DETAILED ACTION
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
Applicant’s election of Group I, Claims 1-6, drawn to an electrode plate manufacturing apparatus, in the reply filed on 05/09/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 7-9 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
The information disclosure statement (IDS)s submitted on 10/10/2024 and 07/16/2025 have been considered by the examiner.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Evangelista et al. (US 2013/0316185A1).
With respect to claim 1, Evangelista teaches an apparatus (Fig. 24) comprising:
a first laser radiation unit (“first laser source 100”) configured to radiate a first laser beam (“first laser beam 102”) in a first direction (−Z-axis direction) perpendicular to a film to notch at least a portion of the film (“Laser beam 102 is shown here impinging the edge region 20 at an angle of incidence that is approximately zero (normal to the side surface)”, “the first laser beam 102 moves along the edge region 20 (x-axis direction) and removes material primarily from the side surface 24 of the sheet metal piece”, Pa [0065]; “At this stage, molten material struck by the first laser beam 102 can flow or splatter away from the weld notch 30 due to the rapid thermal expansion at the ablasion site.”, Pa [0066]); and
a second laser radiation unit (“second laser source 100’ ”) configured to radiate a second laser beam (“second laser beam 102′ ”) to a notched area of the film, which is notched by the first laser radiation unit, to remove a material of a surface of the film melted by the first laser beam (“laser beam 102′ impinges the edge region according to a non-zero angle of incidence α between approximately 15°-75° (e.g., about 45°).”, “the second laser beam 102′ follows behind and removes material from the edge surface 28.”, Pa [0065]; “The second laser beam 102′ may be directed with any suitable angle of incidence α, zero or non-zero, at the protrusion 114 in order to remove it from the edge region 20.”, Pa [0066]).
It is noted that “electrode plate manufacturing” in line 1 is an intended use since the apparatus taught by Evangelista is capable of being used in the claimed operation. IT has been held that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim). MPEP 2111.02.
Furthermore, it is noted that “an electrode film located between rollers of a transfer device” in lines 3-4 is an intended use since the apparatus taught by Evangelista is capable of processing the claimed material. It has been held that “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
With respect to claim 2, Evangelista as applied to claim 1 above teaches that the second laser radiation unit is spaced apart from the first laser radiation unit in a second direction (−X-axis direction) and radiates the second laser beam at an angle inclined with respect to the first direction (“Laser beam 102 is shown here impinging the edge region 20 at an angle of incidence that is approximately zero (normal to the side surface), while laser beam 102′ impinges the edge region according to a non-zero angle of incidence α between approximately 15°-75° (e.g., about 45°).”, Pa [0065] and Fig. 24).
With respect to claim 3, Evangelista as applied to claim 1 above teaches that the second laser radiation unit radiates the second laser beam at an angle of 1° to 179° with respect to the first direction (“laser beam 102′ impinges the edge region according to a non-zero angle of incidence α between approximately 15°-75° (e.g., about 45°).”, Pa [0065]).
With respect to claim 4, Evangelista as applied to claim 3 above teaches that the second laser radiation unit sets a radiation path of the second laser beam for removing the material melted by the first laser beam (“The second laser beam 102′ may be directed with any suitable angle of incidence α, zero or non-zero, at the protrusion 114 in order to remove it from the edge region 20.”, Pa [0066] and Fig. 25).
With respect to claim 5, Evangelista as applied to claim 1 above teaches that the film (“sheet metal piece 12”) includes an uncoated part (“the base material layer 14”) and coated parts (“intermediate material layers 16, and coating material layers 18”) arranged to face each other on both surfaces of the uncoated part (“the base material layer 14 is the central or core material layer (e.g., a steel core) and is sandwiched between the intermediate material layers 16 and the coating material layers 18”, Pa [0039] and Fig. 3), and the first laser beam is radiated in the first direction to remove the coated parts and the uncoated part (“For sheet metal pieces that include base, intermediate, and coating material layers 14, 16, 18, such as that shown in FIG. 3, the weld notch 30 may be formed by removing all or some of the coating material layer 18, all or some of the intermediate material layer 16, and/or some of the base material layer 14 along the edge region 20.”, Pa [0055]).
It is noted that “the electrode film includes…” in lines 1-3 is an intended use since the apparatus taught by Evangelista is capable of processing the claimed material. It has been held that “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Furthermore, it is noted that the limitation “the first laser beam is radiated in the first direction to remove the coated parts and the uncoated part” in line 3-4 is an intended use since the apparatus taught by Evangelista is capable of performing the claimed operation. It has been held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987).
With respect to claim 6, Evangelista as applied to claim 5 above teaches that the second laser radiation unit radiates the second laser beam to be inclined with respect to a second direction (−X-axis direction) toward a side of the electrode film to remove the melted material remaining on the uncoated part and the coated parts (“If the protrusion 114 includes material from the material layers 16, 18, then any subsequently formed weld joint along edge region 20 could become contaminated or compromised. The second laser beam 102′ may be directed with any suitable angle of incidence α, zero or non-zero, at the protrusion 114 in order to remove it from the edge region 20.”, Pa [0066]).
It is noted that the limitation “remaining on the uncoated part and the coated parts” in line 4 is an intended use since the apparatus taught by Evangelista is capable of performing the claimed operation. It has been held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUNJU KIM whose telephone number is (571)270-1146. The examiner can normally be reached 8:00-4:00 EST M-Th; Flexing Fri.
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/YUNJU KIM/Primary Examiner, Art Unit 1742
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