NON-FINAL 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 .
Response to Arguments
Applicant’s arguments filed 24 June 2026, with respect to the rejections of claims 1, 7, and 9 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of newly found prior art references.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 18 October 2023. These drawings are acceptable.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-11 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-11 of copending Application No. 18/287,307. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 3 and 7-11 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.
Claim 3 recites the limitation "the at least one zinc salt" in line 14. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the at least one water-soluble, chloride-free conducting salt" in one 8. There is insufficient antecedent basis for this limitation in the claim. Claim 8 is rejected for the same reason due to its dependency upon claim 7.
Claim 9 recites the limitation "the electrolyte" in line 14. There is insufficient antecedent basis for this limitation in the claim. Claims 10 and 11 are rejected for the same reason because they depend from claim 9.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2006105966 (Holl et al., hereinafter Holl) in view of KR 102191807 (Lim et al., hereinafter Lim), further in view of Audebert et al. (U.S. Patent No. 4,942,101, hereinafter Audebert), further in view of Oh et al. (U.S. Patent No. 6,187,475, hereinafter Oh), and further in view of WO 2011131627 (Wendler et al., hereinafter Wendler).
Regarding claim 1, Holl discloses a method of manufacturing a zinc-manganese dioxide cell, the method comprising: applying a first electrical conductor (collector/arrester 4, Fig. 1) to an electrically non-conductive substrate (1, Fig. 1) and applying a second electrical conductor (collector/arrester 3, Fig. 1) to the electrically non-conductive substrate (1, Fig. 1); applying a layer-shaped negative electrode (anode 6, Fig. 1) directly to the first electrical conductor and applying a layer-shaped positive electrode (cathode 5, Fig. 1) directly to the second electrical conductor; providing a layer-shaped separator (nonwoven 8, Fig. 1); applying at least one electrolyte layer (gel-like electrolyte 7, Fig. 1) to the layer-shaped negative electrode and/or to the layer-shaped positive electrode and/or to the layer-shaped separator; wherein the negative electrode is prepared of a paste comprising zinc powder, electrode binder, and solvent and/or dispersant (page 7 lines 12-17, machine translation), wherein the positive electrode is prepared of a paste comprising manganese dioxide, conductivity agent for improving electrical conductivity, electrode binder, and solvent and/or dispersant (page 7 lines 12-17, machine translation), and wherein the at least one electrolyte layer is prepared of a paste comprising at least one water-soluble, conducting salt, and solvent and/or dispersant (page 7 lines 18-22, machine translation), but does not explicitly disclose forming a stack of layers with the sequence negative electrode / separator / positive electrode; that the zinc powder is mercury free, and wherein the at least one electrolyte layer paste comprises at least one chloride-free conducting salt and mineral particles, the proportion of the mineral particles in the paste being in a range of 5% by weight to 60% by weight.
Lim discloses a zinc-manganese dioxide aqueous battery comprising a stack of layers with the sequence negative electrode / separator / positive electrode (Abstract, Fig. 1). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Holl to form a stack of layers as taught by Lim so that as charging and discharging proceeds, manganese ions eluted from the manganese dioxide active material may pass through the separation membrane and diffuse to the zinc electrode (page 3 lines 17-20, Lim).
The combination of Holl and Lim does not disclose the negative electrode is prepared of a paste comprising mercury free zinc powder. Audebert discloses a cell comprising a gelled negative electrode containing zinc powder free from mercury (Abstract). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the method of the combination of Holl and Lim with a mercury free zinc powder as taught by Audebert to avoid the dangers of dispersing these substances in the environment or into the food chain (col. 1 lines 40-55, Audebert).
Holl, Lim, and Audebert does not disclose wherein the at least one electrolyte layer comprises at least one water-soluble, chloride-free conducting salt. Oh discloses a cell wherein the at least one electrolyte layer comprises at least one water-soluble, chloride-free conducting salt (col. 3 lines 36-46). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the method of the combination of Holl, Lim, and Audebert with the chloride-free zinc sulfate conducting salt as taught by Oh since zinc sulfate has high reversibility of electrochemical oxidation/reduction for manganese dioxide/manganese ion (II) and zinc/zinc ion (II) (col. 3 lines 36-46, Oh).
Holl, Lim, Audebert, and Oh do not disclose wherein the electrolyte paste comprises mineral particles.
Wendler discloses analogous art related to a zinc-manganese-based battery, comprising an electrolyte layer that is printed from a printing paste comprising zinc chloride, amorphous silica, and calcium carbonate (page 5 lines 18-43, machine translation). Wendler further discloses that the particles are contained in printing paste in a proportion in particular between 10 wt.% and 50 wt.% (page 3, lines 17, machine translation), which lies within the claimed range of 5% to 60% by weight. It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the method of the combination of Holl, Lim, Audebert, and Oh with the electrolyte layer as taught by Wendler for the purpose of forming the electrolyte layer matrix with sufficiently good separating properties in order to prevent short-circuiting between opposite electrodes on the two sides of the electrolyte layer (page 4 lines 3-40, machine translation, Wendler).
Regarding claim 2, the combination of Holl, Lim, Audebert, Oh, and Wendler discloses the separator is a porous plastic film or a porous nonwoven (nonwoven 8 is a net structure or fleece, which is porous, Fig. 1, page 6, line 4, machine translation, Holl).
Regarding claim 3, the combination of Holl, Lim, Audebert, Oh, and Wendler discloses the mineral particles are selected from the group consisting of: ceramic particles, salt particles that are nearly or completely insoluble in water, glass particles, and particles of natural minerals and stones (printing paste, characterized in that the inorganic solid comprises at least one component selected from the group consisting of ceramic solids, in water almost or completely insoluble salts, glass, basalt and carbon, claim 5, machine translation, Wendler).
Regarding claim 4, the combination of Holl, Lim, Audebert, Oh, and Wendler discloses the method according to claim 1. Oh further discloses the paste for preparing the negative electrode comprises at least one additive (col. 6 lines 1-3). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided at least one additive as taught by Oh to the negative electrode in the method of modified Holl for the purpose of providing long term charge/discharge cycling stability and reversibility in the construction of aqueous solution rechargeable cells employing common and commercial manganese dioxide as a cathode material and Zn as an anode material (col. 5 line 58 – col. 6 line 8, Oh).
Regarding claim 5, the combination of Holl, Lim, Audebert, Oh, and Wendler discloses the method according to claim 1. Oh further discloses the paste for preparing the positive electrode comprises at least one additive (“acetylene black”, col. 10 line 66 – col. 11 line 21). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided at least one additive as taught by Oh to the positive electrode in the method of the combination of modified Holl for the purpose of providing long term charge/discharge cycling stability and reversibility in the construction of aqueous solution rechargeable cells employing common and commercial manganese dioxide as a cathode material and Zn as an anode material (col. 5 line 58 – col. 6 line 8, Oh).
Regarding claim 6, the combination of Holl, Lim, Audebert, Oh, and Wendler discloses the electrodes and the at least one electrolyte layer are formed by a printing process (page 7 lines 12-22, machine translation, Holl).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Holl in view of Audebert, further in view of Oh, and further in view of Wendler.
Regarding claim 7, Holl discloses a set for the preparation of a zinc-manganese dioxide cell, the set comprising a paste for preparing a negative electrode, the paste comprising zinc powder, electrode binder, and solvent and/or dispersant (page 7 lines 12-17, machine translation); a paste for preparing a positive electrode, the paste comprising manganese dioxide, a conductivity agent to improve electrical conductivity (page 7 lines 12-17, machine translation); and a paste for preparing an electrolyte layer, the paste comprising at least one water-soluble, conducting salt, and solvent and/or dispersant (page 7 lines 18-22, machine translation), but does not explicitly disclose the zinc powder is mercury free, and wherein the at least one electrolyte layer paste comprises at least one chloride-free conducting salt and mineral particles.
Audebert discloses a cell comprising a gelled negative electrode containing zinc powder free from mercury (Abstract). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the method of Holl with a mercury free zinc powder as taught by Audebert to avoid the dangers of dispersing these substances in the environment or into the food chain (col. 1 lines 40-55, Audebert).
The combination of Holl and Audebert does not disclose wherein the at least one electrolyte layer comprises at least one water-soluble, chloride-free conducting salt. Oh discloses a cell wherein the at least one electrolyte layer comprises at least one water-soluble, chloride-free conducting salt (col. 3 lines 36-46). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the method of the combination of Holl and Audebert with the chloride-free zinc sulfate conducting salt as taught by Oh since zinc sulfate has high reversibility of electrochemical oxidation/reduction for manganese dioxide/manganese ion (II) and zinc/zinc ion (II) (col. 3 lines 36-46, Oh).
Holl, Audebert, and Oh do not disclose wherein the electrolyte paste comprises mineral particles.
Wendler discloses analogous art related to a zinc-manganese-based battery, comprising an electrolyte layer that is printed from a printing paste comprising zinc chloride, amorphous silica, and calcium carbonate (page 5 lines 18-43, machine translation). Wendler further discloses that the particles are contained in printing paste in a proportion in particular between 10 wt.% and 50 wt.% (page 3, lines 17, machine translation), which lies within the claimed range of 5% to 60% by weight. It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the set of the combination of Holl, Audebert, and Oh with the electrolyte layer as taught by Wendler for the purpose of forming the electrolyte layer matrix with sufficiently good separating properties in order to prevent short-circuiting between opposite electrodes on the two sides of the electrolyte layer (page 4 lines 3-40, machine translation, Wendler).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Holl in view of Audebert, further in view of Oh, and further in view of Wendler, as applied to claim 7 above, and further in view of Holl et al. (U.S. Patent Application Pub. No. 2012/0164502, hereinafter Holl ‘502).
Regarding claim 8, the combination of Holl, Audebert, Oh, and Wendler discloses wherein the separator is a porous plastic film or a porous nonwoven (nonwoven 8 is a net structure or fleece, which is porous, Fig. 1, page 6 line 4, machine translation, Holl), but does not explicitly disclose wherein the separator has a thickness in a range of 60 to 120µm, has a porosity in the range of 35% to 60%, and comprises polyolefin.
Holl ‘502 discloses wherein the separator is a porous plastic film or a porous nonwoven (para. [0027]), wherein the separator has a thickness in a range of 60 to 120µm (“5µm to 100µm”, para. [0033]), has a porosity in the range of 35% to 60% (para. [0029]), and comprises polyolefin (para. [0027]). Holl ‘502 teaches a separator thickness range that overlaps with the claimed thickness range, and it has also been held that “[i]n 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, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the set of the combination of Holl, Audebert, Oh, and Wendler with the separator taught by Holl ‘502 to ensure that in the event of the battery being damaged or overcharged, and heated as a consequence, the circuit in the battery is interrupted (para. [0006], Holl ‘502).
Claims 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Holl in view of Lim, and further in view of WO 2016152235 (Inaba et al., hereinafter Inaba).
Regarding claim 9, Holl discloses a zinc-manganese dioxide cell, comprising a first electrical conductor (collector/arrester 4, Fig. 1) disposed on an electrically non-conductive substrate (1, Fig. 1); and a second electrical (collector/arrester 3, Fig. 1) conductor disposed on the electrically non-conductive substrate (1, Fig. 1); a layer-shaped negative electrode (anode 6, Fig. 1) disposed directly on the first electrical conductor; a layer-shaped positive electrode (cathode 5, Fig. 1) disposed directly on the second electrical conductor; and a layer-shaped separator (nonwoven 8, Fig. 1), but does not explicitly disclose wherein the electrode and the separator are formed as a layer stack with the sequence negative electrode / separator / positive electrode, in which the negative electrode and the separator as well as the positive electrode and the separator are each connected to one another via an interface; wherein the electrodes and the separator are impregnated with a zinc salt solution, and wherein the interface between the electrodes and the separator include mineral particles that form a boundary layer permeable to the electrolyte.
Lim discloses a zinc-manganese dioxide aqueous battery wherein the electrodes and the separator are formed as a layer stack with the sequence negative electrode / separator / positive electrode, in which the negative electrode and the separator as well as the positive electrode and the separator are each connected to one another via an interface (Abstract, Fig. 1), wherein the electrodes and the separator are impregnated with a zinc salt solution (page 4 lines 10-11, machine translation). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the cell of Holl to form a stack of layers as taught by Lim so that as charging and discharging proceeds, manganese ions eluted from the manganese dioxide active material may pass through the separation membrane and diffuse to the zinc electrode (page 3 lines 17-20, Lim), and to have incorporated a zinc salt solution as taught by Lim for the purpose of improving charging and discharging reversibility (page 2 lines 17-20, machine translation, Lim).
The combination of Holl and Lim does not disclose the interface between the electrodes and the separator include mineral particles that form a boundary layer permeable to the electrolyte.
Inaba discloses a separator/intermediate layer for a secondary battery, wherein the interface between the electrodes and the separator include mineral particles (“an intermediate layer between at least one of the positive electrode and the separator and between the negative electrode and the separator”, page 17 lines 20-21, machine translation; “inorganic particles include SrTiO3, SnO2, CeO2, MgO, NiO, CaO, ZnO, ZrO2, Y2O3, Al2O3, TiO2, SiC, clay mineral, mica, calcium carbonate, and the like”, page 6 lines 34-43, machine translation) that form a boundary layer permeable to the electrolyte (“an electrolyte injection path can be formed in the intermediate layer without performing the porous step”, page 12 lines 33-34, machine translation). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the zinc-manganese dioxide cell of modified Holl with the mineral particles forming a boundary layer at the electrode/separator interfaces as taught by Inaba for the purpose of increasing the adhesion strength between the electrode and the intermediate layer (page 10 lines 28-39, machine translation, Inaba).
Regarding claim 11, the combination of Holl, Lim, and Inaba discloses the mineral particles are selected from the group consisting of: ceramic particles, salt particles that are nearly or completely insoluble in water, glass particles, and particles of natural minerals and stones (“inorganic particles include SrTiO3, SnO2, CeO2, MgO, NiO, CaO, ZnO, ZrO2, Y2O3, Al2O3, TiO2, SiC, clay mineral, mica, calcium carbonate, and the like”, page 6 lines 34-43, machine translation, Inaba).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Holl in view of Lim, and further in view of Inaba, as applied to claim 9 above, further in view of Kim et al. (KR 20170098004, hereinafter Kim), and further in view of Kordesch et al. (CA 2389907, hereinafter Kordesch).
Regarding claim 10, the combination of Holl, Lim, and Inaba does not explicitly disclose wherein at least one of: the negative electrode of the cell comprises the following components: zinc powder (mercury-free) in a proportion of 81 to 93 wt.%, an additive for viscosity adjustment in a proportion of 1 to 7% by weight, and an electrode binder in a proportion of 6 to 13 wt.%; the positive electrode of the cell comprises the following components: manganese dioxide in a proportion of 62-82 wt.%, a conductivity agent in a proportion of 5-35wt.%, an additive for viscosity adjustment in a proportion of 2-10% by weight, and an electrode binder in a proportion of 6-13 wt.%.
Kim discloses a printable battery, wherein the negative electrode of the cell (corresponds to the second electrode layer 320) comprises the following components: zinc powder in a proportion of 93 wt.% and an electrical binder in a proportion of 4 wt.% (page 7 lines 4-7, machine translation). Kim discloses an electrical binder proportion that lies just outside of the claimed range, and without evidence why an electrode binder in a proportion of 6 to 13 wt.% is critical, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985); In re Scherl, 156 F.2d 72, 74-75 (CCPA 1946); see also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Lilienfeld, 67 F.2d 920, 924 (CCPA 1933). See MPEP 2144.05. It would have been obvious for one having ordinary skill in the art to have provided the electrode composition of Kim with an electrode binder in the claimed wt.% range, without producing any new or unexpected results. It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated Kim’s electrode compositions into the cell of the combination of Holl, Lim, and Inaba for the purpose of making a high-power printable battery (Abstract, Kim).
The combination of Holl, Lim, Inaba, and Kim does not disclose mercury-free zinc powder or an additive for viscosity adjustment in a proportion of 1 to 7% by weight.
Kordesch discloses wherein the negative electrode of the cell comprises mercury-free zinc powder (page 4 lines 11-21), and an additive for viscosity adjustment in a proportion of 1 to 7% by weight (0.5% to 5% by weight of a suitable thickening agent, page 6 lines 22-26). It has also been held that “[i]n 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, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the cell of the combination of Holl, Lim, Inaba, and Kim with the mercury free zinc powder and thickening agent to allow for a change in the physical characteristics of the paste that is easily spread onto the metal based current collector (page 6 line 29 – page 7 line 2, Kordesch).
Conclusion
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/Shuyi S. Liu/Examiner, Art Unit 1774
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