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 .
Remarks
Claims 1 and 8 are amended, claims 2-6 and 9-13 are as previously presented, claims 7 and 14 are canceled. Claims 1-6 and 8-13 are presented examined.
Status of objections and rejections
The rejection below has been modified as necessitated by the applicant’s amendments.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that 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 effective filing dates of each claim that was not commonly owned as 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) 1-5 and 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Batey (WO 0077868 A1).
Regarding claim 1 and 8, Batey discloses a zinc foil, having a zinc crystal grain size of 0.2 µm or more and 50 µm or less [page 10 line 1-7, Batey discloses a grain microstructure of an average grain size (“crystal grain size” of more preferably 3-50 µm and most preferably 10 µm, which falls entirely within the claimed range and therefore anticipates the claimed range].
Batey is explicitly silent to the density of the zinc foil. However, Batey discloses that one may adjust the thickness of the zinc foil to a desired thickness [page 10 line 26-30 – page 11 line 1-2].
Prior to the effective filing date, one of ordinary skill within the arts would appreciate the following:
The true density (density excluding voids or nonporous) of zinc is 7.1 g/cm3. This is the maximum density a zinc sheet may achieve.
The zinc foil disclosed by Batey has less than 1500 ppm of metal additives, which means the mass% of zinc is >99.85% [page 12, line 10-15, Batey]. Therefore, the true density (or maximum density) of this zinc foil is ~7.1 g/cm3.
Batey discloses that in producing the zinc foil one can reduce the thickness of the zinc sheet [page 10 line 26-30 – page 11 line 1-2, Batey]. Upon producing the zinc foil voids will be present in the material. One of ordinary skill in the art would appreciate that by reducing the thickness of the sheet using the rolling process of Batey one effectively reduces the presence of voids thereby increasing the apparent density of the sheet. Up to, but not exceeding the true density of the material. Therefore Batey teaches an apparent density of more than 0 and equal to or less than 7.1 g/cm3. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05). Batey teaches that the thickness, and therefore the apparent density, effects the end use to prepare a foil free from cracking, desired thickness and bending tolerances according to a desired end use (pg. 11, lines 1-20).
Batey further discloses that one may have an initial thickness reduction of 10-20% [page 10 line 26-29, Batey], a recrystallization step [page 10 line 29-30 – page 11 line 1, Batey], followed by repeating thickness reduction and recrystallization until a desired thickness is reached as determined by the end use of the foil [page 11 line 1-4, Batey].
Batey’s teaches that the desired thickness of the foil will be determined by the end use of the foil [page 11 line 4-5, Batey]. The thickness reduction (and as a result the change in density) shows that the thickness/density of the zinc sheet is a result-effective variable dependent upon the properties needed for a particular end use of the foil, see MPEP 2144.05.II.
For the reasons listed above, the reduction in thickness of the zinc foil as disclosed by Batey reads on the applicant’s claim limitation of having a zinc foil with an apparent density of 3-6.8 g/cm3. Due to the high concentration of zinc in the material the maximum density that can be achieved is ~7.1 g/cm3. However, depending upon the end use of the zinc foil one can choose to not reduce the thickness of the foil to the maximum state resulting in voids in the material and having a density less than the maximum possible density of 7.1 g/cm3.
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Batey such that they density during the thickness reduction step the density of the zinc foil was between the range of 3-6.8 g/cm3. Doing so would provide a zinc foil that is either porous (low density, e.g. 3-4 g/cm3) or non-porous zinc foil (high density, e.g. 6-7 g/cm3) or a semi-porous zinc foil (medium density, e.g. 4-6 g/cm3).
See conclusion for additional prior art.
Regarding claim 2 and 9, Batey discloses a zinc foil, comprising: a base metal including zinc; and a metal element other than zinc [page 11 line 21-25, Batey].
Regarding claim 3 and 10, Batey discloses a zinc foil, wherein the metal element includes at least one selected from the group consisting of bismuth, indium, magnesium and calcium [page 11 line 21-25, Batey].
Regarding claim 4 and 11, Batey discloses a zinc foil, wherein a content of the metal element is 10 ppm or more and 10000 ppm or less in terms of mass [page 12 line 10-15, Batey discloses that each additive is preferably in a range of 50-500 ppm and the total amount does not exceed 1500 ppm. This falls entirely within the claimed range and therefore anticipates the claimed range].
Regarding claim 5 and 12, Batey discloses a zinc foil, wherein the metal element is bismuth, and a content of bismuth is 10 ppm or more and 10000 ppm or less in terms of mass [page 12 line 16-20, Batey discloses an embodiment where bismuth is present in 10-500 ppm. This falls entirely within the claimed range and therefore anticipates the claimed range].
Claim(s) 6 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi as applied to claim 2 and 8 above.
Regarding claim 6 and 13, Kobayashi discloses the zinc foil, wherein a content of aluminum is 0.001-0.05 mass% [0016, Kobayashi, discloses an aluminum mass% which overlaps the applicant’s claimed range of 0.04 mass% or less], and a content of lead is 70 ppm or less in terms of mass [0022, Kobayashi, discloses a lead ppm range which overlaps the applicant’s claimed range of 60 ppm or less].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim (see MPEP 2144.05).
Response to Arguments
Applicant's arguments filed 10/06/2025 have been fully considered but they are not persuasive. See below for additional details.
Applicant’s arguments in regards to Kobayashi are moot as Kobayashi is no longer relied upon.
The applicant argues the following:
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The examiner is not persuaded by the arguments in relation to an apparent density not being inherent in the teachings of Kobayashi because Kobayashi produces their foil via hot rolling and not electrolysis.
All physical objects have an “apparent density” as an “apparent density is the density of that object. This density is present regardless of the method (i.e. hot rolling or electrolysis) of making the object.
Applicant is arguing the specification and importing limitations from the specification. The examiner notes that this is improper, see MPEP 2111.01.II and 2145.VI
The examiner notes that the method for producing a zinc foil is a product by process limitation
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.", see MPEP 2113.
Either process (hot rolling or electrolysis) allows for one to turn individual zinc powder into a cohesive single product (i.e. a zinc foil)
In regards to the following argument:
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The examiner notes that they never said the apparent density of Batey’s foil 7.1 g/cm3. But rather they noted that the true density would be approximately 7.1 g/cm3. The examiner reiterates that “apparent density” and “true density” are not the same thing. Apparent density is the density of the object as is and can very depending on the porosity or voids present in the material (higher porosity/void presence = lower density). The true density is the maximum density that an object can achieve (this would be when a porosity of 0% or no voids are present).
Batey’s description of a thickness reduction step teaches that one may change the amount of voids present in the foil as they see fit. A reduction in thickness results in fewer void space being present which results in an increase in density. As such, Batey’s teaching on thickness show that a thickness/void presence/density is a result effective variable and one should choose a thickness/void presence/density for their desired end purpose
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US4197635A: see example 2 for a zinc film with a density of 4.5g/cc.
CN1735987A: zinc anodes with a porosity of >69% have a density of ~3g/cm3
US20060093909A1: teaches that zinc powder typically has a density of 3-3.5g/cm3. They also note that one may compress zinc to a density range of 2.5-7.1 g/cm3.
US20150372297A1: teaches of using electrolytic deposition to create a deposited zinc metal layer with a density of 2.1-6.4 g/cm3.
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 QUINTIN DALE ELLIOTT whose telephone number is (703)756-5423. The examiner can normally be reached M-F 8:30-6pm (MST).
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 reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at 5712705256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QUINTIN D. ELLIOTT/Examiner, Art Unit 1724 /BRIAN R OHARA/Examiner, Art Unit 1724
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