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 without traverse of the species which is the apparatus of Figure 1, corresponding to claims 3-5 and 12-19 in the reply filed on 06/01/2026 is acknowledged. Claims 1-2 and 6-7 are generic and are examined herein.
Claims 8-11 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6/01/2026.
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.
Claims 14-15 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 pre-AIA the applicant regards as the invention.
Claim 14, line 2 recites "the tape gripper". The term is not previously used in this claim or its parent claims(s), and does not have proper antecedent basis, making it unclear what structure is being referenced. For the purpose of examination, claim 14 is assumed to depend from claim 13, which provides antecedent basis for this term. Dependent claims fall herewith.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use a generic placeholder that is 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:
Tape supply unit (except for claims 12-15 which include structure for this unit)
Electrode plate supply unit (except for claims 16-19 which include structure for this unit)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (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 it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 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 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 1-7, 12-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hirai (US PG Pub 2014/0109396) in view of Oh (US Patent 8,137,492).
Regarding the claims and per the MPEP, the recitations in these claims of particular materials handled by the apparatus and/or particular manners of operating the apparatus do not limit the claimed apparatus. See MPEP § 2115. “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.” 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)). Lastly, the courts have held that the manner of operating the device does not differentiate apparatus claims from the prior art. "[A]pparatus claims cover what a device is, not what a device does." See MPEP §2114.II and Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Regarding claims 1, 12, and 16, Hirai teaches a tape attaching apparatus (abstract, Figs. 1-2, and other sections cited below) comprising:
a tape supply unit (referred to as third supply line 170 in para. 0037 wherein the strip-like separator falls under the BRI of a tape; see also note above that materials handled do not limit an apparatus) including a supply roller (172 in para. 0037) and cutter (176 in paras. 0030, 0037-0038), which is configured to supply a tape (paras. 0030, 0037);
an electrode plate supply unit (150 or 160 in para. 0034), which is configured to supply an electrode plate (paras. 0034-0035), and including a support configured to support the electrode plate at the tape attachment point (15 in para. 0019); and
a rotating head (as described in para. 0039 and comprising rotating table and components 30, 112, and 115) configured to receive the tape supplied from the tape supply unit and to rotate so as to attach the tape to the electrode plate supplied from the electrode plate supply unit (paras. 0039-0041).
Hirai does not teach that the electrode plate supply unit includes a supply roller and stop roller.
However, a supply roller and stop roller are conventional components in electrode plate supply units, as taught for example by Oh (supply roller 113 in Fig. 3A and col. 5, lines 28-44 and stop roller 163 in Fig. 3A and col. 8, line 65 through col. 9, line 10).
Per MPEP §2143.I, simple substitution of one known element for another to obtain predictable results is sufficient to establish a prima facie case of obviousness. See MPEP §2143.I (rationale B) and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
In view of Oh’s teachings and/or KSR rationale B, it would have been obvious to one of ordinary skill in the art at the time of filing to substitute Oh’s supply and stop rollers for Hirai’s electrode stocker (151 or 161) to predictably obtain suitable alternative means for supplying the electrode plates. Furthermore, one of ordinary skill in the art would have been additionally motivated to make this modification to obtain the benefit of convenient and easy means of resupplying electrode plates using a roll of plates which can be easily loaded onto the plate supply roller.
Regarding claim 2, Hirai teaches the rotating head is configured to receive the tape from the tape supply unit at a tape transfer point, and is configured to rotate in one direction to attach the tape to the electrode plate at a tape attachment point (paras. 0039-0041 and Fig. 2).
Regarding claim 3, Hirai teaches the rotating head is further configured to rotate in the one direction to return to the tape transfer point when the tape is attached to the electrode plate at the tape attachment point (paras. 0039-0041 and Fig. 2).
Regarding claim 4, Hirai teaches the rotating head is configured to adsorb the non-adhesive surface at the tape transfer point and to stop the adsorption of the non-adhesive surface at the tape attachment point (paras. 0039-0041 and Fig. 2).
Regarding claim 5, Hirai teaches the rotating head is configured to push the tape toward the electrode plate to facilitate adhesion of the adhesive surface to the electrode plate at the tape attachment point (paras. 0039-0041 and Fig. 2).
Regarding claim 6, Hirai teaches the rotating head comprises a plurality of rotating heads, and the plurality of rotating heads are arranged at equiangular intervals with respect to the same rotation center (paras. 0039-0041 and Fig. 2).
Regarding claim 7, Hirai teaches a rotation frame configured to support the plurality of rotating heads, the rotation from being configured to rotate about the rotation center (paras. 0039-0041 and Fig. 2).
Regarding claim 13, Hirai teaches the tape supply unit further comprises a tape gripper configured to grip an end portion of the tape fed from the tape supply roller (174 in para. 0037).
Regarding claim 14, Hirai teaches the rotating head is configured to adsorb the tape when the tape gripper grips the tape, and the tape cutter is configured to cut the tape when the tape is adsorbed to the rotating head (para. 0037).
Regarding claim 15, Hirai teaches the tape supply unit further comprises a tape tension roller configured to pull the tape so that tension of the tape is substantially maintained (172 in para. 0037).
Regarding claim 17, Oh teaches the electrode plate supply unit further comprises an electrode plate stopping roller configured to stop movement of the electrode plate passing through the tape attachment point when the tape is attached to the electrode plate (col. 8, line 65 through col. 9, line 10 and col. 11, lines 31-41).
Regarding claim 19, Oh teaches the electrode plate supply unit further comprises an electrode plate tension roller configured to pull the electrode plate so that tension of the electrode plate is substantially maintained (124 in Fig. 3A).
Allowable Subject Matter
Claim 18 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and all intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIM R SMITH whose telephone number is (303)297-4318. The examiner can normally be reached Mon-Fri. 9-6 MST.
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/JIMMY R SMITH JR./Examiner, Art Unit 1745
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