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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
`
`16/217,774
`
`12/12/2018
`
`Yohei Muroya
`
`P181257US00
`
`4208
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`USYATINSKY, ALEXANDER
`
`ART UNIT
`1727
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/27/2021
`
`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):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} 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://www.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 12/28/2018 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)Z) 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)X) 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.
`3.2.) 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 12/12/2018.
`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 20210503
`
`Application No.
`Applicant(s)
`16/217,774
`Muroyaet al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ALEXANDER USYATINSKY
`1727
`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 12/28/2018.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`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: 16/217,774
`Art Unit: 1727
`
`Page 2
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`DETAILED ACTION
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Priority
`
`2.
`
`Acknowledgement has been made of applicant’s claim for priority under 35 USC
`
`119 (a-d). The certified copy has been filed on 01/15/2019.
`
`Information Disclosure Statement
`
`3.
`
`The Information Disclosure Statement(IDS)filed 12/28/2018 has
`
`been placedin the application file and the information referred to therein has been
`
`considered.
`
`Drawings
`
`4.
`
`The drawings received 12/28/2018 are acceptable for examination purposes.
`
`Double Patenting
`
`5.
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine groundedin public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper time wise extension of the “right to exclude” granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory double
`
`patenting rejection is appropriate where the conflicting claims are not identical, but at
`
`least one examined application claim is not patentably distinct from the reference
`
`claim(s) because the examined application claim is either anticipated by, or would have
`
`been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46
`
`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`
`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
`
`

`

`Application/Control Number: 16/217,774
`Art Unit: 1727
`
`Page 3
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timelyfiled terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d)
`
`may be used to overcome an actual or provisional rejection based on nonstatutory
`
`double patenting provided the reference application or patent either is shown to be
`
`commonly owned with the examined application, or claims an invention made as a
`
`result of activities undertaken within the scope of a joint research agreement. See
`
`MPEP § 717.02 for applications subject to examination under the first inventor tofile
`
`provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 etseq.for
`
`applications not subject to examination under the first inventor to file provisions of the
`
`AlA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`The USPTOInternet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
`
`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
`
`PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may
`
`befilled out completely online using web-screens. An eTerminal Disclaimer that meets
`
`all requirements is auto-processed and approved immediately upon submission. For
`
`more information about eTerminal Disclaimers, refer to
`
`www.uspto.gov/patents/process/file/efs/guidance/eT D-info-l.jsp.
`
`6.
`
`Claim 1 provisionally rejected on the ground of nonstatutory double patenting as
`
`being unpatentable over claim 1 of copending Application No. 16/255/019, now allowed
`
`Although the claims at issue are not identical, they are not patentably distinct from each
`
`other because it contains all limitations of instant claim 1
`
`

`

`Application/Control Number: 16/217,774
`Art Unit: 1727
`
`Page 4
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
`
`Claim Rejections - 35 USC § 112
`
`7.
`
`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-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.
`
`8.
`
`Claim1 is 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-
`
`AIA 35 U.S.C. 112, the applicant), regards as the invention.
`
`9.
`
`The term heat resistant is a relative term. Any material has a certain level of
`
`stability towards heat. The term heat resistant in claim 1
`
`is a relative term which renders
`
`the claim indefinite. The term heat resistant is not defined by the claim, the specification
`
`does not provide a standard for ascertaining the requisite degree, and one of ordinary
`
`skill in the art would not be reasonably apprised of the scope of the invention.
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`10.
`
`Claims 2-9 depend from claim 1 directly or indirectly and fall therewith.
`
`Claim Rejections - 35 USC § 102
`
`11.
`
`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 madein this Office action:
`
`A personshall be entitled to a patent unless —
`
`

`

`Application/Control Number: 16/217,774
`Art Unit: 1727
`
`Page 5
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`(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.
`
`12.=This application currently names joint inventors. In considering patentability of the
`
`Claim Rejections - 35 USC § 103
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly ownedasof the effective filing date of the claimed invention(s) absent any
`
`evidenceto the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and effectivefiling dates of each claim that was not commonly
`
`ownedas ofthe effectivefiling date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
`
`13.
`
`Claim 1-4,6 and9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by
`
`or, in the alternative, under 35 U.S.C. 103 as obvious over US 2016/0181589 to
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`Yokoyama (Yokoyama).
`
`14.
`
`Regarding claim 1, Yokoyama discloses a secondary battery comprising: an
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`electrode bodythat includes a positive electrode plate and a negative electrode plate
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`(para 10) an outer body that has an opening and houses the electrode body (Fig. 1A,
`
`1B), a sealing plate that is made of metal (13, Fig. 1, para 37) and seals the opening,
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`and a terminal that is electrically connected to the positive electrode plate or the
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`negative electrode plate (17 or 19 Fig. 1A), wherein a conduction path between the
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`positive electrode plate or the negative electrode plate and the terminal
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`is provided with
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`a current
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`interrupting mechanism or a fuse part (para37, 39, 42, 45-46, 48-50, 56, and
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`73 plus e.g. 2-4,6-7, and 9; a positive electrode electricity collector structure (e.g. item
`
`

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`Application/Control Number: 16/217,774
`Art Unit: 1727
`
`Page 6
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`16) is electrically connected to said positive electrode external terminal via an inversion
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`plate (e.g. item 33), wherein said inversion plate expands and deforms toward said
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`sealing structure when a pressure (re claim 2) in said prismatic outer structure
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`becomes greater than or equal to a predetermined value, thereby disconnecting the
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`electrical connection between said inversion plate and said positive electrode electricity
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`collector structure such that the conductive route between said wound electrode
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`structure and said positive electrode external terminal is disconnected reading on "a
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`conduction path between the positive electrode plate or the negative electrode plate and
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`the terminal is provided with a current interrupting mechanism or a fuse part),, the
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`terminal is attached to the sealing plate via an insulating member made ofresin, at least
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`part of the terminal is disposed on a battery outer side with respect to the sealing plate
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`(Fig. 1), and an electrically insulating heat-resistant layer or an electrically insulating
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`heat- resistant member is disposed between the terminal and the sealing plate,
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`(member 20a whichis placed is placed between the sealing structure and said positive
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`electrode external terminal, said insulating member is composed of polypropylene (PP),
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`perfluoroalkoxy fluoroplastic (PFA), or copolymer of ethylene-tetrafluoroethylene
`
`(PTFE), whereinafirst insulation member (e.g. item 34) is similarly comprised of
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`polypropylene (PP), perfluoroalkoxy fluoroplastic (PFA), and copolymer of ethylene-
`
`tetrafluoroethylene (PTFE), characterized i.e. resin, para 46 and 58).
`
`15.
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`Alternatively, it would have been obvious to one or ordinary skill in the art before
`
`the effective filing date of the claimed invention to choose the suitable material based on
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`list of resins disclosed by Yokoyama based on heatresistance of said resins and
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`depending of working conditions of the battery.
`
`

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`Application/Control Number: 16/217,774
`Art Unit: 1727
`
`Page 7
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`16.
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`Regarding claim 3, Yokoyama discloses wherein the heat-resistant layer is
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`formed on a surface of at least one of the terminal the insulating member. And the
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`sealing plate (. Fig. 1).
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`17.
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`Regarding claim 4, Yokoyama discloses wherein the heat-resistant member is
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`disposed between the terminal and an outer surface of the sealing plate (member 20,
`
`Fig. 1B).
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`18.
`
`Regarding claim 6, Yokoyama discloses the invention as discussed above as
`
`applied to claim 1, and incorporated therein. Since, the battery of Yokoyama is
`
`
`
`substantially similar to the instant battery as claimed in claim 1, the claimed feature
`
`considered as inherently present.
`
`19.
`
`Regarding claim 9, Yokoyama discloses a battery pack (Title, claim 8), wherein
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`the batteries can be connectedin parallel (para 5).
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`20.
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`Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US
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`2016/0181589 to Yokoyama as applied to claim 1 in view of WO 2016017733 to
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`Inoue (US 10,952,893 is used as English language equivalent).
`
`21.
`
`Regarding claim 7, Yokoyama discloses the invention as discussed above as
`
`applied to claim 1 and incorporated therein, Yokoyama does not expressly disclose
`
`wherein the heat-resistant layer or the heat-resistant member has a higher melting point
`
`than the insulating member.
`
`22.
`
`Inoue teaches a combination of sealing and heat resisting resin used for
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`resalable sealing of battery housing (bag). Inoue also teachesthat sealing resin
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`(thermofusible resin) has a lower melting point than the heat resistant resin (claim 1).
`
`Therefore, such structural design wherein the heat-resistant layer or the heat-resistant
`
`

`

`Application/Control Number: 16/217,774
`Art Unit: 1727
`
`Page 8
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`member has a higher melting point than the insulating member is well Knownin the art.
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`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention wasfiled to optimize the properties in a combination of the heat resistant
`
`member and insulation member
`
`to achieve secure sealing since such structural
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`design is well known in the art. (MPEP 2144.03 (A-E)).
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`Allowable Subject Matter
`
`
`
`23. Claims 5 and 8 are objected to as being dependent uponarejected base claim,
`
`but would be allowable if rewritten in independent form including all of the limitations of
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`the base claim and any intervening claims.
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`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ALEXANDER USYATINSKYwhosetelephone number
`
`is (571)270-7703. The examiner can normally be reached on IFP.
`
`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:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Barbara Gilliam can be reached on 5712721330. 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.
`
`

`

`Application/Control Number: 16/217,774
`Art Unit: 1727
`
`Page 9
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`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on accessto 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.
`
`/Alexander Usyatinsky/
`Primary Examiner, Art Unit 1727
`
`