DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. Applicant’s response filed 2/3/2025 was received. 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.
Claim Objections
2. Claim 1 is objected to because of the following informalities:
“a positive electrode active material layer forming process of forming a positive electrode active material layer containing a positive electrode active material on the positive electrode current collector”
should be corrected to:
“a positive electrode active material layer forming process of forming the positive electrode active material layer containing the positive electrode active material on the positive electrode current collector”
given these entities have already been recited in lines 1-5 of the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. The prior Office Action rejections of claims 16-24 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention are withdrawn in view of the correction filed.
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 8, and thus dependent claims 16-28, 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.
Claim 8 as amended recites:
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The language is not found in the written description, nor is it supported by the drawings. The claims require a positive electrode tab to protrude in any one shape among an L shape on two adjacent sides, a channel shape on three adjacent sides, and a quadrangular shape on four adjacent sides. No such teaching exists within the written description or drawings.
Applicant points to P97 of the US PGPUB; however, this paragraph does not teach the language presented in the claim, and instead teaches that a shape of the positive electrode guide may have one of the shapes claimed.
Appropriate correction is required.
6. Claim 8, and thus dependent claims 16-28, claim 19, claim 25, claim 26, claim 27, and claim 28 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.
Claim 8 as amended recites:
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The language is non-sensical, and is a run-on sentence lacking proper grammar that requires clarification. Specifically, the clauses of “of an outer periphery portion of the positive electrode material layer of a surface having the positive electrode material layer” is entirely unclear in terms of what this is intended to modify, and its general intent or meaning.
Moreover, the meaning of “allowing a positive electrode tab to protrude in any one shape among an L shape on two adjacent sides, a channel shape on three adjacent sides, and a quadrangular shape on four adjacent sides,” does not make clear what the “sides” are respect to, nor is it clear how one would configure a positive electrode tab to have the shape as claimed in the construct presented, especially given the language is not supported (see rejection above under 35 U.S.C. 112(a)/first paragraph).
Claim 19 was amended to recite, “the positive electrode guide has a recessed portion…” Claim 8 already recites that the “the positive electrode guide having a recessed portion or an opening portion.” Accordingly, claim 19 is indefinite as it either fails to invoke proper antecedent basis to the recessed portion of claim 8, or is unclearly defining a [second] recessed portion.
Claim 25 was newly added and recites “the positive electrode guide includes a recessed portion…” Claim 8 already recites that the “the positive electrode guide having a recessed portion or an opening portion.” Accordingly, claim 25 is indefinite as it either fails to invoke proper antecedent basis to the recessed portion of claim 8, or is unclearly defining a [second] recessed portion.
Claim 26 was newly added and recites “the top positive electrode guide and the under positive electrode guide respectively include recessed portions…” Claim 8 already recites that the “the positive electrode guide having a recessed portion or an opening portion.” Accordingly, claim 26 is indefinite as it fails to make clear whether these recessed portions define the recessed portion of claim 8, or are entirely new recessed portions separate from the claim 8 recessed portion.
Claim 28 was newly added and recites “only the middle positive electrode guide includes a recessed portion…” Claim 8 already recites that the “the positive electrode guide having a recessed portion or an opening portion.” Accordingly, claim 28 is indefinite as it either fails to invoke proper antecedent basis to the recessed portion of claim 8, or is unclearly defining a [second] recessed portion.
Appropriate correction is required. The claims require a substantial re-write as to their intent and meaning.
Claim Rejections - 35 USC § 103
7. The prior Office Action rejection of claims 8 and 16-24 as being unpatentable over JP 2018/060754A to Shindo in view of JP 2014/082105A to Takano are withdrawn in view of the claim amendments filed for the reasons detailed below. All rejections pending from this are also withdrawn.
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.
The claims are indefinite to the point of precluding prior art examination as detailed above for the reason set forth under 35 U.S.C. 112(b)/second paragraph. A rejection is not made under 35 U.S.C. 103 based on what would be considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. Specifically, the meaning or intent of claim 8 as amended cannot be determined, especially given the language is not found within the written description (see rejection under 35 U.S.C. 112(a)first paragraph). Applicant points to P97 of the US PGPUB; however, this paragraph does not teach the language presented in the claim, and instead teaches that a shape of the positive electrode guide may have one of the shapes claimed. Even if the Examiner makes this assumption with respect to claim scope, there is still the issue with respect to what the “sides” are with respect to, or what “of an outer periphery portion of the positive electrode active material layer of a surface having the positive electrode active material layer” requires/modifies. Claim 8 requires a substantial re-write to be clear and definitive under 35 U.S.C. 112(b)/second paragraph, as well as to properly define subject matter that is supported by the written description under 35 U.S.C. 112(a)/first paragraph.
Response to Arguments
9. Applicant’s arguments filed 2/3/2025 with respect to the prior art have been fully considered, wherein the prior art rejections have been withdrawn for the reasons stated above.
Conclusion
10. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
11. 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