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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
`
`17/394,405
`
`08/05/2021
`
`SHUJIITO
`
`083710-3475
`
`5315
`
`Rimon PC - Pansonic Corporation
`8300 Greensboro Dr
`Suite 500
`McLean, VA 22102
`
`KRONE, TAYLOR HARRISON
`
`1728
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/28/2024
`
`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):
`USPTOmail@rimonlaw.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-11 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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1-11 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) The drawing(s)filed on 05 August 2021 is/are:
`a)f{¥) 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)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Y) All
`1.) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.2.) 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
`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 20240215
`
`Application No.
`Applicant(s)
`17/394,405
`ITO et al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`TAYLOR H KRONE
`1728
`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 05 August 2021.
`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: 17/394,405
`Art Unit: 1728
`
`Page 2
`
`DETAILED ACTION
`
`Notice ofPre-AIA or AIA Status
`
`The presentapplication, filed on or after March 16, 2013, is being examined underthe
`
`first inventorto file provisions of the AIA.
`
`In the eventthe determination ofthe status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (oras subject to pre-AJA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis (1.e., changing from AJAto pre-AIJA)for the rejection will not be considered a
`
`new groundof rejection if the prior art relied upon, and the rationale supporting the rejection,
`
`would be the same undereitherstatus.
`
`Claim Rejections - 35 USC § 103
`
`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 fora 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 obviousbefore 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 backgroundfor determining obviousness under 35
`
`U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the priorart.
`
`2. Ascertaining the differences betweentheprior art and the claimsat issue.
`
`3. Resolving the level of ordinary skill in the pertinentart.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`This application currently namesjoint inventors. In considering patentability of the
`
`claims the examiner presumesthat the subject matter of the various claims was commonly
`
`

`

`Application/Control Number: 17/394,405
`Art Unit: 1728
`
`Page 3
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`ownedas of 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 owned asof the effective filing date
`
`of the later invention in order for the examinerto consider the applicability of 35 U.S.C.
`
`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) priorart against the later invention.
`
`Claims 1, 5, 6, 7,8, 9, 10, and 11 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over US 20190058207 (Fujimoto ‘207 — claiming foreign priority to WO
`
`2018016247 with a publication date of January 25, 2018, as cited in the IDS filed on August
`
`5, 2021).
`
`Regarding claim 1, Fujimoto ‘207 teaches a flow battery (flow battery 1000; [0021])
`
`comprising: a negative electrode(first electrode 210; [0048]); a positive electrode (second
`
`electrode 220; [0048]);
`
`a first liquid (first liquid 110; [0023]) in contact with the negative electrode(first
`
`liquid 110 comes into contact with the first electrode 210; [(0039]), the first liquid including
`
`first redox species that comprises an aromatic compoundcapable of dissolving lithium as a
`
`cation (the first liquid 110 containing the condensed aromatic compounddissolvedtherein has
`
`the property of causing lithium to release solvated electrons and dissolve as cations; [0026];
`
`wherein the condensed aromatic compound maybe biphenyl [0040], corresponding to paragraph
`
`[0019] & [0031] of the presently filed specification wherethe first redox species contains a
`
`condensed aromatic compoundsuch as biphenyl);
`
`a secondliquid in contact with the positive electrode (second liquid 120 comes into
`
`contact with the second electrode 220; [0149]); and
`
`

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`Application/Control Number: 17/394,405
`Art Unit: 1728
`
`Page 4
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`a lithium ion conductive membrane (separator 400 may be a separation membrane
`
`havinglithium ion conductivity; [0060]) disposed betweenthefirst liquid and the second
`
`liquid (the separator 400 separatesthe first liquid 100 from the second liquid 120; [0187]),
`
`wherein
`
`at least one selected from the group consisting of the first liquid and the second
`
`liquid includes a supporting electrolyte including lithium (the electrolyte salt dissolved in at
`
`least one liquid of the first liquid 110 and the second liquid 120 is LiPFe; [0324]; corresponding
`
`to the supporting electrolyte of the present invention substantially consisting of a lithium salt
`
`such as LiPF, in paragraph [0025] of the presently filed specification).
`
`the total of the number of moles of lithium dissolvedin the first liquid and the
`
`number of moles of lithium dissolved in the secondliquid is larger than the number of
`
`molesof lithium present in the supporting electrolyte (see discussion below).
`
`With the disclosed structure of the flow battery in Fujimoto ‘207, the solution containing
`
`the condensed aromatic compoundhasthe ability to dissolve lithium (e.g., lithium metal) in the
`
`first liquid 110 ((0041]) (the separator being wrapped in a large amountoflithium metal foil;
`
`[0044]), such that, the amountof dissolvedlithium is large, resulting in a high energy density
`
`and a high capacity ([0033]). As disclosed by the present invention, whenthere is an additional
`
`lithium source otherthan the supporting electrolyte dissolved in the first or the secondliquid, the
`
`total number of moles of lithium dissolved in the first and secondliquidis larger than the number
`
`of moles of lithium present in the supporting electrolyte ([0011] of the presently filed
`
`specification). The supporting electrolyte is a source of lithium derived from LiPF¢, while the
`
`additional source of lithium is derived from lithium metal, the lithium being dissolved by the
`
`condensed aromatic biphenyl compound,as discussed above. Therefore, it would be obvious to a
`
`

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`Application/Control Number: 17/394,405
`Art Unit: 1728
`
`Page 5
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`person having ordinaryskill in the art, in seeking to achieve a high energy density anda high
`
`capacity for a flow battery, that the total numberof moles of lithium dissolved in the first and
`
`second liquid, would be larger than the number of moles oflithium presentin the supporting
`
`electrolyte, when thefirst liquid contains an additional source of dissolved lithium from the
`
`lithium metal source, as taught by Fujimoto ‘207.
`
`Fujimoto ‘207 does not explicitly disclose that the flow battery satisfies 0.2 <(M1 +
`
`M2 — M3)/M4< 1.5 wherein M1 is the number of molesoflithium dissolvedin the first
`
`liquid, M2 is the number of moles of lithium dissolved in the second liquid, M3is the
`
`number of moles of lithium present in the supporting electrolyte, and M4 is the number of
`
`molesof the first redox species.
`
`Nevertheless, Fujimoto ‘207 discloses lithium dissolvedin the first liquid 110 ({0033]),
`
`corresponding to M1, lithium dissolved in the secondliquid 120 ((0144]), corresponding to M2,
`
`lithium derived from LiPFs presentin the supporting electrolyte ((324]), corresponding to M3,
`
`and the condensed aromatic biphenyl compoundof the first redox species ([0040)),
`
`corresponding to M4. Advantageously, whenthe dissolvedlithium in the first liquid 110 and the
`
`lithium precipitate particles 700 are present, the amount oflithium is large, so that a high energy
`
`density and a high capacity can be achieved ((0033]). However, Fujimoto ‘207 also discloses that
`
`the lithium precipitate particles 700 can harm the cyclelife of the flow battery ((0034]).
`
`Therefore, within the parameters Fujimoto ‘207, the general conditions of a flow battery
`
`balancing a high energy density and a long cycle life are disclosed, wherein the concentrations
`
`M1, M2, M3, and M4 are consideredresults effective variables that can be optimized through
`
`routine experimentation.
`
`

`

`Application/Control Number: 17/394,405
`Art Unit: 1728
`
`Page 6
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`“TWhere the general conditions of a claim are disclosed in the priorart, itis not
`
`inventive to discover the optimum or workable ranges by routine experimentation.” See Jn re
`
`Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value
`
`of aknownresult effective variable, without producing any new or unexpectedresults, is within
`
`the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980)
`
`(see MPEP § 2144.05, II.).
`
`Assuch, priorto the effective filing date of the claimed invention, it would have been
`
`obvious to a person of ordinary skill in the art to optimize the concentrations of lithium dissolved
`
`in the first liquid 110 ([0033]), corresponding to M1, lithium dissolvedin the second liquid 120
`
`((0144]), corresponding to M2, lithium derived from LiPFs present in the supporting electrolyte
`
`((324]), corresponding to M3, and the condensed aromatic biphenyl compoundofthe first redox
`
`species ((0040]), corresponding to M4, to provide a flow battery with a high energy density anda
`
`long life cycle, as taught by Fujimoto ‘207, such that the flow battery would satisfy 0.2 <(M1 +
`
`M2 — M3)/M4 < 1.5.
`
`Regarding claim 5, Fujimoto ‘207 teaches the flow battery accordingto claim 1,
`
`wherein the flow battery further comprises:
`
`a positive electrode active material (second active material 320; [0134]) incontact
`
`with the secondliquid (the second liquid 120 and the secondactive material 320 can comeinto
`
`contact with each other in the second container; [0197]);
`
`as second container containing the positive electrode active material (the second
`
`active material 320 and the secondliquid 120 may be containedin the second container 521;
`
`[0194]); and
`
`

`

`Application/Control Number: 17/394,405
`Art Unit: 1728
`
`Page 7
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`a positive electrode chamber containing the positive electrode (positive electrode
`
`chamber 620 includingthe second electrode 220; [0201] & [0048]);
`
`the secondliquid includes second redoxspecies (the second liquid 120is an ether
`
`solution containing a second electrode-side mediator 121 dissolved therein; [0225]; the second
`
`electrode-side mediator 121 is tetrathiafulvalene; [0226], corresponding to the second redox
`
`species as disclosed in paragraph [0049] ofthe presently filed specification); and
`
`in the second container, the second redox species is oxidized or reduced by the
`
`positive electrode active material (in the second container 521, the second electrode-side
`
`mediator 121 is reduced or oxidized by the second active material 320; [0196], [0235], [0261]).
`
`Regarding claim 6, Fujimoto ‘207 teaches the flow battery according to claim 5,
`
`whereinthe positive electrode active material includeslithium (the second active material
`
`320 may be lithium iron phosphate; [0165]).
`
`Regarding claim 7, Fujimoto ‘207 teaches the flow battery according to claim 5, further
`
`comprising a second circulator (a second circulator 520; [0189]) that circulates the second
`
`liquid betweenthe positive electrode and the positive electrode active material (the second
`
`circulator 520 is a mechanism thatcirculates the second liquid 120 between the second electrode
`
`220 and the second active material 320; [0190]).
`
`Regardingclaim 8, Fujimoto ‘207 teaches the flow battery accordingto claim 1,
`
`wherein the first redox species comprises at least one selected form the group consisting of
`
`phenanthrene, biphenyl, o-terphenyl, triphenylene, anthracene, acenaphthene,
`
`acenaphthylene, fluoranthene,trans-stilbene, benzil, and naphthalene (the condensed
`
`aromatic compoundisat least one selected from the group consisting of phenanthrene, biphenyl,
`
`0-terphenyl, trans-stilbene, triphenylene, anthracene, acenaphthene, acenaphthylene,
`
`

`

`Application/Control Number: 17/394,405
`Art Unit: 1728
`
`Page 8
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`fluoranthene, and benzil; [0285]; corresponding to paragraph [0019] & [003 1] of the presently
`
`filed specification wherethe first redox species contains a condensed aromatic compound).
`
`Regarding claim 9, Fujimoto ‘207 teaches the flow battery according to claim 1,
`
`wherein the supporting electrolyte comprises LiPF(the electrolyte salt dissolvedin at least
`
`oneliquid ofthe first liquid 110 and the second liquid 120 is LiPFe; [0324]; correspondingto the
`
`supporting electrolyte of the present invention substantially consisting of a lithium salt such as
`
`LiPF, in paragraph [0025] of the presently filed specification).
`
`Regarding claim 10, Fujimoto ‘207 teaches the flow battery according to claim 1,
`
`whereinthe first liquid includes a cyclic ether as a solvent(the first liquid 110 may be an
`
`ether solution, wherein the solvent for the condensed aromatic compoundis an ether, for
`
`example, acyclic ether; [0045] — [0047]).
`
`Regarding claim 11, Fujimoto ‘207 teaches the flow battery according to claim 10,
`
`wherein the cyclic ether comprises 2-methyltetrahydrofuran (2-methyltetrahydrofuran may
`
`be used as the cyclic ether; [(0047]).
`
`Claims 2, 3, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over US
`
`20190058207 (Fujimoto ‘207 — claiming foreign priority to WO 2018016247 witha
`
`publication date of January 25, 2018, as cited in the IDS filed on August 5, 2021) in view of
`
`
`
`US 20190058208 (Fujimoto ‘208 — claiming foreign priority to WO 2018016249 witha
`
`publication date of January 25, 2018, as cited in the IDS filed on August 5, 2021).
`
`Regarding claim 2, Fujimoto ‘207 teaches the flow battery according to claim 1, but
`
`does not disclose the flow battery further comprising: a negative electrode active materialin
`
`contract with the first liquid; a first container containing the negative electrode active material;
`
`

`

`Application/Control Number: 17/394,405
`Art Unit: 1728
`
`Page 9
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`and a negative electrode chambercontaining the negative electrode; andin the first container,the
`
`first redox species is oxidized or reduced by the negative electrode active material.
`
`Fujimoto ‘208 discloses a flow battery 1000 includinga first liquid 110, a first electrode
`
`210, and a first active material 310 ({0053]), wherein the flow battery can have both a high
`
`energy density and a longlife cycle, like the flow battery of Fujimoto’ 207 ([0059]). In a first
`
`container 511, the first active material 310 comes into contact with the first liquid 110 ({0167]).
`
`Thefirst electrode 210, serving as the negative electrode, is disposed in a negative electrode
`
`chamber 610 ([0173]). As disclosed by the present invention, the first redox species functions as
`
`a charging mediator (paragraph [0098] of the presently filed specification). As such, charge
`
`mediator 111 can be circulated together with thefirst liquid 110 betweenthe first electrode 2 10
`
`andthefirst active material 310, allowing for the oxidation and reduction reactions of the
`
`materials to proceed moreefficiently ({0121]). Forexample, the charge mediator 111 can be
`
`oxidizedby thefirst active material 310 ([0140]). Therefore, prior to the effective filing date of
`
`the claimed invention, a person of ordinary skill in the art, in seeking to provide a flow battery
`
`with a high energy density and a longlife cycle, would have found it obvious to modify the flow
`
`battery, as taught by Fujimoto ‘207, to include a negative electrode active material in contract
`
`with thefirst liquid; a first container containing the negative electrode active material; and a
`
`negative electrode chambercontaining the negative electrode; andin the first container, the first
`
`redox species is oxidized or reduced by the negative electrode active material, as suggested by
`
`Fujimoto ‘208.
`
`Regarding claim 3, modified Fujimoto ‘207 teaches the flow battery according to claim
`
`2, wherein the negative electrode active material includes lithium (the first active material 310
`
`may be C¢Li; [0089] of Fujimoto ‘208).
`
`

`

`Application/Control Number: 17/394,405
`Art Unit: 1728
`
`Page 10
`
`Regarding claim 4, modified Fujimoto ‘207 teaches the flow battery according to claim
`
`2, further comprisingafirst circulator(a first circulator 510; [0119] of Fujimoto ‘208) that
`
`circulates the first liquid between the negative electrode and the negative electrode active
`
`material (the first circulator 510 circulates the first liquid 110 betweenthefirst electrode 210 and
`
`the first active material 310; [0120] of Fujimoto ‘208).
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to TAYLOR H KRONEwhosetelephone numberis (57 1)270-5064.
`
`The examiner can normally be reached Mondaythrough Friday from 8:30 AM - 5:30 PM EST.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
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`
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`
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`
`If attempts to reach the examiner by telephoneare unsuccessful, the examiner’s
`
`supervisor, MATTHEW T MARTINcan be reached on 571-270-7871. The fax phone number
`
`for the organization wherethis application or proceedingis assigned is 57 | -273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
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`

`

`Application/Control Number: 17/394,405
`Art Unit: 1728
`
`Page 11
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`at 866-217-9197 (toll-free). If you would like assistance from a USPTO CustomerService
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/TAYLOR HARRISON KRONE/
`Examiner, Art Unit 1728
`
`/MATTHEW T MARTIN/
`Supervisory Patent Examiner, Art Unit 1728
`
`