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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, it is not clear what the term “island form” means and the terminology does not appear to be defined in the specification. In order to apprise the public as to the scope of the invention, for the avoidance of infringement, claims need to provide sufficient clarity to the reader. For purposes of art application, the examiner interprets “island form” to be a discontinuous application represented by discrete surface coating segments.
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) 1-8 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al. WO 2019/181538 cited via US equivalent (US 2020/0388838), in view of Nagamine et al. (US 4,500,614) and Li et al. (US 2018/0013144).
Regarding claims 1, Yamada discloses an alkaline battery which comprises a negative electrode mixture of negative electrode active materials (abstract), whereby said active material include zinc particles (abstract) and an indium coating (abstract). Yamada further discloses applying coatings on the entire surface or part of the surface of the anode (i.e. zinc) active materials ([0031]). Covering part of the surface is taken to read on the broadly claimed – “separated from one another.” Yamada further discloses that the battery contains a positive electrode (figure 1, reference 11), a can (figure 1, reference 14A) and a separator (figure 1, reference 13). Yamada further disclose that the zinc is mercury free ([0028]).
Yamada fails to disclose an additional coating, comprising gallium on the zinc particles.
Nagamine, drawn also to alkaline cells with a zinc-based anode (abstract), discloses providing both indium and gallium in the form of an alloy on a surface of the zinc active material (abstract). Nagamine discloses that said battery system prevents generation of hydrogen gas and improves heavy-load discharge performance (column 1, lines 51-55).
Li, drawn also to the battery art (abstact), discloses that it was also known to coat zinc-based anode particles with at least one of indium and gallium ([0028]). It is further known that such a system has good cycle performance (abstract) whereby said performance is taken to be impacted by the hydrogen gas generation that leads to precipitation and reduced cycle stability ([0051]).
Given the nature of Nagamine and Li, it is known to use both individual indium and gallium surface coatings on zinc or provide them as alloys for the purpose of improving battery performance or longevity. The take away being that the application of those compounds/elements generally improves battery performance. It therefore would have been obvious to one of ordinary skill in the art, in view of Nagamine and Li to apply both indium and gallium sequentially or in combination to a surface, as each coating is known to provide the same benefit – increased cycle performance and longevity. Li and Nagamine - supplying motivation to further include a gallium surface coating to the invention of Yamada - provides motivation to combine known alternatives to achieve predictable results (MPEP 2144.06; KSR). The MPEP further notes that “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” (MPEP 2144.06)
Regarding claim 2, Yamada discloses the application of indium and discloses that the thickness of indium particles is balanced against considerations such as improving electrode deterioration and thoroughly dissolving it. Yamada discloses a preferred thickness of between 1 and 200 micrometers which overlaps the present range and the courts have held that overlapping ranges is generally considering a matter of obviousness (MPEP 2144.05). The courts have also held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (MPEP 2144.05). The foregoing represents a result effective variable in which the finding of facts demonstrates the reason for adding particular diameters. For the foregoing reasons, the claimed thickness does not appear patentably distinguishing.
Regarding claims 3-6, the Yamada in view of Li and Nagamine fails to teach the exact ratios of gallium, zinc and indium; however, it is noted that Yamada specifically teaches the surface coating ratio is balanced against considerations such as cost and functionality ([0031]). Furthermore, as discussed above, Li and Nagamine disclose using gallium for the purpose of improving hydrogen gas generation which would naturally have similar considerations. With the zinc providing the anode functionality, the implicit balancing would have been the anode functionality against the cost and complexity of further coating with gallium as the reader is explicitly apprised of the benefit associated therewith – decreased hydrogen gas generation and better cycle stability. The courts have also held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (MPEP 2144.05). The foregoing represents a result effective variable in which the finding of facts clearly demonstrates the reason for adding the coatings and the routine optimization thereof would have been deemed to not be a patentably distinguishing feature.
Regarding claim 7, Yamada discloses the electrode with an alkaline electrolytic solution, a gel thickener ([0028], the electrolytic solution with an alkali metal hydroxide ([0033]), and a polymer thickener such as carboxymethyl cellulose or polyacrylic acid ([0032]).
Regarding claim 8, in Figure 1, Yamada discloses a negative electrode containing member (14B) which contains the negative electrode (12), an intermediate layer interposed between the negative electrode and negative electrode member (14C), the negative electrode with copper (i.e. a first metal) at a surface facing the electrode ([0037]), and the intermediate layer with a second metal having a higher overvoltage than that of copper (i.e. the first metal) ([0038]).
Response to Arguments
Applicant's arguments filed on 05/15/2026 have been fully considered but they are not persuasive.
The applicant traverses the 112b rejection and argues that the term “island form” is clear in light of the specification and figures.
The examiner has thoughtfully considered this argument, but it is determined to be unpersuasive. The term “island form” is not defined in the dictionary, nor does it appear to be a recognizable term of the art with bounds. Moreover, the specification does not define the term or provide objective boundaries as to what structures fall within and outside the term. Although the cited figures depict examples that may correspond to the term, the drawings merely show embodiments and do not identify characteristics that are required by the claim term. Accordingly, the breadth of the term remains unclear to the reader and an individual reading the claims would not be properly apprised as to how to avoid infringement based on the underlying ambiguities.
The applicant argues that Nagamine renders the rejection non-obvious because of the mercury present in their underlying invention.
The examiner has thoughtfully considered the argument, but it is found to be unpersuasive for a few reasons. First, and most importantly, Nagamine is not relied upon for the teaching of the center part. The rejection relies upon Yamada for the general disclosure of the center part, which is, as provided above, explicitly mercury free. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Second, the applicant argues that the center part of Nagamine (page 6 of arguments) is considered to contain mercury; however, there does not appear to be any objective evidence of this assertion in the document. For the foregoing reasons, this argument is found to be unpersuasive. Still further, the examiner notes that the MPEP has held that “a reference does not teach away if it merely expresses a general preference for an alternative invention (a lower pH battery) but does not criticize, discredit or otherwise discourage investigation into the invention claimed (MPEP 2145(X)). Li discloses the enhancement at pH’s up to 7, but does not state that such enhancements are completely irradicated once a pH climbs beyond 7.
The applicant argues that it is improper to look to Li because Li tends to function in lower pH environments.
The examiner disagrees and find the argument unpersuasive. Yamada is relied upon for the pH environment and there is no reason to expect because Li uses a slightly lower pH that it renders the disclosure otherwise irrelevant. Li is not relied upon for its precise environment, but rather for the disclosure that Indium or Gallium could be used to coat an anode particle to increase the performance thereof. The courts have generally held that the use of known technique (adding indium/gallium coating) to improve a similar device (another battery) in the same way (enhance battery performance) is a matter of obviousness (MPEP 2143). The reasonable expectation of success is even further bolstered by the presence of the secondary reference, Nagamine, which explicitly discloses such coating compounds are known to work well and provide ample benefit to alkaline environments (as disclosed above).
The applicant appears to argue unexpected results in citing Table 1 and examples 1-18.
The argument of unexpected results is found to be unpersuasive for two primary reasons. First, and most importantly, the results represent a stark mismatch in scope from the claims. The results use specific compounds in specific amounts with specific sizes and orientations. Second, the prior art, as provided above, already provides strong rationale to make the combination in order to improve battery characteristics. The courts have held that “mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention” and “the fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” (MPEP 2415(II))
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Watanbe et al. (US 6,586,139) discloses that adding gallium and indium to zinc negative electrode materials to improve the suppression of hydrogen gas (column 7, lines 60-65; column 8, lines 49-56).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL N ORLANDO whose telephone number is (571)270-5038. The examiner can normally be reached M-F 8:00 AM - 4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at (571) 272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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