UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/749,561
`
`02/01/2018
`
`Hitoshi Maeda
`
`P180060US00
`
`9816
`
`WES TERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`S UITE 7500
`
`TYSONS, VA 22182
`
`C0NLEY~ 01 K
`
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/18/2020
`
`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):
`
`patentmai1@ whda.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`15/749,561
`Examiner
`HELEN OI KCONLEY
`
`Applicant(s)
`Maeda et al.
`Art Unit
`1725
`
`AIA (FITF) Status
`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 6/7/2020.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) D 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s)
`
`lis/are pending in the application.
`
`5a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`Claim(ss) 1 is/are rejected.
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. 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.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`
`10)|:l The specification is objected to by the Examiner.
`
`is/are: a)[] accepted or b)l:] objected to by the Examiner.
`11)[:] The drawing(s) filed on
`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)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:] Some**
`
`c)l:i None of the:
`
`1C] Certified copies of the priority documents have been received.
`
`2C] 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) [3 Notice of References Cited (PTO-892)
`
`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20200813
`
`

`

`Application/Control Number: 15/749,561
`Art Unit: 1725
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`2.
`
`Applicant’s amendments have been received on 6/7/2020. Claim 1
`
`is amended.
`
`Claim 2—1 0 are cancelled.
`
`3.
`
`The text of those sections of Title 35, U.S.C. code not included in this action can
`
`be found in the prior Office Action.
`
`Claim Rejections - 35 USC § 1 12
`
`4.
`
`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.
`
`5.
`
`Claim 1
`
`is 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 pre-AIA the applicant regards
`
`as the invention.
`
`6.
`
`Claim 1 recites the limitation "the first positive electrode" in line 25-26 There is
`
`insufficient antecedent basis for this limitation in the claim.
`
`7.
`
`Claim 1 recites the limitation "the second negative electrode" in line 31-32
`
`There is insufficient antecedent basis for this limitation in the claim.
`
`

`

`Application/Control Number: 15/749,561
`Art Unit: 1725
`
`Page 3
`
`Claim Analysis
`
`8.
`
`For the purpose of compact prosecution, “the first positive electrode” will be
`
`interpreted as the first positive electrode in the stack that comprises the active material.
`
`9.
`
`For the purpose of compact prosecution, “the second negative electrode” will be
`
`interpreted as the second negative electrode in the stack that comprises the active
`
`material.
`
`Claim Rejections - 35 USC § 102
`
`8.
`
`The rejection under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US
`
`Publication 2013/0143109), on claim 8 is withdrawn because the Applicants cancelled
`
`the claims.
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`The rejection under 35 U.S.C. 103 as being unpatentable over Kim et al. (US
`
`Publication 2013/0143109) or Byun in view of Aoshima et al. (US Publication
`
`2003/0031923) are withdrawn because the Applicant have amended the claims.
`
`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.
`
`

`

`Application/Control Number: 15/749,561
`Art Unit: 1725
`
`Page 4
`
`7.
`
`Claim 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et
`
`al. (US Publication 2013/0143109).
`
`Regarding claim 1, the Kim reference discloses a battery comprising a stacked
`
`electrode cod},i including a plurality at single plate cells and having a positive electrode
`
`lead-stacked part and a negative electrode lead—stacked part (Fig.8 with Fig. Q), the
`
`plurality of single plate cells include a iirst single plate cell which has a iirst positive
`
`electrode plate (Fig. 8 top Sit) and a first negative electrode plate (top 5t 3, and a second
`
`single plate cell which has a second positive electrode plate (Fig, 8 second to top 50)
`
`and a second negative electrode (Fig.8 second to top 5i) wherein the first single plate
`
`cell is stacked on the second single plate cell. The first single plate has a lirst positive
`
`electrode lead extending from the tirst positive electrode plate {top 125} and a tirst
`
`negative electrode lead extending from the lirst negative electrode plate (top 130) , the
`
`second single plate has a second positive electrode lead (second to top lZG} extending
`
`lrorn the second positive electrode plate and a second negative electrode lead {second
`
`to top lilo) extending item the second negative electrode plate, the negative electrode
`
`lead—stacked part includes the first negative electrode lead and the second negative
`
`electrode lead stacked and joined together. The positive electrode lead—stacked part
`
`being lorrned toy stacking and joining the first positive electrode lead and the second
`
`positive electrode lead each other, the negative electrode lead—stacked part being
`
`lorrned by stacking and toining the first negative electrode lead and the second negative
`
`electrode lead each other. A positive electrode terminal (Fig. $3, lilo) to which the
`
`positive electrode iead~staohed part is connected; and a negative electrode terminal to
`
`which the negative electrode lead~stacl<ed part is connected (toil?) g wherein, a joining
`
`

`

`Application/Control Number: 15/749,561
`Art Unit: 1725
`
`Page 5
`
`pertion (3f the secene peeitive eieetreee teed is; ieeated between the first peeitive
`
`eiectrede (in eteek 1 i0) and the peeitive eieetrede terminei (140},
`
`and the positive terminal (140)
`
`The joining portion between the
`
`first positive electrode in 110
`
`and the positive eieetrode terminei (140) ie not diseased between the first
`
`peeitive eieetrode teed (tee 12%) and the second peeitive eieettede teed (secend to tee
`
`12%} the peeitéve eieetrede terminat,
`
`

`

`Application/Control Number: 15/749,561
`Art Unit: 1725
`
`Page 6
`
`The positive electrode terminal
`
`electrode lead.
`
`140 is not disposed between
`
`the first positive electrode lead
`
`and the second positive
`
`The l<irn deee net explicitly dieeieee wherein, at joining portion at the iiret negative
`
`eieetrede ieati ie ieeated between the eecend negative electrede (in tttiji anti the
`
`negative eteetrede terminal, end the negative eiectrede terminet is net diepeeed
`
`between the first negative eiectrecie ieeci and the secend negative etectrede teed.
`
`however, the earne eeniignratien fer the eathecie is taught to he envietie to the enede in
`
`Paragraph 375. Therelere, the Kim reierenee dieeieeee the eente can be epeiied to the
`
`enede; a patent for a combination, which only unites old elements with no change in
`
`their respective functions, obviously withdraws what is already known into the field of its
`
`monopoly and diminishes the resources available to skillful men. Where the
`
`combination of old elements performed a useful function, but it added nothing to the
`
`nature and quality of the subject matter already patented, the patent failed under §103.
`
`When a patent simply arranges old elements with each performing the same function it
`
`had been known to perform and yields no more than one would expect from such an
`
`arrangement, the combination is obvious. KSR v. Teleflex
`
`

`

`Application/Control Number: 15/749,561
`Art Unit: 1725
`
`Page 7
`
`Response to Arguments
`
`Applicant's arguments filed 6/7/2020 have been fully considered but they are not
`
`persuasive. Applicant’s principal arguments are:
`
`The Applicants argues, “Kim fails to explicitly provide for the aspect of amended
`
`claim 1 which requires that the arrangement between the positive electrode terminal
`
`and the positive electrode lead stacked part be related to the arrangement between the
`
`negative electrode terminal and the negative electrode lead-stack part”
`
`However, the Kim reference discloses the configuration of the negative electrode
`
`would have been obvious as the same as the positive electrode part.
`
`The Applicants argue, “For example, such assembly must include connecting a
`
`part of negative electrode lead-stacked parts onto different, opposite surfaces of the
`
`negative electrode terminal, wherein a first negative electrode lead-stacked part
`
`extending from the lower single plate cell stacked electrode body has its lower surface
`
`joining an upper surface of the negative electrode terminal.”
`
`However, these argued limitations are unclaimed and though, it’s been
`
`considered, it is moot.
`
`The Applicant argue, “Ae anetiier exampie, the eieetrede aeeembiy per Fig. 9 ei Kim
`
`meet iheiude a ieided and in each at the pair at negative eiectrede ieadvetacited pans
`
`ier eenheetien with the negative eieeti'ede termihai. iviereever, not why does Fig. 9 at
`
`him tacit the teaching as te the ceniiguratieh surreuhding the negative eieetrede
`
`teiniinai and the pair 01‘ negative eieetretie teati—
`
`

`

`Application/Control Number: 15/749,561
`Art Unit: 1725
`
`Page 8
`
`stacked parts, reiied on Fig. it) ct Kim teits tc identify the singie~etate ceiis with which
`
`the respective positive eiectrede ieed~steeked eerts, cehriected te the pesitive
`
`eiectrede termihat, are associated.
`
`it/ierecver, there is he viaiete ratieheie whereby a sitiiied ertieeri may he premeted tc
`
`medity Kim ih View ct Acshime sc ee te derive the current inventieh because deing so
`
`requires substeittiei mediiieatieh to the briheieies bi eceratieri et the device ei him
`
`i‘u’ieet seeciiicatiy, te obtain the substantieiiy same structure required by amended
`
`cieim i, the device (it Kim must undergo exterteive rnediticaticne, incitidirtg: (i)
`
`teiding ever the distei ehd et a first cesitive etectrcde teedestacited part, (2) icinihg the
`
`teided end et the first pesitive eieetrede ieedustacited part with the eesitive etectrede
`
`terminet, {3) ietding ever the dietei ehd et a first negative eiectrede teed—stacked part
`
`that extends; trem the negative etectrode ptetee termihg singieeiete ceiis tcgether
`
`with the positive eiectrede ciatee item which 3 eecend ecsitive eiectrcde teed—
`
`stacked pert titer, dittetent item the tirst besitive eiectrede ieadustecked part) extends,
`
`and {4) jeihirig the teided end ct the titst negative eiectrede tead~staei<ed part with the
`
`negative etectrcde terrnirtei. Ne etich mediticetioris are teesibie te Kim. Per MPEP.
`
`§2i43tiii .Vi when a mediticetieri weiiid require a substahtiei recchstrtictieh end
`
`redesign ct the eiemehts shewri in the brimerg.i reterence the mediticaticn eehhet be
`
`cehsidered ebvictis.
`
`Hewever, these argued limitations are unclaimed and though, it’s been
`
`considered, it is moot. The amendments submitted in June 7, 2020 is actually much
`
`

`

`Application/Control Number: 15/749,561
`Art Unit: 1725
`
`Page 9
`
`broader than the claimed invention prior and thus, the Kim alone can be used to
`
`rejection the claimed invention.
`
`Conclusion
`
`9.
`
`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
`
`CFR1.136(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
`
`extension fee 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 date of this final action.
`
`8.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to HELEN Ol K CONLEY whose telephone number is
`
`(571)272-5162. The examiner can normally be reached on 8:30 am - 5:00 pm.
`
`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.
`
`

`

`Application/Control Number: 15/749,561
`Art Unit: 1725
`
`Page 10
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Basia Ridley can be reached on 571-272—1453. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`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
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/Helen Oi K CONLEY/
`
`Primary Examiner, Art Unit 1725
`
`