DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 04/17/2026 without traverse of Group I, claims 1-3 for further examination. Claims 4-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
3. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
4. The information disclosure statements (IDS) submitted on 07/28/2023, 08/06/2024, 07/07/2025, 01/27/2026 & 05/29/2026 are being considered by the examiner.
Claim Rejections
5. 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.
6. 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.
Claim Rejections - 35 USC § 103
7. 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.
8. 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.
9. Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Nakagawa (JP 2000-054132 A – translation provided 08/06/2024) hereinafter Nakagawa in view of Kurokawa et al. (JP S63-277750 A – translation provided 08/06/2024) hereinafter Kurokawa (the terminology of the claims in the application is used, but the references of Nakagawa and Kurokawa are included between parentheses).
As regards to claim 1, Nakagawa discloses a vacuum treatment apparatus (abs; fig 1-3), comprising:
a first wind-off roller (16) that pays out a first base material (11) having a film deposition surface and a non-film deposition surface opposite to the film deposition surface (abs; [0008]-[0009]; fig 1-2);
a first wind roller (16) that winds the first base material (11) (abs; [0008]-[0009]; fig 1-2);
a main roller (12) that is provided between the first wind-off roller (16) and the first wind roller (16) in a direction in which the first base material (11) is conveyed, has an outer circumferential surface that is held in contact with the non-film deposition surface, and winds and conveys the first base material (11), at least a part of the outer circumferential surface, which is uncovered with the first base material (11) (abs; [0008]-[0011]; fig 1-2);
a deposition source (14) that faces the outer circumferential surface of the main roller (12) that is held in contact with the non-film deposition surface (abs; [0008]-[0011]; fig 1-2);
a second wind-off roller (18) that pays out a second base material (15) that is wound and conveyed by the main roller (12) and covers a part of the film deposition surface of the first base material (11) on the outer circumferential surface of the main roller (12) (abs; [0008]-[0011]; fig 1-2);
a second wind roller (19) that winds the second base material (15) (abs; [0008]-[0011]; fig 1-2), however Nakagawa does not disclose the main roller (12) being coated with an insulating material and a power source that applies a bias potential to the main roller (12).
Kurokawa discloses a vacuum treatment apparatus (abs; fig 1), comprising the main roller (23) being coated with an insulating material and a power source (24) that applies a bias potential to the main roller (23) (abs; [0001]; fig 1; clm 1). Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to include the main roller (23) being coated with an insulating material and a power source (24) that applies a bias potential to the main roller (23) in the apparatus of Nakagawa, because Kurokawa teaches the use of the main roller (23) being coated with an insulating material and a power source (24) that applies a bias potential to the main roller (23) so that spark discharge is not caused between the edges of the substrate (21) and the main roller (23) by power source (24), wherein a potential difference is set between the ferromagnetic thin film formed on the substrate (21) via the rotating roller (22b) and the main roller (23), and the portion of the substrate (21) on which the conductive film is formed sticks to the peripheral surface of the main roller (23) (abs; [0001]).
As regards to claim 2, Nakagawa discloses a vacuum treatment apparatus (abs; fig 1-3), the main roller (12) (abs; [0008]-[0011]; fig 1-2), however Nakagawa does not disclose has both end portions coated with the insulating material.
Kurokawa discloses a vacuum treatment apparatus (abs; fig 1), wherein the main roller (23) has both end portions coated with the insulating material (abs; [0001]; fig 1; clm 1). Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to include wherein the main roller (23) has both end portions coated with the insulating material in the apparatus of Nakagawa, because Kurokawa teaches the use of wherein the main roller (23) has both end portions coated with the insulating material so that spark discharge is not caused between the edges of the substrate (21) and the main roller (23) by power source (24), wherein a potential difference is set between the ferromagnetic thin film formed on the substrate (21) via the rotating roller (22b) and the main roller (23), and the portion of the substrate (21) on which the conductive film is formed sticks to the peripheral surface of the main roller (23) (abs; [0001]).
Regarding claim 3, the recitation “wherein the second base material is wound and conveyed by the main roller while the second base material is held in contact with the insulating material on the outer circumferential surface of the main roller”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over modified Nakagawa since modified Nakagawa meets all the structural elements of the claim and is capable of having the second base material wound and conveyed by the main roller while the second base material is held in contact with the insulating material on the outer circumferential surface of the main roller, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 3, Nakagawa discloses a vacuum treatment apparatus (abs; fig 1-3), wherein the second base material (15) is wound and conveyed by the main roller (12) while the second base material (15) is held in contact with the material on the outer circumferential surface of the main roller (12) (abs; [0008]-[0011]; fig 1-2), however Nakagawa does not disclose the insulating material on the outer circumferential surface of the main roller.
Kurokawa discloses a vacuum treatment apparatus (abs; fig 1), comprising the main roller (23) being coated with an insulating material (abs; [0001]; fig 1; clm 1). Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to include the main roller (23) being coated with an insulating material in the apparatus of Nakagawa, because Kurokawa teaches the use of the main roller (23) being coated with an insulating material and a power source (24) that applies a bias potential to the main roller (23) so that spark discharge is not caused between the edges of the substrate (21) and the main roller (23) by power source (24), wherein a potential difference is set between the ferromagnetic thin film formed on the substrate (21) via the rotating roller (22b) and the main roller (23), and the portion of the substrate (21) on which the conductive film is formed sticks to the peripheral surface of the main roller (23) (abs; [0001]).
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei D. Yuan can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights