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 .
Election/Restrictions
Claims 4-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 12, 2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: "a compression unit that compresses" at line 4 of claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. With reference to para [0019] of the specification as originally filed (and Figs. 1-2), the structure described in the specification is a roll pressing machine that includes a pair of pressing rollers, or equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 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.
Regarding claim 1, at line 6, the phrase "with buffer members interposed" renders the claim unclear and thus indefinite. The term "interposed" requires the insertion or placement of the buffer members between one thing and another. The phrase "with buffer members interposed" amounts to a dangling modifier rendering unclear to what two things the buffer members are "interposed." If Applicant intended to recite that the buffer members are interposed between the compression unit and the material being worked upon, e.g., the laminate, the claim should clearly recite such positioning. However, if Applicant intended to recite buffer members interposed between features of the pressing apparatus, e.g., rollers, the claim should clearly recite such positioning.
Regarding claim 2, at line 2, the recitation of "a laminate" renders antecedent basis unclear in view of the recitation of "a laminate" at line 1 of claim 1 and recitation of "the laminate" at lines 4, 5 and 7 of claim 1.
Claim 3 is rejected in view of its dependency from claim 1.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nec Energy Devices, LTD., WO 2019/142669 (hereafter Nec), discussed with reference to the attached machine translation of the description.
Regarding claim 1, Nec discloses a pressing apparatus (Fig. 4; paras [0046]-[0057]). The recitation in claim 1 of "for pressing a laminate including electrodes and solid electrolyte layers" is a statement of purpose or intended use. As this statement recites no limiting structure of the apparatus, it not considered a limitation of claim 1. MPEP 2111.02 (I. and II.). In order to advance prosecution on the merits, it is noted that Nec is directed to a lithium ion battery electrode (Abstract) and Fig. 4 illustrates a roll pressing device wherein an electrode 1 is fed between two pressing rolls 10 (para [0046]). The electrode 1 includes a current collector 2 and an active material layer 3 (para [0046]), i.e., a laminated structure. The material being worked upon by the pressing apparatus of Nec may be a negative electrode for a lithium ion battery, also understood to be a laminate structure (paras [0059]-[0064]).
Regarding the recitation of "a compression unit that compresses the laminate," please see the discussion in the Claim Interpretation section above. Pursuant to Section 112(f), this limitation is being interpreted to cover the corresponding structure described in the specification that performs the claimed function, and equivalents thereof which in this instance is a roll pressing machine that includes a pair of pressing rollers, or equivalents thereof. Nec discloses a roll pressing machine at Fig. 4 that includes a pair of rollers 10 (para [0046]).
Nec further discloses its compression unit may include a first buffer film 5 interposed between the upper roller 10 and the illustrated electrode 1 and a second buffer film 5 interposed between the lower roller 10 and the electrode 1 (Fig. 4 and paras [0046]-[0048]). Thus Nec discloses "buffers" interposed between the compression unit and the material being worked upon, i.e., the laminate, as well as "buffers" disposed between the two rollers of the roll pressing machine.
Regarding the recitation that the buffer members have "recesses or projections on surfaces adjacent to the laminate," Nec discloses that its buffer film has an arithmetic mean roughness that comes into contact with the electrode 1 of, for example, 0.1 to 2.0 µm (para [0055]). Thus, Nec discloses the film has finely spaced micro-irregularities that may be described as peaks and valleys on the surface, also understood as recesses and projections. The examiner notes that the recited "laminate" is the material being worked upon and not considered a limitation of the claim.
Regarding claim 2, the recitation of "wherein the compression unit compresses a laminate having a negative electrode containing lithium," is directed entirely to the material being worked upon and thus does not further limit claim 1.
Regarding claim 3, please see the rejection of claim 1 above discussing the roll pressing machine of Nec illustrated in Fig. 4 and described at paras [0046]-[0047]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Toyota Ind Corp, JP2013105585 (see Figs. 2(a) and (b) teaching a pressing apparatus including press rolls 21 and 22 having a surface roughness, i.e., a surface member with recesses or projections, the roughness being transferred to a negative electrode active material layer 13a during pressing (paras [0026]-[0028])).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA L SCHALLER whose telephone number is (408)918-7619. The examiner can normally be reached Monday-Friday 8 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CYNTHIA L SCHALLER/Primary Examiner, Art Unit 1746