www.uspto.gov
`
`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
`
`09/15/2023
`
`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 06/01/2023.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J 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*
`1-20 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) 1-20 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj} 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://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)0) The drawing(s) filedon__ is/are: a)(J 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)1) 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)C 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`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 20230828
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`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 § 112
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`(a) INGENERAL.—The specification shall contain a written description of the
`invention, and of the manner and process of making and usingit, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to whichit pertains, or with whichit
`is mostnearly connected, to make and use the same, and shall setforth the best mode
`contemplated by the inventor or jointinventor of carrying outthe invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specificationshall contain a written description of the invention, and of the
`manner and process of making and usingit, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to whichit pertains, or with whichit is mostnearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying outhis invention.
`
`Claim 17 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph, as
`
`failing to comply with the written description requirement. The claim(s) contains subject matter
`
`which was not describedin the specification in such a way as to reasonably conveyto one
`
`skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre -
`
`AIA 35 U.S.C. 112, the inventor(s), at the time the application wasfiled, had possession of the
`
`claimedinvention.
`
`The instant specification details “the metal ion-conducting membrane 30 contains
`
`substantially no metalions in such a state that the metal ion-conducting membrane 30is out of
`
`contactwith thefirst liquid 12 or the secondliquid 22. See [0032]. However, Claim 1 requires
`
`“wherein the metal ion-conducting membraneis swollen by at least one selected from the group
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 3
`
`consisting ofthe first liquid and the secondliquid.” Claim 17 which depends on Claim 1 requires
`
`“the metal ion-conducting membrane contains no metal ions.” The instant specification does not
`
`support the metal ion-conducting membrane being swollen with electrolyte and containing no
`
`metal ions.
`
`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 —
`
`(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 under section 122(b), in which the
`patentor application, as the case may be, namesanother inventor and waseffectively filed
`beforethe effectivefiling 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 Pan etal. (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 Claim1, Pan discloses:
`
`e Aredoxflow battery (redox flow battery, see Abstract) comprising:
`
`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);
`
`

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`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 4
`
`e
`
`e
`
`e
`
`=a first liquid which containsa first nonaqueoussolvent (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 whichis in contactwith the negative electrode (1.0 M LiClO4 was
`
`used as the supporting electrolyte in the anolyte which is pumped to the anode and is
`
`shownto 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 LiClO
`
`tetraethylene glycol dimethyl ether solutions, see Pg1060/last 4);
`
`e
`
`asecondliquid which contains a second nonaqueous solvent and whichis in contact
`
`with the positive electrode (the catholyte consisted of tetraethylene glycol dimethyl ether
`
`and is shownto be in contact with the positive electrode, see annotated Fig. 5a below);
`
`e
`
`andametal ion-conducting membrane whichis disposed betweenthefirstliquid and the
`
`secondliquid and which is nonporous
`
`Pan teachesa Lit-conducting PVDF membrane is used as separator and is shown in
`
`annotated Fig. 5a below to be between the first liquid and secondliquid, see also Pg1363 -
`
`1364/Section 2.4.
`
`The PVDF membrane of Pan is disclosed as:
`
`Lit-conducting PVDF membrane (2 cm x2 cm in area) was used as the
`
`separator. The preparation of the PVDF membrane has been previously reported
`
`[43]. See Pg1364/C(left)/1* .
`
`The indicated reference [43] is to evidentiary reference denoted as Jia. Jia discloses the
`
`NP11 membrane as the primary membrane of his study with only the other membranes being
`
`prepared having Nafion/PVDF ratios of 1:2 and 2:1 which are stated as being “prepared for
`
`comparison,” see Jia -Pg5/C(right)/Section: Preparation of the Nafion/PVDF membrane. It is
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 5
`
`reasonable to conclude the properties taught in Jia about the NP11 membrane apply to the
`
`membrane of Pan.
`
`The Examiner notes that the instant specification defines nonporous as “the term
`
`“nonporous” means that no pores communicating between thefirst surface and second surface
`
`of the metal ion-conducting membrane 30 are present.” See instant specification-[0029].
`
`However, itis the Examiners position that the following evidence in Jia makes it reasonable to
`
`conclude that the membrane of Pan (prepared in the same manner of Jia) meets the claim
`
`limitation of being nonporous.
`
`-“Hence, the microstructure of the NP11 membrane ensures continuous Li+
`
`transport through the isolated hydrophilic domains while eliminating crossoverof
`
`the redox mediators with the surrounding rigid hydrophobic domains.” See Jia
`
`Pg2/C(right)/2™ 4/2"° to last sentence.
`
`-“As shownin Figure S4A,ina static test no appreciable crossover of the redox
`
`mediators through the NP11 membrane was observedafter testing in a glass cell
`
`for 48 h.” See Jia Pg14-15 and Fig. S4A.
`
`Based on the evidence above, Jia teaches Li+ conductanceis based on the hydrophilic
`
`domains and not through-pores. Jai also teaches that there is no appreciable crossover of the
`
`redox mediators (small molecules) through the NP11 membrane. Pan also describes the
`
`membrane as “effectively blocks the crossoverof electrolyte species.” See Pan-. As a whole,
`
`the evidenceindicates that there is no through-holes (i.e., pores) in the membrane as the claim
`
`requires.
`
`e wherein the metal ion-conducting membraneis swollen by at least one selected from the
`
`group consisting ofthefirst liquid and the second liquid and allows the metalions to
`
`pass therethrough (Pan teaches a Li*-conducting PVDF membrane (i.e., metal ions to
`
`pass therethrough), see Pg1363-1364/Section 2.4. As evidenced byJia, this membrane
`
`experiences swelling in electrolyte solution, see Jia- Table S1 and Pg2/last 4).
`
`

`

`
`
`
`
`ZYPAM NANA
`ty
`
`
`
`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 6
`
`Negative Electrode
`
`Positive Electrode
`
`
`
`
`
`XS
`
`First Liquid
`
`4%ponnnnnnen
`|Powerssourcece/teLoad¥
`po
`
`Annotated Fig. 5a
`
`Regarding Claim 3-5, Pan discloses a Lit-conducting PVDF (polyvinylidene difluoride)
`
`membrane, see Pg1363-1364/Section 2.4.
`
`
`Regarding Claim 6, Pan discloses 1.0 M LiClO4 was used as the supporting electrolyte
`
`in the anolyte, see Pg1363-1364/Section 2.4. As evidence by Shutz, Li* 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 LiFePOz, see Pg 1363-1 364/Section 2.4),
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 7
`
`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 species is oxidized or reduced by the positive electrode (Fc is
`
`oxidized/reduced by the current collector, see Pg 1366/Equations 2 and 6)
`
`andis oxidized or reducedby the positive electrode active material (Fc is oxidized by
`
`e
`
`e
`
`LiFePOs derived species, see Pg 1366/Equations 4 and 7).
`
`Regarding Claim 12 and 14, Pan teaches the use of tetraethylene glycol dimethyl ether
`
`(i.e., tetraglyme) as the first nonaqueous and the second nonaqueous solvents which has ether
`
`bonds, see Fig. 1.
`
`Regarding Claim 17, as evidenced by Jiathe preparation of the NP11 membrane
`
`includes a state in which the membrane is notyetlithiated, see Jia-Pg5/C(right)/ Section:
`
`Preparation of the Nafion/PVDF membrane. The non-lithiated membrane is in a state in which
`
`no metals are intentionally added. The Examiner notes that the instant specification similarly
`
`qualifies the state of the membrane suchthat “the metal ion-conducting membrane 30 contains
`
`substantially no metalions in such a state that the metal ion-conducting membrane30 is out of
`
`contactwith the first liquid 12 or the secondliquid 22,” see the instant specification at [0032].
`
`Therefore, it is reasonable to conclude that the non-lithiated membrane meets the claim
`
`limitation of “wherein the metal ion-conducting membrane contains no metalfons.”
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 8
`
`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 forthin this Office action:
`
`Apatent fora claimed invention may notbe 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 artare such that the claimed invention as a whole would have
`been obvious beforethe effective filing date of the claimed inventionto a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall notbe
`negated by the mannerin which the invention was made.
`
`The factual inquiries for establishing a background for determining obviousness under
`
`35 U.S.C. 103 are summarized as follows:
`
`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 pertinentart.
`
`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:e150088) 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 et al.
`
`(US
`
`20110189520 A1).
`
`Regarding Claim 7, Pan is silent toward having a “a negative electrode active materialin
`
`contactwith the first liquid.”
`
`To solve the same problem of providing alithium, non-aqueous redoxflow battery (see
`
`Fig. 2 and [0184]), Carter teachesinclusion of includes a graphite as a negative electrode active
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 9
`
`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 ordinary skill 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.
`
`Modified Pan teaches an anolyte with a negative electrode active material particles of
`
`Carter was circulated via peristaltic pumps to/from the anode, see Pan-Pg1366/C(left)/2™ ¥ and
`
`Fig.5a.
`
`Pan discloses the redox species is reduced/oxidized by the anode, see
`
`Pg1365/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, Panis silent toward having a “a negative electrode active material in
`
`contactwith thefirst liquid.”
`
`To solve the same problem of providing alithium, 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 anegative 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 ordinary skill 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:
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 10
`
`wherein thefirst redox species is an aromatic compound(the redox species includes
`
`biphenyl, see Fig. 1 and see Pg1363/Section 2.1),
`
`the metalions are lithium ions (1.0 M LiClO4 was used as the supporting electrolyte in
`
`the anolyte, see Pg1363-1364/Section 2.4. As evidence by Shutz, Lit ions are presentin
`
`LiClOtetraethylene glycol dimethyl ether solutions, see Pg1060/last 4),
`
`thefirst liquid dissolveslithium (see Fig. 1),
`
`the negative electrode active material has a property of storing or releasing lithium ions
`
`(The negative electrode active materials taught by Carter are recognizedin the instant
`
`specification as being able to store or release lithium 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 aredox potential from any constituent
`
`in the first liquid, 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 polymer as a major
`
`component(as evidenced byJia, 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 component of the anolyte, see
`
`Pg1363/Section 2.1 and Fig. 1.
`
`Regarding Claim 13, Pan does not teach “the first nonaqueous solventand the second
`
`nonaqueoussolventincludes at least one selected from the group consisting ofpropylene
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 11
`
`carbonate, ethylene carbonate, dimethyl carbonate, ethyl methyl carbonate, and diethyl
`
`carbonate.”
`
`To solve the same problem of providing a lithium, non-aqueous redox flow 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].
`
`Consequently, one of ordinary skill in the art at the time the instant invention wasfiled
`
`would have had a reasonable expectation of successis using the carbonate based solvent
`
`taught by Carter as the solvent in 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:e150088) 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, triphenylamine, and derivatives
`
`thereof.”
`
`However, since the prior art of Nariyama recognizes the equivalencyof
`
`tetrathiafulvalene and triphenylamine with ferrocenein the field of redox mediators (see
`
`Nariyama-[0128]), it would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to replace the redox species of Pan with the redox species of Nariyama asit 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.
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 12
`
`Claim(s) 16 is/are rejected under 35 U.S.C. 102/103 as being unpatentable over Pan
`
`
`
`used as an optional secondary reference.
`
`Regarding Claim 16, Pan doesnotexplicitly teach the specific surface area for the
`
`membrane. However, the instant specification indicates that the claimed specific surface area is
`
`a function of the membrane being nonporous, see instant specification-[0029].. As discussed
`
`above, Pan with evidence from Jia teaches a nonporous membrane. Therefore,it is reasonable
`
`to conclude that the nonporous membrane of Pan inherently has the measured specific surface
`
`area within the claimed range of less than 0.5 m2/g.
`
`Alternatively, assuming arguendothat the membrane of Panis found notto inherently
`
`possessthe claimed specific surface area the claim can be rendered obvious as given below.
`
`To solve the same problem of developing redoxflow lithium batteries, Jia teaches that
`
`the desirability to have a mechanically and chemically stable membrane that is impermeable to
`
`redox mediators (i.e., nonporous), see Pg1/C(right)/2"" |. Jia teaches to have these desirable
`
`features the membrane composition is controlled to be uniformly distributed resulting in the
`
`surface of the membrane being uniform and smooth with no cracking (i.e., with adecreased
`
`specific surface area), see Pg2/C(right)/2™ J. Therefore, Jia teaches the specific surface areais
`
`a result effective variable controlled by the uniform distribution of the nonporous membrane
`
`materials.
`
`Absent a persuasive showing of secondary considerations, it would have been obvious
`
`to one of ordinaryskill in the art at the time the instant invention wasfiled to optimize the
`
`specific surface area to have a uniform and smooth membrane as taught by Jia in order to
`
`provide amechanically and chemically stable membrane.
`
`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 13
`
`Itis the Examiner's position that this routine optimization would have led one of ordinary
`
`skill in the art at the time the instant invention wasfiled to have arrived at the claimed specific
`
`surface area of less than 0.5 m2/g.
`
`Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Pan
`
`
`
`2015;1:e150088) 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 Madabusi et al.
`
`(US
`
`20160133949 A1).
`
`Regarding Claim 18, since the prior art of Madabusi recognizes the equivalencyof
`
`lithium and sodium ions in the field of redox flow batteries with non-porous separators (see
`
`Madabusi-[0033]), it would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to replace the lithium salt of Pan with the sodium salt of Madabusi asit is merely the
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`selection of functionally equivalent salts recognized in the art and one of ordinary skill in the art
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`would have a reasonable expectation of success in doing so.
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`Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over by
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`
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`2015;1:e150088) and Shutz (Ber. Bunsenges. Phys. Chem. 97 (1993) No. 8) as evidentiary
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`references as applied to claims 1 and 10 above, and in further view of Treger (US
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`20190036142 A1).
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`Regarding Claim 19 and 20, Pan does notteach:
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`e wherein the metal ion- conducting membraneincludes an organicpolymer coated
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`nonwovenfabric.
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`

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`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 14
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`e wherein the metal ion- conducting membraneincludes a polyvinylidene fluoride coated
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`nonwovenfabric.
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`To solve the same problem of providing anon-porous membrane in a redox flow battery,
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`Treger teaches having anon-woven support in order to add strength to the membrane, see
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`[0019] and [0048].
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`Absent a persuasive showing of secondary considerations, it would have been obvious
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`to one of ordinary skill in the art at the time the instant invention wasfiled to have added a non-
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`woven support taught by Treger to the membrane of Pan in order to add strength.
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`As evidenced by Jia, Pan teaches the membrane comprises polyvinylidene fluoride, see
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`Jia-Pg5/C(right)/ Section: Preparation of the Nafion/PVDF membrane. The modification of Pan
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`in view of Treger results in astructure meeting the claim limitation “metal ion-conducting
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`membraneincludes a polyvinylidene fluoride coated nonwovenfabric.”
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`Responseto Arguments
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`Applicant's argumentsfiled 06/01/2023 have been fully considered and are addressed
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`below.
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`Claim Rejections Under 35 U.S.C. § 102 and 103
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`Applicant argues on pg. 7 of the responsethat “it is unreasonable to consider the SEM
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`image of the NP 11 membrane of Jia to represent the PVDF membrane of Pan.”
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`The PVDF membrane of Pan is disclosed as:
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`Lit-conducting PVDF membrane (2 cm x2 cm in area) was used as the
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`separator. The preparation of the PVDF membrane has been previously reported
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`[43]. See Pg1364/C(left)/1* .
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`The indicated reference [43] is to Jia. Jia discloses the NP11 membrane as the primary
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`membrane of his study with only the other membranes being prepared having Nafion/PVDF
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`ratios of 1:2 and 2:1 which are stated as being “prepared for comparison,” see Jia -Pg5/C(right)/
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`

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`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 15
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`Preparation of the Nafion/PVDF membrane section. It is reasonable to conclude the properties
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`taught in Jia about the NP11 membrane apply to the membrane of Pan.
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`Applicant further argues on pg. 7-8 that the SEM image of Jia is not enough evidence to
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`meetthe limitation of being nonporous. The Examiner notes that the instant specification
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`defines “the term "nonporous" meansthat no pores communicating betweenthefirst surface
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`and secondsurface of the metal ion-conducting membrane 30 are present.” See instant
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`specification-[0029]. However,it is the Examiners position that the following further evidencein
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`Jia makesit reasonable to conclude that the membrane of Pan (preparedin the same manner
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`of Jia) meets the claim limitation of being nonporous.
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`e
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`“Hence, the microstructure of the NP11 membrane ensures continuous Li+
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`transport through the isolated hydrophilic domains while eliminating crossoverof
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`the redox mediators with the surrounding rigid hydrophobic domains.” See Jia
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`Pg2/C(right)/2™ 4/2"° to last sentence.
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`e As shownin Figure S4A,inastatic test no appreciable crossover of the redox
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`mediators through the NP11 membrane was observedafter testing in a glass cell
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`for 48 h. See Jia Pg14-15 and Fig. S4A.
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`Based on the evidence above, Jiateaches Li+ conductanceis based on the hydrophilic
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`domains and not through-pores. Jai also teaches that there is no appreciable crossover of the
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`redox mediators (small molecules) through the NP11 membrane. Panalso describes the
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`membrane as “effectively blocks the crossoverof electrolyte species.” As a whole, the evidence
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`indicates that there is not through-holes(i.e., pores) in the membrane asthe claim requires.
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`

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`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 16
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as
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`Conclusion
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`set forthin 37 CFR 1.136(a).
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`A shortenedstatutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the eventa first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTH shortenedstatutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action. Inno event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the mailing date
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`of this final action.
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`Anyinquiry concerning this communication or earlier communications from the examiner
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`should be directed to Kayla E Clary whose telephone numberis (571)272-2854. The examiner
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`can normally be reached Monday- Friday 8:00-5:00 (PT).
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`Examiner interviewsare available via telephone, in-person, and video conferencing
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`using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
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`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
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`supervisor, Allison Bourke can be reached on 303-297-4684. The fax phone number for the
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`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:
`
`https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more
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`information about Patent Center and https://www.uspto.gov/patents/docx for information about
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`

`

`Application/Control Number: 17/386,025
`Art Unit: 1721
`
`Page 17
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`filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at
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`866-217-9197(toll-free). If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/K.E.C./
`Kayla E. Clary
`Examiner, Art Unit 1721
`
`/SADIE WHITE/
`Primary Examiner, Art Unit 1721
`
`