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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
`
`17/048, 187
`
`10/16/2020
`
`HIDEMI KURIHARA
`
`P210191US00
`
`4487
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`APICELLA, KARIE O
`
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/29/2023
`
`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):
`
`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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} 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://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) The drawing(s) filed on 16 October 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.
`3.4.) 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
`12-08-20,08-10-21,07-13-22,
`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 20230823
`
`Application No.
`Applicant(s)
`17/048, 187
`KURIHARA, HIDEMI
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`KARIE O APICELLA
`1725
`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 16 October 2020.
`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: 17/048,187
`Art Unit: 1725
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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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.
`
`2.
`
`Claims 1-9 are pending in this office action.
`
`Priority
`
`3.
`
`Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f),
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`which papers have been placed of recordin the file.
`
`Information Disclosure Statement
`
`4.
`
`Information disclosure statements (IDS), submitted December 8, 2020; August
`
`10, 2021; and, July 13, 2022, have been received and considered by the examiner.
`
`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-AIA 35 U.S.C. 102 and 103)is incorrect, any
`
`correction of the statutory basis (i.e., changing from AIA to pre-AlA) 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 either status.
`
`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 madein this Office action:
`
`A personshall be entitled to a patent unless —
`
`

`

`Application/Control Number: 17/048,187
`Art Unit: 1725
`
`Page 3
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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.
`
`7.
`
`Claims 1 and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Suzuki et al. (US 10,673,106 B2).
`
`With regard to Claim 1, Suzuki et al. disclose in Figures 1 and 4, a power supply
`
`device comprising: a battery block, called a battery pack (50), in which a plurality of
`
`secondarybattery cells (52) are connected in series and/or in parallel to each other; a
`
`circuit board, called a PCB (61), on which a protection circuit that protects the plurality
`
`of secondarybattery cells (52) constituting the battery block (50) is mounted; and an
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`exterior case, called a battery housing (51), that houses the battery block (50) including
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`the plurality of secondary cells (52) and the circuit board (61), wherein a facing part, or
`
`top portion, of the exterior case (51) that directly faces the circuit board (61) is thicker
`
`than at least a portion of a non-facing part, called the specific portion (69), that is
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`another part of the exterior case (51) (columns 6-8).
`
`With regard to Claim 7, Suzuki et al. disclose in Figure 4, wherein the facing part,
`
`or top portion of the housing (51), is a region close to a plate-shaped end edge of the
`
`circuit board (61) (column 7, lines 16-67).
`
`With regard to Claim 8, Suzuki et al. further disclose in Figure 4, a battery holder,
`
`or metal plate (65), that holds the plurality of secondary battery cells (52), wherein the
`
`circuit board (61) is placed on one surfaceof the battery holder (65) making connection
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`through the surface (63a) of the electronic component (63) (column 7, lines 55-67).
`
`

`

`Application/Control Number: 17/048,187
`Art Unit: 1725
`
`Page 4
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`With regard to Claim 9, Suzuki et al. disclose in Figures 1-2, wherein the power
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`supply device (50) is a battery pack that is connectedto a portable electric device,
`
`called a grinder (1), to supply electric power (column 4, lines 4-7).
`
`8.
`
`Claims 1-4 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Baumgartner et al. (US 2015/0079444 A1).
`
`With regard to Claim 1, Baumgartner et al. disclose in Figures 1-4, a power
`
`supply device, called a rechargeable battery (10), comprising: a battery block (12) in
`
`which a plurality of secondary battery cells (84) are connected in series and/or in
`
`parallel to each other; a circuit board, called electronics system (58), on which a
`
`protection circuit that protects the plurality of secondary battery cells (84) constituting
`
`the battery block is mounted; and an exterior case, called a rechargeable battery
`
`housing (16) including a base element (48), cover element (50) and two heatradiation
`
`elements (18a), that houses the battery block (12) of a plurality of secondary battery
`
`cells (34) and the circuit board electronics system (58), wherein a facing part,
`
`considered the cover element (50), of the exterior case that directly faces the circuit
`
`board (58) is thicker than at least a portion of a non-facing part, considered the two heat
`
`radiation elements (18a), that is another part of the exterior case (paragraphs 0036-
`
`0043).
`
`With regard to Claim 2, Baumgartner et al. disclose in Figures 1-4, wherein an
`
`inner surface of the exterior case (16) in which the battery block (12) including a plurality
`
`of secondarybattery cells (34) and the circuit board (58) are housedis in a planar
`
`shape, and at least a portion of the non-facing part (18a) on an outer surface side of the
`
`

`

`Application/Control Number: 17/048,187
`Art Unit: 1725
`
`Page 5
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`exterior case (16) exposed to an outside hasa thin region that is recessed to be thinner
`
`than the facing part (50) (paragraphs 0036-0056; See Figure 3).
`
`With regard to Claim 3, Baumgartner et al. disclose in Figures 1-5, wherein the
`
`exterior case (16) is divided into a first case, called a cover element (50), and a second
`
`case, called a base element (48), and a joint surface between the first case (50) and the
`
`second case (48) is positioned at the non-facing part (18a) (paragraphs 0036-0056; See
`
`Figure 3).
`
`With regard to Claim 4, Baumgartner et al. disclose in Figures 1-5, wherein the
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`joint surface (18a) between the first case (50) and the second case (48) is thicker than
`
`the thin region at at least some portions of the two heat radiation elements (18a)
`
`(paragraphs 0036-0056; See Figure 5).
`
`With regard to Claim 6, Baumgartner et al. disclose in Figures 1-5, wherein the
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`exterior case (16) is in a prismatic shape extendedin one direction, and the exterior
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`case (16) is divided into the first case (50) and the second case (48) in the one direction
`
`(paragraphs 0036-0056).
`
`With regard to Claim 7, Baumgartner et al. disclose in Figures 1-5, wherein the
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`facing part (18a) is a region close to a plate-shaped end edge of the circuit board (58)
`
`(paragraphs 0036-0056).
`
`With regard to Claim 8, Baumgartner et al. further disclose in Figures 5-6, a
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`battery holder, called a cell block housing (56) includingafirst cell block sub-housing
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`(60), a second cell block sub-housing (62), two dissipation elements (14a) and plurality
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`of housing arrangements (66, 68), that holds the plurality of secondary battery cells
`
`

`

`Application/Control Number: 17/048,187
`Art Unit: 1725
`
`Page 6
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`(34), wherein the circuit board (58) is placed on one surface of the battery holder
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`(paragraphs 0041-0043; See Figure 5).
`
`With regard to Claim 9, Baumgartner et al. disclose in Figures 1-5, wherein the
`
`power supply device (10) is a battery pack (12) that is connected through tool interface
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`(38) to a portable electric device, called a tool, to supply electric power (paragraphs
`
`0036-0037).
`
`Claim Rejections - 35 USC § 103
`
`9.
`
`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 statutory basis (i.e., changing from AIA to pre-AlA) 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 either status.
`
`10.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections 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 andthe 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.
`
`11.
`
`The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized asfollows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`

`

`Application/Control Number: 17/048,187
`Art Unit: 1725
`
`Page 7
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`4. Considering objective evidence presentin the application indicating
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`obviousness or nonobviousness.
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`12.
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`Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Suzukietal.
`
`(US 10,673,106 B2), as applied to Claims 1 and 7-9 above.
`
`With regard to Claim 2, Suzuki et al. disclose the power supply device in
`
`paragraph 7 above, including wherein an inner surface of the exterior case (51) in which
`
`the battery block (50) including a plurality of secondary battery cells (52) and the circuit
`
`board (61) are housedis in a planar shape, and at least a portion of the non-facing part,
`
`called the specific portion (69), on an inner surface side (69a) of the exterior case (51)
`
`exposedto an inside has a thin region, called a concave surface of a recess(71), that is
`
`recessed to be thinner than the facing part (columns 7-8). Suzuki et al. do not
`
`specifically disclose wherein at least a portion of the non-facing part on an outer surface
`
`side of the exterior case exposed to an outside has a thin region that is recessed to be
`
`thinner than the facing part. Before the effectivefiling date of the invention it would have
`
`been obvious to one having ordinary skill in the art to form at least a portion of the non-
`
`facing part on an outer surface side of the exterior case to be exposed to an outside and
`
`have a thin region that is recessed to be thinner than the facing part, since it has been
`
`held in the art that rearranging parts of an invention involvesonly routine skill in the art.
`
`See MPEP 2144.04 (VI).
`
`13.
`
`Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over
`
`Baumgartner et al. (US 20150079444 A1)), as applied to Claims 1-4 and 6-9 above.
`
`

`

`Application/Control Number: 17/048,187
`Art Unit: 1725
`
`Page 8
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`With regard to Claim 5, Baumgartner et al. disclose the power supply device in
`
`paragraph 8 above, but do not specifically disclose wherein the joint surface between
`
`the first case and the second case is the same in thicknessasthe facing part. Before
`
`the effective filing date of the invention it would have been an obvious matter of design
`
`choice to manufacture the joint surface between the first case and the second caseto
`
`be the same in thickness as the facing part, since such a modification would only
`
`involve a mere change in the size or shape of a component. A change in size or shape
`
`is generally recognized as being within the level of ordinary skill in the art. See MPEP
`
`2144.04(IV).
`
`14.—Any inquiry concerning this communication or earlier communications from the
`
`Conclusion
`
`examiner should be directed to KARIE O APICELLA whosetelephone number is
`
`(571)272-8614. The examiner can normally be reached Mondaythru Friday; 8:00AM to
`
`5:00PM EST.
`
`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:/Awww.uspto.gov/interviewpractice.
`
`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 wherethis application or proceeding is assigned is 571-273-8300.
`
`

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`Application/Control Number: 17/048,187
`Art Unit: 1725
`
`Page 9
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`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 file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
`
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`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
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`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
`(toll-free). If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/KARIE O'NEILL APICELLA/
`Primary Examiner, Art Unit 1725
`
`