DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The Amendment filed on 4/9/2026 has been entered. Claims 1-5 remain pending in the application.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o):
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
Usually the terminology of the claims present on the filing date of the application follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
New claims, including claims first presented after the application filing date where no claims were submitted on filing, and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification. See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103.
Correction of the following is required: The newly added terms of instant claim 1 of “elongated”, “an inner end”, “inner end part”, “outer end part”, “no portion with high degree of swelling”, and “a starting end” do not exist in the specification. It is noted that no new matter should be entered, and only amendments to the specification and drawings that are supported will be entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the newly added features of instant claim 1 of “an inner end”, “inner end part”, “outer end part”, and “a starting end” must be shown or the features canceled from the claims. It is noted that no new matter should be entered, and only amendments to the specification and drawings that are supported will be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim objected to because of the following informalities: the limitation "except for inner end part and outer end part" is missing articles in front of "inner end part and outer end part". Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-5 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. Claim 1 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 1 recites the limitation “the band-shaped positive electrode and the band-shaped negative electrode are elongated in a longitudinal direction” (emphasis added) in lines 6-7. The term “elongated” is defined as stretched out or made longer or thinner than usual – there is no description or use of this word anywhere within the written description.
Claim 1 also recites the limitation “no portion with high degree of swelling exists at a starting end of the band-shaped negative electrode” in the last two lines of the claim. The term “starting end” is not found anywhere within the written description. Furthermore, this limitations is a negative limitation which MUST have antecedent basis in the written description. See § MPEP 2173.05(i) notes that “[a]ny negative limitation or exclusionary proviso must have basis in the original disclosure”, and “[a]ny claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement”.
Despite applicant stating that paragraphs [0030] and [0050] and Figs. 4A-4B support the amendments to claim 1, no such written description of the added language exists in the application:
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Claims 2-5 are rejected as being dependent upon a rejected base claim.
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.
Claims 1-5 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.
The term “high degree of swelling” in claim 1 is a relative term which renders the claim indefinite. The term “high degree of swelling” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
It is noted that the use of approximation terms or terms of degree such as “high degree” are not indefinite when the specification provides some standard allowing for one of ordinary skill in the art to understand the scope of the term. If the specification does not provide some standard for measuring that degree, a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree). For example, in Ex parte Oetiker, 23 USPQ2d 1641 (Bd. Pat. App. & Inter. 1992), the phrases "relatively shallow," "of the order of," "the order of about 5mm," and "substantial portion" were held to be indefinite because the specification lacked some standard for measuring the degrees intended. The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." Packard, 751 F.3d at 1311.
In the instance scenario, the specification fails to make clear what would be considered a portion that does not exist (i.e., “no portion”) that lacks a high degree of swelling.
Claim 1 recites the limitation “a starting end” in the second to last line of the claim. It is unclear what “a starting end” refers to, as it is not defined in the specification or the drawings. Furthermore, it is unclear whether the “starting end” is meant to refer to the already-defined “an inner end of the band-shaped negative electrode” or the already-defined “outer end part” recited in claim 1, or if it is meant to define an all-together new feature that is distinct from the inner end and outer end. If it is the former, then the term “a starting end” fails to invoke proper antecedent basis.
Claims 2-5 are rejected as being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 103
The rejection of claims 1-3 and 5 under 35 U.S.C. 103 as being unpatentable over Nakai et al. (WO 2012042830) in view of Mihashi et al. (JP 2013235795) is withdrawn because the claims are indefinite to the point of precluding prior art examination.
The rejection of claim 4 under 35 U.S.C. 103 as being unpatentable over Nakai et al. (WO 2012042830) in view of Mihashi et al. (JP 2013235795) and further in view of Sugimori et al. (US 20160329557) is withdrawn because the claims are indefinite to the point of precluding prior art examination.
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 the claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Sttele, 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 pf precluding prior art examination as detailed above for the multiple reasons 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. Prior art examination will resume once a definitive claim is set forth.
Conclusion
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.
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/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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