DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 05/19/2026 without traverse of Group I, claims 1-13 for further examination. Claim 14 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 11/17/2023, 12/11/2024 & 01/09/2025 being considered by the examiner.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 1-13 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 1, lines 2 & 5 recite “a slot die”, wherein it is unclear whether they are the same or different. For examination purposes, examiner is interpreting line 5 as “the slot die”. To correct this problem, amend line 5 to recite “the slot die”.
As regards to claim 1, line 11 recites “the supply pipes”, then claim 5 line 2 recites “the plurality of supply pipes”, then claim 6 line 2 recites “the supply pipes”, then claim 7 line 2 recites “the supply pipes”, wherein it is unclear whether they are the same or different. For examination purposes, examiner is interpreting all recitations of “the supply pipes” as “the plurality of supply pipes”. To correct this problem, amend claims 1 & 6-7 to recite “the plurality of supply pipes”.
As regards to claim 4, line 2 recites the limitation “the supply pipe”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the supply pipe” as “the plurality of supply pipes” recited in claim 1. To correct this problem, amend line 2 to recite “the plurality of supply pipes”.
As regards to claim 8, line 2 recites the limitation “the supply pipe”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the supply pipe” as “the plurality of supply pipes” recited in claim 1. To correct this problem, amend line 2 to recite “the plurality of supply pipes”.
As regards to claim 9, line 2 recites the limitation “the supply pipe”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the supply pipe” as “the plurality of supply pipes” recited in claim 1. To correct this problem, amend line 2 to recite “the plurality of supply pipes”.
As regards to claim 9, line 5 recites the limitation “the number”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the number” as “a number”. To correct this problem, amend line 5 to recite “a number”.
As regards to claim 9, line 6 recites the limitation “the pressure… the pressure”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the pressure… the pressure” as “a pressure… a pressure”. To correct this problem, amend line 6 to recite “a pressure… a pressure”.
Claims 2-13 are rejected at least based on their dependency from claim 1.
Claim Rejections
7. 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.
8. 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 § 102
9. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
10. Claims 1-12 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Maeda et al. (JP 2022-041501 A (equivalent US 2024/0024912 A1 used for examination and citation purposes)) hereinafter Maeda (the terminology of the claims in the application is used, but the references of Maeda are included between parentheses).
As regards to claim 1, Maeda discloses an insulating liquid supplying device for supplying insulating liquid (3) to a slot die (10) for a multi-row simultaneous coating (abs; fig 1-2), comprising: an insulating liquid tank (22) configured to receive insulating liquid (3); a cylindrical insulating liquid header (7) configured to receive insulating liquid (3) transferred from the insulating liquid tank (22), and convey the received insulating liquid (3) to a slot die (10); a transfer pipe (21+two pipes leaving 22+42+44) connected to the insulating liquid tank (22) and the insulating liquid header (7) such that insulating liquid (3) can be transferred through the transfer pipe (21+two pipes leaving 22+42+44); a plurality of supply pipes (24a-24d) connected to the insulating liquid header (7) and the slot die (10); and a transfer pump (23) provided in connection with the transfer pipe (21+two pipes leaving 22+42+44) configured to provide pressure to transfer insulating liquid (3) from the insulating liquid tank (22) to the slot die (10), wherein the plurality of supply pipes (24a-24d) are connected to an upper part (see fig 1-2) of the insulating liquid header (7) ([0028]-[0040]; [0045]-[0046]; fig 1-2).
As regards to claim 2, Maeda discloses an insulating liquid supplying device (abs; fig 1-2), wherein the insulating liquid header (7) extends along a width direction (see fig 2, y direction) of the slot die (10) ([0028]-[0040]; fig 1-2).
As regards to claim 3, Maeda discloses an insulating liquid supplying device (abs; fig 1-2), wherein the insulating liquid header (7) extends horizontal (see fig 2, z direction) to the slot die (10) ([0028]-[0040]; fig 1-2).
As regards to claim 4, Maeda discloses an insulating liquid supplying device (abs; fig 1-2), wherein the plurality of supply pipes (24a-24d) protrudes from the upper part (see fig 2) of the insulating liquid header (7) and is connected to the slot die (10) ([0028]-[0040]; fig 1-2).
As regards to claim 5, Maeda discloses an insulating liquid supplying device (abs; fig 1-2), wherein the plurality of supply pipes (24a-24d) are disposed along the width direction (see fig 2, y direction) to connect the insulating liquid header (7) and the slot die (10) ([0028]-[0040]; fig 1-2).
As regards to claim 6, Maeda discloses an insulating liquid supplying device (abs; fig 1-2), wherein a length and inside diameter (see fig 2) of each of the plurality of supply pipes (24a-24d) are respectively the same ([0028]-[0040]; fig 1-2).
Regarding claim 7, the recitation “wherein pressure losses in each of the plurality of supply pipes are the same”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Maeda since Maeda meets all the structural elements of the claim and is capable of having pressure losses in each of the plurality of supply pipes the same, 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 7, Maeda discloses an insulating liquid supplying device (abs; fig 1-2), wherein pressure losses ([0041]; [0050]) in each of the plurality of supply pipes (24a-24d) is capable of being the same ([0028]-[0040]; fig 1-2).
Regarding claim 8, the recitation “wherein a pressure loss of the insulating liquid header is smaller than a pressure loss of the plurality of supply pipes”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Maeda since Maeda meets all the structural elements of the claim and is capable of having a pressure loss of the insulating liquid header smaller than a pressure loss of the plurality of supply pipes, 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 8, Maeda discloses an insulating liquid supplying device (abs; fig 1-2), wherein a pressure loss of the insulating liquid header (7) is capable of being smaller than a pressure loss of the plurality of supply pipes (24a-24d) ([0028]-[0040]; fig 1-2).
Regarding claim 9, the recitation “wherein pressure losses of the insulating liquid header and the plurality of supply pipes meet the conditions of the following equation: (ΔPh/n)<ΔPs*5% where n is the number of transfer pipes connected to the insulating liquid header, ΔPh is the pressure loss inside the insulating liquid header, and ΔPs is the pressure loss of a single supply pipe”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Maeda since Maeda meets all the structural elements of the claim and is capable of having pressure losses of the insulating liquid header and the plurality of supply pipes meet the conditions of the following equation:
(ΔPh/n)<ΔPs*5% where n is the number of transfer pipes connected to the insulating liquid header, ΔPh is the pressure loss inside the insulating liquid header, and ΔPs is the pressure loss of a single supply pipe, 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 9, Maeda discloses an insulating liquid supplying device (abs; fig 1-2), wherein pressure losses of the insulating liquid header (7) and the plurality of supply pipes (24a-24d) are capable of meeting the conditions of the following equation: (ΔPh/n)<ΔPs*5%
where n is a number of transfer pipes (21) connected to the insulating liquid header (7), ΔPh is a pressure loss inside the insulating liquid header (7), and ΔPs is a pressure loss of a single supply pipe ([0028]-[0040]; fig 1-2).
As regards to claim 10, Maeda discloses an insulating liquid supplying device (abs; fig 1-2), wherein the transfer pipe (21+two pipes leaving 22+42+44) is connected to a lower part (se3e fig 1-2) of the insulating liquid header (7) ([0028]-[0040]; [0045]-[0046]; fig 1-2).
As regards to claim 11, Maeda discloses an insulating liquid supplying device (abs; fig 1-2), wherein the transfer pipe (21+two pipes leaving 22+42+44) comprises: a main transfer pipe (two pipes leaving 22) connected to the insulating liquid tank (22); and an auxiliary transfer pipe (21+ 42+44) branching from the main transfer pipe (two pipes leaving 22) and connected to the insulating liquid header (7) ([0028]-[0040]; [0045]-[0046]; fig 1-2).
As regards to claim 12, Maeda discloses an insulating liquid supplying device (abs; fig 1-2), wherein at least two or more auxiliary transfer pipes (21+42+44) branch off in parallel from the main transfer pipe (two pipes leaving 22), and the branched auxiliary transfer pipes (21+42+44) connect to the insulating liquid header (7) ([0028]-[0040]; [0045]-[0046]; fig 1-2).
Claim Rejections - 35 USC § 103
11. 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.
12. 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.
13. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Maeda as applied to claim 12 above.
As regards to claim 13, Maeda discloses an insulating liquid supplying device (abs; fig 1-2), a transfer pump (23) provided in connection with the transfer pipe (21+two pipes leaving 22+42+44) configured to provide pressure to transfer insulating liquid (3) from the insulating liquid tank (22) to the slot die (10) ([0028]-[0040]; [0045]-[0046]; fig 1-2), however Maeda does not disclose wherein a transfer pump is provided in each of the auxiliary transfer pipes (21+42+44).
Although the figures of Maeda only depict a singular transfer pump, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the system of Maeda to have additional transfer pumps as recited in the claim to accommodate additional substrates or as needed for an intended coating method and therefore is not expected to alter the operation of the device in a patentably distinct way.
Therefore before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have incorporated more than one transfer pump since It is held that mere duplication of parts has no patentable significance unless a new and unexpected result it produced, see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), MPEP 2144.04 VI. B.; and since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 1 93 USPQ 8.
Conclusion
14. 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.
15. 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..
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, 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