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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/02/26 has been entered.
Examiner’s Interpretation
Claim 1 lines 6-10 are reproduced below.
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The examiner notes that the method for observing the metal element does not impart any structure onto the final product as it is just a method for visualization. As such, if the metal element is present in 2% or more then this could be observed regardless of the visualization technique, barring evidence to the contrary.
The breath of the above limitation is such that what is observed will entirely depend upon the method by which the sample is prepared. The obtained measurements/observation could be impacted by which section of the foil is observed, which layer or layers of the foil are observed, the total area of the foil covered by a “plurality of squares”, and the chosen location of the “plurality of squares”. These features would all impact what would be observed. Similarly, the method of observation can impact the visualization such as zoom. As such, in the absence of these defining features being claimed one may observe the metal element in 2% or more so long as it is present in the material.
Finally, means of visualizing does not appear to impart additional structure to the claimed product.
The broadest reasonable interpretation of the above claimed limitation is met if the metal element is capable of being observed in an area of ≥2% of two 300nm squares.
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) and in view of Sarkas (US20140227592A1).
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 1) the density of the zinc foil and 2) the percentage of the metal element that is observable.
In regards to 1), 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.
In regards to 2), reproduced fully below:
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As discussed above in the Examiner’s Interpretation section above. The following claim limitation is met if the metal element could be observed in an area of ≥2% of two 300nm squares.
Sarkas teaches of a zinc foil with its surface being coated by inorganic particles such as Bi and In [0036-0049, table 1, Sarkas]. Doing so stabilizes zinc and helps prevent hydrogen gas generation and inhibit corrosion on the surface of zinc [0041, Sarkas]. Additionally it may scavenge metal ions from the electrolyte [0041, Sarkas].
Prior to the effective filing date, one of ordinary skill within the arts would appreciate that by using bismuth to plate the surface of the zinc electrode, one could reduce the surface area contact between the zinc electrode and the electrolyte. Doing so would prevent gas generation that would have occurred at the surface of the zinc foil.
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Batey such that the element other than zinc was bismuth coated onto at least 2% of the zinc foils surface. Doing so can help stabilize the zinc and prevent the generation of hydrogen gas forming on the surface of zinc, inhibit corrosion of zinc, and scavenge metal ions from the electrolyte [0041, Sarkas].
For clarity of the record, the examiner notes that if at least 2% of the zinc foil’s surface is covered by Bi then one use two 300nm squares to view an area that contains ≥2% of Bi. This reads on the applicant’s claimed limitation.
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 03/02/2026 have been fully considered but they are not persuasive. See below for additional details.
Applicant presents two arguments as reasons for allowability. The first, applicant argues a difference in the methods of producing the zinc foil between Batey and the instant application. The examiner does not find these arguments to be persuasive as they are not features presented in claim 1.
"Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.", see MPEP 2111.01.II
"Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.", see MPEP 2145.VI.
Furthermore, as noted in the rejection of claim 1, Batey teaches the crystal grain size claimed by the applicant.
Next, the applicant argues allowability because Batey does not teach the features amended into claim 1. The examiner does not find this to be persuasive as the newly presented limitations feature a product-by-process limitation, e.g. the claimed energy dispersive X-ray spectroscopy method. As presented in the rejection of claim 1, Sarkas is introduced to read on the remaining limitations that Batey is silent to. Sarkas teaches a metal element other than zinc covering the surface of the zinc foil and notes that it may stabilize zinc and help prevent hydrogen gas generation and inhibit corrosion on the surface of zinc [0041, Sarkas]. Additionally it may scavenge metal ions from the electrolyte [0041, Sarkas]. As such, the examiner maintains that it would be obvious to one of ordinary skill within the arts to have at least 2% of the visible surface be covered by the metal other than zinc as it can improve the stability of the surface of the zinc foil that is exposed to the electrolyte.
The examiner maintains their rejection.
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.
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).
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/QUINTIN D. ELLIOTT/Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724
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