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 . 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.
Response to Amendment
The Amendment filed 05/12/2026 has been entered. Claims 1-9 remain pending in the application, with claims 4-6 remaining withdrawn as being drawn to a non-elected invention, and claims 1-3, 7-9 remaining rejected.
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’ in claims 1 & 7.
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. The compression unit that compresses is interpreted as a roll pressing machine that includes a pair of pressing rollers or equivalents thereof as described in [0019] and Figures 1-2 of the instant specification.
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 § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nec (WO2019142669 - see machine translation provided in Non-Final Rejection) in view of Kim (U.S PG Pub 20200185698A1).
Regarding claims 1& 7, 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. Further, with regards to the newly added limitation of the recesses and projections being uniformly distributed, the finely spaced micro-irregularities would be uniformly distributed in a surface direction as they are finely spaced i.e. uniformly spaced. The term uniformly distributed without being further qualified by a quantitative measure would just mean that the recesses and projections are not random and finely spaced recesses and projections, as in Nec, would not be random.
However, in the interest of compact prosecution, in the event the applicant disagrees with the above rationale regarding the recesses and projections as disclosed by Nec, it is further known from Kim, to have uniformly distributed recesses and projections in a surface direction in contact with a laminate in the formation of electrodes.
Kim, drawn also to the art of a rolling device for an electrode [0006], discloses a laminate interposed between two rollers and wherein the laminate on both surfaces is interposed between a buffer surface of the roller which has uniform recesses and projections (Figures 1 & 2A-2D; [0045-0049]). Kim discloses that such uniform recesses and projections enable a rolling device to uniformly reduce a thickness of an electrode sheet and reduce interfacial resistance by increasing adhesion and closeness of contact between the layers of the electrode laminate [0070].
It would have been obvious to an ordinarily skilled artisan to have modified the apparatus of Nec before the effective filing date of the instant invention, with the uniformly distributed recesses and projection on buffer surfaces that are interposed between the rollers and the laminate, to arrive at the instant invention, in order to be able to uniformly reduce a thickness of an electrode sheet and reduce interfacial resistance by increasing adhesion and closeness of contact between the layers of the electrode laminate.
Regarding claims 2 & 8 (same claim language with different dependencies), 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 claims 3 & 9 (same claim language with different dependencies), please see the rejection of claims 1 & 7 above discussing the roll pressing machine of Nec illustrated in Figure 4 and described in [0046-0047] of Nec.
Response to Arguments
Applicant’s arguments, see Amendment, filed 05/12/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C 102(a)(1) over Nec have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Nec and Kim.
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 ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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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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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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