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 .
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-AIA ) 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.
Specification
The specification and drawings have been reviewed and no clear informalities or objections have been noted.
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 1-3 and 5-19 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. Applicant has amended the claims to include limitations which define a “primary domain” and a “secondary domain” which define where the current collector is overlapped by the electrode active material layer. The terms “primary domain” and “secondary domain” are not included in the originally filed disclosure. As best understood, Applicant argues that these primary and secondary domains correspond to the first and second domains (D1 and D2, respectively) as pointed out on pages 9-10 of the remarks filed 1/8/2026. However, Applicant also makes statements regarding these domains (primary and secondary) with relation to the claimed “opposing surfaces” of the active material layer which was not present in the originally filed disclosure. As such, the claimed “primary” and “secondary” domains along with their spatial configuration relative to the electrode opposing surfaces qualifies as new matter as these features were not present in the originally filed disclosure.
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 1-3 and 5-19 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 1 recites the limitation "the opposing surfaces of the electrode active material" in line 20. There is insufficient antecedent basis for this limitation in the claim.
Furthermore, this recitation of “opposing surfaces of the electrode active material” is confusing and renders the claim indefinite. For example, the claim recites:
“the current collector is disposed between the opposing surfaces of the electrode active material layer”
But, earlier in the claim, it is stated that:
“an electrode active material layer on a surface of the electrode current collector”.
If there is only one active material layer on one side of the collector, the collector cannot be “between opposing surfaces” of that layer. Clarification is required regarding these “opposing surfaces”. As best understood, it seems that Applicant meant to state that “in the primary domain, the electrode active material layer is disposed on each of two opposing surfaces of the electrode current collector” and will be examined as such.
Furthermore, in claim 1, Applicant has amended the claim to include “primary domain” and “secondary domain”. It is not entirely clear if these “domains” are the same as the previously defined “first” and “second” domain. As best understood, it appears from Applicant’s disclosure, that these domains are the same and will be examined as such. Clarification is required.
Potential Allowable Subject Matter
Due to the clarity issues, as stated above, the Office cannot indicate allowable subject matter as this time. However, a prior art search did not present any references that render the claim non-novel or obvious. However, upon amendments to rectify the clarity issues, a new search will need to be completed.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3 and 5-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Relevant Prior Art
US 2019/0280303 – Discloses a current collector (210) that is coated on both sides by an active material (220).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J MERKLING whose telephone number is (571)272-9813. The examiner can normally be reached Monday - Thursday 8am-6pm.
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/MATTHEW J MERKLING/Primary Examiner, Art Unit 1725
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