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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
`
`1751
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/30/2023
`
`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)
`
`

`

`
`
`Disposition of Claims*
`1,8-10 and 14-15 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`5a) Of the above claim(s) 2-6 and 12-13 is/are withdrawn from consideration.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) 1,8-10 and 14-15 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 05 October 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 beenreceived 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)
`
`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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230819
`
`Application No.
`Applicant(s)
`17/045 ,282
`GESH| etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`Katharine (Kate) A Caughron
`1751
`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 31 May 2023.
`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.
`
`

`

`Application/Control Number: 17/045,282
`Art Unit: 1751
`
`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.
`
`2.
`
`The text of those sections of Title 35, U.S. Code not included in this action can be found in a
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`Claim Rejections - 35 USC § 103
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`prior Office action.
`
`3.
`
`Claims 1, 8-10 and 14-15is/are rejected under 35 U.S.C. 103 as being unpatentable over Bae et
`
`al. (US 2020/0083494 A1), in view of Iwaizonoetal. (US 6,524,739 B1).
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`4.
`
`Regarding claim 1, Bae teaches a battery (“Secondary Battery”, Title) comprising:
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`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 ([0030], figs. 1-
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`3; crimping part 124 may be considered an openrim sinceit is the upper edge of the case 120 opposite
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`the bottom plate 122 and is open to receive the electrode assembly prior to sealing);
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`an electrode body 110 housed in the cylindrical portion 121 ([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 ([0030], fig. 3; cap 130 and gasket 140 arecollectively a sealing body, since they act
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`together to seal the battery, and this sealing body is located at the opening defined by the rim 124 with
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`the gasket around the edge of the sealing plate 130; cap 130 is plate-shaped, being composedof several
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`plates joined into one larger sealing plate),
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`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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`

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`Application/Control Number: 17/045,282
`Art Unit: 1751
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`Page 3
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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
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`in figs. 1-2),
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`and the battery further comprising a cap 150 with electrical conductivity covering at least part of
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`the open rim and directly electrically connected to the uppermost portion of the open rim, the cap being
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`electrically insulated from the sealing plate ([0039], figs. 1-4; fig. 3 in particular showsthat the cap 150
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`contacts the crimping rim 124 and would therefore be electrically connected to it; [0047], in other
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`words insulation 160 electrically insulates part 151, and the rest of the cap 150, from part 131, and the
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`rest of sealing plate 130; the cap may be considered to have a direct electrical connection with the
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`uppermost portion of the open rim, since the cap has electrical connection with the uppermost portion
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`of the rim through the side portion of the rim and sois not electrically insulated from the upper most
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`portion of the rim).
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`Bae does not teach that the cap is directly in contact with an uppermost portion of the open
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`rim.
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`Iwaizono teachesa battery (Abstract; fig. 6), comprising:
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`a battery can 15 including a cylindrical portion, a bottom wall closing one end of the cylindrical
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`portion, and an open rim continuing to the other end of the cylindrical portion; an electrode body
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`housedin the cylindrical portion; and a sealing body 8 fixed to the open rim so as to seal an opening
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`defined by the open rim,
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`(col. 10, line 67 to col. 11, line 2; fig. 6 shows a cutaway view of the can 15
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`including the open rim on the side opposite the bottom; the electricity generating elements correspond
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`to the electrode body; col. 11, lines 2-5);
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`

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`Application/Control Number: 17/045,282
`Art Unit: 1751
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`Page 4
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`the sealing body 8 including a sealing plate 17, and a gasket 13 disposed at a peripheral portion
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`of the sealing plate, wherein the sealing body has a first principal surface facing an interior of the
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`battery can, a second principal surface opposite to the first principal surface, and a side surface
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`connecting the first principal surface with the second principal surface (col 11, lines 2-7; fig. 6 shows that
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`the sealing body 8 has a first principal surface facing the interior of the can 15, a second principal
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`surface facing the exterior of the can, and a side surface along the side of the can 15)), and
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`the battery further comprising a cap 20 with electrical conductivity covering at least part of the
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`open rim and directly in contact with an uppermost portion of the open rim, the cap 20 being electrically
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`insulated from the sealing plate 17 (col. 14, lines 46-47; fig. 6 shows that the cap 20 directly contacts the
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`uppermost portion of the open rim; the gasket 13 is understood to be an insulating element which
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`insulates the cap from the sealing plate 17).
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`It would be obvious to a person havingordinary skill in the art before the effective filing date of
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`the claimed invention to modify the battery of Bae such that the cap is directly in contact with an
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`uppermost portion of the open rim as taught by Iwaizono, since the direct contact with the uppermost
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`portion of the rim is a predictably functional arrangement. The combination of familiar elementsis likely
`
`to be obvious when it does no morethan yield predictable results. See KSR International Co. v. Teleflex
`
`Inc., 82 USPQ2d 1385, 1395 — 97 (2007) (see MPEP § 2143, A.).
`
`Bae further teaches that the cap is fixed to the open rim of the battery can ([0039] of Bae; the
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`conductive cover 150 is coupled to crimping part 124 which is the uppermostsection of case 120).
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`However, Bae does not teach that the fixing is achieved by welding.
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`Iwaizono teachesthat the battery cap 20 may be fixed to the battery can 15 by welding prongs
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`20e, which are a portion of the battery cap 20, to the can 15 (col. 15, lines 25-30).
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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 used the welding of Ilwaizonofor fixing the cap to
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`

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`Application/Control Number: 17/045,282
`Art Unit: 1751
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`Page 5
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`the open rim in the battery of Bae. Welding as taught by lwaizono would predictably have secured the
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`cap to the open rim in an electrically conductive manner. The simple substitution of one known element
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`for anotheris 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.).
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`5.
`
`Regarding claim 8, modified Bae disclosesall of the limitations as set forth above. Bae further
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`teaches that the cap has a first portion 152 covering at least part of the side surface of the sealing body,
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`with the open rim of the battery can between the first portion and the side surface ([0042] of Bae; fig. 3
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`of Bae shows howportion 152 covers the side edge of the sealing body, plate 130 and gasket 140, with
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`the crimping rim 124 in between).
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`6.
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`Regarding claim 9, modified Bae disclosesall of the limitations as set forth above. Bae further
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`teachesthat the cap has a second portion 151 covering at least part of an outer periphery of the second
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`principal surface of the sealing body ([0041] of Bae, 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;also fig. 3 of Bae).
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`7.
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`Regarding claim 10, modified Bae disclosesall of the limitations as set forth above. Bae further
`
`teaches that:
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`the first portion 152 of the cap has an annular shape(figs. 1, 2 and 4 of Bae show that the first
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`portion 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 of Bae 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 of Bae
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`showsthat crimping rim portion 124 protrudes farther outward with respect to the interior of the
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`battery than the inner edge of parts 153a,i.e. rim 124 has a maximum diameter greater than the
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`

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`Application/Control Number: 17/045,282
`Art Unit: 1751
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`Page 6
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`minimum diameter of portion152; the rim portion 124 is covered by the main section of portion 152 as
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`seen in figs. 1-3 of Bae).
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`8.
`
`Regarding claim 14, modified Bae disclosesall of the limitations as set forth above. Bae further
`
`teaches that the gasketis interposed between the cap and the sealing plate (fig. 3 of Bae showsthat the
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`gasket 140 is positioned between the cap 150 and the sealing plate 130).
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`Bae is silent as to the gasket being an electrically insulating member.
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`It would have been obvious to a person having ordinary skill in the art at the time of the
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`effective filing date of the claimed invention to select an electrically insulating member for the gasket of
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`Bae, in order to prevent an undesirable short circuit between the positive terminal formed by the
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`sealing plate and the negative terminal formed by the cap. A person of ordinary skill in the art would
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`reasonably expect the selection of an electrically insulating material as the gasket member to prevent a
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`short circuit between the positive terminal and the negative terminal. The selection of a known
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`material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary
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`skill in the art (see MPEP § 2144.07).
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`Bae doesnot teach that the gasket is disposed so as to extend more inward than the cap ina
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`radial direction.
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`Bae teachesthat insulating element 160 is disposed so as to extend more inward than the cap
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`150 in the radial direction (figs. 3 and 5 of Bae show that the insulating element 160 extends more
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`inward toward the center of the battery, which may be considered the radial direction, than the cap
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`150). It would have been obvious to a person having ordinaryskill in the art at the time of the effective
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`filing date of the claimed invention to modify the gasket 140 to extend more inward than the cap 150 in
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`the radial direction, since the gasket 140 would better prevent a short-circuit between the cap 150 and
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`the sealing plate 130 ([0047] of Bae, such that extending gasket 140 to provide better insulation
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`between sealing plate 130 and cap 150 would help to prevent shortcircuits).
`
`

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`Application/Control Number: 17/045,282
`Art Unit: 1751
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`Page 7
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`9.
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`Regarding claim 15, modified Bae disclosesall of the limitations as set forth above. Bae further
`
`teaches that:
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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 of Bae shows a side cutaway of the gasket, with the inner ring portion on the bottom edge of the
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`sealing plate 130 with respect to the figure, the outer ring portion on the top edgeof the sealing plate
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`130, and 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 of Bae showsthat the sealing plate 130 and the gasket 140 are touching such that the gasket
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`appears to be molded around the sealing plate).
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`Response to Arguments
`
`10.
`
`Applicant's argumentsfiled 05/31/2023 have been fully considered but they are not persuasive.
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`In response to applicant's arguments against the references individually, one cannot show
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`nonobviousnessby attacking references individually where the rejections are based on combinations of
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`references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091,
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`231 USPQ 375 (Fed. Cir. 1986).
`
`On p. 6, Applicant argues that it would not have been obvious to modify Bae using the teachings
`
`of Miyazaki because Miyazaki teaches the welding of two elements of opposite polarity. The Examiner
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`respectfully submits that this argument is moot and that the rejection of claim 1 is based on the
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`combination of Bae and Iwaizono.
`
`On p. 6, Applicant argues that lwaizono teaches welding in another section and is silent as to
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`welding the cap to the battery can on the openrim side. The Examiner respectfully submits that this
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`

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`Application/Control Number: 17/045,282
`Art Unit: 1751
`
`Page 8
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`argument attacks Ilwaizono individually, and that the rejection of claim 1 is based on the combination of
`
`Bae and Iwaizono. Additionally, in the rejection of claim 1, the Examiner establishes that modified Bae
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`teaches that the cap is fixed to the open rim of the battery can of Bae but Bae doesnotparticularly
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`teach welding as the method employedfor fixing the cap to the battery can.
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`In this regard, lwaizono
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`was notrelied on for the teaching of welding at a particular section of the battery but instead for the
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`teaching of welding as a well-known methodfor fixing a battery cap to another componentof the
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`battery cap. Thus, selecting welding as the fixing method of Bae is an obvious means for fixing different
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`components of the battery cap and can as knownin the art.
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`On p. 6, Applicant argues that lwaizono teaches a secondary battery comprising circuit board,
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`such that it would not have been obvious to perform welding on the battery of lwaizono because of the
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`potential for damage to the circuit board. The Examiner respectfully submits that this argument attacks
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`lwaizono individually, and that the rejection of claim 1 is based on the combination of Bae and Iwaizono.
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`On p. 7, Applicant argues that in both Bae and Iwaizono,the joint between the cap and the
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`battery can is on the side of the battery can as opposed to the open rim side. The Examiner respectfully
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`submits that this argument attacks each of Bae and Iwaizono individually, and that the rejection of claim
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`1 is based on the combination of Bae and Iwaizono. The Examiner further notes that the while the
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`particular connection mechanism of Bae and Ilwaizono maybe located on the side of the battery can, the
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`cap and the battery can of Bae as modified by Ilwaizono arejoint at the open rim side in the sense that
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`the cap and the battery can physically touch at this point (see [0039], [0047] and fig. 3 of Bae and col.
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`14, lines 46-47 and fig. 6 of lwaizono, as discussed abovein the rejection of claim 1).
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`Independent claim 1 and its dependents 8-10 and 14-15 stand rejected over Bae in view of
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`lwaizono.
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`

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`Application/Control Number: 17/045,282
`Art Unit: 1751
`
`Page 9
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`Conclusion
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`11.
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`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 number is (571)270-5733. The
`
`examiner can normally be reached Mondaythrough Friday, 9:00 AM to 6:00 PM ET.
`
`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,
`
`Jonathan Leong can be reached on (571)270-1292. The fax phone number for the organization where
`
`this application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
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`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
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`571-272-1000.
`
`/KATHARINE A CAUGHRON/
`Examiner, Art Unit 1751
`
`/Haroon S. Sheikh/
`Primary Examiner, Art Unit 1751
`
`