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 .
Election/Restrictions
Applicant’s election without traverse of Group I, species a., sub-species ii. (claim 1-8) in the reply filed on 17 August 2026 is acknowledged. Claims 9-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 August 2026.
Claims 1-17 are pending, with claims 1-8 being considered in the present Office action.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Regarding Claim 3, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Hartwig (WO 2019158615), hereinafter Hartwig.
Regarding Claims 1 and 5, in Table 3 Hartwig suggests a compound comprising the following formula:
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108
164
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The substituents of R1-R8 are (see page 27/181):
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207
616
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Further, Hartwig describes Formula (3)(a) on pages 11, 20-22/181:
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159
183
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The substituents of Formula (3)(a) are described as:
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210
575
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Based on the foregoing, the “optionally substituted amine” (i.e., NR2 where R is CnH2nSO3H and n is selected from 2-4) substituent at the R2 and R7 positions reads on the following claimed structure of claim 5.
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105
332
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Hartwig also suggests on page 20/181:
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391
1068
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Based on the foregoing, the “optionally substituted amine” (i.e., NR2 where R is CnH2nSO3H and n is selected from 2-4) substituent at the R3 and R7 positions reads on the following claimed structure of claim 5.
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151
313
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Regarding Claim 2, Table 3 in Hartwig suggests three of the substituents are N(Rb)2 (i.e., ID 88, where the amount of substituents is “Tri”).
Regarding Claims 3-4, Hartwig suggests the C1-C6 alkyl group substituted with SO3H is CnH2nSO3H and n is selected from 1, 2, 3, 4, 5, or 6, thereby suggesting the C1-C6 alkyl is a C3-6 alkyl group and satisfies CH2S(=O)2OH, CH2CH2S(=O)2OH, CH2CH2CH2CH2S(=O)2OH, CH2CH2CH2 CH2CH2S(=O)2OH, and CH2CH2CH2CH2CH2CH2S(=O)2OH.
Regarding Claims 6-7, Applicant attempts to differentiate the claimed product by the process in which it was made, i.e., “the compound of formula (I) is produced by reacting 2,6-diaminoathraquinone or … with 1,3 propanesultone...”. Applicant is reminded 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 does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” (see In re Thorpe, 111 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); MPEP 2113. In this case, Hartwig suggests the claimed compound (see rejection of claim 1); thus, the claim is unpatentable even though the prior product was made by a different process.
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 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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hartwig (cited above).
Regarding Claim 5, this rejection is for the following claimed structure:
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143
299
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As set forth under the rejection of claims 1 and 5, Hartwig suggests substituents on the anthraquinone compound (i.e., NR2 where R is CnH2nSO3H and n is selected from 2-4) at the R2 and R7 positions. While the claimed and prior art chemical formulas are the same, the structures differ with respect to the position of the sulfonic acid group on the carbon backbone.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or 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. In this case, Hartwig suggests a compound that is similar in structure to that claimed (e.g., compounds are position isomers); considering both compounds also have the same function (i.e., redox active species in redox cells), there is an expectation that the compounds similar in structure will have similar properties, hence there is motivation for one of ordinary skill in the art to make the claimed compound. See MPEP 2144.09.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hartwig (cited in the rejection of claim 1) in view of Chang (KR20200113776), hereinafter Chang.
Regarding Claim 8, Hartwig does not disclose the substituted anthraquinone compound of claim 1, which is used as the active compound (i.e., redox active species) in the electrolyte of a redox flow battery (see e.g., abstract, page 8, 10/181), is a salt comprising a lithium, a potassium, or a cesium cation. However, Chang suggests the use anthraquinone active compounds or the salt thereof as a redox active species (i.e., species that undergoes reduction/oxidation) in a redox flow battery, where the salt form comprises a lithium, a potassium, or cesium cation, thereby allowing the active species to undergo reduction/oxidation in the redox flow cell, see e.g., [0001, 0009-0011, 0029]. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP § 2144.07). In this case, the art has recognized the suitability of the salt form of the anthraquinone compound as a redox active species (i.e., compound that participates in the redox reaction (reduction/oxidation) in redox flow batteries. It would be obvious to one having ordinary skill in the art to use the salt form of the substituted anthraquinone compound of claim 1 with the expectation that the salt form participates in the redox reaction of redox battery, as suggested by Chang.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA KOROVINA whose telephone number is (571)272-9835. The examiner can normally be reached M-Th 7am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at 5712721481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA KOROVINA/Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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