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`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
`
`11/03/2023
`
`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*
`1,3-6 and 8-9 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1,3-6 and 8-9 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj} Claim(s)
`are subjectto restriction and/or election requirement
`* 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) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J 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)1) 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)C All
`1... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`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 20231027
`
`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) Responsive to communication(s)filed on 08 September 2023.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 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)\0) 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.
`
`Response to Amendment
`
`2.
`
`In response to the amendmentreceived September 8, 2023:
`
`a.
`
`Claims 1, 3-6 and 8-9 are pending. Claims 2 and 7 have been cancelled
`
`as per applicant’s request.
`
`b.
`
`The core of the previous rejection is maintained with slight changes made
`
`in light of the amendment. All changes to the rejection are necessitated by the
`
`amendment.
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`The text of those sections of Title 35, U.S. Code not includedin this action can
`
`be found in a prior Office action.
`
`4.
`
`Claims1, 3-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Nakamuraet al. (JPH02117066A), cited in the Information Disclosure Statementin
`
`view of Inada et al. (US 2005/0130035). The English machine translation of Nakamura
`
`et al. is attached in a previous Office Action andis cited below.
`
`5.
`
`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
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 3
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`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 113-115) (i.e. the negative
`
`electrode material comprising an additive including a sulfur-containing cyclic compound)
`
`and 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. wherein the sulfur-containing
`
`cyclic compound is retained in the negative electrode in an amount of 0.1 parts per 100
`
`parts by massof the negative electrode active material included in the negative
`
`electrode) (lines 59-61 and Example 2 in Table 1) forming a coating layer on the surface
`
`of the negative electrode active material to suppress gas generation (lines 101-104 and
`
`112-117).
`
`Nakamura et al. does not explicitly the cyclic compound hasa 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) in order to
`
`suppress gas generation (Para. [0089)).
`
`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 to
`
`suppress gas generation, as combing equivalents known for the same purposeis prima
`
`facie obvious. It is prima facie obvious to combine two compositions each of which is
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 4
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`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).
`
`6.
`
`Regarding Claim 3, Nakamura et al. as modified by Inada et al. teachesall of the
`
`elements of the current invention in claim 1 as explained above.
`
`Nakamura et al. does not explicitly the cyclic compound wherethe ring structure
`
`is a five-membered ring structure.
`
`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 has a ring structure having a five-memberedring
`
`structure) in order to Suppress gas generation (Para. [0089]).
`
`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 to
`
`suppress gas generation, as combing equivalents knownfor the same purposeis 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).
`
`7.
`
`Regarding Claim 4, Nakamura et al. as modified by Inadaet al. teachesall of the
`
`elements of the current invention in claim 1 as explained above.
`
`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 is a sulfur-containing cyclic ester) in order to Suppress gas
`
`generation (Para. [0089)).
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 5
`
`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 whichis 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).
`
`8.
`
`Regarding Claim 5, Nakamura et al. as modified by Inada et al. teachesall of the
`
`elements of the current invention in claim 4 as explained above.
`
`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 ester comprises a sulfonate ester) in order to suppress gas generation
`
`(Para. [0089)).
`
`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).
`
`9.
`
`Regarding Claim 6, Nakamura et al. as modified by Inada 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 6
`
`Nakamura et al. does not explicitly the cyclic compound includes at least one
`
`selected from the group consisting of 1,3-propanesultone, 1,3- propenesultone,
`
`ethylene sulfite, ethylene sulfate, and sulfolane.
`
`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 is 1,3-propanesultone) in order to suppress gas
`
`generation (Para. [0089]).
`
`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 to
`
`suppress gas generation, as combing equivalents knownfor the same purposeis 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).
`
`10.
`
`Regarding Claim 8, Nakamura et al. as modified by Inada et al. et al. teachesall
`
`of the elements of the current invention in claim 1 as explained above.
`
`Nakamuraetal. further 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) with alkylphenyl polyethylene glycol ether sulfate ester salt
`
`addedthereto (lines 53-56) and thus, it is inherent that the alkylphenyl polyethylene
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 7
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`glycol ether sulfate ester salt would moveinto the positive electrode (i.e. the positive
`
`electrode also retains the sulfur-containing cyclic compound). An inherent feature does
`
`not needto be recognizedby the art at the time of the invention, but only that the
`
`subject matter is in fact inherentin the prior art reference. See MPEP §2112 (II).
`
`11.
`
`Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura
`
`et al. (JPH02117066A), cited in the Information Disclosure Statement in view of Kagawa
`
`et al. (JPS62213067A). The English machine translation of Nakamuraetal. is attached
`
`in a previous Office Action and is cited below. The English machine translation of
`
`Kagawaetal. is attached and is cited below.
`
`12.
`
`Regarding Claim 1, Nakamura etal. 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 113-115) (i.e. the negative
`
`electrode material comprising an additive including a sulfur-containing cyclic
`
`compound).
`
`Nakamura et al. does not explicitly teach the sulfur-containing cyclic compound
`
`having at least one selected from the group consisting of ethylene sulfate and sulfolane.
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 8
`
`However , Kagawaet al. teaches a dry battery having a zinc negative electrode (lines
`
`16-17) wherein sulfolane is be added to the negative electrode zinc can (pg. 3 lines, 56-
`
`58) (i.e. the additive including a sulfur-containing cyclic compound is sulfolane).
`
`It would have been obvious for one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified the additive in the negative
`
`electrode of Nakamuraetal. to incorporate the teaching of sulfolane, as sulfolane can
`
`achieve the effect of corrosion suppression when added into the negative electrode (pg.
`
`3, lines 92-97).
`
`Responseto Arguments
`
`13.|Applicant’s arguments filed September 8, 2023 have been fully considered but
`
`are moot because the arguments do not apply to the combination references being
`
`used in the currentrejection in light of the amendment.
`
`14.
`
`Applicant’s arguments are drawnto a previous prior art combination and thus,
`
`are not persuasivein light of the newly cited prior art.
`
`Conclusion
`
`15.
`
`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 shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst reply is filed within
`
`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTHshortened statutory period, then the
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 9
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`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee 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 date of this final action.
`
`16.—Any inquiry 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..
`
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`
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`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 10
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`
`/A.C./
`Examiner, Art Unit 1729
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`