DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims Status.
This Office Action is responsive to the amendment filed on 01/16/2026. Claims 1-23 were pending. Claim 22 has been cancelled. Claims 1-6, 8-22, and 23 have been amended. Claims 1-21 and 23 are now pending. Claims 1-21 and 23 are presented for examination. Applicant's arguments have been considered.
Response to Amendment
The rejections of claims 1-5, 8-9, and 12-17 under 35 U.S.C. 112(b) set forth in the Office Action from 10/17/2025 are withdrawn in response to Remark/Amendments from 01/16/2026.
The Objection to claim 9 set forth in the Office Action from 10/17/2025 is withdrawn in response to Remark/Amendments from 01/16/2026.
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 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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by US 2013/0095362 to Keshavarz ( Keshavarz).
Regarding claim 1, Keshavarz discloses a composition (electrolyte) comprising: a vanadium compound; vanadium in metallic form, a reducing agent such as at least one among formic acid. formaldehyde, methanol, (para 33, re claim 4) and a solvent, wherein a combination of the vanadium compound (para 30-32, Fig. 1), claim 1), the vanadium in metallic form (para 38) , the reducing agent and the solvent results in a vanadium electrolyte suitable for a vanadium-based battery (Abstract, para 11, Fig. 2).
Regarding claim 2, Keshavarz discloses wherein the vanadium electrolyte has an average oxidation state within a range of +3.3 to +3.7 (para 30).
Regarding claim 3, Keshavarz discloses the invention as discussed above as applied to claim 2 and incorporated therein, including oxidation state of the electrolyte within the range of +3.3 to +3.7 (para 30). Regarding the limitation” the combination is formed by further adding a relatively weak reducing agent to a mixture of the vanadium compound, the vanadium in metallic form and the solvent, whereby the reducing agent acting by itself cannot sufficiently lower the average oxidation state, but additional chemical reduction of the vanadium in metallic form due to the reducing agent”: in accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e. solution, does not depend on its method of production, i.e. reduction. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Regarding claim 4, Keshavarz discloses wherein the vanadium compound is vanadium pentoxide (V2O5), the solvent is an inorganic acid selected from the group consisting of H2SO4, HCl, HNO3 and H3PO4 (para 31) and the agent is at least one among formic acid.
Regarding claim 5, Keshavarz , Keshavarz discloses the invention as discussed above as applied to claim 1 and incorporated therein. In addition, Keshavarz discloses using a secondary reducing agent such as Zn (para39), that subsequently requires removal . As such the limitation “reduction strength sufficient to independently lower an average oxidation state of vanadium in the vanadium electrolyte from +5 to +3, and an electrochemical reaction to achieve sufficient chemical reduction of s vanadium that is needed for the vanadium-electrolyte solution to act as the liquid electrode in the vanadium-based battery” MPEP 2112 V states that "once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference."
Alternatively, regarding claim 5, Keshavarz discloses the invention as discussed above as applied to claim 1 and incorporated therein. In addition, Keshavarz discloses a compassion comprising a secondary reducing agent such as Zn (para39) having reduction strength sufficient to independently lower an average oxidation state of vanadium in the vanadium electrolyte from +5 to +3, Regarding limitations: subsequently requires removal, using an electrochemical reaction to achieve sufficient chemical reduction of s vanadium that is needed for the vanadium-electrolyte solution to act as the liquid electrode in the vanadium-based battery. in accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e. solution, does not depend on its method of production, i.e. reduction. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of 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 owned as of 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.
Claims 6, 7, 10 and 17 rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2013/0095362 to Keshavarz
Regarding claim 6, Keshavarz discloses a method comprising: combining a precursor, having a vanadium pentoxide (V205) and vanadium metal therein, together with an aqueous acid; and obtaining a vanadium-electrolyte solution that contains vanadyl vanadium ions (VO2+) and trivalent vanadium ions (V3+), the vanadium-electrolyte solution being suitable as both a catholyte implemented in a battery and an anolyte implemented in the battery (para 30-32, Fig. 1, 3A). Regarding the limitation: “wherein the reducing agent and the vanadium metal are added simultaneously or sequentially to a mixture comprising the precursor and the aqueous acid, the aqueous acid serving as a solvent”: since only two general methods of reagent addition simultaneously or sequentially exists, the above mention limitation considered met.
Alternatively, it would have been obvious to choose either from a finite number of identified, predictable solutions simultaneously or sequentially, i.e., it would have been "obvious to try one of these methods since simultaneously or sequentially See MPEP 2141 (III) Rationale E, KSR v. Teleflex (Supreme Court 2007).
Regarding claim 7 , Keshavarz discloses wherein the vanadium-electrolyte solution is obtained by processing a primary solution to lower its oxidation state such that an average oxidation state of the obtained vanadium-electrolyte solution is within a range of +3.3 to +3.7 due to the combining of the precursor and the aqueous acid with the primary solution (Fig. 2, para 34).
Regarding claim 10, Keshavarz discloses herein the primary solution is a +5 vanadium solution, which is a vanadium solution having an average oxidation state of about +5, wherein the primary solution has vanadyl sulfate (VOSO4) or vanadium pentoxide (V2O5) dissolved therein (Fig. 2, para 30).
Regarding claim 17, Keshavarz discloses a step comprising combining of precursor and the aqueous acid (claim 1) and reduction using relatively weak organic reductants such as at least one consisting formaldehyde, formic acid, ethanol, acetaldehyde, acetic acid, ethylene glycol, glycol aldehyde, oxaldehyde, glycolic acid, glycolic acid, glyoxalic acid, oxalic acid, 1-propanol, 2-propanol, 1,2-propanediol, 1,3-propanediol, glycerol, propanal, acetone, and propionic acid (claim 6). Therefore, a relatively strong reducing agent is not used. In addition, Keshavarz discloses wherein a combination of the vanadium compound (para 30-32, Fig. 1), claim 1), the vanadium in metallic form (para 38) , the reducing agent and the solvent results in a vanadium electrolyte suitable for a vanadium-based battery (Abstract, para 11, Fig. 2).
Claims 9, 11, 12, 13 , 14, 15 and 23 are rejected under 35 U.S.C. 103 as obvious over US 2013/0095362 to Keshavarz.
Regarding claim 9, Keshavarz discloses the invention as discussed above as applied to claim 7 and incorporated therein. Keshavarz does not expressly disclose combining comprises adding the reducing agent and the vanadium metal to the mixture simultaneously. However, it would have been obvious to choose sequential addition from a finite number of identified, predictable solutions (simultaneous or sequential), i.e., it would have been "obvious to try simultaneous addition in order to avoid creation of excess one reagent over another. See MPEP 2141 (III) Rationale E, KSR v. Teleflex (Supreme Court 2007).
Regarding claim 11, Keshavarz discloses the invention as discussed above as applied to claim 6 and incorporated therein. Keshavarz does not expressly disclose wherein the vanadium metal is a metallic powder form having an average particle size from 0.01 to 0.30 mm. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to use commercially available vanadium powder with desired particle size , since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claims 12 and 13, Keshavarz discloses the invention as discussed above as applied to claim 6 including adding vanadium compound, the reductant and vanadium metal (para 38). Regarding the limitation “adding the vanadium in metallic form to the mixture thereafter”: selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Gibson, 39 F.2d 975,5 USPQ 230 (CCPA 1930); MPEP § 2144.04.It would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to add the vanadium in metallic form of after mixing vanadium compound and relatively weak reductant in order fine tuning (selectively adjusting) of average oxidation state of the obtained vanadium-electrolyte solution.
Regarding claim 14, Keshavarz discloses wherein the relatively weak reducing agent is at least one among formic acid. formaldehyde, methanol (para 33).
Regarding claim 15, Keshavarz discloses the invention as discussed above as applied to claim 12 and incorporated therein, including mixing organic reducing agent (formic acid. formaldehyde, methanol, para 30), the vanadium compound and the solvent and the vanadium metal. Regarding the limitation “an organic reducing agent is further added thereto” selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Gibson, 39 F.2d 975,5 USPQ 230 (CCPA 1930); MPEP § 2144.04. It would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to add the organic reducing agent of after mixing vanadium compound vanadium metal for fine tuning of average oxidation state of the obtained vanadium-electrolyte solution. Regarding the limitation “the vanadium in metallic form serves as a catalyst” since the vanadium metal (the same metal as claimed) is present, it inherently serves as the catalyst. Products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. the specific output energy density), is necessarily present in the prior art material. The courts have held that “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.
Regarding claim 23, Keshavarz discloses the invention as discussed above as applied to claim 22 and incorporated therein. Keshavarz does not expressly disclose wherein the case and the liquid electrode are implemented for a vanadium-base battery that are combined or stacked with other corresponding vanadium-based batteries for installation in an energy storage system. However, It would have been obvious to one having ordinary skill in the art at the time the invention was filed to increase a number of vanadium based batteries a , since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 MPEP 2144.04 (VI-B)
Claims 18-22 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2013/0095362 to Keshavarz as evidenced by US 20130224538 to Jensen (Jensen).
Regarding claim 18, Keshavarz discloses a case having a redox flow battery a first half cell compartment and a second half cell compartment; and a liquid electrode, accommodated in the case, having a particular average oxidation state achieved by previously combining a precursor, having a vanadium pentoxide (V2O5) and metal vanadium material therein, with a reducing agent, wherein a combination of the precursor and the reducing agent, therefore necessarily creating an average oxidation state within a range of +3.3 to +3.7 and allow the liquid electrode to exhibit characteristics suitable for a catholyte in the first half cell compartment and an anolyte in the second half cell compartment (para 30-32, Fig. 1,2, Abstract, claims 1,6,9 and 10). Regarding limitation “a case”, the case is inherently present as evidenced by Jensen (para 44).
Alternatively, to would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to provide a housing (case) for redox flow battery to protect it structural integrity since that is well known in the art (See, Jensen para 44).
Regarding claim 19, Keshavarz discloses formic acid. formaldehyde, methanol, (para 33).
Regarding claims 20 and 21 , Keshavarz discloses the invention as discussed above as applied to claim 18 and incorporated therein. Regarding limitations: “an amount of at least one among the precursor and the reducing agent was selectively controlled or adjusted during the combining prior to being accommodated in the case in order to achieve a desired average oxidation state of the liquid electrode” and” the liquid electrode undergoes filtering to remove or minimize any residual metal vanadium material prior to being accommodated in the case” :In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e. the redox flow battery, does not depend on its method of production, i.e. controlling or adjusting during the combining prior to being accommodated in the case or filtering prior to being accommodated in the case. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0095362 to Keshavarz in view of US 2019/0044173 to Fan (Fan).
Regarding claim 16, Keshavarz discloses the invention as discussed above as applied to claim 12 and incorporated therein. Keshavarz does not expressly disclose a step comprising: applying microwave energy after adding the organic reducing agent in order to obtain the vanadium-electrolyte solution.
Fan teaches method for producing a 3.5-valence high purity vanadium electrolyte comprising step of reducing vanadium pentoxide into a low-valence vanadium oxide having an average vanadium valence of 3.5 adding water and a sulfuric acid solution under a microwave field applied externally for dissolution at a low temperature, to obtain a 3.5-valence high-purity vanadium electrolyte. Therefore, a use of microwave assisted technique for preparation of the electrolyte having an average vanadium valence of 3.5 is well known in the art. It would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Keshavarz with the step comprising: applying microwave energy after adding the organic reducing agent in order to obtain the vanadium-electrolyte solution, as taught by in order to reduce temperature of the step and reduce time of dissolution.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The closest prior art of record- US 2013/0095362, US 2019/0044173, US 20180342752, US 20150280259, US 20150050570, US 20130224538 - fail to teach or suggest each and every limitation of claim 9.
Response to Arguments
Applicant's arguments filed 01/16/2026 have been fully considered but they are not persuasive.
Applicant argues: “Keshavarz fails to disclose a process of reducing using both a reducing agent and metallic vanadium simultaneously. Although Keshavarz discloses examples of organic and inorganic reducing agents, it does not explicitly teach using an organic reducing agent (such as formic acid) and an inorganic reducing agent (vanadium metal) together”
Examiner respectfully disagrees. Firstly limitation “simultaneously” is not in the claim 1. Second Applicant recited process “using reducing agent and metallic vanadium simultaneously” (manipulative step) while instant claim 1 is a composition claim.
Regarding claim 6 Applicant argues: “Keshavarz does not disclose combining a reducing agent and metallic vanadium together with a vanadium compound in the preparation of a vanadium electrolyte solution. Moreover, Keshavarz does not teach or suggest the effect of controlling the oxidation state of vanadium in the electrolyte to 4.0 or below through such a configuration” .
Examiner respectfully disagrees. Firstly, Keshavarz discloses a step of reduction from vanadium ion oxidation state at least for 4+ (para 32). Second, regarding the limitation: wherein the reducing agent and the vanadium metal are added simultaneously or sequentially to a mixture comprising the precursor and the aqueous acid, the aqueous acid serving as a solvent. One skilled in the art would easily recognize two general method of making of compositions by adding reagents either simultaneously or sequentially. Therefore said limitation does not really limited the claim 6.
Regarding arguments for rejection of claim 18 please see arguments regarding rejection of claim 6 above. Jensen reference was used as an evidence for inherent structural feature of a redox-flow battery and does not affect the composition or method of preparation thereof.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER USYATINSKY whose telephone number is (571)270-7703. The examiner can normally be reached IFP.
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/Alexander Usyatinsky/Primary Examiner, Art Unit 1751
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