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 .
Response to Amendment
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.
The amendments filed on 08/28/2026 have been entered. Claims 1, 4-5 and 18 are amended, Claims 4-5 and 12-17 are indicated allowable and Claims 1 and 3-18 are pending.
Claim Objections
The objections to claims 1 and 3-18 for informalities are withdrawn in view of the claim amendments filed 08/28/2026.
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.
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 1, 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (US 20180366757 A1), hereinafter "Wei". Wei et al. is analogous prior art to the claimed invention because it pertains to the same field of endeavor, namely battery material compounds.
In regard to Claim 1 and 6, Wei et al. discloses an active material for a secondary battery that is used as an active material of a secondary battery (Wei, [0013]) and an active material comprising a specific example of a beneficial chemical compound phenazine-2,3,7,8-tetrol, i.e. 2,3,7,8-tetrahydroxyphenazine (Wei, [0055], Claim 10 Figure below) which has R101-R104 as H, R105-R108 as -OH (Left/Right Ring non H), M=H and -OM is -OH, i.e. four -OH groups each qualifying as -OM, and its substitution pattern is centrosymmetric and has non molecular-plane mirror symmetry in the planar structure which encompasses claimed formula 1’s limitations. This species would be a compound that the skilled artisan could at once envisage and thus Claim 1 cannot be allowed as Wei discloses a species falling within the claimed genus (In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960)). In addition, it has a very close structural similarity and similar utility to the compound of claim 1, which would reasonably have similar properties and therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to select this compound as doing so would be obvious to try for the skilled artisan and as doing so would amount to nothing more than the selection of known compounds to improve similar devices (methods, or products) in the same way (In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979), See MPEP §2144.09).
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Exemplary Embodiments - Claim 10 Figure
In regard to Claim 3, Wei et al. discloses the active material for the secondary battery according to claim 1. Wei et al. also discloses a compound represented by Wei’s formula I which permits two hydroxyl substituents on each terminal ring, with y=z=2 (Wei, [0007-0008]). Placing them at R101-R104 produces a compound which is a fully reduced form of Claim 3’s first structure with the four outer substituents hydrogen. It has four -OM groups with M+H, non-hydrogen substitution on both sides, and a symmetric substitution pattern and would be an obvious variant of the compounds of Wei.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (US 20180366757 A1), hereinafter "Wei". Wei et al. is analogous prior art to the claimed invention because it pertains to the same field of endeavor, namely battery material compounds.
In regard to Claim 18, Wei et al. discloses an active material for a secondary battery comprising compounds represented by Wei’s general formula I, which permits y and z independently from 0 to 4, with y+z up to 8, each R1 and R2 to be -OH and selecting y=z=3 and all six substituents as -OH gives a hexahydroxyphenazine, and further selecting y=z=4 permits an octahydroxyphenazine both of which would be compounds that the skilled artisan could at once envisage. In addition, Wei’s general formula I has a very close structural similarity and similar utility to the compounds of claim 18 which would reasonably have similar properties and therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to select these species from Wei’s formula I as doing so would be obvious to try for the skilled artisan and as doing so would amount to nothing more than the selection of known compounds to improve similar devices (methods, or products) in the same way (In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979), See MPEP §2144.09).
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (US 20180366757 A1), hereinafter "Wei" as applied to claim 1 above, in view of Roland et al. (EP2887434A1 - Machine Translation), hereinafter "Roland". Wei and Roland et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely secondary battery materials.
In regard to Claims 7-9, Wei et al. discloses the active material for the secondary battery according to Claim 1. While Wei discloses the active material it is used as a redox active compound and may be an anolyte or catholyte it is silent as to the compounds use in an electrode or active material layer on an electrode.
Roland et al. also discloses an electrode for a secondary battery comprising a phenazine compound including phenazine 1,2,3,4-tetrones as the active material for the secondary battery (Roland, [0010, 0015]). Wherein the secondary battery comprising: a positive electrode active material layer including a positive electrode active material; a negative electrode active material layer including a negative electrode active material; and an electrolyte, wherein the positive electrode active material or the negative electrode active material includes the active material for the secondary battery (Roland, [0003, 0006]) and wherein the positive electrode active material includes the active material for a secondary battery (Roland [0043]).
The phenazine compound in Roland is taught to have the benefit of achieving simultaneously, high charge capacity and high operating voltage, enabling high energy density and improved properties regarding cyclability and conductivity (Roland, [0015]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to select the phenazine 1,2,3,4-tetrones compound of Roland when providing an active material for a battery electrode as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Roland an as doing so would amount to nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (US 20180366757 A1), hereinafter "Wei" as applied to claim 1 above, in view of Roland et al. (EP2887434A1 - Machine Translation), hereinafter "Roland" and Murashi et al. (US 20200411910 A1), hereinafter "Murashi". Wei, Roland and Murashi et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely secondary battery materials.
In regard to Claims 10-11, Wei in view of Roland et al. discloses the secondary battery according to claim 8. Roland et al. also discloses standard lithium secondary battery construction but is silent as to the electrolyte materials and whether the secondary battery is a non-aqueous secondary battery.
Murashi et al. discloses a beneficial secondary battery with a non-aqueous electrolyte used in a propulsive force generating apparatus configured to generate propulsive force by using electric energy accumulated in the secondary batter (Murashi, Abstract, [0032, 0081]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a secondary battery as disclosed in Wei or Roland et al. with a non-aqueous electrolyte for use in a battery powered flying object as taught in Murashi et al. as doing so would give the skilled artisan the reasonable expectation of success and as doing so would amount to nothing more than a variations of a secondary battery for use in the same field based on design incentives or other market forces, as the variations are predictable to one of ordinary skill in the art.
Allowable Subject Matter
Claims 4-5 and 12-17 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Claim 4 is directed to a polymer with repeating units represented by formulas 8-11 used as an active material for a secondary battery. Formulas 8-11 represent ladder phenazine/azaacene quinone polymers with specific R positions on the outer rings including one of the preferred embodiments of the current application phenazine 1,4,6,9 tetrone. Claim 14 is directed to a secondary battery requiring an electrode with an active material according to claim 4. Claims 5 and 12-13 and 15-17 are dependent on independent Claim 4.
Roland et al. (EP2887434A1 - Machine Translation) is considered to be the closest relevant prior art to independent claim 4 and as the active material is also included in the electrode of Claim 14 it is considered the closest relevant prior art to claim 14. Roland et al. discloses electrodes for energy storage devices comprising at least one compound which is represented by any of the formulas (1) to (3) or at least one polymer comprising or consisting of monomeric subunits which are represented by at least one of the formulas (1) to (3) (Roland, Claim 1). In the search for compounds Roland discovers phenazine 1,2,3,4 for its beneficial properties (Roland, [10]), however this compound is a 3 ring fused system and formulas 8 and 10-11 require 5 or more rings in the repeat units (multiple benzene rings plus a diazene) and while formula 9 is a three ring phenazine type core phenazine 1,2,3,4 tetrone puts all four carbonyls on a single ring and the left benzene ring has no carbonyls thus it does not match the substitution pattern of formula 9. Further, the general formulas for compounds disclosed in Roland do not teach, fairly suggest, nor render obvious the above noted limitations.
In addition, Vitaku et al. (Phenazine-Based Covalent Organic Framework Cathode Materials
with High Energy and Power Densities, J. Am. Chem. Soc. 2020, 142, 16−20) is also considered to be relevant prior art to independent claim 4 and as the active material is also included in the electrode of Claim 14 it is considered the closest relevant prior art to claim 14. Vitaku discloses a polymer active material and a COF backbone that uses a phenazine linkage but the substituent pattern on the fused rings is not a 1,4,6,9 tetraone; instead, carbonyls reside on the ß-ketoenamine linkers (from TFP), not as at least four R801-R806+O or -OM on the phenazine core itself (Vitaku, Abstract, Pgs 17-18).
Response to Arguments
Applicant’s arguments with respect to Claims 1 and 18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MAX OTERO whose telephone number is (571)272-2559. The examiner can normally be reached M-F Generally 7:30-430.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Buie-Hatcher can be reached at (571) 270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725
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