UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`16/005,451
`
`06/11/2018
`
`HONAMI NARIYAMA
`
`PANDPOZSSUS
`
`7899
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`C0NLEY~ 01 K
`
`ART UNIT
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/04/2020
`
`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
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`following e—mail address(es):
`
`ipdoeket@rennerotto.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`16/005,451
`Examiner
`HELEN OI KCONLEY
`
`Applicant(s)
`NARIYAMA et al.
`Art Unit
`AIA (FITF) Status
`1725
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from 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, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 8/21/2020.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
`
`2b) D This action is non-final.
`
`3)[:] An election was made by the applicant in response to 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) fl is/are pending in the application.
`
`5a) Of the above Claim(s)
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`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`8)
`Claim(s 116Is/are rejected
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible 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 PPeredback@uspto.gov.
`
`Application Papers
`
`10)|:l The specification is objected to by the Examiner.
`
`is/are: a)[] accepted or b)l:] objected to by the Examiner.
`11)[:] The drawing(s) filed on
`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)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:] Some**
`
`c)l:i None of the:
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`1C] Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`3D Copies of the certified copies of the priority documents have been received in 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) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20200830
`
`

`

`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
`
`2.
`
`The Applicants amendment was received on 8/21/2020. Claim 1 has been
`
`amended.
`
`3.
`
`The text of those sections of Title 35, U.S.C. code not included in this action can
`
`be found in the prior Office Action.
`
`Claim Rejections - 35 USC § 102
`
`4.
`
`The rejection under 35 U.S.C. 102(a)(1) as being anticipated by Huang et al., on
`
`claims 1-4 are withdrawn because the Applicants amended the claims because the
`
`Applicants amended the claims..
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`Claim Rejections - 35 USC § 102/103
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`5.
`
`The rejection under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative,
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`under 35 U.S.C. 103 as obvious over Huang et al. on claim 5 is withdrawn because the
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`Applicants amended the claims.
`
`Claim Rejections - 35 USC § 103
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`6.
`
`The rejection under 35 U.S.C. 103 as being unpatentable over Anderson et al.
`
`(US Publication 2015/0280259) in view of Huang et al. on claims 1-12, 15, 16 is
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`withdrawn because the Applicants amended the claims.
`
`

`

`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 3
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`7.
`
`The rejection under 35 U.S.C. 103 as being unpatentable over Anderson et al.
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`(US Publication 2015/0280259) in view of Huang et al. (US Publication 2017/0062842)
`
`in further view of Wang (US Publication 2014/0178735) on claims 13 and 14 is/are
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`withdrawn because the Applicants amended the claims.
`
`8.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`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.
`
`9.
`
`Claims 1-7, 9-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Wang (US Publication 2014/0178735) in view of Huang et al. (US Publication
`
`2017/0062842).
`
`Regarding ciairri 't we, the Wang reference diseiesea a tievv battery comprising a
`
`iirst iiqtiid containing a reeex mediaterg a iirst eieetrede, whereih the iirst eteetrede is a
`
`pesitive eiectreeie; a first aetive meteriai, wherein the iirst active materiai is a seiiei active
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`materiat that is ihsciuhie in the first iiquid and that cart ecciude ahti reieese iithium iens
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`{P21}? and whereih the iirst active niateriai is a iithium~eentaining transitieh metai
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`compound (i328); and a iirst eiretiiater that ciretiiates the first iietiie between the first
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`eiectrede arid the iiret active rna'teriai :1 P56); wherein the reflex mediater centeihe a
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`
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`structure ei
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`but theitides that each (If the arematic meietiee can
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`eptiehaiiy be substituted with CQR’ and R can he ti. That inciuees NR can aise he
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`

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`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 4
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`substituted by COR” er a thiauthrehe. However, in the caste that Wang may net diecieee
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`a thiahthtene with sufficient specificity, the Huang reference diseiesee that cempehehte
`
`ih eatheiytes 0t tedex batteries comprising phenothiaziue structures of
`
`
`
`can be equivaientiy substituted with thiahthrene {P234}. Theretere,
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`it weuid have beer: ubvieus te orie et erdihary ekiit iii the art betere the ettective titicg
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`date at the inventieh to ineerperate structures of thiartthtene ter structures (it
`
`tttt3‘
`{Emir};jxkk
`E;
`
`disetesed by the Huang et at. reference to further etarity the
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`teachings 0t Wang reference. The substitution of known equivalent structures involves
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`only ordinary skill in the art. In re Fout213 USPQ 532 (CCPA 1982); In re Susi 169
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`USPQ 423 (CCPA 1971); In re Siebentritt152 USPQ 618 (CCPA 1967); In re Ruff 118
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`USPQ 343 (CCPA 1958). When a patent claims a structure already known in the prior
`
`art that is altered by the mere substitution of one element for another known in the field,
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`the combination must do more than yield a predictable result. KSR v. Teleflex
`
`Regarding ciaim 5, the Wang et at. in View (it the Huang et at. reference is siteht
`
`is disctusihg wherein the heteranthtene combeund has a first tedex putentiei and a
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`eecend redex hetehtiai, anti the tiret active materiai has an euuitibtium eeteutiai higher
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`

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`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 5
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`than the first redex peteritiei anti iewer thee the seeehtt redex peteritiei. Hewever, it is
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`the position of the Examiner that such properties are inherent, given that both Huang et
`
`al. and the present application utilize similar or the same materials. A reference which is
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`silent about a claimed invention's features is inherently anticipatory if the missing
`
`feature is necessarily present in that which is described in the reference. m
`
`
`Robertson 49 USPQ2d 1949 (1999). Where the claimed and prior art products are
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`identical or substantially identical in structure or composition or are produced by
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`identical or substantially identical processes, a prima facie case of either anticipation or
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`obviousness has been established. MPEP2112.01 l
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`Regarding eieirri 6, the Wang et at. irt View of the Huang et ei. reference
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`discloses that each eieetrede comprises meciiater arid the redex battery reeherges, it
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`appears the Appiieahts diseieses the hetererithrehe is eiso a first eieetrede side
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`discharge triedie‘ter and has an exidetieh petehtiei. The hrst active rrieteriei has er:
`
`eqtiitibrium petehtiai iewer than the exidatieri petehtiai er the heterahthrerie campeurtd
`
`and the first active materiai has a higher equiiibrium eetehtiei then the first eieetrecie
`
`side discharge mediator (heteranthrehe). Titus, since the Wang trt view of the Huang et
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`at. reference diseiese the same components, it must inherently discloses the same
`
`properties. A reference which is silent about a claimed invention's features is inherently
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`anticipatory if the missing feature is necessarily present in that which is described in the
`
`
`reference. In re Robertson 49 USPQZd 1949 (1999). Where the claimed and prior art
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`products are identical or substantially identical in structure or composition or are
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`produced by identical or substantially identical processes, a prima facie case of either
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`anticipation or obviousness has been established. MPEP2112.01 l
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`

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`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 6
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`Regarding eiaini 7, the Wang et at“ ih view et Huang reference dieeieeee the first
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`oii'euieter ihoitidee a tiret cehteiher, the first active materiai and the tirst iieuid are
`
`contained in the first eehtaiher, the first ciretitater ciretiiatee the tiret iietiid between the
`
`itret eteetrede and the tiret centaiher and eehtact between the iiret active ntatertai and
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`the tiret tiduid in the tiret centainer causes an exideticn reeetien ahd fer a reductieh
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`reaction between the first active materiai and the redex mediator (Pt 6):
`
`Regarding eiaiiri 9, the Wahg in view et the Huang reterehee diecteeee further
`
`centerieihg a seeded iietiid ceriteinirig a charge mediater and a discharge mediater; a
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`eecend eieetrede iniinereed iit the eeeend iiduid; a eeeehd active materiai immersed in
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`the eeeend tiduid; and a eeearater that separates the tirst eiectrode ahd the tiret ttduid
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`here the eecehd eieetrede and the eecohd iidttid, whereih the charge mediator has a
`
`tewer eddiiihrierh petentiat than the eecend active materiai, arid the discharge mediater
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`ihherehtiv has a higher equitihrium petentiai than the seeehd active ntateriai (anode
`
`side}.
`
`Regarding eiaiiri m, the Wang in view et the Htiahg reterehce dieeieeee the
`
`eeeend itedid ceh‘taihe iithiiirri dieeeived therein (P12), the eeeend active rrrateriai
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`eeciiidee and reieaeee the iithiiirn, during Charging, the Charge mediatei' is reduced eh
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`the eeeend etectrede, the charge rnediater reduced en the eeoehd eieetrede is oxidized
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`by the eeeehd active materiei, arid the eeeend aettve materiat eeeiudee the tithiurm ahd
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`during dieeharging, the eecend active materiai that hae ecciiided the iithitittt redecee the
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`dieeharge medieter, the eeeend active materiat reieeeee the tithiiint, arid the dieeharge
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`mediater reduced by the eeeehd active materiai is oxidized en the Second eieotrodei
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`

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`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 7
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`Regarding ciairri H, the Wang in View cf the Huang reierence diecieeee wherein
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`during the charging, the discharge rnedietcr is reduced en the eecehd eiectrede, and
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`during the discharging, the charge mediatet ic cxidized en the eeccnd eiecttcde (P22).
`
`Regarding ciairri 12, the Wang in View 0? the Huang reterence diecieeee the
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`charge mediator and the discharge rriediater are tueed arernatic cemceunde {rt—type and
`
`retype), and the second iiduid centaining the iueed erctnatic centcetinds dissctved
`
`therein causes a sciveted eiectrch ct iithium tc he teieased te diescive the iithinnt as a
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`cation {i139 and P12),
`
`Regarding ciairn 13, the Wang reference diecteees a charge rnedia‘ter that can
`
`incitide phenanthrene, hichenyi, triphenyi end enthracehe (P40, 42), in erder te teciiitate
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`eiectrccenductivity ct the ahcde Thetetere, it wctiid have been devices tc cne ct
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`crdinary ekiii in the art at the time the invention was made te ihcerperate ehei‘iai‘ithrene,
`
`hichenyt, triehenyi and anthracene en the enede aide ae dteciceed hy the Wang et at.
`
`reference tc he incerpereted ea the charge anede mediater required by the Andersen in
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`View of Huang reference in crder te yietd a productive ticw battery.
`
`Regarding ciaiire 14, the Wang diecieeee the encdie cerripartrrient can inciude
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`ene er cerhhihatien ct rnediatere which can ihcttide phencahthreiihe etructcre (Pei), zit }.
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`Thus, it weuid have been ehvicus te ene ct ordinary shiti in the art at the time of the
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`inventien tc inciude a phenenthrciihe in the second iiduid emcicyed in the tiew battery ct
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`meditied Wang as its diecharge mediator because Andereen teaches the ene mediater
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`can serve ae the first rriediater, the eecehd rriedtater, er ee heth the iiret and eecchd
`
`medieter, fer a heiieceti cf the battery {See Andersen, Pare. 64, Stein: 5). Furthermore,
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`mere reccgniticn et tatent erceerties, iiite a chehanthrctine having the capacity te
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`

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`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 8
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`tathctich as a discharge mediatci‘ tcr the ahede et a redcx tiew battery, in the pricr art as
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`taught above. does hot rehder hohnchvious an otherwise hhcwri inventicn (eg, it?
`
`re Wiseman. 596 F.2d 1019, 2631 US$352 658 (GCPA19?§3)). The courts have aiec heid
`
`that“{t]he tact that appetiaht has recognized ahcthet advahtage which weeid {tow
`
`caturaiiy trcm tctiowihg the ecggeetich ct the mica“ art cahhct he the haeis tcr
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`catehtabiiity when the ditterehces woutd cthetwise he ohvicus.“ EX Pattie Ghiaya. 22?“
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`USPQ 58, 66 {RPM 1885}.
`
`Regardihg eiaim t5, the Wang in view ef Huang further cemerisihg a eecehct
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`circuiater incitidihg a secchd cehtaiher, wherein the second active materiai and the
`
`second iiquid are cchtaihed in the second cchtaihet. the second circuiatot circuiates the
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`secchd iicguid between the secchd eiectrode ace the secchd cchtaiher, arid cohtact
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`hetweeri the secocd active matei‘iai and the eecchd iiqcid ii'i the secchd coritaiher
`
`causes an exidatieh reactieh ct the charge mediatci' with the second active matei'iai
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`and/”or a tedtictich teacher: of the discharge htediatcr with the secohd active materiai
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`{Anode side during charge ca“ discharge}.
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`10.
`
`Claims 8 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Wang (US Publication 2014/0178735) in view of Huang et al. (US Publication
`
`2017/0062842) in further view of Girault et al. (W02013/131838).
`
`Regarding claim 8 and 16, the Wang in view of Huang et al. reference discloses
`
`the claimed invention above and further incorporated herein. The Wang in view of
`
`Huang discloses that the solids of active materials are present in the cathode and
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`anode containers. The Wang in view of Huang reference is silent in disclosing a filter to
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`

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`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 9
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`prevent the transfer of active material on the containers. However, the Anstutz et al.
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`reference discloses filters in the circulator to prevent transfer of solid materials into
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`redox battery to provide continuous use of solid materials. Therefore, it would have
`
`been obvious to one of ordinary skill to provide filters in the circulating path to prevent
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`transfer of solid materials into the electrochemical reaction redox container to provide
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`continuous use of solid materials as disclosed by the Anstutz et al. reference for the
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`Wang reference which teaches also having separate containers with one container per
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`each electrode side to maintain solid particles, in order to provide continuous use solid
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`materials and continuous reactions.
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`Conclusion
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`11.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`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
`
`CFR1.136(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
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`

`

`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 10
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`2.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to HELEN OI K CONLEY whose telephone number is
`
`(571)272-5162. The examiner can normally be reached on 8:30 am - 5:00 pm.
`
`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, Basia Ridley can be reached on 571-272—1453. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see https://ppair-
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`

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`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 11
`
`/He|en Oi K CONLEY/
`
`Primary Examiner, Art Unit 1725
`
`