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 01/20/2026 have been fully considered but they are not persuasive.
The applicant fails to rebut the 112b rejection relating to the island-form terminology, and therefore the rejection remains.
The applicant argues that the amendments place the case in condition for allowance.
The examiner has considered the claim amendments, but finds the allegation unpersuasive as Yamada discloses the claimed features.
The applicant argues that because Yamada uses mercury free zinc that the references are not combinable.
The examiner has considered this arguments, but finds it unpersuasive for a few general reasons. First, in regard to the arguments against the references individually, one cannot show non-obviousness 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). In the present instance the mercury-free is in the primary reference. Second, the allegation that these features cannot be combined due to the mercury is a conclusory statement that is not anchored in factual evidence. There is nothing in the prior art indicating that using the zinc of Yamada would prove fatal to a combination with coating materials of Li and Nagamine. Additionally, absent clear disclosure that discourages or criticizes the combination, the mere presence of differences in the art references themselves does not constitute teaching away. MPEP 2143.01.
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).
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 MICHAEL N ORLANDO whose telephone number is (571)270-5038. The examiner can normally be reached M-F 8:00 AM - 4:30 PM.
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, 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.
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 about filing 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.
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746