Detailed Office Action
Notice of Pre-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 .
Response to Amendments
The amendments filed on 08/25/26 have been entered. The examiner notes that claims 8 – 12 are listed as “withdrawn” but have been canceled and are treated as such. This cancellation is acknowledged in the response on 08/25/26. Claims 1 – 7 remain pending.
Restriction/Election
Applicant’s election without traverse of Group I, Claims 1 – 7 in the reply filed on 08/25/26 is acknowledged.
Claim Rejections – U.S.C. §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 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.
Claims 1 – 2, 4 – 5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Althues (US2021/0320288, cited with the IDS on 05/06/24)
Regarding claims 1 – 2 and 4 – 5, Althues teaches a method of producing a dry electrode film [title, 0021]. The method comprises providing a powder material to a pair of rollers to be pressed into a film [Fig 1, 0009, 0011], meeting the claimed limitation of contacting a roller with a dry electrode/electrode precursor powder and imparting at least one force to form a film.
The rollers are chrome-plated [0036] and can have a diamond-like carbon coating for anti-adhesion [0015], meeting the claimed limitation of surface hardened. Wherein the diamond-like carbon coating meets the limitation of claim 2 and the chrome-plated structure of the roller meets the limitation of an underlayer (claim 4) that is chrome (claim 5).
Regarding claim 7, Althues teaches the invention as applied in claim 1. Althues teaches that the rollers can be calender rolls [0022], meeting the claimed limitation.
Claim Rejections – U.S.C. §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, 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Althues (US2021/0320288, cited with the IDS on 05/06/24), as applied to claims 2 and 4 respectively, in further view of Kim (US2012/0301605)
Regarding claims 3 and 6, Althues teaches the invention as applied in claims 2 and 4. Althues teaches that the rollers have a chrome layer [0036] and a diamond -like carbon (DLC) coating [0015] but does not expressly disclose the thickness of these layers.
Kim teaches a roller structure with enhanced abrasion resistance and durability [0003] for use in forming material from powder in the electronics industry [0007] including electrodes [0152, 0153]. Kim teaches that the roller has a structure with a first reinforcement layer [Fig 4D, “110”] made of Cr-plating [0030] with a thickness of 0.1 – 10 µm [0032], which overlaps with the claimed range of the underlayer of claim 6, and a second reinforcement layer [Fig 4D, “170”] made of DLC [0031] with a thickness of 0.2 – 2 µm [0033], which overlaps with the claimed range of the hardening layer of claim 3.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Althues and Kim to use the thicknesses and layer structure taught by Kim as/in the rollers of Althues to achieve predictable results. Kim teaches that the rolls can be used for formation of electronic material from powder, including the formation of electrodes. As such, an ordinarily skilled artisan would have considered the teachings of Kim to be pertinent to the disclosure of Althues. Moreover, Althues expressly acknowledges that the rolls can have a chrome-plated layer and a DLC coating and therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the thickness of the Cr-plated layer and DLC coating disclosed by Kim, to the rolls of Althues.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (MPEP 2143 A). “In KSR, the Supreme Court particularly emphasized "the need for caution in granting a patent based on the combination of elements found in the prior art," Id. at 415, 82 USPQ2d at 1395.”. “Importantly, the Supreme Court reaffirmed principles based on its precedent that "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Id. at 415-16, 82 USPQ2d at 1395.” (See MPEP 2141).
With regards to the overlapping ranges taught, “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
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
Claims 1 – 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 17/983,778 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application ‘778 claims a method of forming a dry electrode film by contacting electrode/electrode precursor powder with a surface hardened roller by imparting a force on the powder. The hardened layer is DLC or tungsten carbide, the underlayer is tungsten carbide, and their respective thicknesses overlap with/fall within the claimed ranges. The roller is a nip roller or calendaring roller.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The examiner notes that “If both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome.” (MPEP 804 I B 1(b)(ii))
Additionally, “A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Replies with an omission should be treated as provided in MPEP § 714.03.” (see MPEP 804 I B 1)
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2019/0165358 – Device for producing electrode laminate with rollers that have a DLC coating, and chrome-plated underlayer
US2014/0109642 – Roll arrangement and roll nip regulation with chrome-plating and carbide coating
US2012/0231353 – formation of electrode film with roller possessing tungsten carbide coating
US2009/0075116 – Gravure roll(s) with DLC coating, copper layer, and metal carbide layer, overlapping thicknesses
WO2022/266528 – Formation of coated surface for improved wear resistance to various components
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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, Sally Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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