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
As previously noted, one skilled in the art would understand “doped with” would indicate intentionally introducing impurities into a chemical compound to change its electrical properties. Particularly, doping indicates a comparatively small number of dopant atoms added to a compound, e.g. 1:1e108 for light doping and 1:1e104 for heavy doping1. This is different from a chemical compound, which are composed of relatively similar numbers of elements. Even in the extreme looking at non-stoichiometric compounds one skilled in the art would expect a material of a compound to be at least 1% of a compound2. In the current case originally presented claim 1 required “said working electrode is at least composed of a tungsten oxide (WOx) doped with at least one transition metal element Y chosen from the group comprising niobium (Nb), molybdenum (Mo), vanadium (V), tantalum (Ta), titanium (Ti), nickel (Ni), zinc (Zn) and zirconium (Zr)” which one in the art would interpret as WOx with at most 1 Y atom per 10,000 WOx molecules. However, originally presented claim 2 further requires “said at least one transition metal element Y is present according to a ratio Y/(Y+W), relative to the tungsten element (W), of greater than or equal to 2 at.%, and/or less than or equal to 30 at.%.” Insofar as the it is understood, see 112 rejection below, applicant is using the term “doped with” to include a molecules with more than 2 elements. For example, one skilled in the art would consider the ternary molecule of tungsten-molybdenum oxide (WzMo1.00-zOx) to be distinct/different from WOx doped with molybdenum. However, given the claim construction it is clear that applicant means that a molecule containing tungsten and oxygen and any amount of niobium, molybdenum, vanadium, tantalum, titanium, nickel, zinc and/or zirconium reads on originally presented claim 1’s required composition, e.g. WzY1.00-zOx and WOx doped (in the traditional sense) with Y both would fall within the claimed scope. 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 November 13, 2025, with respect to the rejections of claims 1-2 and 21-23 under 102 and 103 have been fully considered and are persuasive. Particularly the examiner agrees that Wang (and/or Rougier) discloses that the tungsten oxide of the electrochromic layer can be doped with “suitable metals” (paragraph [0047]) and list several exemplar metals Wang fails to explicitly disclose the suitable metal dopant is Nb, Ni, Zn or Zr. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Veerasamy US Patent Application Publication 2011/0051221. Veerasamy teaches a similar electrochromic device (title e.g. figures 1(a) and/or 4 EC layer 102 or 410, where the electrochromic device has a tempering process after the electrochromic fabrication (e.g. figure 3) and adding metals to the EC layer (paragraph [0051]). Veerasamy further teaches the metal may include Zr and Nb (paragraph [0051]]) for the purpose of having a significant reduction of EC film absorbance and/or to increase electrical conductivity (paragraph [0051]). 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 suitable metal dopant as disclosed by Wang to be Zr or Nb as taught by Veerasamy for the purpose of having a significant reduction of EC film absorbance and/or to increase electrical conductivity.
Applicant's arguments filed November 13, 2025 have been fully considered but they are not persuasive.
Regarding applicant’s argument that claim 1 is clear and is not missing any essential elements, the examiner is unpersuaded. Particularly it is unclear where the lithium (i.e. Li2W5O16) comes from and/or if a tempering process is required or if and if a tempering process is required when in the making of the device is it required.
Regarding the tempering process – this is a process limitation in a device claim3. Such a process step only has patentable weight if it is the only way a particular element in the final product can be achieved. For example, the only way to achieve a tempered glass substrate is to preform a tempering process, however, such a tempering could be done before or after the deposition of electrochromic layers, since either way would result in the claimed product/device.
Applicant has argued that the presence of Li2W5O16 and the substantial absence of Li2W2O7 and/or Li2WO4 is from the diffusion of a lithium layer on the electrochromic layer may be a spontaneous occurrence and/or due to a temperature increase (e.g. during tempering) and becomes part of the EC layer by being “integrated through post-deposition diffusion, either spontaneously or thermally assisted, from distinct lithium-containing layers intentionally introduced into the stack” (remarks of May 5, 2025 page 6). Thus, a lithium layer is essential so that the lithium can diffuse into the electrochromic layer to form the required Li2W5O16. On the other hand a tempering process is not required to form the required Li2W5O16 (see current remarks page 6 “clear end-state definition and the multiple, enabled routes disclosed to achieve it”). Therefore, a tempering process (after the EC layer is deposited) is not required, per se, since the device can be achieved by other means, as asserted by applicant. The device merely needs the capability of having a capacity >15 mC/cm2 after a tempering process.
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.
Claims 1-2 and 21-24 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1 “wherein the working electrode after said thermal treatment has a capacity that is greater than 15 mC/cm2” raises clarity issues. It is unclear if the process step of said thermal treatment is required to achieve the required capacitance range (or any other feature) or if the capability of having the required capacitance if said thermal treatment is applied is required (assumed). As set forth in the above response there appears the process step of said thermal treatment is not required. However, the capability if said thermal treatment is required. For purposes of examination the examiner will use “wherein the working electrode has the capability of having 2 if said thermal treatment is applied to the cathodic subassembly”.
Claims 2 and 21-24 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Regarding claim 1 “wherein the working electrode … comprises Li2W5O16 and is free or substantially free of crystalline phases Li2W2O7 and/or crystalline Li2WO4” raises clarity issues. It is unclear where the lithium in the Li2W5O16 comes from, i.e. is Li2W5O16 mixed in or is lithium doped into the tungsten oxide (e.g. should it be listed as a transition metal dopant?) or if it comes from diffusion of a separate layer of lithium (assumed). Paragraphs [0047 & 0058] discusses that lithium diffuses into the electrochromic material and not being initially present in the tungsten oxide doped with at least one transition metal material. Thus, the claim is incomplete, since it omits essential elements and/or cooperative relationships of elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. Particularly, a layer of lithium deposited on the tungsten oxide doped with at least one transition metal element material is necessary to cooperatively combine via diffusion to support the presence of Li2W5O16 in the working electrode composition, see response section above. For purposes of examination the examiner will insert “a layer of lithium on said working electrode,” between lines 12 and 13.
Claims 2 and 21-23 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Claim 24 is not rejected under 35 U.S.C. 112(b) as being indefinite, due to its’ dependency upon claim 1 for this deficiency, since it corrects this deficiency of claim 1.
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 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, 21 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. 2010/0245973, of record, in view of Veerasamy US Patent Application Publication 2011/0051221 with certain features evidenced by Wikipedia webpage “Tempered glass” as of 2021, of record.
Regarding claims 1 and 23 Wang discloses a cathodic subassembly (e.g. figure 1 electrochromic layer 106) for an electrochromic system (no patentable weight given4, further title e.g. figure 1 electrochromic device 100 including 106), said cathodic subassembly being deposited on top of a substrate (e.g. substrate 102) having a glass function (paragraph [0036] notes several glasses capable of being tempered e.g. “soda lime glass, including soda lime float glass … may be tempered”), the cathodic subassembly having been subjected to a thermal treatment greater than 600°C during tempering of the substrate (inherent physical property given paragraph [0038] statement that “the substrate may still be tempered even after the electrochromic stack has been fabricated on the substrate” and tempering of glass is done ~620C as evidenced by Wikipedia last sentence on page 2 and enablement of prior art is presumed to be operable5 and the instant application6) and comprising: a first transparent conductive layer, and a working electrode, arranged on top of said first transparent conductive layer (e.g. conductive layer 104 & paragraph [0039] “conductive layers 104 and 114 are transparent”), and a layer of lithium on said working electrode (paragraphs [0114 & 0117] disclose lithium being an “intermediate between steps performed to deposit a single layer” & “lithium is deposited on both the EC layer … lithium is sputtered on the EC layer”), wherein said working electrode is at least composed of a tungsten oxide (WOx) doped7 with at least one transition metal element Y (inter alia paragraph [0047] “electrochromic layer may contain any one or more of a number of different electrochromic materials … include tungsten oxide (WO3) … [i]n some embodiments, the metal oxide is doped with one or more dopants such as lithium, sodium, potassium, molybdenum, vanadium, titanium, and/or other suitable metals or compounds containing metals ... [m]ixed oxides (e.g., W--Mo oxide, W-V oxide) are also used in certain embodiments”), and wherein the working electrode has the capability8 of having capacity that is greater than 15 mC/cm2 if said thermal treatment is applied to the cathodic subassembly and comprises Li2W5O16 and is free or substantially free of crystalline phases Li2W2O7 and/or crystalline Li2WO4 (inherent given the materials, structure and manufacturing processes as claimed above are disclosed by Wang and it would necessarily flow that these properties would result, see MPEP 2112).
Wang paragraph [0047] discloses several exemplar transmission metal dopants (i.e. Y) and notes “other suitable metals or compounds containing metals” may be used. Wang does not explicitly disclose the Y chosen from the group comprising niobium (Nb), nickel (Ni), zinc (Zn) and zirconium (Zr), as required by claim 1; or Y is niobium (Nb), as required by claim 23.
Veerasamy teaches a similar electrochromic device (title e.g. figures 1(a) and/or 4 EC layer 102 or 410, where the electrochromic device has a tempering process after the electrochromic fabrication (e.g. figure 3) and adding metals to the EC layer (paragraph [0051]). Veerasamy further teaches the metal may include Zr and Nb (paragraph [0051]]) for the purpose of having a significant reduction of EC film absorbance and/or to increase electrical conductivity (paragraph [0051]). 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 suitable metal dopant as disclosed by Wang to be chosen from the group comprising niobium (Nb), nickel (Ni), zinc (Zn) and zirconium (Zr) or is niobium (Nb) as taught by Veerasamy for the purpose of having a significant reduction of EC film absorbance and/or to increase electrical conductivity.
Regarding claim 21 the combination of Wang as modified by Veerasamy discloses the cathodic subassembly as claimed in claim 1, as set forth above. Wang further discloses wherein, after said thermal treatment, the working electrode has a capacity that is greater than 20 mC/cm2 (inherent given the materials, structure and manufacturing processes as claimed above are disclosed by Wang and it would necessarily flow that this properties would result, see MPEP 2112).
Regarding claim 24 the combination of Wang as modified by Veerasamy discloses the cathodic subassembly as claimed in claim 1, including it further comprising a layer of lithium on the working electrode as part of the 112 interpretation see Wang paragraphs [0114 & 0117] disclosing lithium being an “intermediate between steps performed to deposit a single layer” & “lithium is deposited on both the EC layer … lithium is sputtered on the EC layer”, as set forth above.
Claims 2 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. 2010/0245973, of record, in view of Veerasamy US Patent Application Publication 2011/0051221 and in further view of Rougier et al. “Electrochromic W–M–O (M=V, Nb) sol-gel thin films: a way to neutral colour” Solar Energy Materials & Solar Cells 71 (2002) 343–357.
Regarding claims 2 and 22 the combination of Wang as modified by Veerasamy discloses the cathodic subassembly as claimed in claim 1 including mixed oxides and having Y be Nb, Ni, Zn or Zr, as set forth above. Wang is silent on the percentages of metal in the mixed oxides. Specifically, Wang does not disclose wherein said at least one transition metal element Y is present according to a ratio Y/(Y+W), relative to the tungsten element (W), of greater than or equal to 2 at. %, and less than or equal to 30 at. %, as required by claim 2 or wherein the ratio Y/(Y+W),relative to the tungsten element (W), is greater than 7 at.% and less than or equal to 15 at. %, as required by claim 22.
Rougier teaches a similar cathodic subassembly for an electrochromic system (title) including a mixed metal oxide, and further teaches the mixed metal oxide could be tungsten-niobium oxide (title) where the range of niobium is 2-20% (page 344 line 28) with a specific examples of 2, 5, 8, 10, 15 and 20%, see Table 2 for the purpose of tailoring the color performance (see Table 2), particular achieving a neutral color (page 355 lines 1-4 & Figure 11). This would be combining prior art elements according to known methods to yield predictable results, and given the teaching in the Rougier would have suggested a specific atomic percentages of a transition metal in a mixed oxide to combine prior art reference teachings to arrive at the claimed invention, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), see MPER 2143. 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 mixed metal oxide including a suitable metal in the cathodic subassembly as disclosed by Wang to have 2 at. % ≤ Y/(Y+W) ≤ 30 at. % and/or 6 at. % ≤ Y/(Y+W) ≤ 15 at. %, as taught by Rougier, since Rougier teaches a ratio of niobium and tungsten in a mixed metal oxide that it is for the purpose of achieving neutral color and would be combining prior art elements according to known methods to yield predictable results.
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 January 14, 2026
1 As evidenced by Wikipedia webpage “Doping (semiconductors)” as of 2008, of record.
2 As evidenced by Wikipedia webpage “Non-stoichiometric compound” as of 2008, of record.
3 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.
4 This recitation in the preamble is directed to intended use of the device and has not been given any patentable weight since it has been held "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation" Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81, see MPEP 2111.02
5 When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980. Also see In re Antor Media Corp., 689 F.3d 1282, 103 USPQ2d 1555 (Fed. Cir. 2012). MPEP 2121.
6 Instant application paragraph [0012] discuses tempering as a “known practice”.
7 As noted above “doped with” is interpreted to include doping of WOx in the tradition usage of small amounts dopant material(s) and trinary, quaternary, etc. metal oxide mixtures including tungsten, e.g. tungsten-nickel-oxide, tungsten-nickel- molybdenum-oxide, etc.
8 It has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense; In re Hutchison, 69 USPQ 138. Also see Intel Corp. v. U.S. Int'l Trade Comm’n, 946 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991), MPEP 2114. IV and MPEP 2173.05(g).