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 .
POSITIVE ELECTRODE FOR ALKALINE SECONDARY BATTERY AND ALKALINE SECONDARY BATTERY HAVING THE SAME
Examiner: Adam Arciero S.N. 18/337,343 Art Unit: 1727 June 22, 2026
DETAILED ACTION
Applicant’s response filed on April 13, 2026 has been received. Claims 1-7 are currently pending. Claims 1 and 6-7 have been amended.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Interpretation
Claim 1 recites an intended use for a positive electrode. The courts have held that “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). See MPEP 2111.02.
Claim Rejections - 35 USC § 102
The claim rejections under 35 USC 102(a)(1) as being anticipated by Tani on claims 1-7 are withdrawn because Applicant has amended the claims.
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) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tani et al. (JP 2004-273138 A; as found in IDS dated 01/18/2024 and using machine translation for citation purposes) in view of Tokuda et al. (JP 2000-067910 A; using machine translation for citation purposes).
As to Claims 1-2 and 6-7, Tani discloses an alkaline secondary battery comprising: an outer can housing an electrode assembly; a positive electrode comprising 100 parts by mass of a nickel hydroxide 102 having an alpha-phase single phase and 2 wt% yttrium oxide as an additive; and a negative electrode comprising a hydrogen storage alloy configured to perform the claimed functions (Abstract, Fig. 1, 5-6, and paragraphs [0006, 0023, 0050] and Embodiment 1). Tani teaches wherein a metal such as aluminum, manganese or iron is dissolved in the nickel hydroxide (paragraph [0011]). Tani does not teach wherein aluminum and at least one of manganese, cobalt or yttrium is dissolved in the nickel hydroxide.
However, Tokuda teaches of an alkaline battery having a positive electrode comprising: nickel hydroxide having at least one of aluminum, cobalt, manganese and yttrium dissolved therein (pg. 6 of the machine translation). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the positive electrode of Tani to comprise nickel hydroxide having at least one of aluminum, cobalt, manganese and yttrium dissolved therein because Tokuda teaches that an alpha-nickel hydroxide can be produced without a decrease in oxygen overpotential (pg. 6).
As to Claim 3, Tani discloses wherein the additive can further comprise ytterbium (paragraph [0017]).
As to Claims 4-5, Tani discloses a cobalt compound as a conductive additive that forms a conductive net on the surface of the nickel hydroxide powder (paragraph [0023]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 6-7 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.
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 ADAM ARCIERO whose telephone number is (571)270-5116. The examiner can normally be reached Monday-Friday 8:00-5 ET.
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, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM A ARCIERO/Primary Examiner, Art Unit 1727
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