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
`
`PANDP0285US
`
`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
`
`05/29/2020
`
`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
`
`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 5/19/2020.
`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)
`
`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)
`
`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.
`
`11). The drawing(s) filed on 6/11/18 is/are: a). accepted or b)C] 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)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:i All
`
`b)C] Some**
`
`c)C] None of the:
`
`1.[:] 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)
`
`Information Disclosure Statement(s) (PTO/SB/OBa and/or PTO/SB/08b)
`2)
`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 20200525
`
`

`

`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA 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.
`
`The Applicants response to Election/Restriction has been received on 5/19/2020.
`
`Election/Restrictions
`
`2.
`
`Applicant’s election of thianthrene and phenoxathiinin the reply filed on 5/18/2020
`
`is acknowledged. Because applicant did not distinctly and specifically point out the
`
`supposed errors in the restriction requirement, the election has been treated as an
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`election without traverse (MPEP § 818.01 (a)).
`
`Priority
`
`3.
`
`Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C.
`
`119 (a)-(d).
`
`Information Disclosure Statement
`
`4.
`
`The information disclosure statement (IDS) submitted on 6/11/2018 is being
`
`considered by the examiner.
`
`5.
`
`The drawings are submitted on 6/11/2018.
`
`Drawings
`
`Claim Rejections - 35 USC § 102
`
`7.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new ground of
`
`

`

`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 3
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`8.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an
`application for patent published or deemed published under section 122(b), in which the
`patent or application, as the case may be, names another inventor and was effectively filed
`before the effective filing date of the claimed invention.
`
`9.
`
`Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Huang et al. (US Publication 2017/0062842).
`
`Regarding claims 1-4, the Huang et al. reference discloses a flaw battery
`
`mmprieing a first liquid mnteinirtg a reflex itieeiiater {thianthrenej a first. eierLtrode {current
`
`coilecter), a first active material {PEEP}; and a first circuiater that circuiates the first iiqtiid
`
`between the fire: eietttret‘ie and the ‘iiret active material (P73), wherein the redex mediater
`
`centains a thiathrene.
`
`Claim Rejections - 35 USC § 102/103
`
`10.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an
`application for patent published or deemed published under section 122(b), in which the
`patent or application, as the case may be, names another inventor and was effectively filed
`before the effective filing date of the claimed invention.
`
`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.
`
`

`

`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 4
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`Claim(s) 5 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the
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`alternative, under 35 U.S.C. 103 as obvious over Huang et al. (US Publication
`
`2017/0062842) .
`
`Regarding claim 5, the Huang et at. reference discloses the ciaimed invention. The
`
`i-iuang et ai. reference is siient is disciosing wherein the heterenthrene ceinpeund has a first
`
`redex potentiai and a second retiox petentiai, and the first active materiai has an equilibrium
`
`poteiitiai higher than the first redox petentiai and tower than the secend redex petentiai.
`
`However, it is 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
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`reference which is 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. |_n
`
`re Robertson, 49 USPQ2d 1949 (1999). 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. MPEP2112.01 l
`
`Claim Rejections - 35 USC § 103
`
`11.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new ground of
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`12.
`
`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:
`
`

`

`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 5
`
`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.
`
`13.
`
`Claims 1-12, 15, 16,
`
`is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Anderson et al. (US Publication 2015/0280259) in view of Huang et al. (US
`
`Publication 2017/0062842).
`
`Regarding claims 1-4, the Anderson et al. reference discloses a iiew battery
`
`eernerising s first iienid eenteining e reeex niettieter (thianthrene) a first eieetreeie
`
`(current eeiieeteri, a first active meteriei {P23}; and a first eireuiater that eireuiates the
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`first iiquid between the first eteetrede and the first active meteriei {P73}, witn a reflex
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`mediator, The Andersen et ei. reterenee diseieses eerripenente that is highly soluble
`
`redox shuttles will decrease the footprint of the battery as well as the parasitic loads
`
`(e.g. pumping) associated with battery operation. The Andersen et at. reference is
`
`eiient in diseiesing a heterenthrene. Hewever, the Huang et at, reference dieeieses
`
`irteiuee heierentnrene, pertienieriy thianthrene wherein incorporation of different
`
`substituents at the benzene ring will increase the redox potential and affect the
`
`solubility. Therefore, it would have been obvious before the effective filing date of the
`
`invention to incorporate thianthrene that would promote solubility as disclosed by the
`
`Huang et al. reference for the disclosed redox mediator to increase solubility as
`
`disclosed by the Anderson et al. reference in order to enhance the operation of the
`
`redox flow battery.
`
`Regarding eieim 5, the Andersen et at. in View Of the Huang et 3%. reference is
`
`siient is disciesing wherein the heterantitrene cenipound has a first redox netentiai and a
`
`

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`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 6
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`secnnd redex pet'entiai, and the first active rnateriai hae an etégiiiiihriuin peterttiai higher than
`
`the first reciox petentiai and iewer than the second redex petentiai. Hewever, it is 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 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. In re Robertson 49
`
`USPQZd 1949 (1999). 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. MPEP2112.01 l
`
`Regarding eieirn t5; the Andersen et at. in view of the Huang et at. reference
`
`diecieses that each eiectrede cemerises twe mediaters. the neteranthrene inherentiy
`
`has an oxidation petentiai. The first active materiai has an eauiiihrinm netentiai fewer
`
`than the exieatien petentiaf ef the heteranthrene eernnenntf and the first active rnateriai
`
`has a higher eeniiihriiirn petentiaf than the first efectreee side discharge rneeiiater (P56).
`
`Regarding eiairn 7, the Andersen et at. reference diseieses the first eireufater
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`incindes a first container? the first active materiai and the first iieuid are contained in the
`
`first container, the first eiretiiater eireuiatee the first fietiitf between the first eieetrede and
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`the first eenteiner and eentaet between the first active materiaf and the firet fiqnid in the
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`first eentainer causes an exit‘fatien reaetien and fer a reductien reaction between the
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`first active materiai and the redex mediater (Fig. 1 and 2),
`
`Regarding Ciaitn 8. the x—‘tnrtersen et at. in S’tEW et‘ Huang reference disdases the first
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`cireuiater incfudee a first tranefer nreventien iiiter that prevents tranefer ef the tiret active
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`

`

`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 7
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`materiai, and the first transfer prevention iiiter ie disnceed on a path through which the
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`tirst iiguid tiows trom the first container to the first eiectrcde {Packed bed).
`
`Regarding ciairn :23, the Anderson in Vii-3W of the Huang reterence dieciceee turther
`
`comprising a second iigoid containing a charge mediator and a discharge mediator; a
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`second eiectrcde irnmereed in the second iiduid; a second active rnateriai immersed in
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`the second iigtaid; and a separator that separates the first eiectrode and the iirst iigtrid
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`horn the second eiectrode and the second iiduid, wherein the charge mediator has a
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`tower egotiihriorn petentiai than the second active rnateriai, and the discharge mediator
`
`inherentiy has a higher eqaiiihritiin cctentiai than the second active materiai (Fig.
`
`‘i and
`
`2),
`
`Regarding ciairn it), the Anderson in View of the Huang reference disciceee the
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`second tigoid containe iithior‘n dissoived therein (anoiyte), the second active rnateriai
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`ccciudes and reieases the iithiur‘n, during charging, the charge mediator is reduced on
`
`the second eiectredeq the charge mediator reduced on the eecond eiectrode is oxidized
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`by the eecond active inateriai, and the second active materiai occiodee the iithitirn, and
`
`during discharging, the eecond active materiai that has occioded the iithiom reduces the
`
`discharge mediator, the second active inatei'iat reieases the tithiurn, and the discharge
`
`mediator reduced by the second active materiai is oxidized on the second eiectrode
`
`(Fig. 1 and 2).
`
`Regarding ciairn H, the Ai‘tdei’fifit‘i in View of the Huang reierence dieciceee
`
`wherein during the charging, the discharge mediator is reduced on the second
`
`

`

`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 8
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`eiectreeie; and during the diecherging, the charge nteeiater is exieizee en the eecehe
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`eiectrede (PEEPEG and Fig. 2}.
`
`Regarding ciairn 12, the Andersen in View of the Huang reierenee diecieees the
`
`charge mediater and the discharge inediater are fused arernatic centeeunde, and the
`
`eecend iiqriid eenteinihg the ‘ttieeci ercntatic cernpetinee dissetverj therein ceueee a
`
`eeivateci eiectren et iithiurn te he reieaseti te dieeeive the tithinrn as a catien {P85}.
`
`Regarding eiairn t5, the Andersen in View ct Huang turther centerieing a second
`
`circuieter ineieding a eeccne centeinert wherein the eecenei active ineteriai and the
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`eeeehd iieuid are centained in the eeeend ccnteiner, the eeccnd circtiiatcr circuietee the
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`eecend iiquid between the secend eiectrede and the eecend cehtainer, and eentact
`
`between the eecend active nteteriat and the secenci iiqnie in the second centainer
`
`causes an oxidation reactien ct the charge inediatcr with the eecene‘ active materiai
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`end/er e retiueticn reaetien ei‘ the diecherge mediater with the seeene aetive rheteriei
`
`(Fig.
`
`'1 end 2).
`
`Regarding eiairn t6, the Andersen in View ct Huang reierence ciiecieeee wherein
`
`the eeeehd circuiater inetueee a eeeehd traneter ereventien iiiter that prevents transfer
`
`ct the eeccnd active rneteriei, and the eecene traneier preventieh ‘tiiter ie diseeseei en 23
`
`path threngh which the eecend iiquid tiewe trern the eecend centaiher te the eeeenti
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`eiectreee (Packed bed),
`
`14.
`
`Claims 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Anderson et al. (US Publication 2015/0280259) in view of Huang et al. (US
`
`Publication 2017/0062842) in further view of Wang (US Publication 2014/0178735).
`
`

`

`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 9
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`Regarding oieirn t3, the Anderson in View of Huang diecioeee the oiairned
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`invention above and further incorporated herein. The Anderson reference disoieees the
`
`anode comprises a iithitirn rnetei, however, the Anderson reference ie siient in
`
`diseiosing e eherge rnedietor ie at ieest one seieoted from the green ooneieting ei‘
`
`ehenenthrene, hiehenyt, triehenyiene, and enthreoene. However, the Wang reierence
`
`diecioees 3 charge mediator that can ineiode phenanthrenej hiphenyi, triphenyi end
`
`enthreeene {Pet}, 42), in order to teoiiitete eieotrooondoctivity et the anode Therefore, it
`
`wooid heve been obvious te one of ordinary ekiii in the art at the time the invention was
`
`made to incorporate nhenenthrene, hinhenyi; trinhenyt end enthreeene on the anode
`
`eide as diecioeed by the Wang et at“ reterehce to be incorporated at; the charge anode
`
`mediator required by the Anderson in View of Huang reierenoe in order to yieid e
`
`oredoetive how hettery.
`
`Regarding oiairn 14, the Ai‘tdei’fifit‘i in View of Huang in further view oi Wang
`
`diecioee the cieirned invention above and further incorporated herein The Anderson in
`
`View of Huang in tnrther View oi Wang does not eeecitioeiiy dieoieee at discharge
`
`medietorn hewevern Anderson in View of Huang in inrther View of Wang dieoioees the
`
`enedio cornoertrnent can inciiide one or combination of mediators; which can inotnde
`
`pheneanthroiine structure (Pitt), 4i ). Thus, it wooid have been ohvieue to one of
`
`ordinary skiti in the art at the time of the invention to ineitide a nhenenthretine in the
`
`second iidoid ernetoyed in the how battery ei‘ rneciitied Wang no its dieoherge mediator
`
`heoeoee Andereon teaches; the one mediator can serve ee the first mediator, the
`
`second rnedietor, or ae both the tiret and eecend mediator, for e heit~oe§i of the battery
`
`(see Andersen, Fare. 64, Cieirn 5). Furthermore, rnere recognition ot iatent oreoertiesr
`
`

`

`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 10
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`iike a phenanthroiine having the capacity to iunotioh as a discharge mediator tor the
`
`anode of a redox fiow battery, in the prior art as taught above, does not render non—
`
`obvious an otherwise known invention fog” in re Wiseman, 596 F.2d 1019, 201 USPQ
`
`858 (CCPA19?9}). The courts have aiso heid that"[t]he fact that appeiiant
`
`has recognized another advantage which wouid i‘iow naturaiiy irom foiiowing the
`
`suggestion of the prior art cannot be the basis for patentabiiity when the differences
`
`wouid otherwise be obvious." EX Part5: Obiaya, 232? USPQ 5:3, 60 (BPAE 1985).
`
`Conclusion
`
`15.
`
`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
`
`Patent Application Information Retrieval (PAIR) system. Status information for
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`

`

`Application/Control Number: 16/005,451
`Art Unit: 1725
`
`Page 11
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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.
`
`For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you would like assistance from a USPTO Customer Service Representative or access
`
`to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571 -
`
`272-1000.
`
`/Helen Oi K CONLEY/
`
`Primary Examiner, Art Unit 1725
`
`