DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claim 3 is objected to because of the following informalities: “A method of claim 1” includes a drafting error. For the purpose of this Office Action, the limitation has been interpreted as “The method of claim 1”. Appropriate correction is required.
3. Claim 7 is objected to because of the following informalities: “A machine of claim 4” includes a drafting error. For the purpose of this Office Action, the limitation has been interpreted as “The machine of claim 4”. Appropriate correction is required.
4. Claim 8 is objected to because of the following informalities: “The machine of claim 7” includes a drafting error. For the purpose of this Office Action, the limitation has been interpreted as “The machine of claim 4”. Appropriate correction is required.
Claim Interpretation
5. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: means for feeding in claim 4; means for cutting in claim 4; means for arranging in claim 4; means for associating in claim 4; means for discharging in claim 4 and suction means in claim 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 1 and 2-3 are 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.
8. Claim 1 recites the limitation "said tape elements" in lines 6, 7, 10, 13, 15-16, and 19. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "said plurality of tape elements" as there is antecedent basis.
9. Claim 1 recites the limitation "the tape elements" in line 17. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "the plurality of tape elements" as there is antecedent basis.
10. Claims 2 and 3 are rejected as depending from claim 1.
11. Claim 2 recites the limitation "said tape elements" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "said plurality of tape elements" as there is antecedent basis.
12. Claim 3 recites the limitation “a free end of said portion of given length” in lines 3-4.
There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as “a free end of a portion of given length”.
13. Claim 3 recites the limitation "at least one said tape element" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "at least one tape element".
14. Claim 3 recites the limitation "the free ends" in line 10. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "free ends".
15. Claims 4 and 5-11 are 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.
16. Claim 4 recites the limitation "said tape elements" in lines 7, 8, 12, 14-15, and 16. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "said plurality of tape elements" as there is antecedent basis.
17. Claim 4 recites the limitation "the cell of the device" in line 17. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "a cell of a device".
18. Claims 5-11 are rejected as depending from claim 4.
19. Claim 5 recites the limitation "said tape elements" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "said plurality of tape elements" as there is antecedent basis.
20. Claim 5 recites the limitation "the tape elements" in lines 6 and 7. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "the plurality of tape elements" as there is antecedent basis.
21. Claim 7 recites the limitation "said tape elements" in lines 3 and 6. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "said plurality of tape elements" as there is antecedent basis.
22. Claim 7 recites the limitation "the same tape elements" in lines 3-4 and 8-9. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "the same plurality of tape elements".
23. Claim 7 recites the limitation "the cutting line" in line 7. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "a cutting line".
24. Claim 8 recites the limitation "the tape elements" in line 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "the plurality of tape elements" as there is antecedent basis.
25. Claim 9 recites the limitation "said tape elements" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "said plurality of tape elements" as there is antecedent basis.
26. Claim 10 recites the limitation "said tape elements" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "said plurality of tape elements" as there is antecedent basis.
27. Claim 10 recites the limitation "said respective tape elements" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "said respective plurality of tape elements".
28. Claim 10 recites the limitation "the tape elements" in line 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "the plurality of tape elements" as there is antecedent basis.
29. Claim 10 recites the limitation "the surfaces" in 7. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "the pair of surfaces" as there is antecedent basis.
30. Claim 11 recites the limitation "said superimposed tape elements" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "said superimposed plurality of tape elements".
Double Patenting
31. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
32. Claims 1, 3, 4, 6, 7, 10 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 7-9, and 12 of copending Application No. 18/575,554 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1, 3, 4, 6, 7, 10 and 11 are anticipated by claims 1, 3, 4, 7-9, and 12 of copending Application 18/575,554.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
33. The following is a statement of reasons for the indication of allowable subject matter: the invention in independent claim 1 is directed to a method for manufacturing devices for storing electrical energy, comprising the steps of a. feeding with continuous motion a plurality of tape elements, forming at least one anode, one cathode and one separator element interposed between said anode and cathode; b. winding said plurality of tape elements on respective temporary storage rollers; c. cutting to given length respective portions of said plurality of tape elements wound on said temporary storage rollers; d. arranging said temporary storage rollers carrying said respective portions of given length of said plurality of tape elements at a winding mandrel having a rotation axis arranged parallel to the respective axes of the same temporary storage rollers e. associating a free end of said portions of given length of said plurality of tape elements to said winding mandrel; f. rotating said winding mandrel to wind said portions of given length of said plurality of tape elements superimposed on each other, on the same winding mandrel;
g. finishing the winding of said portions of given length of the plurality of tape elements superimposed on said winding mandrel to form a cell of the electrical energy storage device, until said portions of given length of said plurality of tape elements are completely wound off said temporary storage rollers.
The prior art of Baek et al. (KR20100026774A) as cited in IDS dated 12/29/23 discloses a method for manufacturing devices for storing electrical energy(abstract, [37]-[58], Figs. 1-9), comprising the steps of a. feeding with continuous motion a plurality of tape elements, forming at least one anode(12, Fig. 2), one cathode(11, Fig. 2) and one separator element interposed between said anode and cathode(13, 14, Fig. 2); c. cutting to given length respective portions of said plurality of tape elements(cutters 41, 42, Fig. 2); e. associating a free end of said portions of given length of said plurality of tape elements to said winding mandrel (21, Fig. 2); f. rotating said winding mandrel to wind said portions of given length of said plurality of tape elements superimposed on each other, on the same winding mandrel (Fig. 2); g. finishing the winding of said portions of given length of the plurality of tape elements superimposed on said winding mandrel to form a cell of the electrical energy storage device(Figs. 8 & 9, [40]-[41], [57]), but does not disclose, teach or render obvious b. winding said plurality of tape elements on respective temporary storage rollers; c. cutting to given length respective portions of said plurality of tape elements wound on said temporary storage rollers; d. arranging said temporary storage rollers carrying said respective portions of given length of said plurality of tape elements at a winding mandrel having a rotation axis arranged parallel to the respective axes of the same temporary storage rollers; g. until said portions of given length of said plurality of tape elements are completely wound off said temporary storage rollers.
34. The following is a statement of reasons for the indication of allowable subject matter: the invention in independent claim 4 is directed to a machine for manufacturing devices for storing electrical energy, comprising means for feeding with continuous motion a plurality of tape elements, forming at least one anode, one cathode and one separator element interposed between said anode and cathode; at least one group of temporary storage rollers capable of receiving and winding respectively said plurality of tape elements fed by said feeding means; means for cutting to size respective portions of given length of said plurality of tape elements wound on said temporary storage rollers; at least one winding mandrel having an axis of rotation parallel to the axes of said temporary storage rollers and rotatable to wind said portions of given length of said plurality of tape elements, said plurality of tape elements being superimposed on each other;
means for arranging said temporary storage rollers at said winding mandrel; means for associating a free end of said portions of given length of said plurality of tape elements to said winding mandrel, to wind said portions of given length of said superimposed plurality of tape elements in cylindrical manner; means for discharging a cell of a device for storing electrical energy manufactured in this manner.
The prior art of Baek et al. (KR20100026774A) as cited in IDS dated 12/29/23 discloses a machine for manufacturing devices for storing electrical energy (abstract, [37]-[58], Figs. 1-9), comprising means for feeding with continuous motion a plurality of tape elements(Fig. 2), forming at least one anode (12, Fig. 2), one cathode (11, Fig. 2) and one separator element interposed between said anode and cathode (13, 14, Fig. 2); means for cutting to size respective portions of given length of said plurality of tape elements (cutters 41, 42, Fig. 2); at least one winding mandrel and rotatable to wind said portions of given length of said plurality of tape elements (21, Fig. 2), said plurality of tape elements being superimposed on each other(Figs. 2 & 9); means for associating a free end of said portions of given length of said plurality of tape elements to said winding mandrel(bonding grooves 21a, Fig. 9), to wind said portions of given length of said superimposed plurality of tape elements in cylindrical manner(Fig. 9); means for discharging a cell of a device for storing electrical energy manufactured in this manner(ejector 80, Fig. 8) but does not explicitly disclose, teach or render obvious at least one group of temporary storage rollers capable of receiving and winding respectively said plurality of tape elements fed by said feeding means; at least one winding mandrel having an axis of rotation parallel to the axes of said temporary storage rollers, means for arranging said temporary storage rollers at said winding mandrel.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA HOM LYNCH whose telephone number is (571)272-0489. The examiner can normally be reached 7:30 AM - 4:30 PM EST M-F.
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/VICTORIA H LYNCH/Primary Examiner, Art Unit 1724
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