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 .
Examiner’s Comments
Regarding the term “roughened surface” in the device claims examined below, this is interpreted to be synonymous with a “rough surface.” That is to say, while a rough surface is required, no particular process, e.g. scuffing with sand paper, is required. It has been held that the presence of process limitations in a product claim, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to the product. In re Stephens 135 USPQ 656 (CCPA 1965). Furthermore, the patentability of a product does not depend upon its method of production. If the product in a product by process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed Cir 1985). See MPEP 2113. This interpretation is reasonable and well within the grasp of the ordinarily skilled and consistent the broadest reasonable interpretation as is required be the MPEP §2111.
Response to Arguments
Applicant’s arguments, see remarks, filed July 29, 2025, with respect to claim rejections under 112 have been fully considered and in combination with the amendments are persuasive. The claim rejections under 112 have been withdrawn.
Applicant’s arguments with respect to prior art claim rejections based on Rozbicki 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 July 29, 2025 have been fully considered but they are not persuasive.
Regarding applicant’s argument centered on nothing in Bhatnagar teaches or suggests using the disclosed slurries for anything other than polishing polishing/reducing surface roughness nor leaving slurry in the final product, the examiner is unpersuaded. One skilled in the art would know that the difference between roughening (scuffing) a surface versus polishing a surface is the same process but the two results are achieved by selecting the size of particles, e.g. see discussion in Bhatnagar paragraph [0005]. Rozbicki (and now Kailasam) indicate that the particles are from this step. 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). It is further noted that “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” and in addition it has been further held that "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle" and taking into account "the inferences and creative steps that a person of ordinary skill in the art would employ." KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007), see MPEP 2141.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 1 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Regarding claim 1 an “an electrochromic layer in contact with the first transparent conductor layer” in combination with “wherein the interface between the first transparent conductor layer and the electrochromic layer contains a plurality of inert particles” amounts to prohibited new matter. The specification sets forth two embodiments (1) an electrochromic layer directly on a roughened transparent conductor layer, and (2) an electrochromic layer on an interface layer with inert nanoparticles on a transparent conductor layer. Applicant appears to be mixing these two embodiments without support in the specification, as originally filed, support for such a mixing is not expressly, implicitly, or inherently supported in the originally filed disclosure, nor has applicant has not pointed out where the amended claim is supported, see MPEP 2163. It has been held that “it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation” Hyatt v. Boone, 146 F.3d 1348, 1353, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998) and "examiner was explicit that while each element may be individually described in the specification, the deficiency was lack of adequate description of their combination" Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007). See below for interpretation.
Claim 1 is rejected under 35 U.S.C. 112(a) because the specification, while being enabling for (1) an embodiment with an electrochromic layer directly on a roughened transparent conductor layer (without an interface layer with inert particles), or (2) an embodiment with an electrochromic layer on an interface layer with inert nanoparticles on a transparent conductor layer (without a direct contact between the electrochromic layer and the transparent conductor layer), does not reasonably provide enablement for a mixed embodiment with an electrochromic layer directly on a roughened transparent conductor layer with inert particles therebetween. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. Since claims 2 and 10 (and their respective dependent claims) are clearly directed to the embodiment with an interface layer the examiner is interpreting this claim is directed to the embodiment without an interface layer and for purposes of examination the examiner will use “
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kailasam et al. US Patent Application Publication 2014/0022621.
Regarding claim 1 Kailasam discloses an electrochromic device (title e.g. figure 4G showing a scanning electron micrograph of an electrochromic device) comprising: a first transparent conductor layer (e.g. electrode/transparent conductor layer/TCO 481) having a roughened surface (see figure 4G); an electrochromic layer (e.g. electrochromic layer 483) in contact with the first transparent conductor layer (see figure 4G); a solid electrolyte layer (e.g. ion conductor layer 485 & paragraph [0101-02] note “solid” and lists example materials) in contact with the electrochromic layer (see figures 4G); an ion storage layer (e.g. counter electrode layer 487) in contact with the solid electrolyte layer (see figures 4G); a second transparent conductor layer (e.g. electrode/transparent conductor layer/TCO 489) in contact with the ion storage layer (see figures 4G), wherein the roughened surface of the first transparent conductor layer is in contact with the electrochromic layer (see figures 4G); and wherein the roughened surface of the first transparent conductor defines a plurality of surface contour features having a peak-to-valley distance of no more than 650 nm (implicit given paragraph [0106] noting thicknesses of conductive layers can be “between about 10 nm and about 500 nm” and notes an example of “the conductive layer is about 400 nm thick” and the surface contours seen in figure 4G have a peak-to-valley less than the layer thickness).
Regarding claim 10 Kailasam discloses an electrochromic device (title e.g. figure 4E 300), comprising: a first transparent conductor layer (e.g. 104); an electrochromic layer (e.g. 106); an interface layer (e.g. 461) positioned between and operationally connected in electric communication with the first transparent conductor layer and the electrochromic layer (required for proper operation see figure 4E) and defining a roughened surface having a peak-to-valley distance of no more than 650 nm (implicit given paragraph [0119] “defect mitigating layer that serves to encapsulate particles may be at least about 500 nm thick” and a peak-to-valley distance would necessarily be less); an electrolyte layer (e.g. 108) operationally connected to the electrochromic layer (required for proper operation see figure 4E); an ion storage layer (e.g. 110) operationally connected to the electrolyte layer (required for proper operation see figure 4E); and a second transparent conductor layer (e.g. 112) operationally connected to the ion storage layer; wherein the interface layer defines a plurality of inert particles (paragraph [0011] “particles” e.g. 305).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2, 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kailasam et al. US Patent Application Publication 2014/0022621 in view of Kobayashi et al. US Patent Application Publication 2014/0218781, of record.
Regarding claim 2 Kailasam discloses an electrochromic device (title e.g. figure 4E electrochromic device 300) comprising: a first transparent conductor layer (e.g. electrode/transparent conductor layer 104); an electrochromic layer (e.g. electrochromic layer 106); an interface layer (e.g. defect mitigating insulating layer 461) positioned between and in contact with the first transparent conductor layer and the electrochromic layer (e.g. see figure 4E) and defining a roughened surface comprised of comprised of surface contour feature (implicit given inherently rough surface of the TCO, see figure 4G, and paragraph [0326] indicates the defect-mitigating insulating layer would conform to rough surface of the TCO) with a surface contour height of no more than 650 nm (implicit given paragraph [0119] “defect mitigating layer that serves to encapsulate particles may be at least about 500 nm thick” and a peak-to-valley distance would necessarily be less), each respective structure built from inert particles (inter alia paragraph [0011] “the defect-mitigating insulating layer may include particles” paragraph [0319] notes “alumina particles” e.g. particle 305 creating a bulge in figure 4E); an electrolyte layer (e.g. ion conducting layer 108) in contact with the electrochromic layer (e.g. see figure 4E); an ion storage layer (e.g. counter electrode layer 110) in contact with the electrolyte layer (e.g. see figure 4E); a second transparent conductor layer (e.g. electrode/transparent conductor layer 112) in contact with the ion storage layer (e.g. see figure 4E), wherein the inert particles are electrochemically inactive under the switching voltages (Inherent physical property of alumina).
While Kailasam discloses the particle is from polishing it is silent as to the particle size. Specifically, Kailasam does not explicitly disclose the particles as having diameters of about 200 nm.
Kobayashi teaches a similar electrochromic device (abstract e.g. figure 1 device 1) including a conductive layer (e.g. 31) roughened with a layer of particles (paragraph [0028] “particle-modified electrode means an electrode in which a particle is fixed to a surface thereof and relatively large depressions and protrusions having nanometer-scale order is formed thereon”) further in direct contact with an electrochromic layer (e.g. layer 4 paragraph [0025] “layer 4 including an electrochromic material”); and further teaches particles as having diameters of about 200 nm (paragraph [0028] “particles of which size … being more preferably 100 nm or more and 500 nm or less”) for the purpose of achieving a desired difference of elevation of depressions and protrusions (paragraph [0028]). Further, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the interface layer positioned between and in contact with the first transparent conductor layer and the electrochromic layer and defining a roughened surface comprised of inert particles in the electrochromic device disclosed by Kailasam to have diameters of about 200 nm as taught by Kobayashi for the purpose of achieving a desired difference of elevation of depressions and protrusions and since discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 4 the combination of Kailasam as modified by Kobayashi discloses the electrochromic device of claim 2, as set forth above. Kailasam further discloses wherein the first transparent conductor (e.g. 104) is made of one of indium tin oxide (ITO), doped ITO, carbon nanotubes, graphene, silver nanowires and metal mesh (paragraph [0104] notes exemplar materials including “indium tin oxide, doped indium oxide, tin oxide … metal wires or conductive layer patterns”).
Regarding claim 8 the combination of Kailasam as modified by Kobayashi discloses the electrochromic device of claim 2, as set forth above. Kailasam further discloses wherein the particles that are electrochemically inactive under the switching voltages are selected from the group comprising silicon dioxide, aluminum oxide, magnesium oxide, titanium oxide, zirconium oxide, and combinations thereof (e.g. paragraph [0319] “alumina particles”).
Claims 3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kailasam et al. US Patent Application Publication 2014/0022621 in view of Kobayashi et al. US Patent Application Publication 2014/0218781, of record, and in further view of Xu et al. US Patent Application Publication 2002/0196518, of record.
Regarding claims 3 and 5-7 the combination of Kailasam as modified by Kobayashi discloses the electrochromic device of claim 2, as set forth above. Rozbicki and Kobayashi do not disclose or teach wherein the electrolyte layer is selected from the group comprising: liquid electrolyte, gel electrolyte, and combinations thereof, as recited in claim 3; or wherein the electrochromic layer is made of an electrochromic polymer, as recited in claim 5; or wherein the electrochromic polymer is PProDOT, as recited in claim 6; or wherein the ion storage layer is selected from the group consisting of radical polymers, polymers, and combinations thereof, as recited in claim 7.
Xu teaches an electrochromic device (title e.g. figure 3 EC device 40) including two transparent conductors (e.g. transparent electrode 42) an electrochromic layer (e.g. EC polymer layer 48) an electrolyte layer (e.g. electrolyte layer 46) and ion storage layers (e.g. cathodic layer 44) and further teaches the EC layer is PProDOT (abstract) the electrolyte layer is gel layer (inter alia abstract “gel electrolyte”) and a polymer ion storage layers (inter alia paragraph [0021] “anodic EC polymer”) for the purpose of having rapidly obtained color change of high contrast ratio of transmittance which is repeatable to at least 10,000 times using preferred materials (inter alia abstract& paragraph [0021]). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the electrochromic device as disclosed by Kailasam as modified by Kobayashi to use a polymer for the electrochromic layer, particularly PProDOT, and to use a liquid or gel electrolyte and to use a polymer for the ion storage layer as taught by Xu for the purpose of having rapidly obtained color change of high contrast ratio of transmittance which is repeatable to at least 10,000 times using preferred materials.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kailasam et al. US Patent Application Publication 2014/0022621 in view of Bhatnagar et al. US Patent Application Publication 2014/0329006, of record.
Regarding claim 12 Kailasam discloses the electrochromic device of claim 10, as set forth above. Kailasam does not disclose wherein the inert particles are selected from the group comprising silicon dioxide, magnesium oxide, zirconium oxide, and combinations thereof.
Bhatnagar teaches a method of fabricating a similar electrochromic device (abstract, see figure 3) including a transparent conducting layer, such as ITO (inter alia paragraph [0033] e.g. layer 304); and further teaches the fabrication includes grinding the transparent conducting layer with a slurry of inert particles (paragraph [0019] lists possible materials of alumina, zirconia and silicia) for the purpose of using particles that are sufficiently hard for the grinding process (e.g. paragraph [0019]). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the inert particles deposited during fabrication and encapsulated by the interface layer in the electrochromic device as disclosed by Kailasam to be inert particles composed of silicon dioxide or zirconium oxide as taught by Bhatnagar for the purpose of using particles that are sufficiently hard in the grinding process.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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/George G. King/Primary Examiner, Art Unit 2872 September 22, 2025