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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`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, VA22182
`
`CARVALHO JR., ARMINDO
`
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/29/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time 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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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.
`(] Claim(s)__ is/are objectedto.
`C] 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://www.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)7) 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
`1.1.) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received 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)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240223
`
`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 STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 02 January 2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() 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)(2) 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
`
`underthefirst inventor to file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`2.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), wasfiled in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January
`
`2, 2024 has been entered.
`
`Response to Amendment
`
`3.
`
`In response to the amendment received January 2, 2024:
`
`a.
`
`Claims 1, 3-6 and 8-9 are pending. Claims 2 and 7 have been cancelled
`
`as per applicant’s request.
`
`b.
`
`The previous rejection to claims 1, 3-6 and 8 is withdrawn. However, a
`
`new rejection has been madebelow in light of Matsuyama et al. (WO
`
`2015/163254).
`
`C.
`
`The core of the previous rejection to claim 9 is maintained with slight
`
`changes madeinlight of the amendment.
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`The text of those sections of Title 35, U.S. Code not included in this action can
`
`be found in a prior Office action.
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 3
`
`5.
`
`Claims 1, 3-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Nakamura et al. (JPHO2117066A), cited in the Information Disclosure Statementin
`
`view of Matsuyama et al. (WO 2015/163254) as evidenced by Davis et al. (US
`
`2009/0249614). The English machine translation of Nakamuraetal. is attached in a
`
`previous Office Action and is cited below. The English machinetranslation of
`
`Matsuyama etal. is attached and is cited below.
`
`6.
`
`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, as electrolyte permeates the anode [negative
`
`electrode] and cathode [positive electrode]
`
`in batteries, as evidenced by Davis et al. —
`
`Para. [0002] ) and alkylpheny! 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 alkylpheny! 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 compoundis retained in
`
`the negative electrode in an amount of 0.1 parts 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) forming a coating layer on the surface of the negative electrode active
`
`material to suppress gas generation (lines 101-104 and 112-117) wherein the
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 4
`
`electrolyte solution is prepared by adding carboxymethyl cellulose and sodium
`
`polyacrylate as a gelling agent to an aqueous potassium hydroxide solution (i.e. the
`
`alkaline electrolyte is gelled by a gelling agent) (lines 141-144) and alkylphenyl
`
`polyethylene glycol ether sulfate ester salt added to an alkaline aqueous electrolytic
`
`solution (lines 214-216) (i.e. the sulfur-containing cyclic compoundis dispersed in the
`
`alkaline electrolyte).
`
`Nakamura et al. does not explicitly the cyclic compound has a ring structure
`
`having a sulfur atom.
`
`However, Matsuyama et al. teaches a battery additive for an alkaline battery (pg.
`
`21, lines 848-853) wherein the electrolyte additive is propane sultone(i.e. sulfur-
`
`containing cyclic compound has a ring structure having a sulfur atom) (pg. 11, lines 454-
`
`457).
`
`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 Nakamura etal. which contains a
`
`sulfur containing cyclic compound additive in the negative electrode and electrolyte,
`
`to
`
`incorporate the teaching of the battery additive taught by Matsuyama et al. comprising
`
`propane sultone(i.e. a sulfur containing cyclic compound additive having a ring
`
`structure having a sulfur atom) to the negative electrode and electrolyte, as the propane
`
`sultone additive provides high output characteristics developed by adsorption to active
`
`material (lines 86-89).
`
`Regarding the functional limitation of the sulfur containing cyclic compound being
`
`configured to facilitate a zinc precipitation reaction upon the alkaline battery being
`
`charge by misusein reverse polarity, as the claimed products and prior art products are
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 5
`
`identical or substantially identical
`
`in composition (both the instant claim and Nakamura
`
`et al. as modified by Matsuyama etal. teach the sulfur containing cyclic compound has
`
`a ring structure having a sulfur atom retained in the negative electrode and dispersed in
`
`the alkaline electrolyte, and a negative active material containing zinc), the function of
`
`facilitating a zinc precipitation reaction upon the alkaline battery being charge by misuse
`
`in reverse polarity is expected. Where the claimed and prior art products are identical or
`
`substantially identical in structure or composition, or are produced byidentical or
`
`substantially identical processes, a prima facie case of either anticipation or
`
`obviousness has been established.
`
`"When the PTO showsa soundbasis for believing
`
`that the products of the applicant and the prior art are the same, the applicant has the
`
`burden of showing that they are not." See MPEP 2112.01 (I).
`
`7.
`
`Regarding Claim 3, Nakamura et al. as modified by Matsuyama et al. teachesall
`
`of the elements of the current invention in claim 1 as explained above.
`
`Nakamuraet al. does not explicitly the cyclic compound wherethe ring structure
`
`is a five-memberedring.
`
`However, Matsuyama et al. teaches a battery additive for an alkaline battery (pg.
`
`21, lines 848-853) wherein the electrolyte additive is propane sultone(i.e. sulfur-
`
`containing cyclic compound hasa ring structure which is a five-memberedring) (pg. 11,
`
`lines 454-457).
`
`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 Nakamura etal. which contains a
`
`sulfur containing cyclic compound additive in the negative electrode and electrolyte,
`
`to
`
`incorporate the teaching of the battery additive taught by Matsuyama et al. comprising
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 6
`
`propane sultone(i.e. a sulfur containing cyclic compound additive having a ring
`
`structure having a sulfur atom) to the negative electrode and electrolyte, as the propane
`
`sultone additive provides high output characteristics developed by adsorption to active
`
`material (lines 86-89).
`
`8.
`
`Regarding Claim 4, Nakamura et al. as modified by Matsuyama et al. teachesall
`
`of the elements of the current invention in claim 1 as explained above.
`
`Nakamuraet al. does not teach the sulfur-containing cyclic compoundis a sulfur-
`
`containing cyclic ester.
`
`However, Matsuyama et al. teaches a battery additive for an alkaline battery (pg.
`
`21, lines 848-853) wherein the electrolyte additive is propane sultone(i.e. sulfur-
`
`containing cyclic compoundis a sulfur-containing cyclic ester) (pg. 11, lines 454-457).
`
`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 Nakamura et al. which contains a
`
`sulfur containing cyclic compound additive in the negative electrode and electrolyte,
`
`to
`
`incorporate the teaching of the battery additive taught by Matsuyama et al. comprising
`
`propane sultone(i.e. a sulfur containing cyclic compound additive having a ring
`
`structure having a sulfur atom) to the negative electrode and electrolyte, as the propane
`
`sultone additive provides high output characteristics developed by adsorption to active
`
`material (lines 86-89).
`
`9.
`
`Regarding Claim 5, Nakamura et al. as modified by Matsuyama etal. teachesall
`
`of the elements of the current invention in claim 4 as explained above.
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 7
`
`Nakamura et al. does not teach the sulfur-containing cyclic ester includes at least
`
`one selected from the group consisting of a sulfate ester, sulfite ester, and a sulfonate
`
`ester.
`
`However, Matsuyama et al. teaches a battery additive for an alkaline battery (pg.
`
`21, lines 848-853) wherein the electrolyte additive is propane sultone(i.e. sulfur-
`
`containing cyclic ester comprises a sulfonate ester) (pg. 11, lines 454-457).
`
`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 Nakamura etal. which contains a
`
`sulfur containing cyclic compound additive in the negative electrode and electrolyte,
`
`to
`
`incorporate the teaching of the battery additive taught by Matsuyama et al. comprising
`
`propane sultone(i.e. a sulfur containing cyclic compound additive having a ring
`
`structure having a sulfur atom) to the negative electrode and electrolyte, as the propane
`
`sultone additive provides high output characteristics developed by adsorption to active
`
`material (lines 86-89).
`
`10.|Regarding Claim 6, Nakamura et al. as modified by Matsuyama et al. teachesall
`
`of the elements of the current invention in claim 1 as explained above.
`
`Nakamura et al. does not the cyclic compoundincludes at least one selected
`
`from the group consisting of 1,3-propanesultone, 1,3- propenesultone, ethylene sulfite,
`
`However, Matsuyama et al. teaches a battery additive for an alkaline battery (pg.
`
`21, lines 848-853) wherein the electrolyte additive is propane sultone(i.e. sulfur-
`
`containing cyclic compound comprises 1,3-propane sultone) (pg. 11, lines 454-457).
`
`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 Nakamura etal. which contains a
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 8
`
`sulfur containing cyclic compound additive in the negative electrode and electrolyte,
`
`to
`
`incorporate the teaching of the battery additive taught by Matsuyama et al. comprising
`
`propane sultone(i.e. a sulfur containing cyclic compound additive having a ring
`
`structure having a sulfur atom) to the negative electrode and electrolyte, as the propane
`
`sultone additive provides high output characteristics developed by adsorption to active
`
`material (lines 86-89).
`
`11.
`
`Regarding Claim 8, Nakamura et al. as modified by Matsuyama et al. teachesall
`
`of the elements of the current invention in claim 1 as explained above.
`
`Nakamuraet al. further teaches an alkaline dry battery comprising a zinc
`
`negative electrode, a positive electrode and aseparator
`
`(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
`
`added thereto (lines 53-56) and thus, as electrolyte permeates the anode(i.e. negative
`
`electrode) and cathode(i.e. positive electrode) in batteries, as evidenced by Davis etal.
`
`— Para. [0002],
`
`it is inherent that the alkylphenyl polyethylene glycol ether sulfate ester
`
`salt 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 time of the invention, but only that the subject matteris in fact inherent
`
`in the prior art reference. See MPEP §2112(II).
`
`12.
`
`Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura
`
`et al. (JPHO02117066A), cited in the Information Disclosure Statement in view of Kagawa
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 9
`
`et al. (JPS62213067A) as evidenced by Davis et al. (US 2009/0249614). The English
`
`machine translation of Nakamuraet al. is attached in a previous Office Action and is
`
`cited below. The English machine translation of Kagawaetal. is attached andis cited
`
`below.
`
`13.
`
`Regarding Claim 9, 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, as electrolyte permeates the anode [negative
`
`electrode] and cathode [positive electrode] in batteries, as evidenced by Davis etal. —
`
`Para. [0002]) and alkylpheny! 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) wherein the electrolyte solution
`
`is prepared by adding carboxymethyl cellulose and sodium polyacrylate as a gelling
`
`agent to an aqueous potassium hydroxide solution (i.e. the alkaline electrolyte is gelled
`
`by a gelling agent) (lines 141-144) and alkylphenyl polyethylene glycol ether sulfate
`
`ester salt added to an alkaline aqueous electrolytic solution (lines 214-216) (i.e. the
`
`sulfur-containing cyclic compoundis dispersed in the alkaline electrolyte).
`
`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 10
`
`However, Kagawaet al. teaches a dry battery having a zinc negative electrode
`
`(lines 16-17) wherein sulfolane is added to the negative electrode zinc can (pg. 3 lines,
`
`56-58) (i.e. the additive including a sulfur-containing cyclic compoundis sulfolane) and
`
`the sulfolane is added to the electrolyte (lines 42-44) .
`
`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) and the electrolyte (pg. 2, lines 44-48).
`
`Regarding the functional limitation of the sulfur containing cyclic compound being
`
`configured to facilitate a zinc precipitation reaction upon the alkaline battery being
`
`charge by misusein reverse polarity, as the claimed products and prior art products are
`
`identical or substantially identical
`
`in composition (both the instant claim and Nakamura
`
`et al. as modified by Kagawaetal. teach the sulfur containing cyclic compound is a
`
`sulfolane and is retained in the negative electrode and dispersed in the alkaline
`
`electrolyte, and a negative active material containing zinc), the function of facilitating a
`
`zinc precipitation reaction upon the alkaline battery being charge by misuse in reverse
`
`polarity is expected. Where the claimed and prior art products are identical or
`
`substantially identical in structure or composition, or are produced byidentical or
`
`substantially identical processes, a prima facie case of either anticipation or
`
`obviousness has been established.
`
`"When the PTO showsa soundbasis for believing
`
`that the products of the applicant and the prior art are the same, the applicant has the
`
`burden of showing that they are not." See MPEP 2112.01 (I).
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 11
`
`Response to Arguments
`
`14.
`
`Applicant’s arguments with respect to claim 1, 3-6 and 8 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.
`
`15.
`
`Applicant's arguments filed January 2, 2024 with respect to claim 9 have been
`
`fully considered but they are not persuasive.
`
`Applicant argues Kagawa does notprovide for the proposed amendment and
`
`thus claim 9 is not obvious.
`
`Examiner respectfully disagrees. Nakamura et al. teaches the electrolyte solution
`
`is prepared by adding carboxymethyl cellulose and sodium polyacrylate as a gelling
`
`agent to an aqueous potassium hydroxide solution (i.e. the alkaline electrolyte is gelled
`
`by a gelling agent) (lines 141-144) and alkylphenyl polyethylene glycol ether sulfate
`
`ester salt added to an alkaline aqueous electrolytic solution (lines 214-216) (i.e. the
`
`sulfur-containing cyclic compound is dispersed in the alkaline electrolyte). Regarding
`
`the newly added functional of facilitating a zinc precipitation reaction upon the alkaline
`
`battery being charge by misuse in reverse polarity, the function is expected, as
`
`explained above in section “6.”. Where the claimed and prior art products are identical
`
`or substantially identical in structure or composition, or are produced by identical or
`
`substantially identical processes, a prima facie case of either anticipation or
`
`obviousness has been established.
`
`"When the PTO showsa soundbasis for believing
`
`that the products of the applicant and the prior art are the same, the applicant has the
`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 12
`
`burden of showing that they are not." See MPEP 2112.01(l). Thus, the argumentis not
`
`persuasive.
`
`Conclusion
`
`16.—Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ARMINDO CARVALHO JR. whosetelephone numberis
`
`(571)272-5292. The examiner can normally be reached Monday-Thursday 7:30a.m.-
`
`5p.m..
`
`Examinerinterviews are available via telephone,
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`
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`
`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 numberfor
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
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`
`obtained from Patent Center. Unpublished application information in Patent Centeris
`
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`
`

`

`Application/Control Number: 17/438,555
`Art Unit: 1729
`
`Page 13
`
`/ARMINDO CARVALHO JR./
`Examiner, Art Unit 1729
`
`