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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/321,558
`
`05/17/2021
`
`SHUJIITO
`
`083710-3347
`
`1011
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`LEE, JAMES
`
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/16/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`17/321,558
`Examiner
`JAMES LEE
`
`Applicant(s)
`ITO etal.
`Art Unit
`1725
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1)C Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)C) 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\() 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.
`
`Disposition of Claims*
`1-12 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) 1-12 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C} Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`“If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)2 The specification is objected to by the Examiner.
`11) The drawing(s) filed on 5/17/2021 is/are: a)(¥) 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)[VM. 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) All
`1.{¥] Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 5/17/2021.
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230211A
`
`

`

`Application/Control Number: 17/321,558
`Art Unit: 1725
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 102
`
`1.
`
`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)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale, or otherwise available to the public before the effective filing date of the claimed
`invention.
`
`2.
`
`Claim(s) 1-7, 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by Loretz et al. (US 2020/0152993A1).
`
`Regarding claim 1, Loretz discloses a flow battery (Title, Abstract, Fig. 1-9)
`
`comprising:
`
`a first nonaqueous liquid (alternative embodiment in which organic electrolyte
`
`solutions containing non-polar solvent are used [0043]);
`
`a first electrode at least in part in contact with the first nonaqueous liquid
`
`(electrode 10 [0035], Fig. 1);
`
`a second electrode that is a counter electrode with respectto the first electrode
`
`(electrode 10° [0035], Fig. 1); and
`
`a separator that separates the first electrode and the second electrode from each
`
`other (separator 20 [0035], Fig. 1), wherein:
`
`

`

`Application/Control Number: 17/321,558
`Art Unit: 1725
`
`Page 3
`
`the separator is made of an ion conductive polymer that has a crosslink structure
`
`containing an aromatic ring;
`
`the ion conductive polymer has an alkyl main chain that contains a plurality of
`
`acidic groups; and
`
`at least a subsetof the plurality of the acidic groups forms salts with metal ions
`
`(ionically conductive polymer membrane/separator including functional groups balanced
`
`by alkali or alkali earth metals [0093]-[0094]; non-fluorinated membranes such as
`
`polystyrene that are modified with sulfonic acid groups [0096)).
`
`Regarding claim 2, Loretz disclosesall of the claim limitations as set forth above.
`
`Loretz further discloses the metal ions include at least one species selected from the
`
`group consisting of alkali metal ions and alkaline earth metal ions (functional groups
`
`balanced byalkali or alkali earth metals [0093]-[0094}).
`
`Regarding claim 3, Loretz disclosesall of the claim limitations as set forth above.
`
`Loretz further discloses the metal ions include at least one species selected from the
`
`group consisting oflithium ions, sodium ions, potassium ions, magnesium ions, and
`
`calcium ions (specific metals listed in [0090)).
`
`Regarding claim 4, Loretz disclosesall of the claim limitations as set forth above.
`
`Loretz further discloses the metal ions are lithium ions (Lit [0090)).
`
`Regarding claim 5, Loretz disclosesall of the claim limitations as set forth above.
`
`Loretz further discloses the acidic groups include at least one selected from the group
`
`consisting of a sulfo group, a carboxyl group,atrifluoromethanesulfonylimide group, a
`
`

`

`Application/Control Number: 17/321,558
`Art Unit: 1725
`
`Page 4
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`fluorosulfonylimide group, a fluorosulfonic acid group, a phosphonic acid group, a
`
`fluorophosphonic acid group, and a phosphoric acid group (sulfonic acid groups [0096)).
`
`Regarding claim 6, Loretz disclosesall of the claim limitations as set forth above.
`
`Loretz further discloses the acidic groups include the sulfo group (sulfonic acid groups
`
`[0096)).
`
`Regarding claim 7, Loretz disclosesall of the claim limitations as set forth above.
`
`Loretz further discloses the ion conductive polymer includes a structure represented by
`
`general formula (1),
`
`ry wae net
`
`where m and n are each independently an integer larger than or equal to 1 (non-
`
`fluorinated membranes suchaspolystyrene that are modified with sulfonic acid groups
`
`[0096)).
`
`Regarding claim 11, Loretz disclosesall of the claim limitations as set forth
`
`above. Loretz further disclosesa first electrode mediator (coordination complex [0084}]):
`
`

`

`Application/Control Number: 17/321,558
`Art Unit: 1725
`
`Page 5
`
`a first active material (first active material 30 [0035]); andafirst circulator configured to
`
`circulate the first nonaqueous liquid between the first electrode and the first active
`
`material (pump 60 [0036], Fig. 1), wherein: the first nonaqueous liquid contains thefirst
`
`electrode mediator; the first electrode mediator is oxidized or reduced bythe first
`
`electrode; and the first electrode mediator is oxidized or reducedbythefirst active
`
`material ([0035]-[0036],
`
`[0084)]).
`
`Regarding claim 12, Loretz disclosesall of the claim limitations as set forth
`
`above. Loretz further discloses a second nonaqueous liquid (alternative embodimentin
`
`which organic electrolyte solutions containing non-polar solvent are used [0043]); a
`
`second electrode mediator (coordination complex [0084]); a second active material
`
`(second active material 40 [0035]); and a second circulator configured to circulate the
`
`second nonaqueous liquid between the second electrode and the second active
`
`material (pump 60’ [0036], Fig. 1), wherein: the second nonaqueous liquid contains the
`
`second electrode mediator; at least part of the second electrode is in contact with the
`
`second nonaqueousliquid; the second electrode mediator is oxidized or reduced by the
`
`second electrode; and the second electrode mediator is oxidized or reduced by the
`
`second active material ([0035]-[0036],
`
`[0084}).
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`Apatent for a claimed invention maynotbe obtained, notwithstanding that the claimed
`invention is not identicallydisclosed as set forth in section 102, if the differences between the
`claimed invention and the prior artare such thatthe claimed invention as a whole would have
`been obvious before the effective filing date of the claimed invention to a person having
`
`

`

`Application/Control Number: 17/321,558
`Art Unit: 1725
`
`Page 6
`
`ordinaryskillinthe art to which the claimed invention pertains. Patentabilityshall notbe
`negated by the manner in whichthe invention was made.
`
`4.
`
`The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized asfollows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating
`
`obviousness or nonobviousness.
`
`5.
`
`This application currently namesjoint inventors.
`
`In considering patentability of the
`
`claims the examiner presumesthat the subject matter of the various claims was
`
`commonly ownedasof the effective filing date of the claimed invention(s) absent any
`
`evidence to 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
`
`ownedasof the effective filing date of the later invention in order for the examiner to
`
`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`6.
`
`Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Loretz et al. (US 2020/0152993A1), as applied to claims 1-7, 11-12 above, in view of
`
`Hojo (WO02016208123A1, refer to English equivalent US 2018/0048004A1).
`
`Regarding claim 8, Loretz disclosesall of the claim limitations as set forth above.
`
`Although Loretz discloses organic electrolyte solutions containing non-polar solvent
`
`([0043]), the reference does notdisclose the first nonaqueous liquid contains, as a
`
`

`

`Application/Control Number: 17/321,558
`Art Unit: 1725
`
`Page 7
`
`solvent, a compound that has at least one selected from the group consisting of a
`
`carbonate group and an ether group.
`
`Hojo discloses a redox flow battery (Title, Abstract) comprising a nonaqueous
`
`electrolytic solution ([0083]) including various carbonates such as propylene carbonate,
`
`dimethyl carbonate, diethyl carbonate, methyl ethyl carbonate, cyclic ethers including
`
`dioxolane, or chain ethers including diglyme, triglyme, tetraglyme, etc.([0088]-[0095)).
`
`An obviousness determination is not the result of a rigid formula disassociated
`
`from the consideration of the facts of acase.
`
`Indeed,
`
`the commonsense of those
`
`skilled in the art demonstrates why some combinations would have been obvious where
`
`others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed.
`
`Cir. 2007); see also KSRv. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
`
`The claim would have been obvious because a particular known technique was
`
`recognized as part of the ordinary capabilities of one skilled in the art.
`
`The claim would have been obvious because “a person of ordinary skill has good
`
`reason to pursue the known options within his or her technical grasp.
`
`If the leads to the
`
`anticipated success, it is likely the product not of innovation but of ordinary skill and
`
`common sense.”
`
`It has been held that choosing from a finite numberof identified, predictable
`
`solutions, with a reasonable expectation of success is generally within the skill of the
`
`art.
`
`Regarding claim 9, Loretz disclosesall of the claim limitations as set forth above.
`
`Although Loretz discloses organic electrolyte solutions containing non-polar solvent
`
`([0043]), the reference does not disclose the first nonaqueous liquid contains, as a
`
`

`

`Application/Control Number: 17/321,558
`Art Unit: 1725
`
`Page 8
`
`solvent, at least one selected from the group consisting of propylene carbonate,
`
`ethylene carbonate, dimethyl carbonate, ethyl methyl carbonate, and diethyl carbonate.
`
`Hojo discloses a redox flow battery (Title, Abstract) comprising a nonaqueous
`
`electrolytic solution ([0083]) including various carbonates such as propylene carbonate,
`
`dimethyl carbonate, diethyl carbonate, methyl ethyl carbonate, cyclic ethers including
`
`dioxolane, or chain ethers including diglyme, triglyme, tetraglyme, etc.([0088]-[0095)).
`
`An obviousness determination is not the result of a rigid formula disassociated
`
`from the consideration of the facts of acase.
`
`Indeed,
`
`the commonsense of those
`
`skilled in the art demonstrates why some combinations would have been obvious where
`
`others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed.
`
`Cir. 2007); see also KSRv. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
`
`The claim would have been obvious because a particular known technique was
`
`recognized as part of the ordinary capabilities of one skilled in the art.
`
`The claim would have been obvious because “a person of ordinary skill has good
`
`reason to pursue the known options within his or her technical grasp.
`
`If the leads to the
`
`anticipated success, it is likely the product not of innovation but of ordinary skill and
`
`common sense.”
`
`It has been held that choosing from a finite numberof identified, predictable
`
`solutions, with a reasonable expectation of success is generally within the skill of the
`
`art.
`
`Regarding claim 10, Loretz discloses all of the claim limitations as set forth
`
`above. Although Loretz discloses organic electrolyte solutions containing non-polar
`
`solvent ([0043]), the reference does not disclose the first nonaqueous liquid contains, as
`
`

`

`Application/Control Number: 17/321,558
`Art Unit: 1725
`
`Page 9
`
`a solvent, at least one selected from the group consisting of dimethoxyethane,
`
`dibutoxyethane, diglyme, triglyme, tetraglyme, tetrahydrofuran, 2-methyltetrahydrofuran,
`
`2,0-dimethyltetrahydrofuran, 1,3-dioxolane, and 4- methyl-1,3-dioxolane.
`
`Hojo discloses a redox flow battery (Title, Abstract) comprising a nonaqueous
`
`electrolytic solution ([0083]) including various carbonates such as propylene carbonate,
`
`dimethyl carbonate, diethyl carbonate, methyl ethyl carbonate, cyclic ethers including
`
`dioxolane, or chain ethers including diglyme, triglyme, tetraglyme, etc.([0088]-[0095)).
`
`An obviousness determination is not the result of a rigid formula disassociated
`
`from the consideration of the facts of acase.
`
`Indeed,
`
`the commonsense of those
`
`skilled in the art demonstrates why some combinations would have been obvious where
`
`others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed.
`
`Cir. 2007); see also KSRv. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
`
`The claim would have been obvious because a particular known technique was
`
`recognized as part of the ordinary capabilities of one skilled in the art.
`
`The claim would have been obvious because “a person of ordinary skill has good
`
`reason to pursue the known options within his or her technical grasp.
`
`If the leads to the
`
`anticipated success, it is likely the product not of innovation but of ordinary skill and
`
`common sense.”
`
`It has been held that choosing from a finite numberof identified, predictable
`
`solutions, with a reasonable expectation of success is generally within the skill of the
`
`art.
`
`Conclusion
`
`

`

`Application/Control Number: 17/321,558
`Art Unit: 1725
`
`Page 10
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JAMES LEE whose telephone numberis (571)270-
`
`7937. The examiner can normally be reached MF: 9AM - 6PM.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
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`
`(AIR) at http:/Awww.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 wherethis application or proceeding is assignedis 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
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`
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`
`If you would like assistance from a USPTO CustomerService
`
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`
`/James Lee/
`Primary Examiner, Art Unit 1725
`2/11/2023
`
`