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 .
This action is in response to applicant’s amendments and arguments filed 12/24/2025. Claims 1-15 are currently pending for examination on the merits.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 7-8, and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suga et al. (US 5,348,820) (Suga).
Regarding claim 1, Suga discloses a negative electrode for use in a zinc secondary battery (title; abstract; Col. 1, lines 11-15), comprising: a negative electrode active material comprising ZnO particles and Zn particles (Col. 7, lines 10-20), a nonionic water-absorbing polymer (polyvinyl alcohol), and polytetrafluoroethylene as a binder (Col. 7, lines 10-20). Suga further discloses that the negative electrode is fabricated by mixing the ZnO and Zn particles with the polytetrafluoroethylene and the nonionic water-absorbing polymer (polyvinyl alcohol) in a state in which the nonionic water-absorbing polymer (polyvinyl alcohol) is dissolved in a solvent (aqueous polyvinyl alcohol solution) and then kneading the mixture (Col. 7, lines 10-20). Suga further discloses that the negative electrode comprises 6.0 g of ZnO and 4 ml of a 5 wt% aqueous solution of polyvinyl solution (Col. 7, lines 10-20). Thus, Suga necessarily discloses that the amount of the nonionic water-absorbing polymer (polyvinyl alcohol) is about 3.33 parts by weight (((4*0.05)/6.0)*100) on a solid weight basis based on the content of the ZnO particles being 100 parts by weight. The instant specification states that mixing the ZnO and Zn particles and the nonionic water-absorbing polymer in a state in which the nonionic water-absorbing polymer is dissolved in a solvent and then kneading the mixture results in at least a portion of the ZnO particles being covered with the nonionic water-absorbing polymer (see [0021] and [0025] of the instant specification). The instant specification further states that having a composition of the nonionic water-absorbing polymer in an amount of 0.1 to 6.0 parts by weight on a solid basis, based on the content of the ZnO particles being 100 parts by weight results in a coverage of the ZnO particles from 4 to 99% (see [0022] and Table 1 of the instant specification). If the composition and structure of the prior art are substantially identical to that of the claims, claimed properties are presumed to be inherent (see MPEP 2112.01). Thus, since the negative electrode disclosed by Suga has substantially the same composition and structure and is prepared in substantially the same manner as the claimed negative electrode, it is considered inherent that at least a portion of the ZnO particles disclosed by Suga is covered with the nonionic water-soluble polymer (polyvinyl alcohol), wherein a coverage of the ZnO particles is 4 to 99%. Thus, Suga reads on all of the limitations in claim 1.
Regarding claims 2 and 3, Suga discloses all of the limitations as set forth above for claim 1. As set forth above, Suga discloses that the amount of the nonionic water-absorbing polymer (polyvinyl alcohol) is about 3.33 parts by weight (((4*0.05)/6.0)*100) on a solid weight basis based on the content of the ZnO particles being 100 parts by weight. The instant specification is clear that having a composition of the nonionic water-absorbing polymer in an amount of 0.5 to 4.5 parts by weight on a solid basis, based on the content of the ZnO particles being 100 parts by weight results in a coverage of the ZnO particles from 16 to 75% (see [0022] and Table 1 of the instant specification). If the composition and structure of the prior art are substantially identical to that of the claims, claimed properties are presumed to be inherent (see MPEP 2112.01). Thus, since the negative electrode disclosed by Suga has substantially the same composition and structure and is prepared in substantially the same manner as the claimed negative electrode, it is considered inherent that the coverage of the ZnO particles is within the claimed ranges of 16 to 99% and 16 to 75%. Thus, Suga reads on all of the limitations in claims 2 and 3.
Regarding claim 4, Suga discloses all of the limitations as set forth above for claim 1. As set forth above, Suga discloses that the amount of the nonionic water-absorbing polymer (polyvinyl alcohol) is about 3.33 parts by weight (((4*0.05)/6.0)*100) on a solid weight basis based on the content of the ZnO particles being 100 parts by weight, reading on the claimed range of 0.1 to 6.0 parts by weight.
Regarding claim 5, Suga discloses all of the limitations as set forth above for claim 1. Suga further discloses that the nonionic water-absorbing polymer is polyvinyl alcohol (Col. 7, lines 10-20), reading on all of the limitations in claim 5.
Regarding claim 7, Suga discloses all of the limitations as set forth above for claim 1. The instant specification states that polyvinyl alcohol (PVA) has characteristics of change in liquid absorbency in response to variation of pH (see [0019] of the instant specification). Thus, since Suga discloses that the nonionic water-absorbing polymer is polyvinyl alcohol (Col. 7, lines 10-20), it is clear that Suga reads on all of the limitations in claim 7.
Regarding claim 8, Suga discloses all of the limitations as set forth above for claim 1. Suga further discloses that the negative electrode comprises 6.0 g of ZnO particles and 3.0 g of Zn particles (Col. 7, lines 10-20). Thus, Suga necessarily discloses that the negative electrode comprises Zn particles in an amount of 50 ((3.0/6.0)*100) parts by weight, based on the content of the ZnO particles being 100 parts by weight, reading on the claimed range of 1.0 to 87.5 parts by weight.
Regarding claim 10, Suga discloses all of the limitations as set forth above for claim 1. Suga further discloses that the negative electrode is a sheet-like pressed product (Col. 7, lines 10-20).
Regarding claim 11, Suga discloses a zinc secondary battery (title; abstract; Col. 1, lines 11-15), comprising: a positive electrode, the negative electrode according to claim 1, a separator separating the positive electrode from the negative electrode so as to be capable to conducting hydroxide ions therethrough, and an electrolytic solution (Col. 6, lines 3-52).
Claim Rejections - 35 USC § 103
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.
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Suga et al. (US 5,348,820) (Suga) in view of Barrett et al. (US 2018/0212221) (Barrett).
Regarding claim 6, Suga discloses all of the limitations as set forth above for claim 1. Suga fails to explicitly disclose, however, that the nonionic water-absorbing polymer is a polyalkylene oxide-based water-absorbing resin. Instead, Suga discloses that the nonionic water-absorbing polymer is polyvinyl alcohol (Col. 7, lines 10-20).
However, polyvinyl alcohol and polyalkylene oxide-based resins are known alternatives in the art for use as a binder. For instance, Barrett teaches a similar negative electrode for use in a zinc secondary battery (title; abstract; [0011]; [0014]; [0024]). Barrett further teaches that the negative electrode (112) comprises a binder (126), which can include either polyvinyl alcohol or polyethylene glycol (a polyalkylene oxide-based resin) among other materials ([0016]; see Fig. 2). Barrett further teaches that each of these binders is suitable for holding together the active materials (124) ([0016]; see Fig. 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the polyvinyl alcohol binder disclosed by Suga with polyethylene glycol, as taught by Barrett, because they would have had a reasonable expectation that doing so would lead to predictable results with respect to binding the negative electrode active materials together.
Claims 9 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Suga et al. (US 5,348,820) (Suga) in view of Hayashi et al. (WO 2020/049902 with citations made from English equivalent US 2021/0193989) (Hayashi) (of record).
Regarding claim 9, Suga discloses all of the limitations as set forth above for claim 1. Suga fails to explicitly disclose, however, that the negative electrode comprises one or more metal elements selected from the group consisting of In and Bi.
However, these elements are common additives for negative electrodes in zinc secondary batteries. For instance, Hayashi teaches a similar negative electrode for use in a zinc secondary battery (title), wherein the negative electrode includes at least one element selected from In and Bi (abstract; [0028]; [0032]). Hayashi further teaches that including at least one of these metal elements in the negative electrode contributes to inhibiting the deterioration of the negative electrode during repetitive charge and discharge cycles and improving the durability of the zinc secondary battery ([0009]; [0028]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the negative electrode disclosed by Suga to include at least one element selected from In and Bi, as taught by Hayashi, because they would have had a reasonable expectation that doing so would help to inhibit the deterioration of the negative electrode during repetitive charge and discharge cycles and improve the durability of the zinc secondary battery.
Regarding claims 12 and 13, Suga discloses all of the limitations as set forth above for claim 11. Suga fails to explicitly disclose, however, that the separator is an LDH separator comprising a layered double hydroxide (LDH) and/or an LDH-like compound, wherein the LDH separator is composited with a porous substrate.
However, this type of separator is common in the art. For instance, Hayashi teaches a similar zinc secondary battery (title), comprising: a positive electrode, a negative electrode, a separator separating the positive electrode from the negative electrode so as to be capable of conducting hydroxide ions therethrough, and an electrolytic solution ([0041]). Hayashi further teaches that the separator is an LDH separator comprising a layered double hydroxide (LDH) and/or an LDH-like compound ([0042]), wherein the LDH separator is composited with a porous substrate ([0043]). Hayashi further teaches that configuring the secondary battery with this separator further improves the durability of the battery while also facilitating an increase in flexibility, porosity, conductivity, and ease of manufacturing of the separator ([0042]-[0043]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the separator disclosed by Suga to meet the claimed limitations in claims 12 and 13, as taught by Hayashi, because they would have had a reasonable expectation that doing so would improve the durability of the battery while facilitating an increase in flexibility, porosity, conductivity and ease of manufacturing of the separator.
Regarding claim 14, Suga discloses all of the limitations as set forth above for claim 11. Suga further discloses that the positive electrode comprises nickel whereby the zinc secondary battery forms a nickel-zinc secondary battery (Col. 6, lines 7-14; see also Col. 1, lines 6-10). Suga fails to explicitly disclose, however, that the positive electrode comprises nickel hydroxide and/or nickel oxyhydroxide.
However, this composition is common in positive electrodes for nickel-zinc secondary batteries. For instance, Hayashi teaches a similar zinc secondary battery (title), comprising: a positive electrode, a negative electrode, a separator separating the positive electrode from the negative electrode so as to be capable of conducting hydroxide ions therethrough, and an electrolytic solution ([0041]), wherein the positive electrode comprises nickel hydroxide and/or nickel oxyhydroxide to make a suitable nickel-zinc secondary battery ([0041]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the positive electrode disclosed by Suga to include nickel hydroxide and/or nickel oxyhydroxide, as taught by Hayashi, because they would have had a reasonable expectation that doing so would be a suitable composition in order to create a nickel-zinc secondary battery.
Regarding claim 15, Suga discloses all of the limitations as set forth above for claim 11. Suga further discloses that the zinc secondary battery is broadly an alkaline storage battery using zinc as a negative electrode (Col. 1, lines 6-10). Suga fails to explicitly disclose, however, that the positive electrode is an air electrode whereby the zinc secondary battery forms a zinc-air battery.
However, it is common in the art to configure zinc secondary batteries as zinc-air batteries through the use of an air positive electrode. For instance, Hayashi teaches a similar zinc secondary battery (title), comprising: a positive electrode, a negative electrode, a separator separating the positive electrode from the negative electrode so as to be capable of conducting hydroxide ions therethrough, and an electrolytic solution ([0041]), wherein the positive electrode is an air electrode in order to create a zinc-air secondary battery ([0041]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the positive electrode disclosed by Suga as an air electrode, as taught by Hayashi, because they would have had a reasonable expectation that doing so would be effective in creating a zinc-air secondary battery.
Response to Arguments
Applicant’s amendments to the claims have overcome each and every 112(b) rejection previously set forth in the Non-Final Office Action mailed 09/30/2025.
Applicant’s arguments with respect to amended independent claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
As such, claims 1-15 stand rejected.
Conclusion
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.
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/B.C.D./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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