diameter of portion 152; similarly, fig. 3 shows that
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`crimping rim portion 124 protrudes farther outward with respect to the interior of the battery than the
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`

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`Application/Control Number: 17/045,282
`Art Unit: 1728
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`Page 6
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`inner edgeof parts 153a,i.e. rim 124 has a maximum diameter greater than the minimum diameter of
`
`portion152; the rim portion 124 is covered by the main section of portion 152 as seen in figs. 1-3).
`
`Claim Rejections - 35 USC § 103
`
`13.
`
`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-AlA 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 eitherstatus.
`
`14.
`
`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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`15.
`
`The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
`
`103 are summarized as follows:
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`1. Determining the scope and contents ofthe prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`16.
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`This application currently names joint inventors. In considering patentability of the claims the
`
`examiner presumesthat the subject matter of the various claims was commonly ownedas of the
`
`effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised
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`of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that
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`

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`Application/Control Number: 17/045,282
`Art Unit: 1728
`
`Page 7
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`was not commonly ownedas of the effective filing date of the later invention in order for the examiner
`
`to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art
`
`against the later invention.
`
`17.
`
`Claim 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bae etal. (US
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`2020/0083494 A1) as applied to claim 1 above, and further in view of Miyazaki (US 2008/0081252 A1).
`
`Regarding claim 11, Bae teachesthe battery according to claim 7, wherein the cap is fixed to the open
`
`rim of the battery can (“The conductive cover 150 is coupled to the upper part of the case 120”, [0039],
`
`and specifically to crimping part 124 which is the uppermostsection of case 120).
`
`However, Bae does not teach that the fixing is achieved by welding.
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`Miyazaki teaches a cylindrical battery with a cap-like connector 20 attached to the top of a
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`battery cell and welded to the sealing plate, to be electrically connected to the sealing plate similar to
`
`the way the cap ofBae is electrically connected to the battery case.
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`It would have been obvious to a person having ordinaryskill in the art at the time of the
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`effective filing date of the claimed invention to have substituted the welding of Miyazaki for the fixing of
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`Bae. Welding as taught by Mikazaki would predictably have secured the cap to the open rim in an
`
`electrically conductive manner. The simple substitution of one known element for another is likely to be
`
`obvious when predictable results are achieved. See KSR InternationalCo. v. Teleflex Inc., 82 USPQ2d
`
`1385, 1395 — 97 (2007) (see MPEP § 2143,B.).
`
`Conclusion
`
`18.
`
`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to Katharine (Kate) A. Caughron whose telephone numberis (571)270-5733. The
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`examiner can normally be reached Monday through Thursday, 8:00 AM to 5:00 PM ET.
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`

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`Application/Control Number: 17/045,282
`Art Unit: 1728
`
`Page 8
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`Examiner interviewsare 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,
`
`Matthew Martin can be reached on 571-270-7871. The fax phone number for the organization where
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`this application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Center is available to registered users. To
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`file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.Visit
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`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
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`https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional
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`questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like
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`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
`
`571-272-1000.
`
`/KATHARINE A CAUGHRON/
`Examiner, Art Unit 1728
`
`/MATTHEW T MARTIN/
`Supervisory Patent Examiner, Art Unit 1728
`
`