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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/04/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements is being considered by the examiner.
Response to Amendment
The amendment filed on 03/05/2026 has been entered. Claim 1 is amended, Claim 2 is canceled, Claim 18 is newly added and Claims 1 and 3-18 are pending.
Claim Objections
Claims 1 and 3-18 are objected to because of the following informalities: There are multiple sentences in each claim. Each claim should begin with a capital letter and end with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or steps, each element or step of
the claim should be separated by line indentation, 37 CFR 1.75(i) see MPEP 608.01(m). It is recommended to use semicolons or commas to format the claims if needed. Appropriate correction is required.
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, 6 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Geigle et al. (WO 2020035138 A1 - Machine Translation), hereinafter "Geigle". Geigle 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 Claims 1, 3 and 18, Geigle et al. discloses an active material for a secondary battery that is used as an active material of a secondary battery (Geigle, [2-3, 434]), and an active material comprising the chemical compound having the structure in Geigle’s formula 1 (Geigle, Claim 1, Formula 1, See Figure below) wherein Geigle’s formula 1 comprises a phenazine skeleton with R1-8 around the two benzene rings, with R1-8 independently selected from groups including H, OH, OGa, oxo/carbonyl, carboxy, alkyl, alkoxy (Geigle, [57-58, 66, 71]), thus R positions may reasonably be -OH (OM where M=H), oxo/carbonyl (oxygen atom/carbonyl oxygen), H (hydrogen), alkyl, aryl (organic group) and thus a species where four of R1-R8 are -OH and the remaining positions are H or six of R1-R8 are -OH and the remaining positions are H would be an obvious variant of the compound.
Further, Geigle’s Formula 1 discloses substituents at all 8 peripheral positions and for example a symmetrically substituted tetrahydroxyphenazine species with at least one hydroxy group on each benzene ring would be an obvious variant of the compound, i.e. four positions are -OH with at least one -OH on each benzene ring and the remaining positions are H thus satisfying at least one of R101, R102, R105, and R106 is not a hydrogen atom and at least one of R103, R104, R107, and R108 is not a hydrogen atom. Next, considering Geigle’s Formula 1 discloses substituents at all 8 peripheral positions are independently selectable, a symmetric tetrahydroxy or tetraoxo substitution pattern for example is within the genus and would have an inversion symmetry with respect to a molecular center or a symmetry with respect to a mirror plane other than a molecular plane and be an obvious variant of the compound of Geigle. Lastly, Geigle’s Formula 1 also supports a substituted phenazine 1,4,6,9 tetraone-type structure with two nitrogen’s in the central ring, R5-R8 are fixed as C-O/oxo groups with four positions left as R1-R4 substituents, which is the same as Claim 3’s structure (shown below) and would be an obvious variant of the compound of Geigle.
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 any of these variations of compounds which fall within claimed general formula (1) as doing so would give the skilled artisan the reasonable expectation of success and as doing so would amount to nothing more than a variation of it 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.
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Geigle’s Formula (1)
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Claim 3 Structure
In regard to Claim 6, Geigle et al. discloses the active material for the secondary battery according to Claim 1. With respect to the limitations of claim 6, it is noted that the limitations are directed to non-selected options of parent claim 1. For example, claim 1 explicitly recites that in general formula (1) each R position can be O or -OM or H or an organic group (emphasis added). Accordingly, the limitations of claim 6 are reasonably considered to be optional limitations which depend upon the selection of -OM at the R position, recited in claim 1, and which in this case have not been selected because Geigle’s formula 1 supports the use of an active material comprising compounds of phenazine 1,2,3,4-tetraones, which meets the requirements of general Formula (1) and wherein in the fully oxidized version tetraone with only C=O groups, the M parameter from Claim 1's general Formula (1) is not required, as noted above.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Geigle et al. (WO 2020035138 A1 - Machine Translation), hereinafter "Geigle" 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". Geigle, 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 Claim 7, Geigle et al. discloses the active material for the secondary battery according to Claim 1. While Geigle 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 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Geigle et al. (WO 2020035138 A1 - Machine Translation), hereinafter "Geigle" 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". Geigle, 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 8-9, Geigle et al. discloses the active material for the secondary battery according to Claim 1. While Geigle 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.
In regard to Claims 10-11, Geigle 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 Geigle 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 claim 1 have been considered but are moot because the new ground of rejection has been changed from a 35 U.S.C 102 (a)(1) rejection to a 35 U.S.C 103 rejection and does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Further, Geigle et al. (WO 2020035138 A1) teaches all of the limitation of amended claim 1 as discussed in the 35 U.S.C 103 rejection above.
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 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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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725
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