DETAILED ACTION
The communication dated 12/23/2025 has been entered and fully considered.
Claims 2-3, 8, 11 and 18-20 have been cancelled. Claims 1, 4, 14 and 17 have been amended. Claims 1, 4-7, 9-10 and 12-17 are pending.
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 and Arguments
The Applicant’s amendments have overcome the claim objections set forth in the office action of 9/25/2025. Therefore, the claim objections have been withdrawn.
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
The Applicant argues that EBINE discloses that only the travel roll has a step roll and the rolling roll does not have a step roll. The Applicant argues that EBINE discloses flat type rolling rolls (12) that can apply a pressure only to the electrode mixture coated portion (36b), and stepped travel rolls (32). In other words, EBINE provides the required elongation to the coated and uncoated portions of the electrode in the second travelling step and fails to do so in connection with the first rolling step.
The Examiner agrees with the Applicant about the rolling steps, but would like to note that the arguments are not commensurate in scope with the claims.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the rolling steps) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the rolls of EBINE do not teach the rolling steps of the Applicant’s invention, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant’s arguments with respect to claim(s) 17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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.
Claim(s) 1, 4, 10 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EBINE (JP 2003100286A, original and translation provided), hereinafter EBINE.
Regarding claim 1, EBINE teaches: An electrode manufacturing device that rolls and transfers a sheet-shaped electrode in which an active material layer is applied to a metal foil with a first surface and a second surface which is a back surface of the first surface (EBINE teaches an electrode manufacturing device (10) [Fig. 1; 0018]. EBINE teaches a strip electrode (100) is wound by continuously applying an active material in the longitudinal direction to a part of the width of an elongated metal foil (102) [0002; Fig. 15]. Furthermore, these recitations are part of the preamble of the claim. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.), comprising: at least one rolling roll rolling the electrode (EBINE teaches the apparatus comprises a roll (32) [Figs. 1, 4-8; 0021]. EBINE shows multiple rolls which one roll may be a rolling roll [Figs. 1, 4-8].), at least one travel roll rolling and then transferring the electrode (EBINE teaches at least one travel roll (32) [Figs. 1, 4-8; 0021-0022].), both the at least one rolling roll and the at least one travel roll comprising: a base roll having a predetermined diameter (EBINE teaches a base roll (32b) having a predetermined diameter [Figs. 4-5; 0021].), the base roll having a base surface at an outer circumference thereof (EBINE teaches having a base surface at an outer circumference thereof [Figs. 4-5]); and a step ring coupled to the outer circumference of the base roll (EBINE teaches a step ring (32a) coupled to the outer circumference of the base roll [Figs. 4-5; 0021]. EBINE teaches the step ring is provided on the rolling roll (32) [Figs. 4-7; 0021-0022]. EBINE teaches the step ring is provided on at least one travel ring [0021-0022; Figs. 4-7].), the step ring having a step surface (EBINE teaches the roll has a step surface [Figs. 4-5]), and a diameter of the step ring being greater than a diameter of the base surface (EBINE teaches the diameter of the step ring (32a) is greater than a diameter of the base surface (32b) [Figs. 4-5; 0021-0022].).
Regarding claim 4, EBINE teaches: wherein the at least one travel roll is a plurality of travel rolls (EBINE teaches the travel roll can be a plurality of rolls [Fig. 4-7]), and wherein among the plurality of travel rolls, one or more first travel rolls being disposed near the at least one rolling roll are provided with both the base roll and the step ring, and second travel rolls being disposed behind the one or more first travel rolls in a travel direction of the electrode are not provided with the step ring (EBINE teaches two of the rolls can be traveling rolls and have a base roll and the step ring [Figs. 4-7; 0021-0022].).
Regarding claim 10, EBINE teaches: wherein a thickness of a step between the step surface and the base surface is greater than a thickness of the active material layer (EBINE teaches the difference is radius between the large diameter portion (32a) and the small diameter portion (32b) is larger than the thickness of the compressed coated portion (36b) [0021].).
Regarding claim 16, EBINE teaches: wherein the step ring is a band wound around the outer circumference of the base roll at least once (EBINE teaches the step ring (32a) is a band around the outer circumference of the base roll [Figs. 4-7].).
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 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.
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(s) 5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over EBINE (JP 2003100286A, original and translation provided), hereinafter EBINE, in view of Kim (KR 101830287B1, original and translation provided), hereinafter KIM.
Regarding claim 5, KIM further teaches: wherein the step ring is detachably coupled to the base roll (KIM teaches the step ring is detachably attached to the outer surface of the roller [0027]). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify EBINE, by having the step ring detachably attached, as suggested by KIM, in order to change the size of the pressing portions [0109].
Regarding claim 7, KIM further teaches: wherein a thickness of a step between the step surface and the base surface is less than a thickness of the active material layer (KIM teaches the thickness of the step surface and the base surface is less than the coating layers [0094-0095; 0102]). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify EBINE, by having the gap be less than the coating layers, as suggested by KIM, in order to make the layers thinner [0095] and prevent deformation [0104].
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over EBINE (JP 2003100286A, original and translation provided), hereinafter EBINE, in view of Shoji et al. (U.S. PGPUB 2016/0229653), hereinafter SHOJI.
Regarding claim 6, EBINE teaches all of the claimed limitations as stated above, but is silent as to: wherein a frictional coefficient at an outer circumference of the step ring is greater than a frictional coefficient at the outer circumference of the base roll. In the same field of endeavor, rolling, SHOJI teaches a frictional coefficient at an outer circumference of the step ring (28) is greater than a friction coefficient at the outer circumference of the base roll (27a) [Fig. 17(e); 0104]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify EBINE, by having the frictional coefficient of the protrusions be greater than the frictional coefficient of the base, as suggested by SHOJI, in order to achieve stable feed [0104].
Claim(s) 9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over EBINE (JP 2003100286A, original and translation provided), hereinafter EBINE, in view of Shuttleworth et al. (U.S. 3,951,255), hereinafter SHUTTLEWORTH, and KAWASE et al. (U.S. PGPUB 2017/0313532), hereinafter KAWASE, as evidenced by Hadano et al. (U.S. PGPUB 2001/0045694), hereinafter HADANO.
Regarding claim 9, EBINE teaches all of the claimed limitations as stated above, but is silent as to: wherein a frictional coefficient at an outer circumference of the step ring is less than a frictional coefficient at the outer circumference of the base roll. In the same field of endeavor, rolling, SHUTTLEWORTH teaches a base roll (sleeve, 194) that is made of rubber [Col. 4, lines 9-15]. SHUTTLEWORTH teaches the outside surface of the roller may be made of rubber materials and have a high coefficient of friction [Col. 10, lines 25-32]. SHUTTLEWORTH also teaches the roller have a steel outer surface for the roller and thus have a coefficient of friction considerably reduced as compared to the rollers having rubber on the outside [Col. 10, lines 25-32]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify EBINE, by having the step ring frictional coefficient be less than the base roll frictional coefficient, as suggested by SHUTTLEWORTH, in order to provide considerable lateral movement of objects [Col. 10, lines 20-25]. Furthermore, it’s a known method in the art to have a low coefficient material on the outer circumference of a roll with a higher frictional coefficient in the middle, as taught by SHUTTLEWORTH. See KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007) ("A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.").
In the alternative, in the same field of endeavor, rolling, KAWASE teaches the concept of a frictional coefficient at an outer circumference of the step ring (16b) is less than a frictional coefficient at the outer circumference of the base roll (16a) [Fig. 7; 0052]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify EBINE, by having the step ring frictional coefficient be less than the base roll frictional coefficient, as suggested by KAWASE, in order to ensure rigidity [0058].
Regarding claim 12, KAWASE further teaches: wherein an elastic modulus of the step ring is less than an elastic modulus of the base roll (KAWASE teaches the outer circumference of the roll is made from resin while the base roll is made from rubber [0052] and resin has a higher elastic modulus than rubber, as taught by HADANO [0010].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify EBINE, by having the step ring made from resin and the base made from rubber, as suggested by KAWASE, in order to ensure rigidity [0058].
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over EBINE (JP 2003100286A, original and translation provided), hereinafter EBINE, in view of Fujii (U.S. 4,138,940), hereinafter FUJII.
Regarding claim 13, EBINE teaches all of the claimed limitations as stated above, but is silent as to: wherein the base roll comprises a metallic material, and the step ring comprises a synthetic resin material. In the same field of endeavor, rolling, FUJII teaches the base roll (53) is made of metal and the step ring (17) is made of synthetic rubber [Fig. 12; Col. 6, lines 47-53; Col. 5, lines 30-37]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify EBINE, by having the step ring made of resin and the base roll made of metal, as suggested by FUJII, in order to facilitate high contact pressure [Col. 5, lines 44-46].
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over EBINE (JP 2003100286A, original and translation provided), hereinafter EBINE, in view of Takata (U.S. 5,197,808), hereinafter TAKATA, as evidenced by Hirose et al. (U.S. 6,390,683), hereinafter HIROSE.
Regarding claim 14, EBINE teaches all of the claimed limitations as stated above, but is silent as to: wherein the base roll comprises a first metallic material, and the step ring comprises a second metallic material that is softener the first metallic material. In the same field of endeavor, rolling, TAKATA teaches the base roll is metallic (shaft made of steel) and the step ring (inner ring) is metallic (aluminum alloy) [Col. 8, lines 17-23]. Aluminum alloy is a soft material [HIROSE: Col. 1, lines 20-25]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify EBINE, by having a softer metallic material on the step ring, as suggested by TAKATA, as it’s a known option in the art. See KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007) ("A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.").
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over EBINE (JP 2003100286A, original and translation provided), hereinafter EBINE, in view of Tatematsu et al. (U.S. 6,047,157), hereinafter TATEMATSU.
Regarding claim 15, EBINE teaches all of the claimed limitations as stated above, but is silent as to: wherein the base roll comprises a first metallic material, and the step ring comprises a second metallic material having a greater thermal expansion coefficient than a thermal expansion coefficient of the first metallic material. In the same field of endeavor, rolling, TATEMATSU teaches rings may be made of metal [Col. 12, lines 55-65]. TATEMATSU teaches the shaft may also be made of metal [Col. 12, lines 52-54]. TATEMATSU teaches the thermal expansion coefficient of the rings is greater than the thermal expansion coefficient of the shaft [Col. 9, lines 45-59]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify EBINE, by having the ring thermal expansion coefficient greater than the shaft thermal expansion coefficient, as suggested by TATEMATSU, in order to provide a secure seal [Col. 9, lines 51-53].
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over EBINE (JP 2003100286A, original and translation provided), hereinafter EBINE, in view of Souza (U.S. PGPUB 2014/0048164), hereinafter SOUZA.
Regarding claim 17, EBINE teaches: A roll manufacturing method of manufacturing a roll with a base roll having a predetermined diameter and having a base surface at an outer circumference thereof (EBINE teaches an electrode manufacturing method [Fig. 1; 0001]. EBINE teaches a roll with a base roll with a predetermined diameter and a base surface [Figs. 4-7; 0021-0022].); and a step ring being coupled to the outer circumference of the base roll (EBINE teaches a step ring (32a) coupled to the outer circumference of the base roll (32b) [Figs. 4-7; 0021-0022]. Furthermore, these recitations are part of the preamble of the claim. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.), comprising: preparing a base roll (EBINE teaches a base roll (32b) [Figs. 4-7; 0021-0022].); and disposing a step ring having a step surface with a diameter greater than a diameter of the base surface at the outer circumference of the base roll (EBINE teaches a step ring (32a) at the outer circumference of the base roll and the step surface has a diameter greater than a diameter of the base surface [Figs. 4-7; 0021-0022].), . . . .
EBINE is silent as to: wherein the step ring is formed by winding a band around the outer circumference of the base roll at least twice. In the same field of endeavor, wrapping, SOUZA teaches straps (20) wrapped twice around the pipe [Fig. 2B; 0065]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify EBINE, by wrapping the step ring around the base roller at least twice, as suggested by SOUZA, in order to be tightened up to a desired compressive force [0065]. Furthermore, wrapping twice around a cylindrical body is a known method in the art. See KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.").
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CAROLINE BEHA whose telephone number is (571)272-2529. The examiner can normally be reached MONDAY - FRIDAY 9:00 A.M. - 5:00 P.M.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ABBAS RASHID can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.B./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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