CTNF 18/265,798 CTNF 94928 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim 1 is rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Yamanaka (JP 2004/216242A), provided in the Information Disclosure Statement received April 10, 2024. The English machine translation provided by Applicant is referenced below . Regarding Claim 1, Yamanaka teaches a stainless steel foil (pg. 1, para. 2, line 1) (i.e. a steel sheet) wherein the foil is a 20Cr-5Al steel (pg. 2, lines 39-40) (i.e. a chromium-containing steel sheet having a chemical composition comprising Cr in an amount of 10% by mass or more) wherein the parameter Ra is less than is less than 0.2 micrometers, Rsk is slightly positive (pg. 2, lines 53-54) such that examples are provided at about Ra is 0.175 micrometers (i.e. wherein a parameter Sa defined in ISO 25178 is from 0.15 to 0.50 micrometers, inclusive) and wherein Rsk is about 0.1 (i.e. a parameter Ssk defined in ISO is more than 0) (see Annotated Yamanaka – Fig. 1 below). Annotated Yamanaka – Fig. 1 PNG media_image1.png 526 508 media_image1.png Greyscale 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 Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka (JP 2004/216242A) in view of Makiishi et al. (US 2014/0154129) . Regarding Claim 2, Yamanaka teaches all of the elements of the current invention in claim 1 as explained above. Yamanaka 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 Cr-containing stainless steel of Yamanaka (of which the material is known to have an electrically conductive function) 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]). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARMINDO CARVALHO JR. whose telephone number is (571)272-5292. The examiner can normally be reached Monday-Thursday 7:30a.m.-5p.m.. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at 571 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ARMINDO CARVALHO JR./Primary Examiner, Art Unit 1729 Application/Control Number: 18/265,798 Page 2 Art Unit: 1729 Application/Control Number: 18/265,798 Page 3 Art Unit: 1729 Application/Control Number: 18/265,798 Page 4 Art Unit: 1729 Application/Control Number: 18/265,798 Page 5 Art Unit: 1729 Application/Control Number: 18/265,798 Page 6 Art Unit: 1729 Application/Control Number: 18/265,798 Page 7 Art Unit: 1729
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