DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Claim Objections
Claim 9 is 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 (though note the 112(b) rejection on this claim, below).
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 9 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 pre-AIA the applicant regards as the invention for the reasons of record as set forth in Paragraph No. 11 of the Office Action mailed February 23, 2026.
Claim Rejections - 35 USC § 102
Claims 1 - 8 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by IDS reference Umeyama et al. (U.S. Patent App. No. 2017/0256788 A1) for the reasons of record as set forth in Paragraph No. 13 of the Office Action mailed February 23, 2026.
Claim Rejections - 35 USC § 103
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.
Claims 1 - 8 and 10 - 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Umeyama et al. as applied above, and further in view of Iwasaki (U.S. Patent App. No. 2014/0057180 A1) as evidenced by Ohta et al. (U.S. Patent App. No. 2020/0328428 A1) for the reasons of record as set forth in Paragraph No. 16 of the Office Action mailed February 23, 2026.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: claim 9 is deemed allowable for the reasons of record as set forth in Paragraph No. 17 of the Office Action mailed February 23, 2026
Response to Arguments
The rejection of claim 9 under 35 U.S.C § 112(b)
Applicant(s) argue(s) that ‘flatten’ does not require an explicit numerical measurement and has a well understood meaning in the art. The Examiner respectfully partly disagrees.
The Examiner agrees that an exact magnitude is not necessarily required; i.e. a difference of 0.0000000001% could be taken as “flatten”ing as it would be reducing the value, albeit slightly. However, the stronger point of indefiniteness is the fact that there are a HUGE number of ways to ascertain surface smoothness and the present disclosure does not clearly define what is meant by ‘flatness’. I.e. is this the Ra surface roughness? Is this the Rz surface roughness? Is this a Sk, skewness, roughness profile? Is this a macro-scale roughness; e.g. a patterned laminate structure ( _-_-_-_ ) versus a uniform coating application ( ---------- )? As such, the Examiner does not find Applicants’ arguments convincing and maintains that this term is indefinite for the reasons previously set forth.
The rejection of claims under 35 U.S.C § 102 and/or 103 – Umeyama et al. alone or in view of various references
Applicant(s) argue(s) that the “ “granular powder” as recited in claim 1 refers to a specific structure used in dry electrode methods” (page 8 of response), emphasizing that Umeyama et al. uses a wet method with their “mixtures layers are formed from paste compositions” (page 9 of response). Applicants argue that this represents a patentable distinction for the claimed invention. The Examiner respectfully disagrees.
First, the Examiner notes that the present claims actually have two interpretations:
Each granular powder layer includes an active material in any form; a conductive material in any form, and “a binder in the form of a granular powder” (i.e. _only_ the binder need be a granular powder to meet the claim limitations); or
Each granular layer includes an active material, a conductive material and a binder, all three of these components being in a form of a granular powder.
The Examiner notes that the paste of Umeyama et al. necessarily meets both of these interpretations, as a paste is a combination of particular matter (i.e. granular powder) and a solvent. I.e. the binder is necessarily a ‘granular powder’ during the paste formation. And the examples of Umeyama et al. clearly recognize that all three of the active material, conductive material and binder are combined with each and then the solvent is added; i.e. they are mixed together to form a granular powder, which is then turned into a paste by adding the solvent.
Regardless of whether Applicants agree with the above position, the Examiner further notes that Applicants are arguing limitations that are not in the claims. Specifically, Applicant is arguing that the inner and outer granular powder layers are produced via a dry process (which is not claimed) and that this product-by-process aspect results in a distinct, non-obvious structure versus an application of powders from a paste (i.e. the wet process). It should be noted that the Examiner agrees with Applicants that Umeyama et al. discloses a wet process; however, the Examiner does not agree that the present claims require the use of the argued wet process.
A different method of making is not grounds for patentability unless a non-obvious or unexpected structure or property can be shown. Perhaps this is viable in the instant case, but the claims must be reasonably commensurate in scope with the showing and evidence must be provided supporting the position of non-obviousness/unexpected results. Applicant(s) are reminded that a detailed description of the reasons and evidence supporting a position of unexpected results must be provided by applicant(s). A mere pointing to data requiring the examiner to ferret out evidence of unexpected results is not sufficient to prove that the results would be truly unexpected to one of ordinary skill in the art. In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971) and In re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986).
In addition, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner’s position that the arguments provided by applicant(s) regarding the alleged unexpected results should be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Presently, no such evidence has been provided, only unsubstantiated allegations of differences in uniformity and adhesion. The Examiner acknowledges the different processes, but does not find the present arguments and “evidence” convincing of any unexpected results/non-obvious results when using the wet process versus a dry process to apply the layers (Applicants are reminded that the present claims (1) do not recite any product-by-process type limitations and (2) are directed to the finished product; ergo the exact process used is germane to the determination of patentability of the claimed product in the present claim form).
Amendment to positively recite the product-by-process aspect of a ‘dry method’ along with evidence supporting the position of non-obviousness/unexpected results would be reasonably expected to overcome the art of record given that Umeyama et al. does not teach using a dry method, but instead applies via the paste and the wet process. However, such limitations would necessitate further search and/or consideration before any indication of patentability would be ascertained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
July 21, 2026
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