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 .
DETAILED ACTION
Claims 1-27 of P. Geigle et al., US 18/211,065 (Jun. 16, 2023) are pending.
Rejections 35 U.S.C. 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. — The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Pursuant to 35 U.S.C. 112, the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Unclear Chemical Structure
Claims 1-27 are rejected pursuant to 35 U.S.C. 112, as indefinite because the scope/meaning of the claim 1 and claim 3 recitation of:
Claims 1 and 3 . . . are joined together to form a saturated or an unsaturated carbocycle, wherein the saturated or the unsaturated carbocycle is -H, -Alkyl, -AlkylGa, -SO3H/-SO3-, OGa, or-COOH . . .
is unclear. Based on the rules of chemical valence, a “carbocycle” cannot be any of the recited groups “-H, -Alkyl, -AlkylGa, -SO3H/-SO3-, OGa, or-COOH”. In this regard, the specification defines “carbocycle” according to its art-known meaning:
The term "carbocycle", as used herein, refers to an aromatic or non-aromatic ring in which each atom of the ring is carbon.
Specification at page 16, lines 3-4.
As such, one of ordinary skill in the art cannot known the meaning of this term within the claim context. MPEP § 2173.05(a)(III). It appears that the subject phrase was imported into claim 1, out of context, from specification page 35, lines 6-8.
Improper Preferences in a Claim
Claims 6 and 7 are rejected under 35 U.S.C. 112(b) as being indefinite for multiple recitations of the exemplary claim language “preferably” within claim 6. These recitations improperly provide for preferences within a claim and thereby renders confusion over the intended scope. See MPEP § 2173.05(d).
Unclear Claim Language
Claims 1-27 are rejected pursuant to 35 U.S.C. 112(b), as indefinite because the scope/meaning of the following bolded claim 1 recitations of “substituent”:
Claim 1 . . . wherein at least one substituent is a methyl group and at least one other substituent is selected from alkoxy, amine, carboxyl, sulfonyl, and hydroxyl.
are unclear in context. These recitations of “substituent” have no antecedent basis in claim 1. It is not clear whether Applicant intends “substituent” to mean any of R1-R10 (as the entire structure of R1-R10) or whether “substituent” also encompasses group that is bonded to any of R1-R10, for example, variables Ga or Gb. In other words, absent a previous recitation of “substituent” in claim 1, and in view of the fact that there are many potential substituent alternatives, one of skill cannot know, how this limitation is satisfied. For example, does R1 as methyl or R1 as methoxy or both meet the first part of the subject limitation “wherein at least one substituent is a methyl group”? MPEP § 2173.05(e).
As discussed in the MPEP a lack of clarity could arise where a claim refers to "said lever" or "the lever," where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. MPEP § 2173.05(e). Similarly, if two different levers are recited earlier in the claim, the recitation of "said lever" in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended. MPEP § 2173.05(e). A claim which refers to "said aluminum lever," but recites only "a lever" earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made. MPEP § 2173.05(e).
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
§ 112(d) Rejection of Claim 4
Claim 4 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends for the following reasons. The scope of claim 4 is exactly the same as the scope of claim 1. There is no redox flow battery within the scope of claim 4 that does not also fall within the scope of claim 1. Claim 4 therefore fails to “specify a further limitation of the subject matter claimed” as required by § 112(d).
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under AIA 35 U.S.C. 103(a) 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.
Claims 1-27 are rejected under AIA 35 U.S.C. 103 as being unpatentable over X. Wei et al., US 2018/0366757 (2018) (“Wei”).
X. Wei et al., US 2018/0366757 (2018)
Wei discloses electrolyte systems and redox flow battery systems including an anolyte comprising a phenazine derivative. Wei at page 1, [0006]. Wei discloses that Fig. 1 is a schematic diagram of an exemplary redox flow battery system. Wei at page 2, [0017].
With respect to Fig. 1, Wei teaches that the positive half-cell 20 comprises an electrode tank 22 containing a catholyte 24 and the negative half-cell 30 comprises an electrode tank 32 containing an anolyte 34. The anolyte and catholyte are solutions comprising electrochemically active components in different oxidation states. The electrochemically active components in the catholyte and anolyte couple as redox pairs. Wei at page 7, [0069]. Wei Fig. 1 meets each and every limitation of the claim 1 and claim 2 “redox flow battery”.
Wei teaches that the following phenazines of formula II for use in redox flow batteries.
[0011] In any or all of the above embodiments, the phenazine derivative may have a structure according to formula II
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In some embodiments, the phenazine derivative has a structure according to formula II, and each R1 and R2 independently is -H, -OH, -SO3H, -COOR, -OCH3, -SO3M, or -CH2N(CH3)3X.
In certain embodiments, each R1 independently is -H, -OH, -SO3H, -COOH, -OCH3, or -CH2N(CH3)3X; and
each R2 independently is -H, -OH, -SO3M, or -CH2N(CH3)3X.
In Example 2, Wei teaches use of DHPS in a redox flow battery. DHPS has the following structure (which does not fall the claim 1 genera).
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Wei teaches that the flow cell demonstrated excellent cycling stability without detectable capacity decay (FIG. 11). The average energy efficiency was 72% over the course of 100 cycles (FIG. 11). Wei at page 9, [0086]. Note that the redox flow battery of Wei Example 2 proceeds by reducing the DHPS (which is in oxidized state corresponding to the claim 1 General Formula (1b)) to a reduced state (corresponding to the compound of claim 1General Formula (1b)). See, Wei at page 4, [0046] (teaching the 2e- redox reaction of phenazine).
Although Wei’s DHPS does not fall the claim 1 genera; however, Wei further discloses that the following compound is an exemplary phenazine derivative (referred to by the Examiner as Wei compound A).
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Wei Compound A
Wei at page 2, col. 1. Wei compound A meets structural limitations of General Formula (1), where R7 and R6 are -OGa and Ga is alkyl; R2 and R3 are -OH; and R1, R4 R5, and R8 are all hydrogen. Wei compound A meets also meets the following claim 1 limitation of:
Claim 1 . . . wherein at least one substituent is a methyl group and at least one other substituent is selected from alkoxy, amine, carboxyl, sulfonyl, and hydroxyl.
because it comprises both a methyl substituent and a methoxy substituent. See specification definition of “substituted” and “substituent” at page 7, line 20 – page 8, line 10; see also, § 112(b) rejection above. In sum, Wei compound A meets each and every chemical structure limitation of claim 1.
Differences between Wei and Claim 1
Wei differs from claim 1 only to the extent that one of ordinary skill must choose Wei compound A for use in Wei’s redox flow battery system, for instance, for use in Wei Example 2.
Claims 1-7, 9-11, 16, and 25-27 Are Obvious in View of Wei under the Following Rationale
Claims 1-7, 9-11, 16, and 25-27 are obvious over Wei under the following rationale. Claim 1 is obvious because one of ordinary skill is motivated with a reasonable expectation of success to employ Wei compound A
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Wei Compound A
in the Wei Redox flow battery of Wei Fig. 1, (as in Wei Example 2) thereby meeting each and every limitation of claim 1, Formula (1)(a). One of ordinary skill is so motivated because that is the very purpose taught by Wei for compound A. MPEP § 2144.01; see also MPEP § 2143(I)(E).
Claim 2 is obvious, because as discussed above, Wei’s redox flow battery meets each and every apparatus limitation of claim 2.
Claim 3 is obvious because Wei compound A meets structural limitations of General Formula (1), where R7 and R6 are -OGa and Ga is alkyl; R2 and R3 are -OH; and R1, R4 R5, and R8 are all hydrogen.
The limitations of claim 4 are clearly met.
The limitations of claim 5 are met because Wei Example 2 employs the phenazine in the redox flow battery as an aqueous composition. Wet at page 9, [0084]-[0085].
Claims 6 and 7 are obvious because the redox flow battery of Wei Example 2 proceeds by reducing the phenazine (which is in oxidized state corresponding to the claim 1 General Formula (1b)) to a reduced state (corresponding to the compound of claim 1General Formula (1b)). See, Wei at page 4, [0046] (teaching the 2e- redox reaction of phenazine). As such, employment of compound A in the Wei Example 2 redox flow battery, as proposed, meets each and every limitation of claim 6, bullet (a) and claim 7, bullet (a).
The further limitations of claims 9-11, 16, and 25-27 are clearly met.
Claims 1-27 Are Obvious in View of Wei under the Following Rationale
Claims 1-27 are obvious over Wei under the following rationale. As discussed above, Wei teaches that the following phenazines of formula II for use in redox flow batteries. Wei teaches the small phenazine genus of R1/R2 as bold-italic below:
[0011] In any or all of the above embodiments, the phenazine derivative may have a structure according to formula II
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In some embodiments, the phenazine derivative has a structure according to formula II, and each R1 and R2 independently is -H, -OH, -SO3H, -COOH, -OCH3, -SO3M, or -CH2N(CH3)3X.
In certain embodiments,
each R1 independently is -H, -OH, -SO3H, -COOH, -OCH3, or -CH2N(CH3)3X; and
each R2 independently is -H, -OH, -SO3M, or -CH2N(CH3)3X.
Wei at page 1, [0011].
Wei teaches the equivalency of -H, -OH, -SO3H, -COOH, -OCH3, -SO3M, and -CH2N(CH3)3X at variables R1 and R2.
One of ordinary skill in the art is motivated to first select Wei’s DHPS as a compound for further development and thereafter (guided by Wei’s above bolded text) structurally modify DHPS by replacing a R1 hydrogen with methoxy and a R2 -OH with any of (R2 is -H, -OH, -SO3M, or -CH2N(CH3)3X) as follows:1
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R2 is any of -H, -OH, -SO3M, or CH2N(CH3)3X (where M is a cation and X is an anion)
One of ordinary skill arrives as the above proposed compounds, where R2 is any of -H, -OH, -SO3M, or CH2N(CH3)3X, by following Wei’s specific structural guidance. Wei at page 1, [0011]. Each of the proposed compounds meets the following claim 1 limitation of:
Claim 1 . . . wherein at least one substituent is a methyl group and at least one other substituent is selected from alkoxy, amine, carboxyl, sulfonyl, and hydroxyl.
because it comprises a methyl substituent (i.e., on the methoxy group) and a sulfonyl and hydroxyl group. See specification definition of “substituted” and “substituent” at page 7, line 20 – page 8, line 10; see also, § 112(b) rejection above.
Claim 1 is obvious over the proposed compounds where in claimed Formula (1)(a) R2 is any of -H, -OH, -SO3M, or CH2N(CH3)3X; R3 is -OH; R6 is -SO3H; R6 is -SO3H, R7 is -OGa; Ga is alkyl; and R1, R4, R5, and R8 are hydrogen.
Claim 2 is obvious, because as discussed above, Wei’s redox flow battery meets each and every apparatus limitation of claim 2.
Claim 3 is obvious where in claimed Formula (1)(a) R2 is any of -OH, -SO3M, or CH2N(CH3)3X; R6 is -SO3H; R6 is -SO3H, R7 is -OGa; Ga is alkyl; and R1, R4, R5, and R8 are hydrogen.
The limitations of claim 4 are clearly met.
The limitations of claim 5 are met because Wei Example 2 employs the phenazine in the redox flow battery as an aqueous composition. Wet at page 9, [0084]-[0085].
Claims 6 and 7 are obvious because the redox flow battery of Wei Example 2 proceeds by reducing the phenazine (which is in oxidized state corresponding to the claim 1 General Formula (1b)) to a reduced state (corresponding to the compound of claim 1General Formula (1b)). See, Wei at page 4, [0046] (teaching the 2e- redox reaction of phenazine). As such, employment of compound A in the Wei Example 2 redox flow battery, as proposed, meets each and every limitation of claim 6, bullet (a) and claim 7, bullet (a).
The limitations of claim 8 are clearly met by the -SO3H group in the proposed compounds.
The further limitations of claims 9-11 are clearly met.
Claims 12, 17, 20, 22, and 23 are obvious for the following reasons. Wei teaches the equivalency of -H, -OH, -SO3H, -COOH, -OCH3, -SO3M, and -CH2N(CH3)3X, in the phenazine of formula II, at variables R1 and R2. Wei at page 1, [0011]. As such, one of ordinary skill is motivated to structurally modify Wei’s DHPS, as proposed above, but employ -COOH at variable R2, thereby meeting the claim 12, 17, 20, 22 and 23 limitation of wherein the compound comprises at least one carboxyl group.
Claim 13 is obvious where R2 in the proposed compounds is CH2N(CH3)3X, which meets the claim 13 limitation of “the compound comprises at least one amine group”. See specification definition of “amine” at page 18, line 19 – page 18, line 4.
The limitations of claims 14 and 15 are clearly met by the proposed compounds.
The further limitations of claims 16, 18, 19, 21, and 24-27 are clearly met. Note that the limitations of 27 are met when R2 in the proposed compounds is or CH2N(CH3)3X, which comprises two methyl groups and where the -OH within the SO3H group meets the claim 27 limitation of comprises a hydroxyl group and the other claim 27 hydroxyl group is at claim 1 variable R3.
Non-Statutory Double Patenting Rejections
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
Non-Statutory Double Patenting Rejection over O. Ekkert et al., US 18/031,751 (2020) (claim set filed on December 5, 2025), published as US 2023/0411662 (2023)
Claims 1-27 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over conflicting claims 3 and 6 of O. Ekkert et al., US 18/031,751 (2020) (claim set filed on December 5, 2025), published as US 2023/0411662 (2023) in view of X. Wei et al., US 2018/0366757 (2018) (“Wei”). The rejection is provisional because the conflicting claims have not been patented.
Conflicting claim 6 discloses compound falling within the genus of claim 1, Formula (1)(a). The conflicting specification discloses that the claim 6 compounds are useful in an electrolyte solution of a redox flow battery. US 2023/0411662 at page 2, [0014].2
Instant claims 1-11, 14-16, 18, 19, 21, 24, and 25 are patentably indistinct from conflicting claim 6 because one of ordinary skill is motivated to employ any of the conflicting claim 6 compounds in a redox flow battery (for example, the redox flow battery as disclosed by Wei, see above § 103 rejection) thereby meeting each and every limitation of instant claims 1-11, 14-16, 18, 19, 21, 24, and 25.
Claims 12, 17, 20, 22, 23, 26 and 27 are obvious for the following reasons. Both Wei and Conflicting claim 3 teaches that -COOH (carboxyl) and methoxy are suitable substituents for phenazine Formula (1)(a). Wei at page 1, [0011]. As such, for the same reasons discussed in the above § 103 rejection over Wei, one of ordinary skill is motivated to structurally modify the any of the conflicting claim 6 species by adding a -COOH or methoxy substituent (for example to the 6th conflicting species) so as to arrive at compound falling within instant claims 12, 17, 20, 22, 23, 26 and 27.
Claim 13 is obvious because both conflicting claim 3 and Wei teach that -CH2N(CH3)3X is a suitable substituent for conflicting claim 3 phenazine of Formula (1)(a). The group -CH2N(CH3)3X meets the claim 13 limitation of “the compound comprises at least one amine group”. See specification definition of “amine” at page 18, line 19 – page 18, line 4. For the same reasons discussed in the above § 103 rejection over Wei, one of ordinary skill is motivated to structurally modify the any of the conflicting claim 6 species by adding a -CH2N(CH3)3X substituent (for example to the 6th conflicting species) so as to arrive at compound falling within instant claim 13.
Terminal Disclaimer
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 See MPEP § 2143(B) (discussing “lead compound cases” in Examples 9-11) (‘[o]bviousness based on structural similarity thus can be proved by identification of some motivation that would have led one of ordinary skill in the art to select and then modify a known compound (i.e. a lead compound) in a particular way to achieve the claimed compound’ citing Eisai, 533 F.3d at 1357, 87 USPQ2d at 1455.”); see also, MPEP § 2143(B), Example 11 (citing Altana Pharma AG v. Teva Pharm. USA, Inc., 566 F.3d 999, 91 USPQ2d 1018 (Fed. Cir. 2009) a ‘restrictive view of the lead compound test would present a rigid test similar to the teaching-suggestion-motivation test that the Supreme Court explicitly rejected in KSR’).
2 Those portions of the specification which provide support for the conflicting claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application. MPEP § 804(II)(B)(1) (citing In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970)). The court in Vogel recognized ‘that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,’ but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent or application which provides support for the claim. MPEP § 804(II)(B)(1). In this regard, it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. MPEP § 804(II)(B)(1) (citing AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014); Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010); Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003)).