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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendment filed on May 20, 2026 is acknowledged. Claims 1-15 remain pending in the application.
The previous rejections under 35 U.S.C. 102 are withdrawn due to Applicant’s submission of a verified English language translation of the priority document. The previous rejections under 35 U.S.C. 103 are withdrawn. New rejections follow.
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 1-11 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Wiberg et al. (WO 2020201405 A1, hereinafter “Wiberg”) in view of Liu et al. (CCS Chemistry 2022, hereinafter “Liu”).
Regarding clams 1-4, Wiberg discloses a quaternary ammonium NDI salt with two ammonium groups (page 36, example 4a), wherein L1 and L3 are C3 alkylene groups and R2 and R3 are C1 alkyl groups. Wiberg does not disclose a naphthalene diimide compound represented by Chemical Formula 1, with four ammonium groups, L2, L4, R1, and R4.
Liu discloses the decoration of hydrophobic arylene diimide derivatives with large hydrophilic groups, such as 2~6 hydrophilic ammonium cation groups, to enhance structural stability and increase solubility (page 2335 col. 2 lines 19-24).
Wiberg and Liu are considered to be analogous to the claimed invention because they are in the same field of naphthalene diimide compounds. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have applied the known technique of providing additional quaternary ammonium salts as taught by Liu to the quaternary ammonium NDI salt of Wiberg to yield the predictable result of the naphthalene diimide compound represented by Chemical Formula 1, wherein L1, L2, L3, and L4 are all C3 alkylene groups, and R1, R2, R3, and R4 are all C1 alkyl groups (see MPEP § 2143(I)(D)), and one of ordinary skill in the art would have a reasonable expectation of success in doing so. Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977) (see MPEP § 2144.09(II)). Doing so would result in a modified NDI molecule with enhanced structural stability and increased solubility, which would improve charge repulsion between pendent ammonium groups, prevent the dimerization degradation process, and inhibit electrolyte penetration (Liu page 2335 col. 2, lines 22-27).
Regarding claim 5, modified Wiberg discloses the limitations of claim 1. Modified Wiberg
further discloses wherein the naphthalene diimide compound is represented by Chemical Formula 1-1 (L1, L2, L3, and L4 are all C3 alkylene groups, and R1, R2, R3, and R4 are all C1 alkyl groups as described above).
Regarding claim 6, modified Wiberg discloses the limitations of claim 1. Wiberg further discloses an electrolyte solution for a redox flow battery comprising the naphthalene diimide compound according to claim 1 (page 7 paragraph 3, aqueous-based electrolyte solution comprising a second organic redox-active molecule being modified naphthalene diimide NDI).
Regarding claim 7, modified Wiberg discloses the limitations of claim 6. Wiberg further discloses the electrolyte solution further comprising a solvent (page 3 paragraph 5, aqueous-based electrolyte solutions comprising water, or water in admixture with water-soluble co-solvents and/or supporting electrolytes).
Regarding claim 8, modified Wiberg discloses the limitations of claim 7. Wiberg further discloses wherein the solvent is an aqueous solvent, a non-aqueous solvent, or a mixture of two or more thereof (page 3 paragraph 5, aqueous-based electrolyte solutions comprising water, or water in admixture with water-soluble co-solvents and/or supporting electrolytes).
Regarding claim 9, modified Wiberg discloses the limitations of claim 8. Wiberg further discloses wherein the aqueous solvent is one or more of potassium chloride, sodium chloride, ammonium chloride, sulfuric acid, and phosphoric acid (page 4 paragraph 2, supporting electrolytes), and the non-aqueous solvent is one or more of ethanol, methanol (page 3 paragraph 5, alcohols); acetonitrile, propionitrile, butyronitrile (page 4 paragraph 1, nitrile solvents); dimethyl sulfoxide (page 4 paragraph 1, sulfoxide solvents), sulfolane (page 4 paragraph 1, sulfone solvents); N,N-dimethylformamide, dimethylacetamide, N-methylpyrrolidone (page 4 paragraph 1, amide solvents); 1,2-dimethoxyethane, tetrahydrofuran (page 4 paragraph 1, ether solvents); dimethyl carbonate, diethyl carbonate, propylene carbonate, ethylene carbonate, methyl ethyl carbonate (page 4 paragraph 1, carbonate solvents); acetone (page 4 paragraph 1, ketone solvents); 1,4-butyrolactone, and ethyl acetate (page 4 paragraph 1, ester solvents).
Regarding claim 10, modified Wiberg discloses the limitations of claim 6. Wiberg further discloses the electrolyte solution further comprising a supporting electrolyte (page 3 paragraph 5 and page 4 paragraph 2, supporting electrolytes).
Regarding claim 11, modified Wiberg discloses the limitations of claim 6. Wiberg further discloses the electrolyte solution further comprising an electrode active material (Wiberg page 7 paragraph 3, aqueous-based electrolyte solution comprising a first organic redox-active molecule being NDI). In addition, it is the examiner’s position that the reduced forms of NDI and modified NDI are also electrode active materials, and meet the additional limitation of claim 11.
Regarding claim 14, modified Wiberg discloses the limitations of claim 6. Wiberg further discloses a redox flow battery comprising the electrolyte solution for a redox flow battery according to claim 6 (page 2 paragraph 1, redox flow battery comprising second aqueous-based electrolyte solution).
Regarding claim 15, modified Wiberg discloses the limitations of claim 14. Wiberg further discloses wherein the redox flow battery comprises: a positive electrode cell comprising a positive electrode and a positive electrode electrolyte solution (page 2 paragraph 1, positive compartment comprising a positive electrode in contact with a first aqueous-based electrolyte solution); a negative electrode cell comprising a negative electrode and a negative electrode electrolyte solution (page 2 paragraph 1, negative compartment comprising a negative electrode in contact with a second aqueous-based electrolyte solution); and a separator disposed between the positive electrode cell and the negative electrode cell (page 2 paragraph 1, separator component that separates the aqueous-based electrolyte solutions), and the negative electrode electrolyte solution is the electrolyte solution for a redox flow battery (page 2 paragraph 1, second aqueous-based electrolyte solution comprising an organic redox-active molecule that is a naphthalene diimide).
Allowable Subject Matter
Claims 12 and 13 are 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 following is a statement of reasons for the indication of allowable subject matter: claim 12 recites the additional limitation “wherein the electrode active material contains a 2-valent to 5-valent vanadium-based compound”, which contains allowable subject matter.
Wiberg discloses that redox flow batteries employing metals such as vanadium have serious inherent problems relating to either performance, procurement, or toxicity (Wiberg page 1, paragraph 3). Therefore, it would not have been obvious for one of ordinary skill in the art to modify the electrode active material of modified Wiberg with a 2-valent to 5-valent vanadium-based compound, when the prior art teaches away from combining vanadium with modified naphthalene diimide compounds in redox flow battery electrolyte solutions.
Response to Arguments
Applicant’s arguments with respect to claims 1-10 and 14-15 on pages 3-4 regarding He ‘211 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.
Applicant's arguments filed on May 20, 2026, with respect to claims 1-10 and 14-15 regarding Wiberg have been fully considered but they are not persuasive.
On pages 3-4 of Applicant’s response, Applicant states that Wiberg does not disclose an NDI compound containing four ammonium ions, or any technical basis for suggesting its effects. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant’s reply fails to address the combined teachings of the applied references and instead only argues that each reference individually does not teach all of the claim limitations. All of the limitations of the claim are disclosed in the combination of Wiberg and Liu, and it is the combination of the references that renders the claimed invention obvious. Applicant’s argument is not persuasive because it only attacks the references individually instead of considering their combined teachings, and claim 1 is rejected over Wiberg in view of Liu.
Applicant’s arguments, see page 4, filed on May 20, 2026, with respect to claims 11-13 have been fully considered and are persuasive. The rejection of claims 12-13 under 35 U.S.C. 103 has been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jackie Liang whose telephone number is (571)272-0880. The examiner can normally be reached M to F 8:45AM to 4:45PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey T. Barton can be reached at (571)-272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.L./Examiner, Art Unit 1726
/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 10 July 2026
Prosecution Insights