DETAILED ACTION
Election
Applicant’s election with traverse of Group II, claims 9-10, 13, 16, 42, 53, and 55-66 in the reply filed on July 21, 2025, is acknowledged. Claims 38 and 54 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The traversal is on the grounds that the claims recite similarly situated content, and that examination of these claims would not present an undue burden. This is not found persuasive because claim 38 recites a different embodiment from the elected grouping comprising distinct components, and claim 54 is directed to a method whose claims are subject to different criterion of assessment. As such, the requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 1 is objected to for matters of formatting. The final line invokes a “calendering, rolling, machine” but the use of commas between each of the three terms confuses the function of the feature. The specification, alternatively, refers to the same feature as the “calendering/rolling machine,” and the examiner suggests using this notation instead.
Claim Interpretation
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.
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) because the claim limitations use generic placeholders – machine and system, in this case – that are 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 limitations are:
The “coating machine” of claim 42;
The “solvent exhaust collection and recovery system” of claim 42;
The “calendering/rolling machine” of claim 42;
The “slurry mixing machine” of claim 53.
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Although paragraph [0027] of the specification addresses the feature of the coating machine (502), its structural content is not defined, thereby prompting 112(a) and (b) rejections.
Although paragraph [0027] of the specification addresses the feature of the solvent exhaust collection and recovery system, its structural content is not defined, thereby prompting 112(a) and (b) rejections.
The calendering/rolling machine will be interpreted as pressing rollers in accordance with paragraph [0027] of the specification.
Although paragraph [0028] of the specification addresses the feature of the slurry mixing machine (601), its structural content is not defined, thereby prompting 112(a) and (b) rejections.
If applicant does not intend to have these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (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 them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 42 and its dependents are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed had possession of the claimed invention. Claim 42 invokes a “solvent exhaust collection and recovery system,” which is being interpreted as a nonce term under 112(f). However, all recitations of this feature in the specification fail to identify a specific structure to perform the function of exhausting and recovering a solvent. Without the disclosure of any structure, materials, or acts for performing the enumerated function, one cannot conclude that the inventor was in possession of the claimed invention.
Separately, claim 42 invokes a “coating machine,” which is being interpreted as a nonce term under 112(f). However, all recitations of this feature in the specification fail to identify a specific structure to perform the function of coating. Without the disclosure of any structure, materials, or acts for performing the enumerated function, one cannot conclude that the inventor was in possession of the claimed invention.
Claim 53 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed had possession of the claimed invention. This claim invokes a “slurry mixing machine,” which is being interpreted as a nonce term under 112(f). However, all recitations of this feature in the specification fail to identify a specific structure to perform the function of mixing a slurry. Without the disclosure of any structure, materials, or acts for performing the enumerated function, one cannot conclude that the inventor was in possession of the claimed invention.
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.
Claim 42 and its dependents are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 42 invokes a “solvent exhaust collection and recovery system,” which is being interpreted as a nonce term under 112(f). However, the written description fails to disclose the corresponding structure, materials, or acts for performing the attendant function of recovering a solvent. Because the “solvent exhaust collection and recovery system” lacks an associated structure, the metes of this feature are indeterminate. Thus, claim 42 is indefinite. To expedite prosecution, the examiner will accept the prior art disclosure of a means for evacuating a solvent from a dryer chamber as satisfying the contested limitation.
Separately, claim 42 invokes a “coating machine,” which is being interpreted as a nonce term under 112(f). However, the written description fails to disclose the corresponding structure, materials, or acts for performing the attendant function of coating. Because the “coating machine” lacks an associated structure, the metes of this feature are indeterminate, rendering the claim indefinite. To expedite prosecution, the examiner will accept the prior art disclosure of a means for coating as satisfying the contested limitation.
Claim 53 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. This claim invokes a “slurry mixing machine,” which is being interpreted as a nonce term under 112(f). However, the written description fails to disclose the corresponding structure, materials, or acts for performing the attendant function of mixing a slurry. Because the “slurry mixing machine” lacks an associated structure, the metes of this feature are indeterminate. Thus, claim 53 is indefinite. To expedite prosecution, the examiner will accept the prior art disclosure of a means for mixing a slurry as satisfying the contested limitation.
Claim Rejections - 35 USC § 102
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 9-10, 13, 16, 42, 53, and 55-66 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gonzalez et al., US 2002/0170169.
Claim 42: Gonzalez discloses a system for fabricating a lithium-ion cell, comprising:
A means for coating (10), i.e., a reservoir having a slotted die at its outlet, configured to apply a powder to a metal foil ([0019], Fig. 1);
A dryer chamber (16) configured with a heater, i.e., an “oven,” and a means of exhaust [0026];
A plasma chamber (176) coupled to the dryer chamber and configured to treat the substrate with a treating material ([0050-51], Fig. 7);
A roller (38), i.e., the “calendering machine,” configured to process the coated metal foil [0031].
Regarding those limitation directed to the contents of the “cathode powder” to be dispersed by the coating machine, the examiner observes that the operator can simply provide the enumerated materials to Gonzalez’s coating machine to generate the claimed powder. It should be noted that demonstrating the prior art’s capacity to reproduce a claimed functional recitation is sufficient to satisfy the threshold for rejection in apparatus claims, since it has been held that a recitation drawn to the intended manner of employing a claimed apparatus does not differentiate said apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex parte Masham, 2 USPQ2d 1647 (1987)).
Similarly, regarding the recitation of the “nitrogen-containing reactive gas,” the operator can simply provide these raw materials to Gonzalez’s plasma chamber.
Claims 9-10, 13, 60: These claims recite the type of gas provided to the substrate during processing, but this is a matter of intended use. Gonzalez’s system is structurally capable of providing the claimed gas species under the direction of the operator – it has been held that a recitation drawn to the intended manner of employing a claimed apparatus does not differentiate said apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex parte Masham, 2 USPQ2d 1647 (1987)).
Claims 16, 66: Gonzalez executes the plasma process at “standard atmospheric pressure” [0050].
Claim 53: Gonzalez provides a dispenser comprising a reservoir [0019]. This reservoir can be used by the operator to perform the claimed function of mixing a powder with a solvent.
Claims 55-59, 61-65: These claims recite various metal composites provided to the substrate by the coating machine, but this is a matter of intended use. The operator can feed these materials to the substrate via Gonzalez’s coating machine, whereby the demonstration of the prior art’s capacity to reproduce a functional limitation is sufficient to satisfy the threshold for rejection – it has been held that a recitation drawn to the intended manner of employing a claimed apparatus does not differentiate said apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex parte Masham, 2 USPQ2d 1647 (1987)).
Conclusion
The following prior art is made of record as being pertinent to Applicant's disclosure, yet is not formally relied upon: Nanba et al., US 2014/0295068. Nanba provides a system for fabricating a lithium-ion cell comprising a coating machine (314a) which can apply a cathode powder, a dryer chamber (321) to heat the powder, and a calendering machine (328) configured to process the coated metal foil.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN K FORD whose telephone number is (571)270-1880. The examiner can normally be reached on 11-7:30 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Parviz Hassanzadeh, can be reached at 571 272 1435. The fax phone number for the organization where this application or proceeding is assigned is 571 273 8300.
/N. K. F./
Examiner, Art Unit 1716
/PARVIZ HASSANZADEH/ Supervisory Patent Examiner, Art Unit 1716