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Claims 12-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim.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 January 22, 2026.
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.
Claims 6-9 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites “the receiving region formation part includes a plurality of middle regions located between the plurality of holes and a partition configured to separate the plurality of holes from the plurality of middle regions”. It is unclear as to whether the applicant is referring to the first receiving region formation part, the second receiving region formation part; or both the first and second receiving region formation parts.
Claim 6 recites the limitation " the receiving region formation part " in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation " the plurality of first middle regions" in line 4 of the claim. There is insufficient antecedent basis for this limitation in the claim.
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) 1-7, 10 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marks et al. (US 2014/0150617 A1).
Regarding the intended use limitation “for forming a pattern on an exterior material of a battery” in the preamble of the claim, it is noted that the prior art used in the rejection is capable of being used for this function. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also MPEP § 2112 - § 2112.02.
Re Claim 1, Marks discloses an apparatus 10 for forming a pattern on an exterior material, comprising: a plate 20 that has a plurality of holes 48 and includes a receiving region formation part 34 configured to form a receiving region in an exterior material in a longitudinal direction and a non-receiving region formation part 52 configured to form a non-receiving region enclosing the receiving region (See figures 2 and 4); and a punch assembly 14, 44 that has a plurality of punches 44 corresponding to the plurality of holes 48 inserted into the plurality of holes 48 such that the plurality of punches 44 penetrate through the plate 20 (Pars. 0013-0023, Figs. 1-4).
Re Claim 2, Marks discloses the plate 20 is formed in a stepped structure in which the receiving region formation part 34 has a different height from the non-receiving region formation part 52.
Re Claim 3, Marks discloses the receiving region formation part 34 is located at a central portion of the plate 20 (See figures 2 and 4), and the non-receiving region formation part 52 is located at a peripheral portion of the plate 20 (See figures 2 and 4).
Re Claim 4, Marks discloses the plate 20 includes a boundary surface corresponding to the stepped structure between the receiving region formation part 34 and the non-receiving region formation part 52, and the receiving region formation part 34 has a different width from the non-receiving region formation part 52 by the boundary surface (See figures 2 and 4).
Re Claim 5, Marks discloses the plate 20 includes: a lower plate 22 including a first receiving region formation part (the area enveloped by border portion 50) and a first non-receiving region formation part 50 which form a concave stepped structure (See figure 4); and an upper plate 20 formed corresponding to the lower plate 22 and including a second receiving region formation part 34 and a second non-receiving region formation part 52 which form a convex stepped structure (See figure 4). Note: the Examiner construes the lower portion of non-receiving region formation part 52 to form a convex stepped structure, as said region protrudes downward toward the lower plate 22.
Re Claim 6, Marks discloses the second receiving region formation part 34 includes a plurality of middle regions (See figure 4, two middle regions are formed) located between the plurality of holes 48 and a partition 30 configured to separate the plurality of holes 48 from the plurality of middle regions (See figures 2 and 4).
Re Claim 7, Marks discloses the plurality of holes 48 are formed in a penetration structure 32 to allow the plurality of punches 44 to be inserted into the plurality of holes 44, and the plurality of middle regions are formed in a non-penetration structure 34 (See figures 2 and 4).
Re Claim 10, Marks discloses the plurality of punches 44 is formed corresponding in a pattern shape to the plurality of holes 48 to allow the plurality of punches 44 to be inserted into the plurality of holes 48, and an end region of each of the plurality of punches 44 in contact with the exterior material is tapered in a thickness direction (Pars. 0013, 0014, and 0021, Figs. 2 and 4).
Re Claim 11, Marks discloses the plurality of punches 44 includes: a first type punch 44 including protrusions at both ends of the end region (See figure 4); and a second type punch 44 including the end region tapered in a width direction (See figure 4).
Conclusion
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/BAYAN SALONE/ Primary Examiner, Art Unit 3726
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