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 .
Response to Amendment
The amendment to the claim languages filed on 2/20/26 has been fully considered and made of record. Claims 1-25 are now pending of record.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-25 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-18, 21, 24-32, 37-42 of copending Application No. 17/422966 (hereinafter the ‘266 reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully claimed in the ‘266 reference application since the ‘266 and the application are claiming common subject matter, as follows:
The ‘266 (reference application) claims, regarding,
Claim 1. A method of manufacturing a dry electrode via amulti-roll calender system, comprising:
providing the multi-roll calender system including a first calendering roll, a second calendering roll downstream from the first calendering roll and a third calendering roll downstream from the second calendering roll, wherein a first nip is formed between the first calendering roll and the second calendering roll, and a second nip is formed between the second calendering roll and the third calendering roll (compare claim 16, lines 1-5, and line 13, 16 of the ‘266);
rotating the first calendering roll at a first rotational velocity (compare claim 16, line 6);
rotating the second calendering roll at a second rotational velocity that is greater than the first rotational velocity (compare claim 16, line 7);
rotating the third calendering roll at a third rotational velocity that is greater than the second rotational velocity (compare claim 16, line 8);
delivering a first dry electrode material by the multi-roll calender system to the first nip to form a dry electrode film (compare claim 16, lines 14-15);
delivering the dry electrode film by the multi-roll calender system to the second nip to form a first tuned dry electrode film (compare claim 16, lines 12-13); and
laminating the first tuned dry electrode film to a current collector to form the dry electrode (compare claim 16, lines 16-17).
The ‘266 (reference application) further claims, regarding,
Claim 2, wherein the first dry electrode material is in free- flowing particle form (compare claim 17 of the ‘266).
Claim 3, wherein the dry electrode film adheres to the second calendering roll during the delivering of the first dry electrode material to the first nip (compare claim 18).
Claim 4, wherein a diameter of the first calendering roll is substantially equal to a diameter of the second calendering roll and the diameter of the second calendering roll is substantially equal to a diameter of the third calendering roll (compare claim 37)
Claim 5, wherein a linear velocity of an outer surface of the second calendering roll is greater than a linear velocity of an outer surface of the first calendering roll, and a linear velocity of an outer surface of the third calendering roll is greater than the linear velocity of the outer surface of the second calendering roll (compare claim 38), respectively.
As applied to claim 6, (compare claim 39).
As applied to claims 7-10 refer to claims 22, 42, 26 of the ‘266.
As applied to claims 11-12 refer to claims 27-28 of the ‘266.
As applied to claims 13-15, refer to claims 40 and 29-30 of the ‘266.
As applied to claims 16-17, refer to claims 41-42 of the ‘266.
As applied to claims 18-19, refer to claims 31-32 of the ‘266.
Limitations of claims 20-25 regarding, providing the first dry electrode material to the multi-roll calender system by scatter coating and/or moving belts system or rewind roll of claim above are old in area of calendering system. Therefore, above limitations is/are not inventive elements feature when departing from the ‘266 and common general knowledge without exercising any inventive skills.
*This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Note: A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory provisional double patenting above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MINH N TRINH whose telephone number is (571)272-4569. The examiner can normally be reached M-TH ~5:00-3:30.
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/MINH N TRINH/ Primary Examiner, Art Unit 3729 mt