DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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.
Claim 10 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 pre-AIA the applicant regards as the invention.
Claim 10 recites the limitation "the secondary base”. There is insufficient antecedent basis for this limitation in the claim. For the purpose of evaluating the prior art, the Examiner has interpreted this claim as if it recited “… at least one base selected from the group consisting of the solubilizing bases and [the] a secondary base”.
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 of this title, 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 pre-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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Beh et al. (U.S. Patent App. No. 2024/0052503 A1).
Regarding claim 1, Beh et al. discloses a first compartment comprising a negolyte in the form of an aqueous composition (Figure 3, element 310 (first compartment) and element 312 (source of negolyte solution); and Paragraphs 0018 and 0024 – 0026) comprising at least on compound of formula 1 (Paragraphs 0009 – 0014), a second compartment comprising a posolyte in the form of an aqueous composition, comprising at least one electroactive molecule (Figure 3, element 320 (second compartment) and 322 (source of posolyte solution); and Paragraphs 0024 – 0026 and 0041 – 0044), the negolyte additionally comprising at least one solubilizing base (Paragraph 0015).
Beh et al. fails to explicitly require that each and every base meets the additional limitations set forth in claim 1 (i.e. “the solubilizing base being characterized in that … between 14 and 650 cubic Angstroms”).
However, Beh et al. teaches various solubilizing bases as functionally equivalent bases (see at least Paragraph 0015), wherein there is sound basis that at least one of the bases meets the claimed limitations (i.e. triethylamine) as this exact base is recited in dependent claims 4 and 5.
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Beh et al. to select and utilize triethylamine as the base as taught by Beh et al., as this is taught as a functionally equivalent base to the other bases recited in the Beh et al. teaching, even if those do not meet the claimed property limitations set forth in claim 1. Applicants are reminded that substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, the various bases recited in Beh et al. and recognized by a skilled artisan are functional equivalents in the field of known, suitable bases for use in redox flow batteries. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claims 2 and 3, the disclosed triethylamine is taken as reading on the claimed scope.
Regarding claims 4 and 5, the disclosed triethylamine reads on the claimed scope.
Regarding claim 6, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the molar concentration as claimed through routine experimentation, especially given the teaching in Beh et al. regarding the known use of such a base in aqueous solutions. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 7, the Examiner deems that it would have been obvious to utilize mixtures of known bases and Beh et al. explicitly teaches these secondary bases as suitable bases for use in the negolyte solution as claimed (see at least Paragraph 0015).
Regarding claims 8 and 9, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the molar concentration of the secondary base and the relative molar concentrations of the mixture of bases through routine experimentation, especially given the teachings above regarding the known use of these materials as bases in redox flow batteries. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 10, Beh et al. disclose posolyte compositions meeting the claimed limitations (see at least Paragraphs 0041 – 0044).
Regarding claim 11, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the molar concentration as claimed through routine experimentation, especially given the teaching in Beh et al. regarding the known use of such a base in aqueous solutions for the posolyte (see citations above). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 12, Beh et al. disclose formula 1 components meeting the claimed limitations (see citations above).
Regarding claim 13, Beh et al. meets the claimed limitations as they do not disclose adding any Br- or Cl- ions.
Regarding claim 14, Beh et al. discloses membranes (Figure 3, element 330). Beh et al. appears to inherently disclose membranes meeting the claimed material limitations (Paragraph 0039), but these are recited only by Tradename, which could have varied compositions over time. However, the Examiner deems that a skilled artisan would be well versed in what materials would constitute a proper and effective ion exchange membrane for use in a redox flow battery and, as such, would render obvious the broadly claimed materials for suitable membranes, especially given the disclosure in Beh et al. above regarding suitable Tradename membranes.
Regarding claim 15, the nominal method is met for the reasons set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
September 29, 2026
