DETAILED ACTION
Notice of Pre-AIA 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 Status
This office action is in response to amendments/arguments filed 10/24/2025. Claims 1-17 stand as originally presented, and claims 18-20 are new. The new claims are supported by the specification, no new matter has been presented.
Claim Rejections
The claim rejections in view of the previously cited references of the prior office action are maintained, however, upon further consideration of the claims, applicant’s arguments, and the prior references themselves, new evidence is cited from within those references which constitutes new grounds of rejection. Specifically, Borah discloses the class of compounds of phenothiazines and substituted phenothiazine as example materials. Additionally, the new claims 18-20 have necessitated new grounds of rejection, as below set forth.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent 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.
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 pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 4-15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Borah (WO 2020130857 A1, US 20220200034 A1 is used as an English equivalent), and further in view of Lee (KR 20200065479 A, US 20220048869 A1 is used as an English equivalent).
Regarding claim 1, Borah discloses an aqueous rechargable battery ([0064] discloses a redox flow battery, which [0072] discloses contains an aqueous phase electrolyte, abstract discloses that the battery is rechargeable), comprising:
a positive electrode (claim 16 discloses a cathodic electrode), a negative electrode (claim 16);
a separator between the positive electrode and negative electrode (claim 16); and
an aqueous electrolyte including a water solvent (abstract discloses the electrolyte is a microemulsion, [0020] discloses the microemulsion includes water) and a metal salt with a molality of greater than or equal to about 10 m ([0022] discloses that the microemulsion includes a salt, disclosing metal salts such as sodium salts, aluminum salts, magnesium salts, and combinations thereof, and that the concentration of the salt ranges up to 10 mol/kg, overlapping the claimed range of greater than or equal to about 10 m (broadest reasonable interpretation is applied to the claimed language. In this case a person of ordinary skill in the art would understand that the word “about” signifies that the range has some tolerance, and may also include values of slightly more or slightly less than 10m and greater). As a result, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to routinely select a salt concentration within the claimed range because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05(1)).
Borah does not teach the use an organic positive active material according to chemical formula 1 in the positive electrode, but does disclose use of phenothiazines more broadly in [0023], and discloses in table 2 the use of phenothiazine, a compound which is very similar to the claimed chemical formula 1, but does not quite fall within its bounds. Borah also discloses in [0217] that the phenothiazine may be substituted by different substituents, which could possibly result in a compound which meets the claimed formula 1 (which falls in the class of substituted phenothiazines), such as in a case where the NH portion of phenothiazine is substituted to result in a Z1 or Z2 that meets the claimed limitation. However, despite Borah’s lack of explicit description of such a material, use of such materials as described in the claimed chemical formula 1 as a positive active material in redox batteries was known in the art before the effective filing date of the claimed invention and would have been obvious to include in the battery of Borah.
For example, Lee discloses a phenazine-based compound for a redox flow battery (title). [0001] discloses that the phenazine-based compound has excellent solubility in a solvent, and [0020] discloses that including this compound as an active material can provide a redox flow battery with a higher energy density. [0052] discloses that the phenazine-based compound is 5,10-bis(2-methoxyethyl)-5,10-dihydrophenazine, or BMEPZ, which meets the claimed formula 1, and [0054] as well as claim 7 discloses that the phenazine-based compound is a cathode active material.
As a result, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the phenazine-based compound disclosed by Lee as an organic positive active material in the redox flow battery of Borah. A person of ordinary skill in the art would have been motivated to do this in order to obtain a compound that can provide a redox flow battery with a higher energy density when used as a positive electrode active material, as taught by Lee.
Regarding claim 2, Borah in view of Lee discloses the aqueous rechargable battery of claim 1, wherein the phenazine-based compound disclosed by Lee (BMEPZ) also meets the claimed limitations of claim 2.
Regarding claim 4, Borah in view of Lee discloses the aqueous rechargeable battery of claim 1, wherein the compound represented by chemical formula 1 includes a phenazine-based compound (see claim 1 rejection above).
Regarding claim 5, Borah in view of Lee discloses the aqueous rechargable battery of claim 1, wherein the phenazine-based compound disclosed by Lee (BMEPZ) also meets the claimed limitations of claim 5.
Regarding claim 6, Borah in view of Lee discloses the aqueous rechargable battery of claim 1, wherein the phenazine-based compound disclosed by Lee (BMEPZ) also meets the claimed limitations of claim 6.
Regarding claim 7, Borah in view of Lee discloses the aqueous rechargable battery of claim 2, wherein the phenazine-based compound disclosed by Lee (BMEPZ) also meets the claimed limitations of claim 7.
Regarding claim 8, Borah in view of Lee discloses the aqueous rechargable battery of claim 6, wherein the phenazine-based compound disclosed by Lee is 5,10-bis(2-methoxyethyl)-5,10-dihydrophenazine (BMEPZ) [0052].
Regarding claim 9, Borah in view of Lee discloses the aqueous rechargeable battery of claim 1, wherein the negative electrode includes a negative active material, and the negative active material includes a carbon-based material ([0216] and table 2 discloses a carbon-based active material for the anolyte (negative electrode) including, for example, Menadione).
Regarding claim 10, Borah in view of Lee discloses the aqueous rechargeable battery of claim 1, wherein the molality of the aqueous electrolyte is about 10 m to about 40 m ([0022] discloses that the microemulsion includes a salt, disclosing metal salts such as sodium salts, aluminum salts, magnesium salts, and combinations thereof, and that the concentration of the salt ranges up to 10 mol/kg, overlapping the claimed range of about 10 m to about 40m (broadest reasonable interpretation is applied to the claimed language. In this case a person of ordinary skill in the art would understand that the word “about” signifies that the range has some tolerance, and may also include values of slightly more or slightly less than 10m and greater). As a result, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to routinely select a salt concentration within the claimed range because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05(1)).
Regarding claim 11, Borah in view of Lee discloses the aqueous rechargeable battery of claim 1, wherein the molality of the aqueous electrolyte is about 12 m to about 35 m (broadest reasonable interpretation is applied to the claimed language. In this case a person of ordinary skill in the art would understand that the word “about” signifies that the range has some tolerance, and may also include values of slightly more or slightly less than 12 m to 35 m. With that in mind, [0022] discloses that the microemulsion includes a salt, disclosing metal salts such as sodium salts, aluminum salts, magnesium salts, and combinations thereof, and that the concentration of the salt ranges up to 10 mol/kg. While not giving exact molar or molality concentrations, Borah additionally discloses other solutes which may be dissolved in the electrolyte ([0188] discloses the flow batteries include an additional dissolved electrochemically active species, and therefore in the case where 10 mol/kg of salt was used, the overall molality of the electrolytes including both the salt and active material solutes would be greater than 10 mol/kg. In addition, Lee discloses that one of the benefits of the phenazine-based compound is that a larger amount of it can be dissolved in solvent, leading to increased maximum energy density [0021].
As a result, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that dissolving a larger amount of the phenazine-based compound would be preferable in order to obtain a high energy density as taught by Lee. A person of ordinary skill in the art could therefore reasonably expect that 10 m of salt in addition to a routinely selected but relatively large amount of dissolved active material dissolved as solutes in the aqueous electrolyte would cause the electrolyte to be expected to reach a molality of at least “about 12 m”, reading on the claimed limitation).
Regarding claim 12, Borah in view of Lee discloses the aqueous rechargeable battery of claim 1, wherein the metal salt of the aqueous electrolyte include a compound represented by chemical formula 11 ([0166] discloses a list of acceptable salts, including for example NaCl, LiCl, or CaCl2, which are all salts which meet the claimed formula 11).
Regarding claim 13, Borah in view of Lee discloses the aqueous rechargeable battery of claim 12, wherein in chemical formula 11, D is Cl- [0166].
Regarding claim 14, Borah in view of Lee discloses the aqueous rechargeable battery of claim 1. Borah additionally discloses that the metal salt may include a compound represented by chemical formula 12 ([0166] discloses a list of acceptable salts, including for example NaCl, LiCl, or CaCl2, which are all salts which meet the claimed formula 12) and chemical formula 13 ([0166] discloses a list of acceptable salts, also including, for example, Zn(NO3)2, which meets the claimed formula, with x being 1 and y being 2), but does not explicitly disclose an embodiment wherein both a salt of formula 12 and a salt of formula 13 are used.
Borah does, however, disclose that a combination of salts can be selected ([0166], [0022]). As a result, it would have been obvious to a person of ordinary skill in the art before the effective to routinely select two salts from the list of disclosed possible salts, including for example one salt of chemical formula 12 and one salt of chemical formula 13, and would be motivated to do so to obtain a salt combination capable of working with the electrolyte of Borah.
Regarding claim 15, Borah in view of Lee discloses the aqueous rechargeable battery of claim 14, but does not explicitly disclose guidelines for determining the concentration of each salt when two or more salts are used in combination. However, a person of ordinary skill in the art before the effective filing date of the claimed invention would understand that each salt must necessarily be used in some concentration. For example, in the case where the molality of the salt in electrolyte is 10 m, a first salt could be used in a concentration of, say, 0.1 to 10 m, while the second salt could be used in an opposing concentration of 10 to 0.1 m, such that the two when added together total to 10 m. Given this, it is possible to select molality values such that the concentration of the two salts overlap that required by the instant claims, such as for example selecting a concentration of 9.9 m for the first salt represented by chemical formula 12, which is interpreted as being “about 10 m” and selecting a concentration of 0.1 m for the second salt represented by chemical formula 13. As such, it would be a matter of routine selection and would be obvious for a person of ordinary skill in the art to select salt concentrations that overlap those required by the instant claim 15 because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05(1)).
Regarding claim 17, Borah in view of Lee discloses the aqueous rechargeable battery of claim 1, wherein the separator is an ion-exchange membrane ([0051] discloses that the separator is an ion-permeable membrane, reading on the claimed ion exchange membrane).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Borah (WO 2020130857 A1, US 20220200034 A1 is used as an English equivalent) in view of Lee (KR 20200065479 A, US 20220048869 A1 is used as an English equivalent), and further in view of Tao (CN113206283A, a machine translation from Espacenet is used as an English equivalent.
Regarding claim 16, Borah in view of Lee discloses the aqueous rechargeable battery of claim 14, but does not disclose that the negative electrode includes a negative active material including the metal of A13 of chemical formula 13 (Zn). However, aqueous electrolyte batteries having both a Zn negative electrode and a Zn salt, as well as the benefits thereof, were known in the art before the effective filing date of the claimed invention, and therefore would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include in the battery of Borah.
For example, Tao discloses an aqueous battery [0001] like Borah, additionally comprising a zinc negative electrode and a phenazine positive electrode [0023] (like modified Borah). Tao additionally discloses the inclusion of a zinc salt in the electrolyte, and teaches that the zinc salt significantly broadens the electrochemical window of the electrolyte and promotes uniform nucleation and deposition of the metallic zinc, promoting good cycling stability in zinc batteries [0004]. Tao teaches zinc salts such as ZnCl and ZnClO for this purpose [0007], both of which meet chemical formula 13. Additionally, Borah teaches that the salts that can be used are not limited to the salts explicitly disclosed, and that other salts that can be used include zinc salts [0166].
As such, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to utilize the zinc salt and a zinc negative electrode for the battery of Borah, as taught by Tao. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to make this selection to obtain the benefits taught by Tao of using the zinc salt alongside a zinc anode, including significantly broadening the electrochemical window of the electrolyte and promoting uniform nucleation and deposition of the metallic zinc, thus promoting good cycling stability.
New Claim Rejections
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Borah (WO 2020130857 A1, US 20220200034 A1 is used as an English equivalent), and further in view of Lee (KR 20200065479 A, US 20220048869 A1 is used as an English equivalent).
Regarding claim 19, modified Borah discloses the aqueous rechargeable battery of claim 1, wherein an amount of positive active material dissolved in the aqueous electrolyte, as measured by the area of the absorption spectrum in a UC-visible spectroscopic analysis of the aqueous electrolyte, is less than or equal to 7.6 wt.% based on the total of 100 wt.% of the aqueous electrolyte and the organic positive electrode active material ([0158]-[0160] discloses that the water by weight in the microemulsion electrolyte composition is most preferably 20-99% water by weight of the microemulsion.
Examiner notes that if the amount of organic positive active material dissolved in the aqueous electrolyte is less than or equal to 7.6 wt.% based on a total of 100 wt.% of the aqueous electrolyte (microemulsion electrolyte), then it is by definition also less than or equal to 7.6 wt.% based on a total of 100 wt.% of the aqueous electrolyte and the organic positive electrode active material. This means that in a case where water comprises at least (100-7.6%)= 92.4% by weight of the microemulsion electrolyte, the claimed limitation is guaranteed to be met. As discussed above, Borah discloses that water most preferably comprises 20-99% of the microemulsion by weight, therefore overlapping the amount needed to guarantee the claimed organic positive active material content is met. As a result, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to routinely select a water content from amongst the portion required to meet the claimed limitation because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05(1)).
Regarding claim 20, modified Borah discloses the aqueous rechargeable battery of claim 1, wherein the aqueous rechargeable battery is an aqueous rechargeable ion battery ([0179] discloses that suitable types of batteries for the invention of Borah include ion batteries, with [0213] for example disclosing a magnesium ion battery comprising an aqueous electrolyte, and [0221]-[0222] (example 7) discussing ion battery construction and testing with the microemulsion electrolyte of Borah.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Borah (WO 2020130857 A1, US 20220200034 A1 is used as an English equivalent), and further in view of Lee (KR 20200065479 A, US 20220048869 A1 is used as an English equivalent), as further evidenced by Xu (US 20180277903 A1).
Regarding claim 18, modified Borah discloses the aqueous rechargeable battery of claim 1. Modified Borah does not explicitly disclose that the molality of the aqueous electrolyte is greater than or equal to about 11 m, however [0022] discloses that the microemulsion includes a salt, disclosing metal salts such as sodium salts, aluminum salts, magnesium salts, and combinations thereof, and that the concentration of the salt ranges up to 10 mol/kg, reasonably overlapping the claimed range of “greater than or equal to about 11 m”. Broadest reasonable interpretation is applied to the claimed language. In this case a person of ordinary skill in the art would understand that the word “about” signifies that the range has some tolerance, and may also include values of slightly more or slightly less than 10m and greater. Further, the word “about” is used both in the instant claim 18 to describe the molality of the aqueous electrolyte, and in [0022] of Borah to describe the range of “between about 0.001 M and 10 M), potentially indicating some tolerance for the range both in regards to the instant claim and in regards to the molality of Borah. Further, while neither Borah nor the instant application attempts to define the word “about”, examiner notes that the word “about” is commonly used in the art to indicate a tolerance of as high or as low as ±10%.
For example, Xu, a similar publication to Borah describing various electrolyte characteristics, indicates that the word “about” can be used in relation to indicating amounts, ratios of materials, physical properties of materials, and/or use, and that “the term “about” includes the recited number ±10%”. Thus, “about ten” means 9 to 11 [0088]. While examiner realizes that applicant has not defined range for the tolerance that the word “about” is intended to convey, the claims are given their broadest reasonable interpretation as would be understood by a person of ordinary skill in the art before the effective filing date of the claimed invention. Because the word “about” is commonly used in the art to indicate a tolerance of as high or as low as ±10%, a person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to interpret the word “about” where it appears in the instant claims as well as in the disclosure of Borah to indicate a similar tolerance, resulting in the molality range disclosed by Borah overlapping that of the instant claims when given their broadest reasonable interpretation. As a result, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to routinely select a salt concentration within the claimed range because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05(1)).
Response to Arguments
Applicant's arguments filed 10/24/2025 have been fully considered but they are not persuasive. First, regarding applicant’s arguments about claim 1, applicant argues on pg. 12/15 that Lee discloses phenazine-based compounds matching the claimed formula, but only as redox-active solutes for redox flow batteries, and specifically that Lee discloses only non-aqueous solvents (such as acetonitrile, DMC, DEC, etc.), and states that said phenazine-based compounds have a very high solubility in non-aqueous solvents (see pg. 12 of remarks). Applicant further notes that Lee states that the object of the invention is to provide phenazine-based compounds with high solubility in the solvent, and does not teach the use of aqueous solvents, such as those used by Borah. Applicant argues that in view of these teachings, a person of ordinary skill in the art before the effective filing date of the claimed invention would have no motivation to incorporate the phenazine-based compounds of Lee into the aqueous micro emulsion system of Borah, and that Lee would actually teach away from such modification, and that such a modification would even raise concerns regarding chemical stability and solubility of the phenazine-based compounds in the water containing environment as described by Borah, and that such a modification would as a result therefore be impermissible hindsight, as a skilled artisan would have no technical reason or expectation of success for such a modification (see pg. 13 of remarks).
Examiner disagrees with applicant’s reasonings. While it is true that Lee is concerned with non-aqueous solvents, Borah is not. Further, Borah explicitly indicates phenothiazines (see [0023], table 2) as desirable redox active organic species that may be dissolved in the microemulsion, and specifically notes the possibility of substituted phenothiazines [0217], such as those disclosed by Lee. As a result, a person of ordinary skill in the art before the effective filing date of the claimed invention would have not have reason to think that phenothiazine-based compounds disclosed by Lee would not work well in the electrolyte of Borah, and such a combination could not be considered impermissible hindsight. Rather, a person of ordinary skill in the art before the effective filing date of the claimed invention would be drawn toward the material(s) disclosed by Lee based the disclosure including this compound as an active material that can provide a redox flow battery with a higher energy density ([0020] of Lee), as well as the disclosure of Borah, which indicates such materials as acceptable choices (see above). As a result, applicant’s arguments are not found persuasive.
Regarding applicant’s arguments pertaining to the claimed molality range (see pg. 13 of remarks), applicant argues that Borah merely discloses an extremely broad concentration range, while arguing that the claimed invention demonstrates unexpected synergistic effects at concentrations 10 m or higher. To support this claim, applicant cites evaluation examples 2 and 3, which use concentrations of 1.5m and 17.5 m, respectively. However, examiner reminds applicant that in order to establish unexpected results, “"objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range.” (see MPEP 716.02(d)). The data applicant has cited in support of their claim fails to establish unexpected results for this reason.
For example, applicant claims the range “greater than or equal to about 10 m”. To support a claim of unexpected results for such a range, applicant would show data which supports the notion that unexpected results occurs across the entirety of the claimed range, such as for example providing experimental data showing that 8 M is significantly and unexpectedly worse than 9 or 10 M. However, applicant cites only two data points, one at 1.5 m, and one at 17.5 m, both rather significantly far off from where the range starts at “about 10 m”. As such, the cited data cannot be used to establish unexpected results of the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACKARY R COCHENOUR whose telephone number is (703)756-1480. The examiner can normally be reached 1-9:00PM ET.
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/ZACKARY RICHARD COCHENOUR/ Examiner, Art Unit 1752
/NICHOLAS A SMITH/ Supervisory Primary Examiner, Art Unit 1752