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 .
Election/Restrictions
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 20, 2026.
In addition, species a, claim 2 was elected over the phone on September 29, 2026, without traverse in response to the Requirement for Restriction mailed on June 17, 2026. The other species claims (3-4) and the claims that depend on these claims (i.e. claim 5) are withdrawn.
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.
Claims 1-2, 7-8, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horinouchi (US 20190374971).
Regarding claim 1, Horinouchi teaches a coating shim (21) for applying a first slurry and a second slurry to an object to be coated, the coating shim (21) comprising:
a recess 21a (first flow channel) for applying the first slurry to the substrate 1 (object) to be coated to form a heat-resistant film 17 (first coating layer) (para 0033, 0036; see for example Figs. 2 and 3) and
a recess 21b (two second flow channels respectively arranged on and spaced from two sides of each one of the at least one first flow channel in a length of the coating shim, each one of the second flow channels comprising a second slurry outlet at the end face and being configured to) for applying the second slurry to the substrate 1 (object) to be coated to form an active material film 16 (second coating layer). (See Horinouchi, para 0033, 0036; Figs. 2 and 3),
wherein the recess 21a (first flow channel) has a discharge slot 15 (first slurry outlet) at a first end face of the shim 21 facing the substate 1 (object) to be coated, the recess 21b (second flow channel) has a discharge slot 14 (second slurry outlet) at the end face of the coating shim (See Horinouchi, para 0034; Figs. 2 and 4), and
the discharge slot 15 (first slurry outlet) and the discharge slot 14 (second slurry outlet) are configured to partially overlap in a thickness direction of the shim 21 (see for example Fig. 4), such that the film 17 (first coating layer) and the film 16 (second coating layer) partially overlap in the thickness direction of the shim 21. (See Horinouchi, Abstract, para 0039-0040; Figs. 1-3 and 6).
Regarding claim 2, Horinouchi teaches the first slurry outlet( end of 21a) is arranged spaced apart from (outlet of 21b) the second slurry outlet of each one of the two second flow channels by a distance (wl) in the length direction of the coating shim and by a distance (hl) in the thickness direction of the coating shim (21), such that mixing between the first slurry and the second slurry due to contact is reduced. (See Horinouchi, Abstract, para 0039-0040; Figs. 1-3 and 6).
Regarding claim 7, Horinouchi teaches the first slurry outlet and the second slurry outlet of each one of the two second flow channels have an overlapping width (w2) not exceeding a width of the second slurry outlet in the length direction of the coating shim. (See Horinouchi, para 0039-0040; Figs. 1 and 2).
Regarding claim 8, Horinouchi teaches the at least one first flow channel (21a)has a side surface in the arrangement direction of the first flow channel and the two second flow channels, the side surface of the first flow channel includes a sloped portion (rt side of 21a1 in Fig. 8), and the sloped portion and the second slurry outlet (21b1 in Fig. 8) are arranged to partially overlap in the thickness direction of the coating shim. (See Horinouchi, Figs. 1 and 2).
Regarding claim 11, Horinouchi teaches each one of the second flow channels comprises a groove portion (13) and a slurry inlet (13a), the groove portion is interconnecting the slurry inlet of the second flow channel and the second slurry outlet, and the slurry inlet penetrates the coating shim in the thickness direction of the coating shim. (See Horinouchi, Figs. 1 and 2).
Regarding claim 12, Horinouchi teaches the groove portion (13) comprises an inlet section (13a), an outlet section (section of 13b facing outside) and a communication section (middle section of 13b), in the thickness direction of the shim, the inlet section and the outlet section are respectively located on the two sides of the coating shim, the inlet section is connected to the slurry inlet, the communication section is connected to the inlet section and the outlet section, and the outlet section is connected to the second slurry outlet (12). (see for example Figs. 1 and 2-3, and 6).
Regarding claim 13, Horinouchi teaches the coating shim comprises at least two first flow channels (21b, 21b) arranged apart from each other along a width direction of the coating shim (3). (See Horinouchi, Figs. 1 and 2).
Claim Rejections - 35 USC § 103
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 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, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Horinouchi (US 20190374971) as applied to claim 1 above.
Regarding claim 6, Horinouchi further shows that the discharge slot 15 (first slurry outlet) and the discharge slot 14 (second slurry outlet) have an overlapping width in an arrangement direction of the recess 21a (first flow channel) and the recess 21b (second flow channel) (see for example Fig. 4).
Horinouchi does not explicitly teach that the slots 15,14 (first and second outlets)
have an overlapping width of 0.1-9 mm.
However, Horinouchi further teaches that the overlapping width of the slots 15,14 may be changed as needed for the resultant cell to operate stably (para 0039-0040, 0080). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the slots 15,14 (discharge outlets) to have an overlapping width of 0.1-9mm, as taught by Horinouchi, for the benefit of achieving stable operation of the cell.
Regarding claim 6, Horinouchi further shows that the discharge slot 15 (first slurry outlet) and the discharge slot 14 (second slurry outlet) have an overlapping width in an arrangement direction of the recess 21a (first flow channel) and the recess 21b (second flow channel) (see for example Fig. 4).
Horinouchi does not explicitly teach that the slots 15,14 (first and second outlets)
have an overlapping width of 0.1-9 mm.
However, Horinouchi further teaches that the overlapping width of the slots 15,14 may be changed as needed for the resultant cell to operate stably (para 0039-0040, 0080). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the slots 15,14 (discharge outlets) to have an overlapping width of 0.1-9mm, as taught by Horinouchi, for the benefit of achieving stable operation of the cell.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Horinouchi (US 20190374971) and further in view of Tsukamoto (US 20190054495 A1)
Regarding claim 10, Horinouchi does not explicitly teach each one of the two second flow channels comprises an opening portion extending to the second slurry outlet, the opening portion having a width in an arrangement direction of the at least one first flow channel and the two second flow channel that increases in a direction from a slurry inlet of the second flow channel to the second slurry outlet
Tsukamoto teaches each one of the two second flow channels comprises an opening portion extending to the second slurry outlet, the opening portion having a width in an arrangement direction of the at least one first flow channel and the two second flow channel that increases in a direction from a slurry inlet of the second flow channel to the second slurry outlet. (See Tsukamoto, Abstract, paragraphs 31, 34, 36, 40, and 49.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include each one of the two second flow channels comprises an opening portion extending to the second slurry outlet, the opening portion having a width in an arrangement direction of the at least one first flow channel and the two second flow channel that increases in a direction from a slurry inlet of the second flow channel to the second slurry outlet, because Tsukamoto teaches this would enable the slurry to be supplied with the desired end portion. (See Tsukamoto, Abstract, paragraphs 31, 34, 36, 40, and 49.)
However, Horinouchi further teaches that the overlapping width of the slots 15,14 may be changed as needed for the resultant cell to operate stably (para 0039-0040, 0080). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the slots 15,14 (discharge outlets) to have an overlapping width of 0.1-9mm, as taught by Horinouchi, for the benefit of achieving stable operation of the cell.
Double Patenting
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No 11,975,355 to Che in view of Horinouchi (US 20190374971) .
Although the claims at issue are not identical, they are not patentably distinct from each other because Che in view of Horinouchi teaches a coating shim for coating an object to be coated, the coating shim comprising: an end surface facing the object; at least one first flow channel comprising a first slurry outlet at the end face of the coating shim, the at least one first flow channel being configured to apply a first slurry to the object through the first slurry outlet to form a first coating layer on the object; and two second flow channels respectively arranged on and spaced from two sides of each one of the at least one first flow channel in a length direction of the coating shim, each one of the second flow channels comprising a second slurry outlet at the end face and being configured to apply a second slurry to the object through the second slurry outlet to form a second coating layer on the object, wherein the first slurry outlet and each one of the second slurry outlet are at least partially overlapped in a thickness direction of the coating shim, such that the first coating layer and each one of the second coating layers partially overlap in a thickness direction of the coating shim. (See Che, claim 13 and Horinouchi as set forth above.)
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No 11,975,355 to Che in view of Horinouchi (US 20190374971) .
Although the claims at issue are not identical, they are not patentably distinct from each other because Che in view of Horinouchi teaches the at least one first flow channel has a side surface in the arrangement direction of the first flow channel and the two second flow channels, the side surface of the first flow channel includes a sloped portion, and the sloped portion and the second slurry outlet are arranged to partially overlap in the thickness direction of the coating shim. wherein the side surface of the at least one first flow channel further comprises a step portion connected to the sloped portion, the slope portion has a width (w3) in the length direction of the coating shim, and the width (w3) is not greater than 10 mm. (See Che, claim 7 and Horinouchi as set forth above.)
Allowable Subject Matter
Claim 9 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 and the double patenting rejection is addressed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Umehara (US 20200136133) discloses a die head 83 including a first slot 83S1 extending in a straight line in a width direction and having a size in the width direction to discharge the positive active material paste. On an outside in the width direction of the first slot 83S1, a pair of second slots 83S2 are also provided to discharge the insulator paste. Each of the second slots 83S2 is arranged at a predetermined distance DD from the first slot 83S1 (para 0150; see for example Figs. 11-13).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARL V KURPLE whose telephone number is (571)270-3477. The examiner can normally be reached Monday-Friday 8 AM-5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei 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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/KARL KURPLE/Primary Examiner
Art Unit 1717
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