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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-5) in the reply filed on 02/05/2026 is acknowledged.
Claims 6-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II (method of using), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/05/2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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 limitation(s) uses 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 limitation(s) is/are:
Plasma treatment unit (discharge electrode, power source, gas supply unit, and/or exhaust line, para. [0063]) in at least claims 1-5.
Gas supply unit (gas supply source(s), para. [0067]) in at least claims 4-5.
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 § 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.
(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.
Claim(s) 1, 3 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US 20210002758 to Sakamoto.
Claim 1: Sakamoto discloses a vacuum treatment apparatus, comprising: a deposition unit (20 [lithium source], Fig. 5) that includes an evaporation source (20) including a lithium metal and forms a lithium metal film on a base material (60 [film], para. [0107]); and a plasma treatment unit (51B/57/58, Fig. 7) that exposes a surface of the lithium metal film formed on the base material to a discharge gas obtained by discharging a gas containing carbon and oxygen, and forms a lithium carbonate layer on the surface (para. [0128]).
Claim 3: The apparatus of Sakamoto discloses wherein the base material (60, Fig. 5, Sakamoto), the vacuum treatment apparatus further comprises: a wind-off roller (31 [payout roller]) that winds off the base material (60); a wind roller (32 [take-up roller]) that winds the base material (60); and a main roller (12 [second roller]) provided between the wind-off roller (31) and the wind roller (32) in a conveyance direction in which the base material (60) is conveyed, and winds and conveys the base material, and the plasma treatment unit (51B/57/58, Fig. 7) is disposed between the main roller (12) and the wind roller (32) in the conveyance direction (para. [0061-0063]).
Regarding the limitation that the base material is foil-like (para. [0064]), the recitations tie the structure of the apparatus to a substrate that may be worked upon by the apparatus, but is notably not part of the apparatus; and therefore cannot be used to define over the prior art apparatus. The courts have held that inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. MPEP 2115.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto as applied to claims 1, 3 above, and further in view of US 20230191732 to Suzuki.
Claim 2: The apparatus of Sakamoto discloses wherein the lithium carbonate layer is formed on the surface while the base material (60, Fig. 5, Sakamoto) is being conveyed from the deposition unit (20) toward the plasma treatment unit (51B/57/58).
Regarding the limitations above, it is noted that they are drawn to an intended use of the apparatus, as such, the courts have held that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. MPEP 2114 II.
However Sakamoto does not explicitly disclose a conveyance speed at which the base material is conveyed is 1 m/min or more.
Suzuki teaches a device (10, Fig. 4) is produced a conveyance speed at which the base material (11 [substrate]) is conveyed is 1 m/min or more (para. [0128] where multiple speeds are disclosed which overlap the claimed range) for the purpose of suitably setting a line speed during production (para. [0128]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the conveyance speed taught by Suzuki with motivation to suitably set a line speed during production.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto as applied to claims 1, 3 above, and further in view of US 20100300357 to Yamamoto.
Claim 4: The apparatus of Sakamoto discloses wherein the plasma treatment unit (51B/57/58, Fig. 7, Sakamoto) includes at least one discharge electrode (not shown but disclosed as plasma generation means, para. [0128]) that extends in a width direction of the base material and faces at least one of a first main surface of the base material or a second main surface opposite to the first main surface (para. [0127-0128]), a gas supply unit (57 [gas supply mechanism]) that supplies the gas to an internal space of the plasma treatment unit (51B/57/58, para. [0126]),
However Sakamoto does not explicitly disclose and a power supply that supplies discharge power to the discharge electrode.
Yamamoto discloses and a power supply (31 [power supply], Fig. 1) that supplies discharge power to the discharge electrode (27 [discharge electrode]) for the purpose of generating a plasma in the chamber (para. [0033]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the power supply coupled to discharge electrode as taught by Yamamoto with motivation to generate a plasma in the chamber.
Claim 5: The apparatus of Sakamoto in view of *** discloses wherein a surface of the discharge electrode (51B, Fig. 7, Sakamoto) includes C, Mg, Al, Si, Ti, Fe, Ni, Zn, Ag, Sn, and an alloy of those metals (para. [0127-0128]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20220162741 discloses similar deposition apparatus (100, Fig. 1) with a deposition unit (120 [film formation unit]), plasma generator (SO [gas supplier] of 20, para. [0084]), and discharge electrode (172) and power supply (124).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Charlee J. C. Bennett whose telephone number is (571)270-7972. The examiner can normally be reached M-Th 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 5712725166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Charlee J. C. Bennett/Primary Examiner, Art Unit 1718
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