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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
`
`17/045,212
`
`10/05/2020
`
`Oose OKUTANI
`
`094704-0076
`
`5308
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`KENLAW, GRACE A
`
`1728
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/19/2022
`
`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*
`1-7 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-7 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 10/05/2020 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
`1.4) 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
`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 20220111
`
`Application No.
`Applicant(s)
`17/045,212
`OKUTANI etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`GRACE A KENLAW
`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 10/05/2020.
`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: 17/045,212
`Art Unit: 1728
`
`Page 2
`
`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthe
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`first inventor to file provisions of the AJA.
`
`2.
`
`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
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`statutory basis for the rejection will not be considered a new ground ofrejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`3.
`
`Claims 1-7 have been examined on the merits.
`
`Claim Status
`
`Priority
`
`4,
`
`Acknowledgment is made of the applicant's claim for foreign priority based on an
`
`application filed in Japan on 04/06/2018. It is noted that applicant hasfiled a certified copy of the
`
`application, JP2018-074202, as required by 37 CFR 1.55.
`
`Information Disclosure Statement
`
`5.
`
`The information disclosure statements (IDS) submitted on or before 05/10/2021 are in
`
`compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. Accordingly, the
`
`information disclosure statements are being considered by the examinerandinitial copies are
`
`attached herewith.
`
`

`

`Application/Control Number: 17/045,212
`Art Unit: 1728
`
`Page 3
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`Specification
`
`6.
`
`Thetitle of the invention is not descriptive. A new title is required thatis clearly
`
`indicative of the invention to which the claims are directed.
`
`7.
`
`The disclosure is objected to because of the following informalities:
`
`a.
`
`[0010], line 1 recites “presses” but should recite “press”.
`
`Appropriate correction is required.
`
`8.
`
`A claim containing a "recitation with respect to the manner in which a claimed apparatus
`
`is intended to be employed doesnot differentiate the claimed apparatus fromapriorart
`
`Claim Interpretation
`
`apparatus"if the prior art apparatus teachesall the structural limitations of the claim. Ex parte
`
`Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987.). Therefore, the limitation “integrally
`
`molded, to be welded to each other”in line 2 of claim 5 has not been accorded any patentable
`
`weight.
`
`9.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`Claim Rejections - 35 USC § 102
`
`basis for the rejections under this section madein this Office action:
`
`A personshall be entitled to a patent unless —
`
`(a)(1) the claimed invention waspatented, described in a printed publication, or in public use, on sale,
`or otherwise available to the public before the effective filing date of the claimed invention.
`
`(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 waseffectively filed before the effective filing date of the
`claimed invention.
`
`

`

`Application/Control Number: 17/045,212
`Art Unit: 1728
`
`Page 4
`
`10.
`
`Claims 1-3, 5 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Lee (US 20160079584 A1).
`
`Regarding claim 1, Lee discloses a battery ((0039]; Fig. 1; element 1) comprising:
`
`a battery can (“case 30”; [0042]; Fig. 1; element 30) having a cylindrical portion (Fig. 1;
`
`element 30),
`
`a bottom wall (Fig. 1; element 22 and 52) closing one end ofthe cylindrical portion (30),
`
`and an open rim (“opening”; [0072]; Fig. 1; element 31) continuing to the other end of the
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`cylindrical portion (30);
`
`an electrode body (Fig. 1; element 10) housed in the cylindrical portion (30); and a
`
`sealing body (Fig. 1; element 21 and 51) fixed to the open rim (31) so as to seal an opening (Fig.
`
`1; element 31) defined by the open rim (31),
`
`the sealing body (21, 51) including a sealing plate (Fig. 1; element 21) and a gasket (Fig.
`
`1; element 51) disposed at a peripheral portion of the sealing plate (21),
`
`the gasket (51) being compressed between an end surface of the peripheral portion (Fig.
`
`1; element 21) and the open rim (31), in a radial direction (annotated Fig. 1; element X) of the
`
`opening (31).
`
`

`

`Page 5
`
`Application/Control Number: 17/045,212
`Art Unit: 1728
`
`Pd
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`Regarding claim 2, Lee discloses wherein the open rim (31) has a projection (Fig. 1;
`
`element 33) protruding inward in the radial direction (X), and the gasket (51) is compressed in
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`the radial direction (X) by the projection.
`
`Regarding claim 3, Lee discloses wherein,in a height direction (annotated Fig. 1;
`
`element Z) of the battery can (30), the end of the projection (33) is substantially equal in position
`
`

`

`Application/Control Number: 17/045,212
`Art Unit: 1728
`
`Page 6
`
`to a center of the end surface (Fig. 1; element 21). Thus, Lee anticipates the limitation “the
`
`projection is substantially equal to a center of the end surface”.
`
`Regarding claim 5, the limitation “wherein the sealing plate and the gasket are integrally
`
`molded, to be welded to each other” includesa recitation of intended use. Thus, the instant claim
`
`does not patentably distinguish the claimed invention from the disclosure of Lee.
`
`Regarding claim 6, discloses wherein the battery can (30) is configured not to have a
`
`constricted portion interposed between the gasket (51) and the electrode body(10).
`
`11.
`
`Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oikeetal.
`
`(JPS5981862A, machinetranslation used for rejection below).
`
`Regarding claim 1, Oike discloses a battery (Fig. 2) comprising: a battery can (Fig. 2;
`
`element 11) having a cylindrical portion (Fig. 2; element 11),
`
`a bottom wall (Fig. 2; bottom of element 11) closing one end of the cylindrical portion
`
`(11), and an open rim (Fig. 2; element 11a to 155) continuing to the other end of the cylindrical
`
`portion (11);
`
`an electrode body (Fig. 2; element 12-14) housed in the cylindrical portion (11); and a
`
`sealing body (Fig. 2; element 17, 18, and 15) fixed to the open rim (11a-155) so asto seal an
`
`opening defined by the open rim (1 1a-155),
`
`

`

`Application/Control Number: 17/045,212
`Art Unit: 1728
`
`Page 7
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`the sealing body (17, 18, and 15) including a sealing plate (Fig. 2; element 17, 18) anda
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`gasket (Fig. 2; element 15) disposed at a peripheral portion of the sealing plate (17, 18), the
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`gasket (15) being compressed between an end surface of the peripheral portion and the open rim
`
`(1la-155), in a radial direction (annotated Fig. 2; element X) of the opening (11a-155).
`
`ti
`
`Hoe
`
`ResINGta
`
`z
`
`: ‘ . “ .
`!
`
`
`Regarding claim 2, Oike discloses wherein the open rim (11a-155) has a projection (Fig.
`
`2; element 19) protruding inward in the radial direction, and the gasket (15) is compressed in the
`
`radial direction (X) by the projection (19).
`
`Regarding claim 3, Oike discloses wherein, in a height direction (annotated Fig. 2;
`
`element Z) of the battery can (11), the projection (19) is substantially equal in position to a center
`
`of the end surface (Fig. 2; element 17).
`
`
`
`te
`Ze a {Ya
`wiPe a|
`193
`
`EAN
`
`Eg eae
`
`OAKSa3
`
`

`

`Application/Control Number: 17/045,212
`Art Unit: 1728
`
`Page 8
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`Regarding claim 4, Oike discloses wherein, in a height direction (Z) of the battery can
`
`(11), the open rim (11a-155) is smaller in outer diameter (Fig. 2; diameter of element 11a) at a
`
`lowermost position (Fig. 2; diameter of element 11a) in contact with the gasket (15), than the
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`cylindrical portion (11).
`
`Regarding claim 5, Oike discloses wherein the sealing plate (17) and the gasket (15) are
`
`integrally molded ([008]).
`
`Regarding claim 6, Oike discloses wherein the battery can (11) is configured not to have
`
`a constricted portion interposed (Fig. 2) between the gasket (15) and the electrode body (12-14).
`
`Claim Rejections - 35 USC § 103
`
`12.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejectionsset forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed inventionis 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 obviousbefore 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 mannerin which the invention was made.
`
`13.
`
`The factual inquiries 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 priorart.
`
`2. Ascertaining the differences betweenthe prior art and the claimsat issue.
`
`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.
`
`

`

`Application/Control Number: 17/045,212
`Art Unit: 1728
`
`Page 9
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`14,
`
`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (US
`
`20160079584 A1) in view of Wendling (US 20100216014 A1).
`
`Lee discloses all claim limitations of the claim 1 as set forth above. Leefails to disclose
`
`wherein, in a height direction of the battery can, the open rim is smaller in outer diameterat a
`
`lowermost position in contact with the gasket, than the cylindrical portion.
`
`Wendling discloses that a “bead 16 is provided to help create and maintain axial closing
`
`forces during and after the sealing” ([0035]) of a cylindrical battery can and a sealing body(Fig.
`
`1). The bead disclosed by Wendlingis at a lowermostposition in contact with a gasket (Fig. 1;
`
`element 40) of Wendling’s invention andis smaller in outer diameter than the cylindrical portion
`
`disclosed by Wendling.
`
`SO
`
`we.
`
`Wendling and Lee are analogous art from the samefield of endeavor, namely the
`
`fabrication of cylindrical batteries with sealing bodies. Therefore it would have been obvious to
`
`one of ordinary skill in the art to have modified Lee by employing the bead of Wendling. In
`
`

`

`Application/Control Number: 17/045,212
`Art Unit: 1728
`
`Page 10
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`doing so one of ordinary skill in the art would reasonably expect to help create and maintain
`
`axial closing forces during andafter the sealing of Lee’s battery as recognized by Wendling.
`
`15.
`
`Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (US
`
`20160079584 A1).
`
`Lee discloses all claim limitations of claim 1 as set forth above. Lee further discloses
`
`wherein the diameter of the battery can is 2-5 mm ([0025]). As illustrated in Fig. 3, the distance
`
`between the gasket (51) and electrode body (10) is considerably less than the diameter of the can
`
`(30). Therefore, it would have been obviousto one of ordinary skill in the art that in Lee’s
`
`disclosure a shortest distance between the sealing body and the electrode bodyis 2 mm orless
`
`based on the approximate dimensionsprovided by Lee.
`
`

`

`Application/Control Number: 17/045,212
`Art Unit: 1728
`
`Page 11
`
`is
`
`Alternatively, it has been held that where the only difference between the prior art and the
`
`claims wasa recitation of relative dimensionsof 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
`
`

`

`Application/Control Number: 17/045,212
`Art Unit: 1728
`
`Page 12
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`U.S. 830, 225 USPQ 232 (1984). Therefore, the instant claim is not patentably distinct from
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`Lee’s disclosure.
`
`Conclusion
`
`16.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to GRACE A KENLAW whosetelephone numberis (571)272-
`
`1253. The examiner can normally be reached M-F 9:00 AM-6:00 PM.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO Automated Interview Request (AIR)at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Matthew Martin can be reached on (571) 270-7871. The fax phone numberfor the
`
`organization wherethis 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
`
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`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`

`

`Application/Control Number: 17/045,212
`Art Unit: 1728
`
`Page 13
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`/G.A.K./
`Examiner, Art Unit 1728
`
`/MATTHEW T MARTIN/
`Supervisory Patent Examiner, Art Unit 1728
`
`