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
2. Applicant’s election without traverse of Group II (Claims 15-27) in the reply filed on December 12, 2025, is acknowledged.
3. The Applicant's amendments filed on December 12, 2025, were received. Claims 1-12 and 19 have been amended. Claims 13-14 have been cancelled. None of the Claims have been withdrawn from consideration. Claims 28-29 have been added as new. Therefore, Claims 12 and 15-29 are pending in this office action.
Examiners Note
4. The Claim indicator for Claims 9-12 should read (Currently Amended). Appropriate correction is requested.
Priority
5. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
6. Information disclosure statements (IDS), submitted July 30, 2024; November 11, 2024; May 20, 2025; and, February 24, 2026, have been received and considered by the examiner.
Claim Rejections - 35 USC § 112
7. 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.
8. Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 12 recites the limitation "the aromatic hydrocarbon" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
9. 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.
10. 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.
11. 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.
12. Claims 1-12 and 15-29 are rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (US 2017/0229728 A1) in view of Reece et al. (WO 2015/048074 A).
With regard to Claim 15, Dong et al. disclose an electrochemical cell (10) comprising a first and second half-cell chamber, called tanks (20, 30), separated by a cation exchange membrane (11), wherein: the first half-cell chamber (20) comprises a first electrode (12) in contact with a first aqueous electrolyte containing a redox active material and a reducible impurity (paragraphs 0031-0038, 0051-0052); and the second half-cell chamber (30) comprises a second electrode (13) in contact with a second aqueous electrolyte (paragraphs 0031-0038), the second aqueous electrolyte comprising one or more salts (paragraph 0071) comprising a non-protic cations at a concentration of 1 to 3 mol/L (paragraph 0068), which meets the claimed limitation of at least 0.1 M. Dong et al. do not specifically disclose wherein the second electrode comprising a catalyst for the generation of O₂.
Reece et al. disclose an electrochemical cell comprising a first and second half-cell chamber, wherein: the first half-cell chamber comprises a first electrode in contact with a first aqueous electrolyte containing a redox active material, and the second half-cell chamber comprises a second electrode in contact with a second aqueous electrolyte, wherein the second electrode comprising a catalyst for the generation of O₂ (paragraph 0019). Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the electrochemical cell of Dong et al. to include a catalyst for the generation of O₂ on the second electrode, because Reece et al. teach that the catalyst material has the ability to generate O₂, as well as, resist corrosion (paragraph 0025).
With regard to Claim 1, Dong et al. disclose wherein the first aqueous electrolyte solution comprising comprises: (i) the redox active electrolyte at a concentration of 1 to 3 mol/L (paragraph 0068), which meets the claimed limitation of at least 0.5 M; and (ii) the reducible impurity being present in an amount of 10 mass ppm of less (paragraph 0051). Dong et al. do not specifically disclose wherein the amount is less than about 500 µg per liter of the electrolyte solution or less than 500 µg per mole of the redox active electrolyte, however, before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to include the reducible impurity in an amount less than about 500 µg per liter of the electrolyte solution or less than 500 µg per mole of the redox active electrolyte, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
With regard to Claim 2, Dong et al. disclose wherein the reducible impurity comprises a form of antimony (Sb), arsenic (As), or a combination thereof (paragraphs 0053-0056).
With regard to Claims 3-4, Dong et al. disclose the reducible impurity being present in an amount of 10 mass ppm of less (paragraph 0051), but do not specifically disclose the reducible impurity in an amount of less than about 50 µg/L, more specifically, less than about 20 µg/L. Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to include the reducible impurity in an amount less than about 50 µg/L, more specifically, less than about 20 µg/L, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
With regard to Claims 5-6, Dong et al. disclose wherein the redox active electrolyte comprises a metal or metalloid, wherein the redox active electrolyte comprises a metal ligand coordination compound comprising titanium (paragraph 0067).
With regard to Claims 7-8, Dong et al. disclose wherein the reducible impurity is a volatile hydride, wherein the volatile hydride is arsine (AsH₃), stibine (SbH₃), or a combination thereof (paragraph 0055).
With regard to Claims 9-10, Dong et al. disclose wherein the redox active electrolyte comprises: (i) a metal ligand coordination compound comprising Cr, Fe, Mn, Ti, or V (paragraphs 0067-0068).
With regard to Claims 11-12, because Claim 9 is met by a metal ligand coordination compound, then a claim/limitation that further limits the alternative species which is not taught by the prior art, i.e. the organic active material, is not required to be met.
With regard to Claims 16-18, Reece disclose wherein the first electrode is a carbon electrode (paragraph 0036), wherein the catalyst comprises nickel, and wherein the catalyst is Ni oxide (paragraphs 0077-0078).
With regard to Claim 19, Dong et al. disclose an electrochemical cell comprising a first and second half-cell chamber, called tanks (20, 30), separated by a cation exchange membrane (11), wherein: the first half-cell chamber (20) comprises a first electrode (12) in contact with a first aqueous electrolyte containing a redox active material and a reducible impurity (paragraphs 0031-0038, 0051-0052); and the second half-cell chamber (30) comprises a second electrode (13) in contact with a second aqueous electrolyte (paragraphs 0031-0038), the second aqueous electrolyte comprising one or more salts (paragraph 0071) comprising a non-protic cations at a concentration of 1 to 3 mol/L (paragraph 0068), which meets the claimed limitation of at least 0.1 M. Dong et al. do not specifically disclose wherein the second aqueous electrolyte has a pH of at least 2, and the second electrode comprising a catalyst for the generation of O₂.
Reece et al. disclose an electrochemical cell comprising a first and second half-cell chamber, wherein: the first half-cell chamber comprises a first electrode in contact with a first aqueous electrolyte containing a redox active material, and the second half-cell chamber comprises a second electrode in contact with a second aqueous electrolyte having a pH of at least 2, wherein the second electrode comprising a catalyst for the generation of O₂ (paragraph 0019). Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the electrochemical cell of Dong et al. to include the second aqueous electrolyte has a pH of at least 2, and the second electrode comprising a catalyst for the generation of O₂, because Reece et al. teach that each compound exhibits optimal electrochemical reversibility, solubility and chemical stability at a specific pH value (paragraph 0027), and the catalyst material has the ability to generate O₂, as well as, resist corrosion (paragraph 0025).
With regard to Claim 20, Dong et al. disclose wherein the reducible impurity forms a volatile reduced form on electrochemical reduction, for example an arsine (AsH₃), or stibine (SbH₃) (paragraphs 0053-0056).
With regard to Claim 21, Reece et al. disclose wherein the second aqueous electrolyte comprises Na⁺ and/or K⁺ ions and has a pH of at least 7 (paragraphs 0029, 0034).
With regard to Claims 22-23, Reece et al. disclose wherein the first electrode is a carbon electrode, and wherein the carbon electrode is carbon cloth, carbon felt, or carbon paper (paragraph 0026).
With regard to Claims 24-25, Reece et al. disclose wherein the catalyst in the second electrode is at least one of platinum or an oxide of cobalt, iridium, iron, manganese, nickel, ruthenium, tin, or a combination thereof, more specifically, wherein the catalyst in the second electrode is IrO2 (paragraph 0025).
With regard to Claims 26-27, the recitations, “a method of operating an electrochemical cell” and “passing sufficient electrical current through the cell under conditions sufficient to reduce the concentration of the reducible impurity in the first aqueous electrolyte to a pre-determined level in the first aqueous electrolyte”, are construed as product-by-process limitations. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “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 as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With regard to Claim 28, Dong et al. disclose wherein the first aqueous electrolyte solution comprises: (i) the redox active electrolyte at a concentration of preferably 1 to 3 mol/L (paragraph 0068), which meets the claimed limitation of at least 0.5 M; and (ii) the reducible impurity is present in an amount of 10 mass ppm or less (paragraph 0055). Dong et al. do not specifically disclose wherein the reducible impurity is in an amount less than about 500 µg per liter of the electrolyte solution or less than 500 µg per mole of the redox active electrolyte. Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to include the reducible impurity in an amount less than about 500 µg per liter of the electrolyte solution or less than 500 µg per mole of the redox active electrolyte, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
With regard to Claim 29, Dong et al. disclose wherein the redox active electrolyte comprises: (i) a metal ligand coordination compound comprising Cr, Fe, Mn, Ti, or V (paragraphs 0067-0068).
Conclusion
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARIE O APICELLA whose telephone number is (571)272-8614. The examiner can normally be reached Monday thru Friday; 8:00AM to 5:00PM EST.
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/KARIE O'NEILL APICELLA/Primary Examiner, Art Unit 1725