www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/438,555
`
`09/13/2021
`
`Yasufumi Takahashi
`
`P210790US00
`
`4702
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`CARVALHO IR., ARMINDO
`
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/09/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-8 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-8 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C} Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`“If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)C The specification is objected to by the Examiner.
`11) The drawing(s)filed on 13 September 2021 is/are: a)(¥] accepted or b)(_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[VM. Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a) All
`1... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.4% Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 9/13/2021.
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230602
`
`Application No.
`Applicant(s)
`17/438 555
`Takahashi etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ARMINDO CARVALHO JR.
`1729
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)C Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\() Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`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 § 102
`
`2.
`
`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-AlA) 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.
`
`3.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections underthis section madein 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.
`
`4.
`
`Claims 1, 4-5 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Miura et al. (JPS63248062A)cited in the Information Disclosure Statement. The
`
`English machine translation of Miura et al. is attached andis cited below.
`
`5.
`
`Regarding Claim 1, Miura et al. teaches a zinc alkaline battery (i.e. an alkaline
`
`dry battery) having a negative electrode, a positive electrode (Para. [0001], lines 13-17)
`
`and separator (Fig. 1, #4) disposed between the positive electrode and negative
`
`electrode, the negative electrode including a negative electrode active material
`
`containing zinc (Para. [0001], line 14) where anticorrosion agents are attached to the
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 3
`
`surface of the negative electrode active material (lines 61-63) (i.e. an additive) wherein
`
`the anticorrosion agent can be an alkylbenzene sulfonic ester (line 57 and Table 1) (i.e.
`
`a sulfur-containing cyclic compound) and an alkaline aqueous solution as an electrolytic
`
`solution (i.e. an aqueous alkaline electrolyte retained in the positive electrode, the
`
`negative electrode and the separator) (lines 90-91).
`
`6.
`
`Regarding Claim 4, Miura et al. teachesall of the elements of the current
`
`invention in claim 1 as explained above.
`
`Miura et al. further teaches the anticorrosion agent can be an alkylbenzene
`
`sulfonic ester (line 57 and Table 1) (i.e. the sulfur-containing cyclic compound is a
`
`sulfur-containing cyclic ester).
`
`7.
`
`Regarding Claim 5, Miura et al. teachesall of the elements of the current
`
`invention in claim 1 as explained above.
`
`Miura et al. further teaches the anticorrosion agent can be an alkylbenzene
`
`sulfonic ester (line 57 and Table 1) (i.e. the sulfur-containing cyclic compound is a
`
`sulfonate ester).
`
`8.
`
`Regarding Claim 8, Miura et al. teachesall of the elements of the current
`
`invention in claim 1 as explained above.
`
`Miura et al. further teaches the anticorrosion agent can be an alkylbenzene
`
`sulfonic ester (line 57 and Table 1) (i.e. the sulfur-containing cyclic compound is a
`
`sulfonate ester) wherein the anticorrosion agent is applied by adding to the electrolytic
`
`solution (lines 39-40) and thus, it is inherent that the anticorrosion agent would move
`
`into the positive electrode (i.e. the positive electrode also retains the sulfur-containing
`
`cyclic compound). An inherent feature does not need to be recognized by the art at the
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 4
`
`time of the invention, but only that the subject matter is in fact inherent in the prior art
`
`reference. See MPEP §2112(Il).
`
`9.
`
`Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Nakamura et al. (JPH02117066A), cited in the Information Disclosure Statement. The
`
`English machine translation of Shimamura etal. is attached andis cited below.
`
`10.
`
`Regarding Claim 1, Nakamura et al. teaches an alkaline dry battery comprising a
`
`zinc negative electrode, a positive electrode and a separator (Para. [0003] and line 55)
`
`(i.e. a positive electrode, a negative electrode and a separator disposed between the
`
`positive electrode and the negative electrode and the negative electrode including a
`
`negative electrode active material containing zinc) an alkaline aqueous solution as the
`
`electrolyte (lines 143-144) (i.e. an alkaline electrolyte retained in the positive electrode,
`
`the negative electrode and the separator) and alkylphenyl polyethylene glycol ether
`
`sulfate ester salt added to the negative electrode (lines 13-15) (i.e. the negative
`
`electrode material comprising an additive including a sulfur-containing cyclic
`
`compound).
`
`11.
`
`Regarding Claim 7, Nakamura et al. teachesall of the elements of the current
`
`invention in claim 1 as explained above.
`
`Nakamura etal. further teaches the alkylphenyl polyethylene glycol ether sulfate
`
`salt is added at 0.1 parts by weight based on 100 parts by weight of the zinc alloy
`
`powder (i.e. per 100 parts by mass of the negative electrode active material included in
`
`the negative electrode) (lines 59-61 and Example 2 in Table 1)
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 5
`
`Claim Rejections - 35 USC § 103
`
`12.
`
`—_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-AlA) 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.
`
`13.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth 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.
`
`14.
`
`‘The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized asfollows:
`
`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 presentin the application indicating
`
`obviousness or nonobviousness.
`
`15.=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 ownedasof the effective filing date of the claimed invention(s) absent any
`
`evidenceto 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
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 6
`
`ownedasofthe effectivefiling 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.
`
`
`
`16. Claims 2-3 and6are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Miura et al. (UPS63248062A)in view of Inada et al. (US 2005/0130035).
`
`17.
`
`Regarding Claim 2, Miura et al. teachesall of the elements of the current
`
`invention in claim 1 as explained above.
`
`Miura et al. further teaches the anticorrosion agent can be an alkylbenzene
`
`sulfonic ester (line 57 and Table 1) (i.e. the sulfur-containing cyclic compound is a
`
`sulfonate ester) wherein the anticorrosion agent is applied by adding to the electrolytic
`
`solution (lines 39-40) and forms a film on the negative electrode surface protecting from
`
`corrosion (lines 80-84).
`
`Miura et al. does not explicitly the cyclic compound has a ring structure having a
`
`sulfur atom.
`
`However, Inada et al. teaches 1,3-propene sultone as an electrolyte additive
`
`(claim 11) forming a protective film on a negative electrode (Para. [0089,0091]]) (i.e. a
`
`sulfur-containing cyclic compound hasa ring structure having a sulfur atom).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to combine the additive 1,3-propene sultone for its
`
`use as an electrolyte additive for forming protective film on negative electrode, as
`
`combing equivalents knownfor the same purpose is prima facie obvious. It is prima
`
`facie obvious to combine two compositions each of which is taught by the prior art to be
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 7
`
`useful for the same purpose, in order to form a third composition to be used for the very
`
`same purpose. See MPEP §2144.06(I).
`
`18.
`
`Regarding Claim 3, Miura et al. teachesall of the elements of the current
`
`invention in claim 2 as explained above.
`
`Miura et al. further teaches the anticorrosion agent can be an alkylbenzene
`
`sulfonic ester (line 57 and Table 1) (i.e. the sulfur-containing cyclic compound is a
`
`sulfonate ester) wherein the anticorrosion agent is applied by adding to the electrolytic
`
`solution (lines 39-40) and formsa film on the negative electrode surface protecting from
`
`corrosion (lines 80-84).
`
`Miura et al. does not explicitly the cyclic compound has a five-membered ring.
`
`However, Inada et al. teaches 1,3-propene sultone as an electrolyte additive
`
`(claim 11) forming a protective film on a negative electrode (Para. [0089,0091]]) (i.e. a
`
`sulfur-containing cyclic compound hasa ring structure having a five-memberedring).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to combine the additive 1,3-propene sultone for its
`
`use as an electrolyte additive for forming protective film on negative electrode, as
`
`combing equivalents knownfor the same purpose is prima facie obvious. 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. See MPEP §2144.06(I).
`
`19.
`
`Regarding Claim 6, Miura et al. teachesall of the elements of the current
`
`invention in claim 1 as explained above.
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 8
`
`Miura et al. further teaches the anticorrosion agent can be an alkylbenzene
`
`sulfonic ester (line 57 and Table 1) (i.e. the sulfur-containing cyclic compound is a
`
`sulfonate ester) wherein the anticorrosion agent is applied by adding to the electrolytic
`
`solution (lines 39-40) and forms a film on the negative electrode surface protecting from
`
`corrosion (lines 80-84).
`
`Miura et al. does not explicitly the cyclic compound has a five-membered ring.
`
`However, Inada et al. teaches 1,3-propene sultone as an electrolyte additive
`
`(claim 11) forming a protective film on a negative electrode (Para. [0089,0091]]).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to combine the additive 1,3-propene sultone for its
`
`use as an electrolyte additive for forming protective film on negative electrode, as
`
`combing equivalents knownfor the same purpose is prima facie obvious. 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. See MPEP §2144.06(I).
`
`Conclusion
`
`20.=Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ARMINDO CARVALHO JR. whosetelephone number is
`
`(571)272-5292. The examiner can normally be reached Monday-Thursday 7:30a.m.-
`
`5p.m..
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 9
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Ula Ruddock can be reached on 571 272-1481. 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:/Awww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`httos:/Awww.uspto.gov/patents/docx for information aboutfiling 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.
`
`/A.C./
`Examiner, Art Unit 1729
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`