RESPONSE TO AMENDMENT
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 .
Amendments to the specification and the claims, filed 14 July 2026, have been entered in the above-identified application.
Claims 1-17 remain pending in the application.
Newly added claim 18 is pending in the application.
Withdrawn Objections/Rejections
The objection to claims 7-8 and 10, made of record in the office action mailed on 29 April 2026, page 2, have been withdrawn due to Applicant’s amendment in the response 14 July 2026.
The 35 U.S.C. §112b rejections of claims 1-9 and 11-17 made of record in the office action mailed 29 April 2026, pages 2-3, have been withdrawn due to Applicant’s amendment in the response filed 14 July 2026.
The 35 U.S.C. §102 rejections of claims 1-5, 7-10, and 12 as being anticipated by Bilhorn (US Patent No. 4,328,297) made of record in the office action mailed on 29 April 2026, pages 3-5, have been withdrawn due to Applicant’s amendment in the response filed 14 July 2026.
The 35 U.S.C. §103 rejections of claims 1-17 as unpatentable over Fensore et. al. (U.S. Patent Application Publication No. 2008/0241683) in view of Bilhorn (US Patent No. 4,328,297) made of record in the office action mailed on 29 April 2026, pages 5-7, have been withdrawn due to Applicant’s amendment in the response filed 14 July 2026.
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.
Claim 10 is 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.
Claim 10 recites the limitation “a rubber of the styrene-butadiene type” in lines 2 and 3 which renders the claim vague and indefinite. It is unclear if “a rubber of the styrene-butadiene type” is in reference to a rubber made of a mixture of styrene and butadiene, a rubber with properties identical or similar to rubbers made with a styrene and butadiene mixture, or another option entirely. The addition of the word “type” to an otherwise definite expression extends the scope of the expression so as to render it indefinite (MPEP 2173.05(b).III.E).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 7-9, 13-15, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujiwara et. al. (Japanese Patent Application Publication No. 2931316). For prior art discussion see English translation for JP-2931316-B2.
Regarding claim 1, Fujiwara et. al. teaches a paste electrode (negative electrode, page 4 line 39) comprising a current collector support (current collector, page 5 line 5). The current collector support is coated on at least one of its faces with a coating (active material sheet) in the form of a paste (page 4 line 39 to page 5 line 7, the active material is kneaded with water, forming a paste, which is shaped and applied to the current collector).
The paste is composed of a composition including an active material comprising zinc alloyed with one or more chemical elements (page 4 lines 39-41, zinc being alloyed with indium) and fluororesin as a binder (page 5 line 1-3).
Regarding claims 2-3, Fujiwara et. al. further teaches the mass of zinc alloy represents 48% of the mass of the coating (page 5 lines 1-3, the surface-modified particle is 60% of the mass of the coating, and page 4 lines 43-45,20% of the mass of the surface-modified particle is the zinc-oxide surface layer, which means that 80% of the mass of the surface-modified particle is the zinc alloy, resulting in 80% x 60% = 48%). This value falls within the claimed ranges of from 5 to 95% of the mass of the coating and 10% to 50% of the mass of the coating. Since the prior art recites a value within the claimed range, the claimed range is anticipated by the prior art (MPEP 2131.03.II).
Regarding claim 4, Fujiwara et. al. further teaches the active material further comprises zinc oxide (page 5 lines 1-2).
Regarding claims 7-8, Fujiwara et. al. further teaches that the coating is free of mercury or mercury compound (page 4 line 39 to page 5 line 7, the active material does not contain mercury).
Regarding claim 9, Fujiwara et. al. further teaches the zinc is alloyed with indium (page 4 lines 39-41) or an element selected from the group consisting of indium, thallium, gallium, tin, bismuth, and lead, or a mixture thereof.
Regarding claim 13, Fujiwara et. al. further teaches the current collector support is a strip of copper (page 5 line 5).
Regarding claim 14, Fujiwara et. al. further teaches an electrochemical cell (nickel-zinc storage battery) comprising an alkaline electrolyte, at least one cathode (positive electrode) and at least one anode (negative electrode) which is the paste electrode as defined in claim 1 (page 4, lines 24 to page 5 line 7, First Embodiment, and page 2, claim 1).
Regarding claim 15, Fujiwara et. al. further teaches the cathode of claim 14 comprises a nickel active material (page 4, lines 24-27, sintered nickel positive electrode).
Regarding claim 18, Fujiwara et. al. teaches a paste electrode (negative electrode, page 4 line 39) comprising a current collector support (current collector, page 5 line 5). The current collector support is coated on at least one of its faces with a coating (active material sheet) in the form of a paste (page 4 line 39 to page 5 line 7, the active material is kneaded with water, forming a paste, which is shaped and applied to the current collector).
The paste is composed of a composition including an active material comprising zinc alloyed with the zinc is alloyed with indium (page 4 lines 39-41) or an element selected from the group consisting of indium, thallium, gallium, tin, bismuth, and lead, or a mixture thereof, and fluororesin as a binder (page 5 line 1-3).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 5, 12, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Fujiwara et. al. (Japanese Patent Application Publication No. 2931316). For prior art discussion see English translation for JP-2931316-B2.
Fujiwara et. al. is relied upon as described above.
Regarding claim 5, Fujiwara et. al. teaches the mass of zinc oxide represents 45% mass of the coating (page 4 line 39- page 5 line 7, zinc oxide is 20% of the mass of the surface-modified active material, and the surface-modified active material is 60% of the mass of the active material. This results in 20% x 60% = 12% zinc oxide. There is additionally 33% of the mass of the total coating mass that is zinc oxide. This results in a total amount of zinc oxide of 12% + 33% = 45%). While this percentage of the mass of the coating does not fall within the claimed range of 90% to 50%, it is close. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Fujiwara et. al. teaches a comparative example (page 4 paragraph 4 line 1 to page 5 paragraph 1 line 3) in which the amount of zinc oxide added is 48% of the mass of the coating layer, showing that the amount of the zinc oxide in the coating layer can be altered while still producing a functioning battery. Further, Fujiwara et. al. teaches that the inclusion of zinc oxide may suppress the formation of dendrites when the surface of the zinc alloy is completely covered with zinc oxide, and that mixing zinc oxide to partially cover the zinc alloys also prevents dendrite formation (page 3 paragraph 8 lines 1-7). Therefore, as the amount of zinc oxide that is in the coating layer will alter how much dendrite formation may be suppressed, the amount of zinc oxide in the coating layer is a result-effective variable.
It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to optimize the amount of zinc oxide in the coating layer to fall within the claimed range of 90% to 50% total mass of the coating via routine optimization. One of ordinary skill in the art would have been motivated to optimize to within this range to find conditions in which dendrite formation may be sufficiently suppressed.
Regarding claim 12, Fujiwara et. al. further teaches the coating includes 48% by mass of the zinc alloy (page 5 lines 1-3, the surface-modified particle is 60% of the mass of the coating, and page 4 lines 43-45,20% of the mass of the surface-modified particle is the zinc-oxide surface layer, which means that 80% of the mass of the surface-modified particle is the zinc alloy, resulting in 80% x 60% = 48%). While this value does not fall within the claimed range of 5% to 45% by mass, it is close. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Fujiwara et. al. further teaches the coating includes 45% by mass of zinc oxide (page 4 line 39- page 5 line 7, zinc oxide is 20% of the mass of the surface-modified active material, and the surface-modified active material is 60% of the mass of the active material. This results in 20% x 60% = 12% zinc oxide. There is additionally 33% of the mass of the total coating mass that is zinc oxide. This results in a total amount of zinc oxide of 12% + 33% = 45%). While this percentage of the mass of the coating does not fall within the claimed range of 90% to 50% by mass, it is close. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Fujiwara et. al. teaches a comparative example (page 4 paragraph 4 line 1 to page 5 paragraph 1 line 3) in which the amount of zinc oxide added is 48% of the mass of the coating layer, showing that the amount of the zinc oxide in the coating layer can be altered while still producing a functioning battery. Further, Fujiwara et. al. teaches that the inclusion of zinc oxide may suppress the formation of dendrites when the surface of the zinc alloy is completely covered with zinc oxide, and that mixing zinc oxide to partially cover the zinc alloys also prevents dendrite formation (page 3 paragraph 8 lines 1-7). Therefore, as the amount of zinc oxide that is in the coating layer in proportion to the amount of the zinc alloy that is in the coating layer will alter how much dendrite formation may be suppressed, the amount of zinc oxide and zinc alloy in the coating layer are result-effective variables.
It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to optimize the amount of zinc oxide and zinc alloy in the coating layer to fall within the claimed range of 90% to 50% of zinc oxide as total mass of the coating and 5% to 45t% of zinc alloy as total mass of the coating layer via routine optimization. One of ordinary skill in the art would have been motivated to optimize to within this range to find conditions in which dendrite formation may be sufficiently suppressed while still affording favorable energy density of the paste electrode.
Fujiwara et. al. further teaches the coating includes 5% by mass of a binder (fluororesin, page 5 line 3). Since the prior art recites a value within the claimed range, a prima facie case of obviousness exists (MPEP 2144.05).
Regarding claim 17, Fujiwara further teaches the electrochemical cell includes a container with a cylindrical shape (AA size) (outer can, page 4 lines 24-31). While Fujiwara does not explicitly teach the electrochemical cell of claim 15 further includes a container of prismatic format, this is merely a change in shape. The shape of the electrochemical cell is a matter of choice which a person of ordinary skill in the art would have found obvious, absent persuasive evidence that the particular configuration is significant (MPEP 2144.04.IV.B).
Claims 6, 10-11, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Fujiwara et. al. (Japanese Patent Application Publication No. 2931316) in view of Fensore et. al. (U.S. Patent Application Publication No. 2008/0241683). For prior art discussion see English translation for JP-2931316-B2.
Fujiwara is relied upon as described above.
Regarding claim 6, Fujiwara does not explicitly teach the zinc oxide has a BET specific surface of at least 3 m2/g.
Fensore teaches an alkaline electrochemical cell with a negative electrode that includes a coating containing zinc and zinc oxide (abstract). The zinc oxide has a BET specific surface (BET surface area) that is at least 8 m2/g ([0033]), which allows for improved conductivity in the negative electrode ([0033]). This range overlaps with the claimed range of at least 3 m2/g. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to use zinc oxide with the BET specific surface taught by Fensore in the paste electrode of Fujiwara. One of ordinary skill in the art would have been motivated to make this inclusion for the improved conductivity in the electrode.
Regarding claim 10, Fujiwara does not explicitly teach the binder is a cellulosic compound or a rubber of the styrene-butadiene type or a mixture of a cellulosic compound and a rubber of the styrene-butadiene type.
Fensore further teaches the negative electrode includes a binder (gelling agent) that includes carboxymethylcellulose, a cellulosic compound ([0039]). The inclusion of carboxymethylcellulose allows for a substantially uniform dispersion of zinc and solid zinc oxide particles in the negative electrode ([0039]), in turn improving cycle characteristics.
It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to include a cellulosic binder, as taught by Fensore, in the paste electrode of Fujiwara. One of ordinary skill in the art would have been motivated to make this inclusion for the improved cycle characteristics.
Regarding claim 11, Fujiwara does not explicitly teach the coating further comprises at least one surfactant.
Fensore further teaches the coating further comprises at least one surfactant ([0040]). The inclusion of a surfactant allows for an increase in the surface charge density of the solid zinc oxide and lower anode resistance ([0036]).
It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to include a surfactant in the paste electrode of Fujiwara, as taught by Fensore. One of ordinary skill in the art would have been motivated to make this inclusion for the increase in the surface charge density of the solid zinc oxide and lower anode resistance.
Regarding claim 16, Fujiwara does not explicitly teach the alkaline electrolyte comprises zinc oxide or tin or a mixture of both.
Fensore further teaches the alkaline electrolyte includes dissolved zinc oxide ([0040]). The addition of zinc oxide to the alkaline electrolyte decreases electrode gas generation ([0040]), in turn improving cycle characteristics.
It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to includes zinc oxide in the alkaline electrolyte of Fujiwara, as taught by Fensore. One of ordinary skill in the art would have been motivated to make this inclusion for the decreased electrode gas generation.
Regarding claim 17, Fujiwara further teaches the electrochemical cell includes a container (outer can, page 4 lines 24-31).
Fujiwara does not explicitly teach the electrochemical cell of claim 15 further includes a container of prismatic format.
Fensore further teaches an electrochemical cell (alkaline cell) with a container that can be in a multitude of shapes, including AA (cylindrical), button-type, or prismatic formats ([0023]-[0024]).
It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to have the electrochemical cell of Fujiwara in a container of prismatic format, as taught by Fensore. One of ordinary skill in the art would have been motivated to use a prismatic format as it is a common shape used in commercial applications, which in turn would increase commercial viability of the electrochemical cell.
Response to Arguments
Applicant’s arguments in the response filed on 14 July 2026 regarding the objection to the claims of record have been considered but are moot since the objection has been withdrawn.
Applicant’s arguments in the response filed on 14 July 2026 regarding the 35 U.S.C. §112b rejections of record of claims 1-9 and 11-17 have been considered but are moot since the rejection has been withdrawn.
Applicant’s arguments in the response filed on 14 July 2026 regarding the 35 U.S.C. §112b rejections of record of claim 10 has been considered but has not been found persuasive.
Applicant argues that the expression "a rubber of the styrene-butadiene type" is clear for the skilled person and refers to a rubber made of a mixture of styrene and butadiene on page Applicant’s remarks. To this argument, the examiner respectfully disagrees. The addition of the word “type” to an otherwise definite expression extends the scope of the expression so as to render it indefinite (MPEP 2173.05(b).III.E). Because of this, while the limitation “a rubber of styrene-butadiene” or “a styrene-butadiene rubber” would be definite, the limitation “a rubber of the styrene-butadiene type” is not. Therefore, the rejection is upheld.
Applicant’s arguments in the response filed on 14 July 2026 regarding the 35 U.S.C. §102 rejection of claims 1-5, 7-10, and 12 as being anticipated by Bilhorn (US Patent No. 4,328,297) of record have been considered but are moot due to the new grounds of rejection.
Applicant’s arguments in the response filed on 14 July 2026 regarding the 35 U.S.C. §103 rejection of claims 1-17 as unpatentable over Fensore et. al. (U.S. Patent Application Publication No. 2008/0241683) in view of Bilhorn (US Patent No. 4,328,297) of record have been considered but are moot due to the new grounds of rejection.
Applicant’s arguments in the response filed on 14 July 2026 regarding the new claims have been considered but are moot due to the new grounds of rejection.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Myles Alan Lovasz whose telephone number is (571)272-0214. The examiner can normally be reached Monday-Friday 7:30 am - 5:00 pm.
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/MAL/
Myles Alan LovaszExaminer, Art Unit 1788 09/23/2026
/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788
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