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 .
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
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.
Claims 1-2, 11, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bercovitz (FR-933826) in view of Nakamoto (US-20240198405), using the applicant provided original document and attached translation.
Regarding claim 1, Bercovitz teaches:
A press mold apparatus for manufacturing a product in which a round portion is formed in an uncoated region, the press mold apparatus for manufacturing the product comprising (Page 2):
a base mold (Pages 2-3; Fig. 1) including:
a seating surface (Page 3; Fig. 7, #7) on which the substrate is seated (Page 5; Fig. 7, #31), and
a first pressing portion pressing a first surface of the round portion of the substrate (Page 5; Fig. 7, #8);
a movable mold configured to be lifted up and down above the base mold and including (Page 3; Fig. 7, #2):
a pressing surface that presses the substrate Pages 3-5; Figs. 7-8, #12), and
a second pressing portion pressing a second surface opposing the first surface of the round portion of the substrate (Pages 3-5; Figs. 7-8, #13); and
a driver configured to drive the movable mold (Pages 2-3; Fig. 7, #3).
Bercovitz does not teach:
wherein the product/substrate are an electrode assembly.
However, Nakamoto, in a similar field of endeavor, a press molding apparatus, teaches:
wherein the product/substrate are an electrode assembly ([0022]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the product/substrate of Bercovitz to incorporate the teachings of Nakamoto and have them be an electrode assembly. The purpose, as stated by Nakamoto, being that the reference electrode is evenly formed ([0073]).
Regarding claim 2, Bercovitz in view of Nakamoto teaches the limitations of claim 1, which claim 2 depends on. Bercovitz further teaches:
a first insertion groove is formed on the seating surface into which the first pressing portion is inserted (Page 3; Fig. 7, #9).
Regarding claim 11, Bercovitz in view of Nakamoto teaches the limitations of claim 1, which claim 11 depends on. Bercovitz further teaches:
a second insertion groove into which the second pressing portion is inserted is formed on the pressing surface. While Bercovitz does not teach the second insertion groove for the second pressing portion, it does teach one for the first pressing portion, see the rejection of claim 2 above. Because there is no functional difference between the insertion groove on either surface, it would be obvious to one of ordinary skill in the art to modify Bercovitz and use duplication of parts to teach the same groove for the second pressing portion, in the absence of a showing of unexpected results or criticality.
In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
The court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
Regarding claim 20, Bercovitz in view of Nakamoto teaches the limitations of claim 1, which claim 20 depends on. Bercovitz further teaches:
the base mold is installed on a base frame (Pages 2-3; Fig. 1),
the movable mold is installed on a movable frame (Page 3; Fig. 7, #2), and
the driver comprises a cylindrical member installed between the base frame and the movable frame (Pages 2-3; Fig. 7, #3).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Bercovitz (FR-933826) in view of Nakamoto (US-20240198405), as applied to claim 2 above, as further evidenced by Kato (US-20120251858), using the applicant provided original document and attached translation.
Regarding claim 9, Bercovitz in view of Nakamoto teaches the limitations of claim 2, which claim 9 depends on. Bercovitz as evidenced by Kato further teaches:
the first pressing block is fixed with adhesive to an inside area of the first insertion groove. While Bercovitz does not teach how the pressing block is fixed to the inside of the insertion groove, it would be obvious to one of ordinary skill in the art to fix it to the bottom of the inside groove using an adhesive, as using adhesives to fix parts together is well known in the art, as evidenced by Kato (Kato; [0249]) and therefore this modification would be obvious to one of ordinary skill in the art in the absence of a showing of unexpected results.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bercovitz (FR-933826) in view of Nakamoto (US-20240198405), as applied to claim 2 above, and further in view of Nakano (US-20230061164), using the applicant provided original document and attached translation.
Regarding claim 10, Bercovitz in view of Nakamoto teaches the limitations of claim 2, which claim 10 depends on, but does not teach the first pressing block being detachably fixed inside the first insertion groove by a bolt member. However, Nakano, in a similar field of endeavor, a press mold apparatus for manufacturing an electrode assembly, teaches:
the first pressing block is detachably fixed inside the first insertion groove by a bolt member ([0070] – [0071]). While Nakano does not teach the pressing block being detachably fixed, making a pieces separable does not add patentable weight to a limitation if it does not change the function or structure of the invention. Therefore it would be obvious to one of ordinary skill in the art to make the pressing block detachably fixed in the absence of a showing of criticality or unexpected results.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the first pressing block of Bercovitz in view of Nakamoto to incorporate the teachings of Nakano and attach it to the first insertion groove using a bolt. The purpose, as stated by Nakano, being the pressure-applying members 40 are composed of a bolt ([0070]).
In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is "Press fitted" and therefore not manually removable. The court held that "if it were considered desirable for any reason to obtain access to the end of [the prior art's] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose:'
Allowable Subject Matter
Claims 3 and 12 are objected to as being dependent upon rejected base claims, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 4-8 and 13-19 are objected to by virtue of dependence.
The following is a statement of reasons for the indication of allowable subject matter: Bercovitz does teach the first insertion grooves (Pages 3-5; Fig. 7, #8), and can teach the second insertion groove with the use of case law, see the rejection of claim 11 above, but doesn’t teach the pressing block protruding from the groove. However, the protrusion may be taught using a change of shape case law, but Bercovitz still does not teach the tape member attached to the protruded surface. There is no combination of Bercovitz, Nakamoto, or Nakano which do teach the insertion grooves with the pressing blocks protruding from the groove and having tape attached to the protruded surface. Because there is no better teaching or combination in the art of this combination of limitations, the subject matter of claims 3 and 12 are allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrien J Bernard whose telephone number is (571)272-1384. The examiner can normally be reached M-R, from 7:30a.m.-4:30p.m..
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/A.B./Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
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