DETAILED ACTION
Response to Amendment
Amendments to the specification and claims, filed on August 21, 2023, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner’s Comments
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Election/Restrictions
Claims 20 – 41 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 4, 2026.
Applicant's election with traverse of Group I (claims 1 – 19) in the reply filed on May 4, 2026 is acknowledged. The traversal is on the ground(s) that there is no undue burden to examine both groups. This is not found persuasive because ‘undue burden’ is only applicable to US restriction practice, per se, and the present restriction under PCT practice has set forth reasonable grounds that the claimed special technical feature is known in the prior art and, as such, fails to qualify as a proper ‘special technical feature’ capable of linking the different statutory groups. Therefore, the requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 12 – 14, 16 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 6 (from which claim 7 depends) requires the forming jig to rotate. Claim 7 adds that the forming jig rotates clockwise or counterclockwise … the Examiner is unclear how there can be a rotation in anything but a clockwise or counterclockwise direction as those are the only two cardinal axis of rotation. As such, claim 7 fails to further limit claim 6, because claim 6 already necessarily captures the ‘in either clockwise or counterclockwise direction’. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. This rejection can also be overcome by amending claim 7 to pick one of the directions, require rotation in both directions, or cancel claim 7.
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 11, 15, 17 and 19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Tomihara et al. (U.S. Patent App. No. 2006/0240323 A1) in view of KR 10-0599710 B1 (see provided Abstract Translation).
The Examiner notes that there are three interpretations taken on the ‘jig’ of Figure 8A, each interpretation is used to meet some of the claims.
Regarding claim 1, Tomihara et al. disclose several interpretations that can be taken to read on the claimed limitations of a foil tab forming apparatus for forming a foil tab of an electrode assembly (Title; Abstract; and Figures, especially Figure 8A) that includes a winding axis, an outer circumferential portion and a winding center portion (
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), the foil tab forming apparatus comprising: a forming jig configured to press the foil tab (see three interpretations below).
Interpretation #1:
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.
Interpretation #2:
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Interpretation #3:
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The Examiner notes that these different interpretations where the ‘pressing jig’ and ‘pre-pressing jigs’ are all part of the same component appears to be supported by the as-filed disclosure of the filed Application, such as claim 15, where the two distinct ‘pressing blocks’ of the forming jig are configured to “rotate together”; i.e. are uniformly formed as a single component part.
For all of interpretations #1 - #3, while it does appear that Tomihara et al. allows for rotation while pressing (Paragraphs 0099 - 0109 and 0125 – 0131, especially Paragraph 0108), the Examiner notes that it is unclear if this rotation is “by moving along a direction parallel to the winding axis of the electrode assembly”.
However, KR ‘710 B1 teach a similar electrode assembly which uses rotation while pressing (pages 3 and 4 of English Abstract; 4th and 5th to end paragraph on page 3; 8th paragraph on page 4), wherein the rotation is taught to be chosen by the artisan. Absent evidence to the contrary, rotating CW or CCW; i.e. parallel or antiparallel to the winding axis would still provide for bending the electrode tabs to overlap and allow them to be welded together, which is the entire purpose and function of such an apparatus.
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, regardless of the rotation direction, including the claimed “by moving along a direction parallel to the winding axis of the electrode assembly”, the jig function is functionally equivalent in the field of electrode tab pressing jigs for secondary batteries. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Tomihara et al. to have the jig meet the claimed “by moving along a direction parallel to the winding axis of the electrode assembly” limitation as taught by KR ‘710 B1, as the direction of rotation is not critical for the purpose/function of the electrode tab apparatus, provided that the tabs can be bend to overlap to allow welding, etc. (all knowledge and concepts within the knowledge of a person of ordinary skill in the art when choosing the rotation direction).
Regarding claim 2, Tomihara et al. disclose pre-forming jigs meeting the claimed limitations based on Interpretation #1 above (i.e. the angles on the pre-forming jig portions bend the tabs by moving them radially inward during the pressing process).
Regarding claims 3 and 4, the ‘shutter blocks’ can be taken as the portions of these jigs with the angles:
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, which then meets the claimed limitations.
Regarding claim 5, Tomihara et al. discloses the claimed width based on Figure 8A and Interpretation #2 (i.e. the entire body is taken as the ‘forming jig’ with no pre-forming jigs required in this claim).
Regarding claims 6 - 8, the rotation limitations are met for the same reasons as set forth above.
Regarding claim 9, Interpretations #2 or #3 meet the claimed limitations.
Regarding claim 10, Interpretation #2 meets the claimed limitations.
Regarding claim 11, Interpretation #2 meets the claimed limitations (
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Regarding claim 15, based in Interpretation #2, both Pressing Blocks would rotate together, thereby meeting the claimed limitations.
Regarding claim 17, Interpretation #3 meets the claimed limitations.
Regarding claim 19, Interpretation #1 meets the claimed limitations.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: claims 12 – 14 and 18 disclose aspects of the apparatus that are neither taught nor rendered obvious by the prior art. E.g. claim 12 requires the first and second pressing blocks to be independently moveable, yet the prior art discloses them as fixedly formed as part of the forming jig. Claims 13 and 14 require specific pressing conditions that are not deemed met nor taught by the prior art. Claim 16 requires a third pressing block between one at the outer circumferential portion and one at the winding center portion, which is neither taught nor rendered obvious by the prior art of record. Claim 18 requires a pair of forming jigs where the pair rotate in opposite directions, which is neither taught nor rendered obvious by the prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (this includes JP ‘075 A and many of the provided references on the PTO-1449 forms).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
September 2, 2026
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