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.
Claim 3 is 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.
Regarding claim 3, it is unclear if the band of protective layer is the same protective layer of claim 2 or a different one, particularly as claim 3 does not require the band of protective layer to converge on the second reel, only return it towards the second reel.
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 pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 2 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. The composition of the strip, i.e. that it is two layers, does not affect the structure of the apparatus. 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.
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.
Claim(s) 1, 2, and 4 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Varley(US Patent 728,183).
Varley discloses advice which is capable of forming an electrode which comprises a feed station with a plurality of supports for wires which can be unwound and an assembly station with a reel onto which the wires and a film are wound. The wires and film converge on the reel with the wires tangent to the reel.(Figure 2) The film is from a reel.(Pg. 1, ll. 76-78) The specifics of the melting point of the film, the presence of an adhesive and the coating on the wires are all elements of the material worked upon and do not limit the structure of the device.
Regarding claim 2, the film structure of the film, i.e. the number of layers, determines whether it sandwiches the wires or not, and this is a function of the material worked upon which does not affect the structure of the apparatus.
Regarding claim 4, Varley teaches a distribution station between the feed station and the assembly station which converges and distances the wires from each other.(C3)
Response to Arguments
Applicant’s arguments, see response, filed 10/28/25, with respect to the rejection(s) of claim(s) 1-4 under Dotta et al. and Rubin et al. have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Varley.
Regarding applicant’s argument that the references embed the wires in the adhesive, that is a function of the thickness of the wires and the thickness/presence of an adhesive, both of which are not part of the apparatus. If applicant wants to require the specifics of the material worked upon, they must be claimed as a part of the apparatus in combination with the apparatus, not simply mentioned with regards to relationship but positively claimed. The only elements actually required by the claim are a first reel on which a film is located, a feed station with supports for wires, and a second reel where they both are wound wherein the wires and film converge on the second reel, all of which are taught by Varley.
Allowable Subject Matter
Claim 3 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not teach or reasonably suggest a roller around which part of the strip from the first reel is wound such that it is moves in the opposite direction from the remainder of the strip, both of them sandwiching the wires on the second reel, i.e. Figure 1, roller 18)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BARBARA J MUSSER whose telephone number is (571)272-1222. The examiner can normally be reached 7:30-4:30 M-Th; 7:30-3:30 second Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BARBARA J. MUSSER
Primary Examiner
Art Unit 1746
/BARBARA J MUSSER/ Primary Examiner, Art Unit 1746