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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
`
`17/386,025
`
`07/27/2021
`
`HONAMI SAKO
`
`083710-3467
`
`9273
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`CLARY, KAYLA ELAINE
`
`1721
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/28/2023
`
`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.
`17/386 ,025
`Examiner
`Kayla E Clary
`
`Applicant(s)
`SAKOetal.
`Art Unit
`1721
`
`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) Responsive to communication(s) filed on 07/27/2021.
`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)02 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)\0) 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*
`1-14 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-14 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) 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)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 07/27/2021 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) 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)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4.) 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 7/27/2021.
`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 20230420
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`The presentapplication, filed on or after March 16, 2013, is being examined under the
`
`first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall conclude with one or more claims particularly
`pointing out and distinctlyclaiming the subject matter which the inventor ora jointinventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specifications hall conclude with one or more claims particulary pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claim2is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
`
`matter whichthe inventor or a joint inventor (or for applications subject to pre -AlA 35 U.S.C.
`
`112, the applicant), regards as the invention.
`
`In Claim2, The term "Type Il or Il according to the IUPAC classification”is indefinite. It
`
`is unclear which IUPACclassification is referred to, and the scope of the recitation "IUPAC
`
`classification”is indefinite, becauseit is unclear which testing conditions are required by this
`
`limitation. This limitation is further indefinite, because IUPAC standards can be changed over
`
`time.
`
`Claim Rejections - 35 USC § 102
`
`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 —
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 3
`
`(a)(1) the claimed invention waspatented, described in a printed publication, orin public use,
`on sale, or otherwise available to the public before the effective filing date of the claimed
`invention.
`
`(a)(2) the claimed invention was described in a patentissued under section 151, orinan
`application for patent published or deemed published undersection 122 (b), in which the
`patentor application, as the case maybe, names anotherinventor and waseffectively filed
`before the effective filing date of the claimed invention.
`
`Claim(s) 1-6, 10, 12, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by Panetal. (Journal of Energy Chemistry, 27 (2018) 1362-1368) with Jia et al.
`
`(Sci. Adv. 2015;1:e150088) and Shutz (Ber. Bunsenges. Phys. Chem. 97 (1993) No. 8) as
`
`evidentiary references.
`
`
`Regarding Claim 1, Pan discloses:
`
`e Aredoxflow battery (redox flow battery, see Abstract) comprising:
`
`e
`
`e
`
`e
`
`e
`
`e
`
`anegative electrode (anode, see Pg1363-1364/Section 2.4 and annotated Fig. 5a
`
`below);
`
`apositive electrode (cathode, see Pg1363-1364/Section 2.4 and annotated Fig. 5a
`
`below);
`
`=a first liquid which contains a first nonaqueous solvent {non-aqueous anolyte was made
`
`with a tetraethylene glycol dimethyl ether, see Pg1363/Section 2.1 and Fig. 1),
`
`afirst redox species(lithium metal reacted with biphenyl in tetraethylene glycol dimethyl
`
`ether, see Pg1363/Section 2.1 and Fig. 1),
`
`and metal ions and which is in contact with the negative electrode (1.0 M LiClOwas
`
`used as the supporting electrolyte in the anolyte which is pumped to the anode and is
`
`shown to be in liquid contact with the anode, see Pg1363-1364/Section 2.4 and
`
`annotated Fig. 5a below. As evidenced by Shutz, Li* ions are present in LiClO4
`
`tetraethylene glycol dimethyl ether solutions, see Pg1060/last 4);
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 4
`
`a secondliquid which contains a second nonaqueous solvent and whichis in contact
`
`with the positive electrode (the catholyte consisted of tetraethylene glycol dimethy! ether
`
`and is shown to be in contact with the positive electrode, see annotated Fig. 5a below);
`
`and a metal ion-conducting membrane whichis disposed betweenthefirst liquid and the
`
`secondliquid and which is nonporous(A Lit-conducting PVDF membrane is used as
`
`separator and is shown in annotated Fig. 5a belowto be between the first liquid and
`
`second liquid, see also Pg1363-1364/Section 2.4. As evidenced by Jia, the scanning
`
`electron microscopy image of the membrane, see Jia-Fig. S5, shows that the surface of
`
`the NP11 membrane is uniform and smooth with no cracking (i.e. nonporous), see also
`
`Pg2/C(right)/last 4).
`
`wherein the metal ion-conducting membraneis swollen byat least one selected from the
`
`group consisting ofthefirst liquid and the secondliquid and allows the metal ions to
`
`pass therethrough (Pan teachesa Li*-conducting PVDF membrane (i.e. metal ions to
`
`pass therethrough), see Pg1363-1364/Section 2.4. As evidenced byJia, this membrane
`
`experiencesswelling in electrolyte solution, see Jia- Table S1 and Pg2/last{).
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 5
`
`Negative Electrode
`
`Positive Electrode
`
`
`
`
`
`
`
`
`
` suteatstissatidy
`
`
`fone
`
`y
`
`XS
`BRSSSeS Re
`
`Fo
`
`.
`w
`w
`F i rst L j qu i d
`
`LFEPOs
`
`ite
`
`So coccnuoreuuunmuuaemuyauaenennerse
`ooo x
`. Powersnurce f load {
`NY
`~
`Rewwoooorroorrrrrrrrrrnnnnrnrnrnrnnnrnnrnrnrncncncncnnncnncncncccn
`
`| Second liquid
`
`Annotated Fig. 5a
`
`Regarding Claim2, as best the Examiner understands the claim with respectto the
`
`112b rejection above, scanning electron microscopy image of the membrane, see Jia-Fig. S5,
`
`shows that the surface of the NP11 membrane is uniform and smooth with no cracking (i.e.
`
`nonporous), see also Pg2/C(right)/last 4).
`
`It is the Examiner’s position that because the membrane has a uniform and smooth
`
`surface that the structure of the membrane meets the claimed intended use of an “adsorption
`
`isotherm of a nitrogen gas on the metal ion-conducting membrane belongs to Type Il orIll
`
`according to the IUPAC classification.”
`
`The Courts have held thatif the prior art structure is capable of performing the intended
`
`use, then it meets the claim. See /n re Casey, 152 USPQ 235 (CCPA 1967); and /n re Otto,
`
`136 USPQ 458, 459 (CCPA 1963). (see MPEP § 2114).
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 6
`
`Regarding Claim 3-5, Pan discloses a Li+-conducting PVDF (polyvinylidene difluoride)
`
`membrane, see Pg1363-1364/Section 2.4.
`
`
`Regarding Claim 6, Pan discloses 1.0 MLiClO4 was used as the supporting electrolyte
`
`in the anolyte, see Pg1363-1364/Section 2.4. As evidence by Shutz, Lit ions are present in
`
`LiClO4 tetraethylene glycol dimethyl ether solutions, see Pg1060/last 4.
`
`Regarding Claim 10, Pan discloses:
`
`e
`
`further comprising a positive electrode active material in contact with the secondliquid
`
`(the catholyte contains LiFePOs, see Pg1363-1364/Section 2.4),
`
`e wherein the secondliquid contains a second redox species (the catholyte contains
`
`ferrocene (Fc) and dibromoferrocene (FcBrz), see Pg1363-1364/Section 2.4) ,
`
`andthe second redox speciesis oxidized or reducedby the positive electrode (Fc is
`
`oxidized/reduced by the current collector, see Pg 1366/Equations 2 and 6)
`
`and is oxidized or reducedby the positive electrode active material (Fc is oxidized by
`
`e
`
`e
`
`LiFePO4 derived species, see Pg1366/Equations 4 and 7).
`
`Regarding Claim 12 and 14, Pan teachesthe useof tetraethylene glycol dimethyl ether
`
`(i.e. tetraglyme) as the first nonaqueous and the second nonaqueous solvents which has ether
`
`bonds, see Fig. 1.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections setforth 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 that the claimed invention as a whole would have
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 7
`
`been obvious before the effective filing date of the claimed invention to a person having
`ordinaryskillinthe art to which the claimed invention pertains. Patentabilityshall notbe
`negated by the mannerin whichthe invention was made.
`
`The factual inquiries for establishing a background for determining obviousness under
`
`35 U.S.C. 103 are summarized asfollows:
`
`1. Determining the scope and contentsof 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 presentin the application indicating obviousness or
`
`nonobviousness.
`
`Claim(s) 7-9 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`
`
`2015;1:e 150088) and Shutz (Ber. Bunsenges. Phys. Chem. 97 (1993) No. 8) as evidentiary
`
`references as applied to claim 1 above, and further in view of Carter etal.
`
`(US
`
`20110189520 A1).
`
`
`Regarding Claim 7, Pan is silent toward having a “a negative electrode active material in
`
`contact withthe first liquid.”
`
`To solve the same problem of providing a lithium, non-aqueous redoxflow battery (see
`
`Fig. 2 and [0184]), Carter teaches inclusion of includes a graphite as a negative electrode active
`
`material particles suspended in solvent, see [0184]. Cater further teaches thatinclusion of a
`
`negative electrode active material improves energy density of the redox flow battery, see [0076].
`
`Absent a showing of persuasive secondary considerations, it would have been obvious
`
`to one having ordinaryskill in the art to have included the negative electrode active material
`
`particles of Carter in the anolyte of Pan in order to improve the energy density.
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 8
`
`Modified Pan teaches an anolyte with a negative electrode active material particles of
`
`Carter wascirculated via peristaltic pumps to/from the anode, see Pan-Pg1366/C(left)/2" J and
`
`Fig.5a.
`
`Pan discloses the redox species is reduced/oxidized by the anode, see Pg
`
`1365/Equation 1.
`
`Carter teaches the negative electrode active material particles during operation of the
`
`battery can undergo oxidation/reduction which can go on to reduce/oxidize the redox active
`
`mediator, see [0116] and [0165].
`
`
`Regarding Claim 8, Pan is silent toward having a “a negative electrode active materialin
`
`contact with thefirst liquid.”
`
`To solve the same problem of providing a lithium, non-aqueous redoxflow battery (see
`
`Fig. 2 and [0184]), Carter teaches inclusion of includes a graphite or hard carbon suspension as
`
`a negative electrode active material particles suspendedin solvent, see [0184]. Cater further
`
`teachesthat inclusion of a negative electrode active material improves energy density of the
`
`redox flow battery, see [0076].
`
`Absent a showing of persuasive secondary considerations, it would have been obvious
`
`to one having ordinaryskill in the art to have included the negative electrode active material
`
`particles of Carter in the anolyte of Pan in order to improve the energy density.
`
`Pan further discloses:
`
`e wherein the first redox species is an aromatic compound(the redox species includes
`
`biphenyl, see Fig. 1 and see Pg1363/Section 2.1) ,
`
`e
`
`the metal ions arelithium ions (1.0 MLiClO4 was used as the supporting electrolyte in
`
`the anolyte, see Pg1363-1364/Section 2.4. As evidence by Shutz, Li* ions are presentin
`
`LiClO4 tetraethylene glycol dimethyl ether solutions, see Pg1060/last 4),
`
`e
`
`=the first liquid dissolveslithium (see Fig. 1),
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 9
`
`the negative electrode active material has a property of storing or releasinglithiumions
`
`(The negative electrode active materials taught by Carter are recognized in the instant
`
`specification as being able to store or releaselithium ions),
`
`thefirst liquid has a potential of less than or equal to 0.5 V vs. Li+/Li (Pan discloses the
`
`anolyte has a redox potential of 0.39 V versus Li/Li+, see Abstract. The Examiner notes
`
`that the potential of the liquid is interpreted to be a redox potential from any constituent
`
`in the firstliquid, i.e. the solvent potential window,the redox potential of the negative
`
`electroactive material, and/or redox potential of the first redox species),
`
`and the metal ion-conducting membrane contains an organic polymeras a major
`
`component(as evidenced by Jia, the membrane is comprised of 50%by weight
`
`polyvinylidene difluoride(PVDF), see Jia-Pg5/C(right)/ Section: Preparation of the
`
`Nafion/PVDF membrane).
`
`
`Regarding Claim 9, Pan discloses using biphenyl as a componentof the anolyte, see
`
`Pg1363/Section 2.1 and Fig. 1.
`
`Regarding Claim 13, Pan does not teach“thefirst nonaqueoussolvent and the second
`
`nonaqueoussolvent includes at least one selected from the group consisting of propylene
`
`carbonate, ethylene carbonate, dimethyl carbonate, ethyl methyl carbonate, and diethyl
`
`carbonate.”
`
`To solve the same problem of providing a lithium, non-aqueous redoxflow battery (see
`
`Fig. 2 and [0184]), Carter teaches ethylene carbonate, propylene carbonate, and butylene
`
`carbonate are conventional and successful solvents to use in non-aqueous redoxflow batteries,
`
`see [0148].
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 10
`
`Consequently, one of ordinaryskill in the art at the time the instant invention wasfiled
`
`would have had a reasonable expectation of success is using the carbonate based solvent
`
`taught by Carter as the solventin the catholyte and anolyte of Pan.
`
`Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Pan
`
`
`
`2015;1:e 150088) and Shutz (Ber. Bunsenges. Phys. Chem. 97 (1993) No. 8) as evidentiary
`
`references as applied to claims 1 and 10 above, and in further view of Nariyama (US
`
`20190379080 A1).
`
`Regarding Claim 11, Pan does not teach “the second redox species includesat least
`
`one selected from the group consisting of tetrathiafulvalene, triohenylamine, and derivatives
`
`thereof.”
`
`However, since the prior art of Nariyama recognizes the equivalency of
`
`tetrathiafulvalene and triohenylamine with ferrocenein the field of redox mediators (see
`
`Nariyama-[0128]), it would have been obvious to one of ordinaryskill in the art at the time of the
`
`invention to replace the redox species of Pan with the redox species of Nariyamaasit is merely
`
`the selection of functionally equivalent redox mediator recognizedin the art and one of ordinary
`
`skill in the art would have a reasonable expectation of success in doing so.
`
`Conclusion
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to Kayla E Clary whosetelephone number is (571)272-2854. The examiner
`
`can normally be reached Monday- Friday 8:00-5:00 (PT).
`
`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
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 11
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`encouraged to use the USPTO AutomatedInterview Request (AIR) at
`
`http://www. uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Allison Bourke can be reached on 303-297-4684. The fax phone number for the
`
`organization wherethis application or proceeding is assigned is 571 -273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is available
`
`to registered users. Tofile and manage patent submissions in Patent Center, visit:
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`
`/K.E.C./
`Kayla E. Clary
`Examiner, Art Unit 1721
`
`/SADIE WHITE/
`Primary Examiner, Art Unit 1721
`
`