DETAILED ACTION
Notice of AIA Status
The present application, filed on 9/14/22, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-2 and 4-18 are pending.
Claims 1-2, 4-6 and 12-18 are withdrawn.
Claims 7-11 are rejected
Claims 8-11 are objected to.
Election/Restrictions
As to the arguments traversing 06/25/25 restriction requirement, which was made final in the 9/17/2025 non-final rejection, it’s noted that even though claims to independent or distinct invention must be examined on the merits according to MPEP 803 if the search and examination can be made without serious burden, the examiner of record maintains that it doesn’t appear that examination and search can be made without serious burden to the office pursuant to MPEP 808.02 if the restriction were not insisted upon because one or more of the following applies: (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter; (c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); (d) the prior art applicable to one invention would not likely be applicable to another invention; (e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112.
Response to Arguments
The rejection of claims 7-11 under 35 U.S.C. §112(b) set forth in the 9/17/2025 office action is hereby withdrawn in light of the 12/16/25 amendments. However, a double patenting rejection and claim objections are hereby set forth.
Claim Objections
Claims 8-11 are objected to because of the following informalities: Claim 7 recites the preamble “an electrode loss measuring method”, claims 8-9 and 11 each recite the preamble “the method of claim …” and claim 10 recites the preamble “the measuring method of claim…”. For the sake of consistency in terminology, consider rephrasing the preambles of claims 8-11 to ‘The electrode loss measuring method of claim …’.
Claim 8 recites “wherein when at least one of the interval between the reference points, an interval between the reference point and the starting end portion of the electrode, and an interval between the reference point and the finishing end portion of the electrode is changed, calculating the loss amount of the electrode includes comparing the derived position value of the reference point and the position value of the set reference point”. For the sake of grammatical clarity, consider rephrasing to ‘wherein the calculating the loss amount of the electrode further includes comparing the derived position value of the reference point and the position value of the set reference point when at least one is changed of the group consisting of: the interval between the reference points; an interval between the reference point and the starting end portion of the electrode; and an interval between the reference point and the finishing end portion of the electrode.
Claim 10 recites “wherein calculating the loss amount of the electrode includes calculating a value…’. For the sake of grammatical clarity, consider rephrasing to ‘wherein the calculating the loss amount of the electrode further includes calculating a value …’.
Claim 11 recites ‘wherein calculating the loss amount of the electrode’. For the sake of grammatical clarity. Consider rephrasing to ‘wherein the calculating the loss amount of the electrode’.
Claim 11 recites “when the electrode has been press rolled”. For the sake of grammar clarity, consider rephrasing to ‘after the electrode has been press rolled’ or to ‘when the electrode is press rolled’. Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain ‘a’ patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 7 and 9 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 19/175,753 (reference application).
Claim 8 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 2 of copending Application No. 19/175,753 (reference application).
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 19/175,753 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claim 10 encompasses the subject matter of claim 3 of the reference application.
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 19/175,753 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim the subject matter of claim 11 encompasses the subject matter of claim 4 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 17 of this application is patentably indistinct from claim 10 of Application No. 19/175,753 and Claim 18 of this application is patentably indistinct from claim 11 of Application No. 19/175,753. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN BORTOLI whose telephone number is (571)270-3179. The examiner can normally be reached 9 AM till 6 PM EST Monday through Thursday.
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://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571)272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For 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.
/JONATHAN BORTOLI/Examiner, Art Unit 1797
/JENNIFER WECKER/Primary Examiner, Art Unit 1797