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 .
Remarks
Applicant has withdrawn claims 11-19. Claims 1-10 and 20 are as previously presented. Claims 1-10 and 20 are presently examined.
Status of objections and rejections
Applicant has not amended claim 1, as such the examiner presents and maintains their previously presented rejection.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-10 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu (CN106684245A) in view of Mai (CN106371259A) and as evidenced by Higuchi (doi:10.1295/polymj.PJ2009053) and Chen (doi.org/10.1002/anie.201908274). All references were found in the IDS filed on 02/16/22. Citations are from attached translations with paragraphs denoted.
Regarding claim 1, Lu discloses an electrochromic energy storage device ([0039]) comprising: an electrode comprises a coordination polymer (1,2,4,5-benzenetetramine and nickel, Ni-BTA) [0008-0009, 0016, 0038, Lu], wherein the coordination polymer comprises a transition metal (Ni) and a tetradentate ligand (1,2,4,5-benzenetetramine, BTA) conjugated to the transition metal [0038, fig. 10, Lu discloses mixing NiCl2∙6H2O and BTA∙4HCl with concentrated NH4OH until the pH was neutralized. This is a known method for making Ni-BTA, a coordination polymer wherein a tetradentate ligand is in conjugation with a transition metal].
Lu does not explicitly state the optical state(s) of the Ni-BTA.
However, Higuchi notes that electrochromic materials change color upon electrochemical oxidation/reduction [page 1, col 1, line 9-10, Higuchi]. Higuchi further notes that when π-conjugated polymers are oxidized or reduced either chemical or electrochemically the HOMO-LUMO gap will decrease causing a color change [page 1, col 1-2 lines 29-2, Higuchi]. Furthermore, π-conjugated polymers such as polyanilines are able to trap metal ions and may be regarded as polymeric ligands and that these organic-metallic hybrid polymers are promising electrochromic materials [page 1, col 2, last paragraph, Higuchi].
Chen notes that Ni-BTA is undergoes redox (oxidation reduction) reactions and is capable of storing three electrons per [repeating] unit [page 1, col 2, line 22-23, fig. 5a, Chen].
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Annotated fig 5a highlighting the proposed oxidation states of Ni-BTA, Chen
One of ordinary skill in the art would understand that when exposed to electrochemical conditions the Ni-BTA disclosed by Lu would A) undergo redox reactions (as evidenced by Chen) and that B) these redox reaction will influence the HOMO-LUMO gap of the coordination polymer influencing the color depending upon the oxidation state (as evidenced by Higuchi).
As such, the Ni-BTA disclosed by Lu would inherently have the claimed properties, see MPEP 2112. First the electrode disclosed by Lu would be capable of storing electrical energy (e.g. capable of accepting an electron and thus being reduced [fig. 5a, Chen]), upon this change in oxidation state the HOMO-LUMO gap will be altered resulting in a change from a first optical state (first color) to a second optical state (second color) [page 1, col 1-2 lines 29-2, Higuchi]. Additionally, the reduced Ni-BTA is capable of being oxidized (releasing electrons, “release electrical energy”) [fig. 5a, Chen], upon returning to the original oxidation state the initial HOMO-LUMO gap is restored along with the original optical state (color). Lastly, the examiner notes that Lu teaches the same composition of the instant disclosed invention (instant specification [0013] and throughout) further supporting that the properties claimed are present in Lu.
Lu discloses that their polymer may be combined with other components and may be used in the preparation of electrical storage device [0015-0018, Lu]. Lu further teaches the use of ITO and aluminum [0039, Lu], but is explicitly silent to electrodes being in an electrolyte, emphasis added.
However, Mai discloses an electrochromic energy storage device comprising nickel oxide and/or polyaniline [0013, Mai], wherein the electrochromic device is capable of color change upon the external voltage applied to the material [0022, Mai]. Mai further discloses a first electrode and a second electrode disposed in an electrolyte gel [0012, 0051, 0059 Mai discloses that the electrolyte is encapsulated around the device with an epoxy resin.]
The examiner notes, that there exists an inherent roughness to the surface of the electrode and the electrolyte gel of Mai would conform to the surface of the electrode. As such, because the degree of “in” is not limited by the instant claim modified Lu reads on the claim limitation of the first and second electrode being disposed, to an extent, in an electrolyte due the nature of a gel and the inherent roughness of a material.
Prior to the effective filing date, one of ordinary skill in the art would find it obvious to modify Lu such that the electrochromic device comprised a first and second electrode disposed in an electrolyte (such as the gel electrolyte disclosed by Mai [0019, Mai]) as this may be used to make a fully solid-state electrochromic smart glass that can electrochemically store energy and allow one to visually determine the voltage (or energy storage state) with the naked eye [0012, Mai].
Furthermore, this combination is a “use of known techniques to improve similar devices in the same way”, see MPEP 2143.I.C
Lu discloses a “base” device, namely an electrical storage device that functions based off of the use of a redox active material. The claimed invention can be seen as an “improvement” as it specifically recites the inclusion of an electrolyte.
Mai contains a “comparable” device, namely an electrochromic energy storage device that functions based off of the use of a redox active material. But has been improved upon in the same way as the claimed invention as Mai discloses the use of an electrolyte.
One of ordinary skill within the art would have applied the electrolyte of Mai to Lu as Mai discloses that this feature is used to make the electrochromic devices such as smart glass [0012, 0063, Mai] with a reasonable expectation of similar results i.e. movement of ions.
Regarding claim 2, modified Lu discloses the use of the transition metal comprises nickel [0038, Lu].
Regarding claim 3, modified Lu discloses the tetradentate ligand comprises 1,2,4,5-benzenetetramine [0038, Lu].
Regarding claim 4, modified Lu discloses the electrode comprises a substrate which the coordination polymer is disposed on [0014, Lu].
Regarding claim 6, Modified Lu discloses the substrate comprises a transparent conductive oxide material [0014, Lu; 0015, Mai], a metallic material [0015, Mai], or a carbon-based material [0015, Mai].
Regarding claims 7-9, the examiner notes, that in the instant specification the applicant makes their polymer by mixing a solution of 1,2,4,5 -benzenetetramine tetrahydrochloride (BTA∙4HCl), nickel chloride hexahydrate (NiCl∙6H20), and concentrated aqueous ammonia (NH4OH) to make their coordination polymer which is then deposited on a transparent substrate (FTO) [0121].
As discussed above Lu discloses making their polymer by mixing BTA∙4HCl and NiCl2∙6H2O with concentrated NH4OH to make their polymer and then deposit it onto a transparent substrate (ITO).
Both Lu and the applicant use the same procedure to make the same polymer. The only difference is that applicant deposits their polymer onto FTO as their transparent substrate and Lu deposits their polymer onto ITO as their transparent substrate (the examiner further notes that Mai discloses that one may use either FTO or ITO as a transparent substrate).
The claim limitations are such that the difference between the transmittance of the first and second optical state are being compared, in this regard the transparent substrate will be negligible in influencing a difference in transmittance as it will be present in both tests. The only thing that will influence the transmittance is the oxidation state of Ni-BTA. The first oxidation state will have a transmittance of A and the second will have a transmittance of B.
While Lu does not explicitly state the absorption (transmittance) data of their polymer, one of ordinary skill will understand that because both Lu and the applicant have made the same polymer and they will both possess the same optical states and both produce the same transmittance difference between the same two optical states, see MPEP 2112.
For clarity of the record because both Lu and the applicant have the same polymer when said polymer is fully discharged this could be considered a “first optical state” and have a transmittance of A between a set wavelength range. A fully charged state could be considered a “second optical state” and have a transmittance of B between a set wavelength range. As such the difference between A and B will be the same for both Lu and the applicant.
Furthermore, one of ordinary skill within the arts would find it obvious to tailor the transmittance states for the device being used. For instance, if one wanted a smart window it would be obvious to have an optical state in which light can still pass through the window but as the intensity of the light increases and the polymer undergoes a redox reaction such that the transmittance of the window decreases minimizing the intensity of the light passing through. Doing so would allow for one to reduce the intensity of photons (energy) that passes through the window allowing for saving energy consumption for cooling, heating, and lighting to a certain extent, and reduce ambient light pollution [0005, Mai]
Regarding claim 10, modified Lu discloses the electrochromic energy storage device is a smart glass (“window”) or an energy storage indicator [0012, Mai].
Regarding claim 20, modified Lu discloses the electrochromic energy storage device is operable as an optical modulator [0012, Mai discloses that electrochromic devices may be used to visually determine the voltage state with the naked eye. This reads on the claim language of an “optical modulator”].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Lu as applied to claim 4 above, and further in view of Kuykendall (doi:10.1038/nmat1177).
Regarding claim 5, modified Lu discloses the coordination polymer is in the form of nanowires [0009, Lu discloses a one-dimensional organic-inorganic hybrid polymer chain which reads on “coordination polymer is in the form of nanowires”].
Modified Lu is silent to the coordination polymers extending substantially perpendicular from the surface of the substrate.
However, Kuykendall discloses single-crystalline one-dimensional semiconductor nanostructures that are grown substantially perpendicular to the substrate [abstract, page 1 col 2 last paragraph, page 2 col 1 last paragraph, page 2 col 2 second paragraph, fig. 1 Kuykendall].
The works of modified Lu and Kuykendall are analogous as they both utilize one-dimensional (nano-wire) nitrogen-containing electroactive materials that interacts with light and may be used to influence the absorption of photons.
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Lu such that the coordination polymer was grown substantially perpendicular to the substrate as this can be used in deposition methods to influence the growth direction of nanowires thus allowing one to tune material properties such as thermal and electrical conductivity, index of refraction, piezoelectric polarization, and bandgap, through nanostructure synthesis [abstract, page 3 col 2 last paragraph, Kuykendall].
Furthermore, the examiner notes that one of ordinary skill within the arts would appreciate these properties, specifically influence over electrical conductivity and bandgap.
Response to Arguments
Applicant's arguments filed 11/11/2025 have been fully considered but they are not persuasive. See below for additional details.
Applicant argues that Chen is not prior art. However, the examiner notes that they did not rely on Chen for prior art but rather evidence of the inherent redox nature of the organic-inorganic materials used in the prior art. It is well established that conjugated molecules and metals, either individually or as a complex are known to undergo redox reactions and Chen highlights this specifically for aromatic-amine based compounds coordinated to nickel. While applicant points to the alleged fact that Chen does not disclose universal facts such as characteristics and properties of a material or a scientific truism simply for the fact that Chen discloses their findings of a three electron redox transformation. The examiner notes that Chen does teach a universal fact and scientific truism that these conjugated organic-inorganic complexes undergo redox reaction where they are capable of storing electrons. Under the section “Determination of the Storage Mechanism: From C=N to C-N”, Chen notes that previous reports of similar molecule suggest a two-electron storage and makes it plausible to hold up to four-electrons. However, Chen’s findings suggest that it holds three-electrons. Despite the date discovered and reported by Chen it is evident that this class of molecules inherently holds a minimum of two electrons. While in an attempt to accurately disclose Chen’s teaching, the examiner did cite their claim of three-electrons. The examiner merely relies on Chen as evidence that Ni-BTA will undergo redox reactions, which is a scientific truth and universal fact.
As such, any arguments in regards to the applicability of Chen being used as evidence for the nature of these molecules is not persuasive.
Applicant then argues that the reaction conditions of Lu are not suitable for forming the claimed Ni-BTA complex. Applicant argues that Lu only discloses a mixing of NiCl2- BTA∙4HCl and NH4OH as a known method for making Ni-BTA and that they fail to disclose controlled stoichiometry and slow diffusion along with spectroscopic data. The examiner notes that control stoichiometry and “slow diffusion” is present in Lu as they disclose a 1:1 molar ratio of BTA to NiCl2 wherein the Ni solution is added dropwise to the BTA (“slow diffusion”). After this a base (NH4OH) is added dropwise to neutralize the solution to a pH=7. While Lu does not provide elaborate step-by-step directions that one might find in academic papers, they disclose controlled stoichiometric measurements for one of ordinary skill within the art to use along with the fact that each step should be performed via a dropwise addition.
The examiner has additionally provided art below that is not cited but made of reference to more clearly show how these reagents listed above are used to make Ni-BTA. The mere allegation that Lu fails to make Ni-BTA is not persuasive as applicant has not provided evidence in facts demonstrating that the method of Lu does not result in Ni-BTA.
The applicant’s arguments in regards to the synthesis of Ni-BTA are not persuasive.
Next applicant argues that Lu does not disclose an electrode. The examiner respectfully disagrees. Lu teaches an electrode [abstract, 0009, 0012]. Applicant further argues that the organic-inorganic hybrid polymer is taught as a distinct separate layer not part of any electrode. The examiner notes that Lu teaches that the organic-inorganic hybrid polymer is an active layer for an for an electrical storage device [0017-0018, 0020]. The examiner notes that the organic-inorganic hybrid polymer is being used as an active material layer (“active layer”) in an electrode (“electrical storage device”). It is commonly known that electrodes have distinct separate layers, including but not limited to a current collector and an active material layer. The instant claimed invention does not bar the electrode from comprising more than one layer.
Applicant then argues that Lu does not address any problems related to optical modulation. The examiner notes that they are not required to solve the same problems that the applicant solves. Rather Lu and any secondary references are only used to determine if it would be obvious to arrive at the instant invention, specifically the final product.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Furthermore, applicant’s arguments (reproduced below) point to the inherent nature of the material. As such, if one produced Ni-BTA as noted in the prior art then that material would have the same properties as applicant’s Ni-BTA.
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Applicant then argues the applicability of Chen, Lu, Mai, Higuchi, and Chen however, they attack each reference individually. In response to applicant's arguments against the references individually, 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).
In regards to applicant’s arguments that Higuchi is not applicable because it discloses terpyridine-metal polymers and not tetradentate ligands. The examiner respectfully disagrees that they are nonanalogous as they both represent π-conjugated polymers. Furthermore, BTA and terpyridines are both molecules designed to be highly conjugated molecules capable of undergoing redox reactions the addition or subtraction of an electron from either one of these will influence the HOMO-LUMO energies causing a shift in their UV-Vis absorption and emission.
The applicant’s arguments are not persuasive and the examiner maintains their rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cheng (DOI: 10.1002/aelm.201700107): See fig. 1a for synthesis of Ni-BTA using conditions disclosed by Lu. Tao (DOI: 10.1039/c9ta07194f) and Yangyang (DOI: 10.1021/acs.jpcc.7b12022) disclose tetradentate ligands coordinating to metals.
THIS ACTION IS MADE FINAL. 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 QUINTIN DALE ELLIOTT whose telephone number is (703)756-5423. The examiner can normally be reached M-F 8:30-6pm (MST).
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/QUINTIN D. ELLIOTT/Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724