DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/09/2025 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
2. Applicant’s election without traverse of Group I, drawn to a positive electrode, and Species A-1, and Species B-1, with claims 29-31 and 33-38 readable thereon, in the reply filed on 4/8/2026 is acknowledged.
Applicant cancelled the claims drawn to the other groups/inventions. Claims 32 and 39-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Analysis
3. As previously noted in the restriction requirement, the following is outlined for clarity of the record and claim interpretation.
Claim 29 recites “for a solid-state battery” within the preamble which is non-limiting, intended use language (see MPEP 2111.02; Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation").
Claim Rejections - 35 USC § 112
4. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
5. Claim 29, and thus dependent claims 30-31 and 33-38, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
A) Newly added claim 29 was amended to include the following limitation:
“the positive electrode is formed by pressing a laminated body including the positive electrode active material layer having the positive electrode guide disposed on the outer periphery portion.”
Applicant alleges P116-118 (all references made to the PGPUB) support the limitation which are reproduced below:
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P116-118 appears to describe a process step of compression of a solid-state battery (i.e., interpreted to be the “a laminated body” presented in the claim) to manufacture the solid-state battery. The paragraphs do not teach the positive electrode is formed by this step (i.e., “the positive electrode is formed by pressing…”); instead, the only processing steps of forming the positive electrode are recited at P23, 169-190. Accordingly, the Examiner does not find that the written description supports that the positive electrode is formed by the method step recited in the claim.
Appropriate correction is required.
6. 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.
7. Claim 29, and thus dependent claims 30-31 and 33-38, and claim 37, are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A) Claim 29, line 10 recites, “the portion.” There is insufficient antecedent basis for this limitation. The issue appears to be one of failure to invoke full and proper antecedent basis to the previously recited recessed portion.
B) Claim 29 recites in part:
“the positive electrode is formed by pressing a laminated body including the positive electrode active material layer having the positive electrode guide disposed on the outer periphery portion.”
As detailed above in the rejection under 35 U.S.C. 112(a), the feature is not supported. The issue with respect to indefiniteness is that product-by-process limitations are evaluated for the implicit or explicit structure imparted to the product claim by such limitations (see MPEP 2113):
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
The claim is thus indefinite as it is unclear how to properly interpret the implied structure imparted to the product claim for an unsupported product-by-process limitation.
C) Newly added claim 37 recites in portion that the positive electrode guide is disposed to support an end portion of the laminated body. The construct claimed is that of a positive electrode. Claim 37 requires features drawn to a construct outside of the scope presented (i.e., “disposed to support to an end portion of the laminated body.”) The inclusion of how the positive electrode is disposed relative to a laminated body is thus outside of the scope of that which is defined in the preamble of the claim, rendering the claim indefinite.
Appropriate correction is required.
Prior Art Evaluation
8. Per MPEP § 2143.03:
“"All words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). (The Board erred because it ignored claim language that it considered to be indefinite, and reached a conclusion that the claim would have been obvious based only on the rest of the claim.). However, an examiner should not simply speculate about the meaning of the claim language and then enter an obviousness rejection in view of that speculative interpretation. In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (The "considerable speculation" by the examiner and the Board as to the scope of the claims did not provide a proper basis for an obviousness rejection.)
When evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter). Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984).
MPEP § 2173.06 further notes that when there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
For compact prosecution purposes, the definitive, supported portion of claim 29 is evaluated against the prior art below:
Shindo et al. (JP 2018-060754)1 (copy previously provided) teaches a positive electrode for a solid-state battery2, the positive electrode comprising:
a positive electrode electric collector 11; and
a positive electrode active material layer 12 formed on3 the positive electrode electric collector 11 (P56; Fig. 1d), the positive electrode active material layer 12 containing a positive electrode active material (P26), wherein
a lower portion 21 (i.e., “a positive electrode guide 21”) in which the first electrode current collector 11 and active material layer are disposed (P52) having a recessed portion (illustrated in Fig. 1a-e) that allows a positive electrode tab 11b to protrude is provided, the positive electrode tab being coupled to (P14) a portion of a surface of the positive electrode electric collector 11 on which the positive electrode active material layer 12 is formed (Figs. 1-e), the [recessed] portion being adjacent to an outer periphery portion of the positive electrode active material layer 12 (see Fig. 1d-1e).
Accordingly, as far as the definitive portion of the claim, there is nothing absent from Shindo. It is further noted that the dependent claims largely map to prior-presented claims that were evaluated in prior US Office Actions using Shindo such that in the absence of a newly presented limitation, Shindo and the prior art previously applied to the claims presently filed do not appear to make a contribution over the prior art. See also the corresponding ISA report in the PCT parent application as well as the JP Office Actions and the cited references addressing all claims.
It is further noted that the claimed “a positive electrode guide having a recessed portion that allows a positive electrode tab to protrude” is broad in terms of not actually defining any structure beyond the requirement of a guide having a recessed portion that is capable of meeting the feature italicized (i.e., so long as the recessed portion does not block the positive electrode tab, the feature of allowing it to protrude is considered met”).
Additional prior art that anticipates the definitive, supported portion of claim 29 is below:
Kordesch et al. (US 3,883,368) teaches a cathode (“positive electrode”) 30 including a current collector with a positive electrode active material layer thereon and a positive electrode tab 38; and a plastic spacer frame 28 (“positive electrode guide”) having a recessed portion 40 that allows the tab to protrude (truncated Fig. 1 reproduced below), the [recessed] portion being adjacent to an outer periphery portion of the positive electrode active material layer:
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Ahn et al. (US 2013/0045405) teaches in Fig. 11 (exploded form of the battery –reproduced below) a positive electrode (top or bottom electrode), the “positive electrode guide” being one of the corresponding 271, 272 given the electrodes are generally “first and second electrodes” such that one is positive and the other is negative depending on polarity of rechargeable battery:
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Kitoh et al. (US 2017/0373298) teaches a framing construct for positive and negative electrodes held between corresponding frames 30 (“positive electrode guides”):
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Faust et al. (US 2013/0065110) teaches a non-conductive end plate 38 (“positive electrode guide”) has a recessed portion adjacent to the positive electrode layer comprising a collector, tab and active material layer (32, 34, 36):
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Jansen et al. (US 2023/0318080) teaches the following “positive electrode guide” (frame 20) having a recessed portion (circled below) that allows a positive electrode tab 12ii to protrude with the recessed portion being adjacent to an outer periphery portion of the positive electrode active material layer:
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Bachman et al. (DE 10-2013-021549) (machine translation provided teaches a cell holder 5 (“positive electrode guide”) having a recessed portion (illustrated) that allows a positive electrode tab 7 to protrude, the [recessed] portion being adjacent to an outer periphery portion of the positive active material layer:
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Shimizu et al. (WO 2018/087970)4 (=US 2019/0252728) teaches the following construct which meets the supported/definitive structure set forth in claim 1 (here the “recessed portion” can be the recessed area of 109b or 109a that is recessed relative to the projecting tab portion on the right as shown in Fig. 2 that allows the tab of the current collector 103 (i.e., non-coated portion thereof) to protrude beyond the positive electrode layers 102, 104):
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See also: Park et al. (US 2016/0099444) (guide portion is 20 – see Fig. 6); Kwon et al. (US 2018/0034121); Moulton (US 2,624,767); and Moriguchi et al. (US 5,736,017).
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BARROW/Primary Examiner, Art Unit 1729
1 Applied in the prior Office Actions dating back to 11/24/2023; “D1” of the JP Office Actions; “D1” of the ISA in the PCT parent application evaluated by the ISA.
2 Claim 29 recites “for a solid-state battery” within the preamble which is non-limiting, intended use language (see MPEP 2111.02; Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation").
3 Product-by-process limitation (see MPEP 2113); all subsequent italcizied portions of the claim being product-by-process features.
4 Cited and copy provided by Applicant in the IDS filed 1/29/2021
Prosecution Insights