DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment submitted on February 26, 2025 has been entered in the above-identified application. Claims 1, 4, and 10 are amended. Claims 1-15 are pending and under consideration.
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.
3. Claims 1, 10, 11, 12, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Noh et al. (US 2011/0292487 A1).
Noh et al. disclose an electrochromic device (equivalent to the electrochromic device of the claimed invention) includes a first electrode, a second electrode opposing the first electrode, a first electrochromic layer (equivalent to the first electrochromic layer of the claimed invention), a second electrochromic layer (equivalent to the second electrochromic layer of the claimed invention), and an electrolyte contacted with the first and second electrochromic layers. The first and second electrochromic layers are positioned between the first electrode and the second electrode and includes different electrochromic materials. Each of the first electrochromic material and the second electrochromic material may independently include a metal oxide, a viologen compound, a phthalate compound, a pyridine-based compound, an anthraquinone-based compound, an aminoquinone-based compound, an organometallic compound, a phthalocyanine-based compound, a phenothiazine-based compound, a dye-based compound, a conductive polymer compound or a combination thereof. The first electrochromic layer and the second electrochromic layer may independently display colors. For example, one of the lower electrochromic layer and the upper electrochromic layer may include an electrochromic material sequentially being colorless (i.e., displaying transparency) and at least two colors according to the applied voltage and the other may include an electrochromic material sequentially displaying transparency and at least one color according to the applied voltage. Accordingly, the electrochromic device may display transparency and at least three colors according to the applied voltage. The electrochromic material sequentially displaying transparency and at least two colors may include an n-type metal oxide such as tungsten oxide, molybdenum oxide, titanium oxide (TiO2), or the like, or a combination comprising at least one of the foregoing n-type metal oxides; a p-type metal oxide such as vanadium oxide, iridium oxide, niobium oxide, nickel oxide, or the like, or a combination comprising at least one of the foregoing n-type metal oxides; a viologen compound; a phthalate-based compound such as isophthalate; a pyridine-based compound; an anthraquinone-based compound; an aminoquinone-based compound; a rare earth element-based organic compound; a phthalocyanine-based compound; a ruthenium-based organometallic compound; a Leuco dye-based compound; a phenothiazine-based compound; a polymer compound, or the like, or a combination thereof (meeting the limitations of claims 11-14). The lower electrochromic layer and the upper electrochromic layer may include the electrochromic materials that are described above and that are further adsorbed on the surface of nano-particles. In this embodiment, the nanoparticles are disposed between a substrate and the electrode. An electrochromic layer is then disposed upon the electrode. A semiconductor material may be used to form the nanoparticles, and it may include, for example, titanium oxide, zinc oxide, tungsten oxide, or a combination thereof. The nano-particles may be of various shapes including sphere, tetrahedron, cylinder, triangle, disk, tripod, tetrapod, cube, box, star, tube, or the like, and the size thereof may be about 1 to about 100 nanometers ("nm"), specifically about 10 to about 75 nm, and more specifically about 15 to about 50 nm. If a nano-particle adsorbed electrochromic material is used in the electrochromic layers, the surface area is increased and more electrochromic material may be coated on the electrochromic layer to increase efficiency of the electrochromic device. Alternatively, the lower electrochromic layer and the upper electrochromic layer, may include an electrochromic material that is mixed with a polymeric compound. The polymer compound may include, for example, polyvinyl pyrrolidone, polyvinyl butanol, or a combination thereof. In one embodiment, about 50 to about 99 weight percent (wt %) of the electrochromic material and about 1 to about 50 wt % of the polymer compound may be mixed to form one of the electrochromic layers. If the polymer compound is included within the above range, efficiency of the electrochromic device may increase. (See Abstract and paragraphs 0005, 0006, 0007, 0009, 0010, 0011, 0012, 0013, 0044, 0045, 0046, 0047, 0048, 0049). All limitations of the claimed invention are disclosed in the above reference.
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.
4. Claims 2-9 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Noh et al. (US 2011/0292487 A1).
Noh et al., as discussed above, does not teach size of the electrochromic derivative and that the diameter of the first electrochromic derivative is smaller than the diameter of the second electrochromic derivative (in claims 2 and 3) or the thickness of the first electrochromic layer (in claims 9 and 15).
However, the Examiner would like to point out that differences in size and thickness will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such sizes and thicknesses are critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Response to Arguments
5. Applicant's arguments filed on February 26, 2025 have been fully considered but they are not persuasive. Applicants traverse the rejection of claims 1, 10, 11, 12, 13, and 14 under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Noh et al. (US 2011/0292487 A1) and the rejection of claims 2-9 and 15 under 35 U.S.C. 103 as being unpatentable over Noh et al. (US 2011/0292487 A1) and submit that Noh does not teach or suggest at least "a second electrochromic layer provided directly on at least one surface of the first electrochromic layer" as recited in amended claim 1 and instead, in Noh, the upper electrochromic layer 25 and the lower electrochromic layer 15 are arranged with the electrolyte 30 interposed therebetween. Applicants further state that the difference in arrangement is not a mere design choice, as this structural difference provides functional advantages such as, shown in pre-grant publication of the application ("PG-Pub") at paragraph [0059] and [0050].
First, the Examiner would like to point out that the newly added limitation “provided directly” does not mean that the first electrochromic layer and the second electrochromic layer are in direct contact. It simply recite that two layers are one top of the other. Nothing in the claim language precludes the presence of additional layers in between. Second, if the Applicants are relying of the showing of unexpected results, the showing of unexpected results must be based on evidence, not argument or speculation. The Specification presents no factual evidence to show that results were actually unexpected in comparison to the results in the prior art. The Examiner invites the Applicants to present comparative experimental data and claims commensurate in scope with any showing of unexpected results.
Conclusion
6. 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.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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/SHEEBA AHMED/Primary Examiner, Art Unit 1787