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 .
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.
Claim 1 recites the limitation “the base”, and previously in the preamble recites “a porous base”. It is not exactly clear if the Applicant is meaning “the base” to refer to the previously mentioned “a porous base”, or if the Applicant is introducing a new and different “base”. Appropriate correction is required.
Claims 2 & 3, as they depend from Claim 1, are indefinite for the same reasons.
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 Suzuki JP 2014/157713 A. Citations to Suzuki are mapped to the English machine translation provided.
Regarding Claim 1, as best understood by the examiner, Suzuki discloses a manufacturing method for an electrolyte film [0001]. Suzuki discloses preparing a porous film in a holding jig [0014], wherein the holding jig has two frame-shaped members (upper holding jig 21 and lower holding jig 22) [0014]. As further shown in Annotated Figure 2, Suzuki illustrates that the frame-shaped members hold the porous film between the outer peripheral portion of the opening in the frames [0014]. Thus, Suzuki discloses a manufacturing tool comprising a first frame member and a second frame member, each having opposing sandwiching portions for sandwiching the base (porous film), as shown in Annotated Figure 2 below. Suzuki discloses that the structure in which the porous film is gripped on all four sides by the two frame-shaped jigs is the “membrane gripper” [0014], thus Suzuki discloses a fixing structure (membrane gripper) configured to provide tension to the sandwiched base (porous film).
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Suzuki Annotated Figure 2
Examiner notes that the preamble was not given undue weight. With respect to the preamble, reciting “a manufacturing tool for a solid electrolyte sheet configured such that a porous base is filled with a solid electrolyte material”, the Examiner notes that the preamble is not being given weight. In the case where the body of the claim “fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose of intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). See MPEP 2111.02 II.
Regarding Claim 2, Suzuki discloses that the upper holding jig comprises a convex portion (Figure 2 Item 21c), and the lower holding jig comprises a concave portion (Figure 2 Item 22c) that corresponds to the convex portion [0014]. This is further shown in Annotated Figure 2b below. Thus, Suzuki discloses that the fixing structure (“membrane gripper 30”) is a recessed-raised structure.
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Suzuki Annotated Figure 2b
Regarding Claim 3, as mentioned with regards to Claim 2 above, Suzuki discloses that the upper holding jig comprises a convex portion (Figure 2 Item 21c) along the outer peripheral portion of the opening, and the lower holding jig comprises a concave portion (Figure 2 Item 22c) that corresponds to the convex portion [0014]. Thus, Suzuki discloses that the first frame member (upper holding jig) comprises a raised portion (convex portion) that is continuously provided on the sandwiching portion (positioned along the outer peripheral portion of the opening), and further discloses that the second frame member (lower holding jig) comprises a recessed portion (concave portion) such that the recessed portion can received the raised portion (concave portion is positioned to correspond to the convex portion), which is shown in Figure 2b. Suzuki further discloses that the porous film is gripped between the convex portion and the concave portion [0014], thus Suzuki discloses that the recessed portion receives the raised portion with the base (porous film) sandwiched between the recessed portion and the raised portion. This is further illustrated in Annotated Figure 2b below:
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Suzuki Annotated Figure 2b
Claim Rejections - 35 USC § 103
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 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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al. JP 2014/067609 A, and further in view of Suzuki JP 2014/157713 A. Citations to Suzuki and Nakano are mapped to the English machine translations provided.
Regarding Claim 1, as best understood by the examiner, Nakano discloses a method for manufacturing an electrolyte membrane [Page 1 Lines 15-16]. Nakano discloses that the method includes filling a porous membrane with electrolyte solution [Page 7 Lines 5-15]. Nakano discloses that the method includes using a frame-like jig to provide tension to the porous membrane [Page 8 Lines 35-39], wherein the frame-like jig holds the four edges of the porous membrane as shown in Nakano Figure 1.
However, Nakano is silent as to the specific structure of the “frame-like jig” mentioned in the disclosure.
Suzuki discloses a manufacturing method for an electrolyte film [0001]. Suzuki discloses preparing a porous film in a holding jig [0014], wherein the holding jig has two frame-shaped members (upper holding jig 21 and lower holding jig 22) [0014]. As further shown in Annotated Figure 2, Suzuki illustrates that the frame-shaped members hold the porous film between the outer peripheral portion of the opening in the frames [0014]. Thus, Suzuki discloses a manufacturing tool comprising a first frame member and a second frame member, each having opposing sandwiching portions for sandwiching the base (porous film), as shown in Annotated Figure 2 below. Suzuki discloses that the structure in which the porous film is gripped on all four sides by the two frame-shaped jigs is the “membrane gripper” [0014], thus Suzuki discloses a fixing structure configured to provide tension to the sandwiched base (porous film).
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Suzuki Annotated Figure 2
In the absence of a specific description of the structure of the “frame-like jig” of Nakano, one of ordinary skill in the art would look to analogous art such as Suzuki to find a more specific disclosure of a structure for a “frame-like jig”, thus it would have been obvious to use the structure of the manufacturing tool of Suzuki as the “frame-like jig” of Nakano.
Therefore, modified Nakano, with the structure of Suzuki’s manufacturing tool, discloses a manufacturing tool for a solid electrolyte sheet configured such that a porous base (porous membrane) is filled with a solid electrolyte material (“solution” that fills the porous membrane and polymerizes), wherein the manufacturing tool comprises a first frame member and a second frame member each having sandwiching portions to sandwich the base (upper and lower holding jigs of Suzuki).
Regarding Claim 2, Suzuki discloses that the upper holding jig comprises a convex portion (Figure 2 Item 21c), and the lower holding jig comprises a concave portion (Figure 2 Item 22c) that corresponds to the convex portion [0014]. This is further shown in Annotated Figure 2b below. Thus, modified Nakano discloses that the fixing structure (“membrane gripper 30” of Suzuki) is a recessed-raised structure.
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Suzuki Annotated Figure 2b
Regarding Claim 3, as mentioned with regards to Claim 2 above, Suzuki discloses that the upper holding jig comprises a convex portion (Figure 2 Item 21c) along the outer peripheral portion of the opening, and the lower holding jig comprises a concave portion (Figure 2 Item 22c) that corresponds to the convex portion [0014]. Thus, Suzuki discloses that the first frame member (upper holding jig) comprises a raised portion (convex portion) that is continuously provided on the sandwiching portion (positioned along the outer peripheral portion of the opening), and further discloses that the second frame member (lower holding jig) comprises a recessed portion (concave portion) such that the recessed portion can received the raised portion (concave portion is positioned to correspond to the convex portion), which is shown in Figure 2b. Suzuki further discloses that the porous film is gripped between the convex portion and the concave portion [0014], thus Suzuki discloses that the recessed portion receives the raised portion with the base (porous film) sandwiched between the recessed portion and the raised portion. This is further illustrated in Annotated Figure 2b below:
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Suzuki Annotated Figure 2b
Thus, modified Nakano discloses a manufacturing tool that reads on the limitations of Claim 3.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E GOULD whose telephone number is (571)270-1088. The examiner can normally be reached Monday-Friday 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey T. Barton can be reached at (571) 272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.E.G./Examiner, Art Unit 1726
/DANIEL P MALLEY JR./Primary Examiner, Art Unit 1726