www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/442,832
`
`09/24/2021
`
`Tatsuya Masada
`
`P210859US00
`
`5947
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`HARM,NICKOLAS R
`
`1745
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/21/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`171442, 832
`Masadaet al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`Nickolas R Harm
`1745
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 4/26/2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`
`
`Disposition of Claims*
`1-13 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 11-13 is/are withdrawn from consideration.
`() Claim(s)__is/are allowed.
`Claim(s) 1-3 and 5-10 is/are rejected.
`)
`Claim(s) 4 is/are objected to.
`(J Claim(s
`are subject to restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`Application Papers
`10)C) The specification is objected to by the Examiner.
`11) The drawing(s)filed on 9/24/2021 is/are: a)f¥) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`__c)LJ None ofthe:
`b)LJ Some**
`a)¥) All
`1.{¥) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) [[] Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240609
`
`

`

`Application/Control Number: 17/442,832
`Art Unit: 1745
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA orAIA Status
`
`The presentapplication,filed on or after March 16, 2013, is being examined under the first
`
`inventorto file provisions of the AIA.
`
`Election/Restrictions
`
`Applicant’s election without traverse of Group I, claims 1-10, in the reply filed on 4/26/2024is
`
`acknowledged.
`
`Claims 11-13 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn
`
`toa nonelected invention, there being no allowable generic or linking claim. Election was made without
`
`traverse in the reply filed on 4/26/2024.
`
`Claim Interpretation
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f} Element in Claim fora Combination. — An elementina claim fora combination maybe 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-AlA35 U.S.C. 112, sixth paragraph:
`
`An elementina 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.
`
`

`

`Application/Control Number: 17/442,832
`Art Unit: 1745
`
`Page 3
`
`The claimsin this application are given their broadest reasonable interpretation using the plain
`
`meaning of the claim languagein light of the specification as it would be understood by one of ordinary
`
`skillin the art. The broadest reasonable interpretation of aclaim element (alsocommonly referred to as
`
`a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AlA 35
`
`U.S.C. 112, sixth paragraph,is invoked.
`
`As explained in MPEP § 2181, subsection |, claim limitations that meet the following three-prong
`
`test will be interpreted under 35 U.S.C. 112(f) or pre-AlA 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 ageneric placeholder (also calleda nonce termor 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 alwayslinked by the transition word “for” (e.g., “means for”) or another linking
`
`word or phrase, such as “configured to” or “sothat”; 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-AlA 35
`
`U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C.
`
`112(f) or pre-AlA 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-
`
`

`

`Application/Control Number: 17/442,832
`Art Unit: 1745
`
`Page 4
`
`AIA35 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-AlA 35 U.S.C. 112, sixth paragraph, except as otherwise indicatedin 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.
`
`The limitation “cutting means”recites the generic structure “means” coupled with the
`
`functional modifier “to cut” without reciting sufficient structure to perform the function claimed. This
`
`will be interpreted as: structure 14, shownin applicant’s figure 1, and equivalents thereof.
`
`Claim Rejections - 35 USC § 103
`
`Inthe 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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`basis (i.e., changing from AIA to pre-AlA) 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 forthin 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.
`
`

`

`Application/Control Number: 17/442,832
`Art Unit: 1745
`
`Page5S
`
`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 claimsat issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`This application currently names joint inventors. In considering patentability of the claims the
`
`examiner presumesthat the subject matter of the various claims was commonly owned as of the
`
`effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised
`
`of the obligation under 37 CFR 1.56 to point out the inventor and effectivefiling dates of each claim that
`
`was not commonly ownedas of the effective filing date of the later invention in order for the examiner
`
`to consider the applicability of 35 U.S.C. 102(b)(2}(C) for any potential 35 U.S.C. 102(a)(2) prior art
`
`against the later invention.
`
`Claim(s) 1-3 and 5-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over SUGIHARA
`
`(JP 2011-086507; citations to translation provided) in view of NISHIHARA etal. (JP 2019-021607;
`
`citations to translation provided).
`
`Regarding claim1, SUGIHARAteachesa first laminating drum 1 that can laminate a separator
`
`single plate and a first laminating stage 4 on which cut laminate portions can be placed (paras. 13 and
`
`16; fig. 1). SUGIHARA does not teacha second laminating drum and stage. NISHIHARA teaches another
`
`method of continuously laminating electrodes wherein plural laminating members are utilized to add
`
`additional layers to the electrode laminate (para. 4).
`
`It would have been obvious to oneof ordinaryskill
`
`in the art at the time of the invention to utilize additional laminating drums and respective stages in
`
`order to add additional electrode layers during continuous processing, and duplication of apparatus
`
`

`

`Application/Control Number: 17/442,832
`Art Unit: 1745
`
`Page 6
`
`components has been held perse obvious. (See MPEP 2144.04 VI B). In this case it obviously allows
`
`faster processing of materials.
`
`Regarding claims 2-3, it would have been obvious to one of ordinary skill in the art at the time of
`
`the invention to rotate two separate laminating drums in either the same or opposite directions
`
`depending upon which side of the sheet material is being laminated.
`
`Regarding claim 5-9, SUGIHARAteaches cutting means 3 (para. 15; fig. 1) and is capable of
`
`performing the function on materials claimed. MPEP 2115 - Claim analysis is highly fact-dependent. A
`
`claim is only limited by positively recited elements. Thus, "[i]Jnclusion of the material or article worked upon by
`
`a structure being claimed does notimpart patentability to the claims.” Inre Otto, 312 F.2d 937, 136 USPQ 458,
`
`459 (CCPA 1963);see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)
`
`Regarding claim 10, SUGIHARA teachesthefirst laminating drum comprises multiple heads that
`
`rotate with the drum and suction hold the laminate on an outer peripheral surface (para. 14), andit
`
`would have been obvious to one of ordinaryskill in the art at the time of the invention to utilize the
`
`samefor the second laminating drum for the same reason.
`
`Allowable Subject Matter
`
`Claim 4 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 any intervening
`
`claims.
`
`The following is a statement of reasonsfor the indication of allowable subject matter: The prior
`
`art of record does not teach orfairly suggest an apparatusas claimed wherein the first laminating drum
`
`can carrythe cut laminated body into the second laminating drum.
`
`Conclusion
`
`

`

`Application/Control Number: 17/442,832
`Art Unit: 1745
`
`Page 7
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to Nickolas R Harm whose telephone number is (571)270-7605. The examiner can
`
`normally be reached 10:00-6:00.
`
`Examiner interviews are available via telephone,in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reachthe examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Phillip Tucker can be reached on 571-272-1095. The fax phone number for the organization wherethis
`
`application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Center is available to registered users. To
`
`file and manage patent submissions in Patent Center,visit: https://patentcenter.uspto.gov.Visit
`
`https ://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
`
`https ://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional
`
`questions, contact the Electronic Business Center (EBC) at 866-217-9197(toll-free). If you would like
`
`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
`
`571-272-1000.
`
`/NICKOLAS R HARM/
`Examiner, Art Unit 1745
`
`/PHILIP C TUCKER/
`Supervisory Patent Examiner, Art Unit 1745
`
`