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 .
Response to Amendment
In response to the amendment received August 28, 2026:
Claims 1-2 are pending.
The previous prior art rejection has been withdrawn in light of the amendment. However, a new prior art rejection has been made in view of Morita et al. (JP 2011/038166A) and Sasao et al. (JP 2020/011426A). All changes to the rejection are necessitated by the amendment.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Morita et al. (JP 2011/038166A) in view of Sasao et al. (JP 2020/011426A). The English machine translations of Morita et al. and Sasao et al. are attached and referenced below.
Regarding Claim 1, Morita et al. teaches a steel sheet comprising 15-35% by mass of chromium (Para. [0010]) (i.e. a chromium-containing steel sheet, having a chemical composition comprising Cr in an amount of 1% by mass or more) as a current collector (Para. [0001]).
Morita et al. does not teach the surface roughness Sa nor Ssk as claimed.
However, Sasao et al. teaches a laminate (i.e. sheet) (Para. [0011]) containing a metal foil used in the laminate comprising a stainless steel foil (Para. [0012]) and containing Cr (i.e. chromium) (i.e. a chromium-containing steel sheet) wherein a surface treatment layer has a skewness of -1.5 or more and 1.0 or less (i.e. overlapping with the claimed Ssk of more than 0) (Para. [0065]) and a surface roughness Sa of 0.20 micrometers or more and 0.60 micrometers or less (Para. [0061]) (i.e. overlapping with the claimed range of 0.20 to 0.50 micrometers inclusive).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the steel sheet of Morita et al. to incorporate the teaching of the Sa and Ssk as claimed as taught by Sasao et al., as such a surface roughness Sa prevents poor heat dissipation characteristics and prevents particles from detaching from the surface (Para. [0061]) wherein the skewness prevents the possibility of particles detaching from the surface and prevents poor heat dissipation characteristics (Para. [0065]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” See MPEP §2144.05(I). There is a reasonable expectation of success as Sasao et al. teaches similar materials and further that battery connectors (i.e. current collectors) face the problem of heat generation (Para. [0002]).
Regarding the preamble stating the intended use of the invention “for a current collector of a nonaqueous electrolyte secondary battery”; If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or 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. See MPEP 2111.02(II). In apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963).
Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). See also MPEP § 2114.
The manner of operating the device does not differentiate an apparatus claim from the prior art. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). As the structure claimed has been met, the stainless steel sheet would be capable of functioning as a current collector for a nonaqueous electrolyte secondary battery.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Morita et al. (JP 2011/038166A) in view of Sasao et al. (JP 2020/011426A) as applied to claim 1 above, and further in view of Makiishi et al. (US 2014/0154129).
Regarding Claim 2, Morita et al. as modified by Sasao et al. teaches all of the elements of the current invention in claim 1 as explained above.
Morita et al. does not teach wherein [(Cr + Fe) in non-metallic form] / [(Cr + Fe) in metallic form] is 8.0 or less, where [(Cr + Fe) in non-metallic form] / [(Cr + Fe) in metallic form] is the ratio of the total of Cr and Fe present in non-metallic form on a surface of the chromium- containing steel sheet to the total of Cr and Fe present in metallic form on the surface of the chromium-containing steel sheet.
However, Makiishi et al. teaches a stainless steel sheet (Para. [0070]) comprising a ratio of Cr+Fe in other than metallic forms (i.e. Cr+Fe in non-metallic form) to Cr+Fe in metallic forms is 4.0 (Para. [0062] and Table 4, Test No. 4) (i.e. within the claimed range of [(Cr + Fe) in non-metallic form] / [(Cr + Fe) in metallic form] is 8.0 or less, where [(Cr + Fe) in non-metallic form] / [(Cr + Fe) in metallic form] is the ratio of the total of Cr and Fe present in non-metallic form on a surface of the chromium- containing steel sheet to the total of Cr and Fe present in metallic form on the surface of the chromium-containing steel sheet.)
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sheet of Morita et al. to incorporate the teaching of ratio of Cr+Fe in other than metallic forms (i.e. Cr+Fe in non-metallic form) to Cr+Fe in metallic forms of 4.0, as such a ratio demonstrates a high performance in retaining low contact resistance (Para. [0080]), to provide a Cr-containing stainless steel sheet with desirable contact resistance characteristics (Para. [0017]).
Response to Arguments
Applicant’s arguments filed August 28, 2026 have been fully considered but are moot because the arguments do not apply to the references being used in the current rejection in light of the amendment.
Applicant’s arguments are drawn to a previous prior art combination and thus, are not persuasive in light of the newly cited prior art.
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.
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/ARMINDO CARVALHO JR./Primary Examiner, Art Unit 1729
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