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
The examiner notes some conflicting statements regarding the status of the claims.
Regarding claim 10 – in the remarks section 1 on page 5 it is noted: “Claims 5-10 are cancelled” and on page 6 line 9 and page 7 line 14 and in the amended claims it is further indicated that claim 10 is cancelled. However, page 15 lines 8-9 conflictingly states: “In regard to claim 10, claim 10 depends on claim 1 and is thus believed to be in condition for allowance by virtue of dependency.” The examiner, for purposes of examination, will treat claim 10 as being cancelled.
Regarding claim 4 – in the remarks section 1 on page 5 it is noted: “Claims 1-4 are currently pending” and the amended claim set indicates claim 4 is pending. However, page 15 line 7 conflictingly indicates claim 4 is cancelled. The examiner, for purposes of examination, will treat claim 4 as being currently pending.
Regarding claims 5-9 – in the remarks section 1 on page 5 it is noted: “Claims 5-10 are cancelled.” However, the amended claims indicate claims 5-9 are withdrawn. The examiner, for purposes of examination, will treat claims 5-9 as being withdrawn.
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.
Claim 3 is 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 3 “wherein the counter electrode is a metal fiber coated with an ITO coating; wherein the counter electrode is a spiral counter electrode structure and/or a parallel counter electrode structure” has clarity issues. Since the claim has the counter electrode being a singular metal fiber it is unclear what the counter electrode is parallel to, i.e. is it parallel to the core electrode or parallel to something else. In light of the specification, see figure 2, it is clear that the counter electrode may be one wire, see spiral structure in left side embodiment or multiple wires in parallel, see parallel structure in right side embodiment. The examiner suggests and for purposes of examination will use “wherein the counter electrode is [[a]] at least one metal fiber coated with an ITO coating, …”
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 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. foreign patent document KR20180077769 in view of Meng et al. foreign patent document CN110764330, of record, and in further view of Wang et al. foreign patent document CN108873539, of record, with evidence of certain facts provided by Sotzing et al. US Patent Application Publication 2012/0224247.
Regarding claim 1 Bae discloses an electrochromic fiber (title e.g. figure 4 electrochromic yarn 400) comprising, from inside to outside: a fiber core inner electrode including an ITO layer (e.g. first transparent electrode 410 paragraph [0029] “the first transparent electrode (410) is described as having a core shape, but is not limited thereto, and the first transparent electrode (410) may be coated on the core” paragraph [0039] disclose 410 may be ITO), an electrolyte layer (e.g. electrolyte layer 430), an electrochromic layer (e.g. electrochromic layer 440), a counter electrode (e.g. second transparent electrode 450), and a protective layer (e.g. protective layer 460).
Bae is silent on the innermost and outermost material compositions. Bae does not disclose the fiber core is a metal and the protective layer is polyethylene. Further, Bae does not disclose a thickness of the electrolyte layer is 60 mm-180 mm.
Regarding the innermost and outermost material compositions – Meng teaches a similar electrochromic fiber (title e.g. figure 4 flexible filament electrochromic fiber 100) including, in order, a core (e.g. 1) with an ITO layer (e.g. 3), an electrolyte layer (e.g. 5), an EC layer (e.g. 6), an outer electrode (e.g. 7) and a protective layer (e.g. 8); and further teaches the core can be a metal fiber (paragraph [0009]) for the purpose of using a mechanically suitable (i.e. flexible) core material (inter alia paragraph [0009]); and the protective layer may be polyethylene (paragraph [0018]) for the purpose of using a material that protects from water, oxygen and scratches (inter alia paragraph [0045]), thereby extending the life of the device (paragraph [0065]). 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 fiber as disclosed by Bae to have the fiber core be metal and the protective layer be polyethylene as taught by Meng for the purpose of using a material that protects from water, oxygen and scratches, thereby extending the life of the device.
Meng does not teach a thickness of the electrolyte layer is 60 mm-180 mm.
Wang teaches a similar electrochromic fiber (title e.g. figure 2) including from inside to outside (paragraph [0023]) a metal core (e.g. 10) an electrolyte active layer (e.g. 9), parallel outer/counter electrodes (e.g. 8) and an outer protective layer (e.g. 7) of polyethylene (paragraph [0021]); and further teaches electrolyte active layer is 15-100 μm thick (paragraph [0024]) with a specific example of the thickness of the electrolyte active layer of about 60 μm (paragraph [0044]). 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. In this case, the combination of Bae and Meng has an electrochromic fiber with the required layers using the specified materials, fulfilling the general conditions of the claim. Further, it would be well within the skill of one in the art to modify the electrolytic layer thickness as evidenced by Sotzing, which, in in discussing features of the art of electrochromic fibers (e.g. figure 1), states in paragraph [0088]:
The thickness or amount of the stretchable polymeric electrolyte layer on the stretchable substrate will depend on factors such as the type of electrochromic fiber, the type of electrolyte, the device configuration, performance requirements, and like considerations, and can be readily determined by one of ordinary skill in the art without undue experimentation using the guidance herein. In one embodiment, the stretchable polymeric electrolyte layer has a thickness of 10 to 500 micrometers, more specifically 10 to 200 micrometers, 20 to 150 micrometers, or 50 to 100 micrometers.
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 fiber as taught by the combination of Bae and Meng to have thickness of the electrolyte layer in the range of 60 mm-180 mm as taught by Wang since discovering the optimum or workable ranges involves only routine skill in the art and, particularly, the thickness of the electrolytic layer in an electrochromic fiber can be readily determined by one of ordinary skill in the art without undue experimentation, as evidenced by Sotzing.
Regarding claim 4 the combination of Bae, Meng and Wang teach the electrochromic fiber of claim 1, as set forth above. Bae further discloses wherein a thickness of the protective layer (e.g. 460) is 0.1 mm-0.3 mm (paragraph [0045] discloses layer thicknesses and discloses “protective layer (460) may be 1 to 100 μm”). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); see MPEP 2144.05. Therefore, it would be prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the protective layer in the electrochromic fiber as taught by the combination of Bae, Meng and Wang to have a thickness in the range of 100-300 μm since Bae disclose a lapping range.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. foreign patent document KR20180077769 in view of Meng et al. foreign patent document CN110764330, of record, and Wang et al. foreign patent document CN108873539, of record, in further view of Konkin et al. US Patent Application Publication 2013/0335800, of record.
Regarding claim 2 the combination of Bae, Meng and Wang teach the electrochromic fiber of claim 1, as set forth above. Bae further discloses wherein an electrochromic material is at least one of poly (3,4-ethylene dioxythiophene) (PEDOT), polyaniline (PANI), and a multilayer graphene (paragraph [0030] discloses 440 may be polyaniline).
Bae is silent on the electrolyte material composition. Specifically, Bae, Meng and Wang do not disclose or teach components of the electrolyte layer comprise: lithium perchlorate (LiClO4), an organic solvent, an ionic liquid, and polyvinylidene fluoride hexafluoropropylene (PVDF-HFP).
Konkin teaches an electrochromic device (title) in a closely related field of electrochromic devices suitable for use in textiles (paragraph [0025]) and further teaches the electrolyte layer comprise: lithium perchlorate (LiClO4), an organic solvent, an ionic liquid, and polyvinylidene fluoride hexafluoropropylene (PVDF-HFP) (paragraph [0031]) for the purpose of having a gel electrolyte with good conductivity an optical transparency (paragraph [0031]) suitable for use in textiles (inter alia paragraph [0025]). 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 electrolyte in electrochromic fiber as taught by the combination of Bae, Meng and Wang to have lithium perchlorate (LiClO4), an organic solvent, an ionic liquid, and polyvinylidene fluoride hexafluoropropylene (PVDF-HFP) as taught by Konkin for the purpose of having a gel electrolyte with good conductivity an optical transparency suitable for use in textiles.
Insofar as it is understood claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. foreign patent document KR20180077769 in view of Meng et al. foreign patent document CN110764330, of record, and Wang et al. foreign patent document CN108873539, of record, in further view of Fan et al. “Continuously Processed, Long Electrochromic Fibers with Multi-Environmental Stability” ACS Appl. Mater. Interfaces 2020, 12, 28451−28460, of record.
Regarding claim 3 the combination of Bae, Meng and Wang teach the electrochromic fiber of claim 1, as set forth above. Bae and Meng do not disclose or teach wherein the counter electrode is at least one metal fiber coated with an ITO coating; wherein the counter electrode is a spiral counter electrode structure and/or a parallel counter electrode structure.
Wang further teaches the counter electrode (e.g. outer electrodes 8) is at least one metal fiber (e.g. paragraph [0041] “metal wire fiber outer electrodes”); wherein the counter electrode is a spiral counter electrode structure and/or a parallel counter electrode structure (e.g. paragraph [0041] “metal wire fiber outer electrodes are placed in parallel on both sides”) providing a suggestion that would have led one of ordinary skill to modify the prior art reference to arrive at the claimed invention according to known methods to yield predictable results, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), see MPEP 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 electrochromic fiber as taught by the combination of Bae, Meng and Wang to have the counter electrode be at least one metal fiber coated; wherein the counter electrode is a spiral counter electrode structure and/or a parallel counter electrode structure as further taught by Wang since Wang providing a suggestion that would have led one of ordinary skill to arrive at the claimed invention according by using known methods to yield predictable results.
Wang does not teach the at least one metal fiber coated with an ITO coating.
Fan teaches a similar electrochromic fiber (title e.g. figure 1(c-d)) including at least one metal counter electrode (page 28452 right column lines 22-25 “Cu@Ni metal wires”) in a parallel counter electrode structure (see figure 1(c) and page 28452 right column line 22-25 “attached in parallel on two sides”); and further teaches the counter electrode is a metal fiber coated with an ITO coating (page 28452 right column lines 22-23 “Two thinner Cu@Ni metal wires that were coated with ITO”) for the purpose of having highly enhanced color change uniformity was achieved in long EC fibers because of the more uniform electric field distribution and fast electron transfer and improving environmental stabilities (page 28452 left column lines 21-35). 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 metal parallel counter electrodes in the electrochromic fiber as taught by the combination of Bae, Meng and Wang to have an ITO coating as taught by Fan for the purpose of having highly enhanced color change uniformity was achieved in long EC fibers because of the more uniform electric field distribution and fast electron transfer and improving environmental stabilities.
Response to Arguments
Applicant’s arguments, see remarks, filed September 4, 2025, with respect to claim rejections under 112 have been fully considered and are persuasive. The claim rejections under 112 have been withdrawn.
Applicant's arguments filed September 4, 2025 have been fully considered but they are not persuasive.
Regarding the argument centered on Bae (and Meng, Konkin and/or Fan) failing to disclose the thickness of the electrolyte layer being 60 mm to 180 mm, as now recited in claim 1, 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. Specifically, Wang teaches a similar electrochromic fiber, as set forth above, and further teaches electrolyte active layer is in the range of 15-100 μm thick and has a specific example of 60 μm, as set forth above. Further, the examiner has provided evidenced that it would be well within the skill of one in the art of electrochromic devices in the form of a fiber to modify the electrolytic layer thickness, as set forth above.
Regarding applicant’s discussion that an unexpected technical effect of adjusting infrared emissivity has been achieved for camouflage when the fiber is woven into fabric based on the materials and structure, the examiner is unpersuaded. There is nothing in the claim regarding infrared transmissivity. Applicant’s arguments point out the technical effect flows from the structure and materials used. Further, the examiner has provided a substantially similar device to the claimed device, as set forth above. Thus, physical properties flowing from the substantially identical device, such as adjusting infrared emissivity, would necessarily be there, see MPEP 2112 V. Further, it has been held that "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999), see MPEP 2112 I; and there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference; Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003), see MPEP 2112 II. Thus, assertions that this is an unknown inherent effect would not overcome the art. Further, infrared reflection control with an electrochromic device is a known and explored aspect of electrochromic devices, as evidenced by: Goldner et al. “High near-infrared reflectivity modulation with polycrystalline electrochromic WO3 films” Applied Physics Letters Vol. 43, pp 1093-95, 1983, see figure 2; Hampp et al. US Patent Application Publication 2011/0164303, see figures 4-5; Marcel et al. US Patent Application Publication 2014/0002884, see abstract and figures 3-8; and Chandrasekhar internation patent document WO2014/143011, see abstract and figure 5. Finally, a showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997), see MPEP 2145.
Regarding applicant’s arguments centered on Bae not being identical (i.e. does not anticipate) and that these differences make it impossible for those skilled in the art to obtain the technical solution claimed in the present invention through the combination of the prior art, the examiner is unpersuaded. 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. Further, the claims use open ended transitional phrases. This allows for prior art to include additional elements unless specifically prohibited by the claims. The examiner is interpreting the claims, as written, without adding any unclaimed limitations, in light of the specification. The claims define the property rights provided by a patent, and thus require careful scrutiny. The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention. The opinion in In re Hiniker Co., 47 USPQ2d 1523 (Fed. Cir. 1998) stated "...the name of the game is the claim.” See MPEP 2103.
Regarding applicant’s discussion of applied voltages and resultant changes in reflectivity, the examiner is unpersuaded. These features are unclaimed. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The examiner is interpreting the claims, as written, without adding any unclaimed limitations, in light of the specification. The claims define the property rights provided by a patent, and thus require careful scrutiny. The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention. The opinion in In re Hiniker Co., 47 USPQ2d 1523 (Fed. Cir. 1998) stated "...the name of the game is the claim.” See MPEP 2103.
Regarding applicant’s arguments centered on the combination of Bae and Meng would destroy Bae, the examiner is unpersuaded. Bae is silent on the innermost and outermost material compositions, as set forth above. Meng teaches a similar electrochromic fiber, as set forth above. Meng teaches the core can be a metal fiber (paragraph [0009]) for the purpose of using a mechanically suitable (i.e. flexible) core material (inter alia paragraph [0009]); and the protective layer may be polyethylene (paragraph [0018]) for the purpose of using a material that protects from water, oxygen and scratches (inter alia paragraph [0045]), thereby extending the life of the device (paragraph [0065]), as set forth above. The examiner contends that Meng’s teachings that fills the silence in Bae and would be combining prior art elements according to known methods to yield predictable results and that the electrochromic fiber would still function as intended. Further, it has been held 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. Further, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Regarding applicant’s arguments centered on the combination of Bae and Konkin would destroy Bae, the examiner is unpersuaded. Similar to above, Bae (and Meng and/or Wang) do not disclose all of the elements in the composition of the electrolyte layer, as set forth above. Konkin teaches an electrochromic device in a closely related field of electrochromic devices for use in textiles, as set forth above. Konkin further teaches an electrolytic for electrochromic devices with the claimed composition, as set forth above. Konkin further provides a motive of having a gel electrolyte with good conductivity an optical transparency suitable for use in textiles, as set forth above. The examiner contends that using an electrolytic layer with the claimed composition would be combining prior art elements according to known methods to yield predictable results and that the electrochromic fiber would still function as intended. Further, it has been held 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. Further, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Regarding applicant’s arguments centered on the combination of Bae and Fan would destroy Bae, the examiner is unpersuaded. Similar to above, Bae (and Meng and/or Wang) do not disclose the metal counter electrodes in as parallel configuration in the electrochromic fiber of the combination of Bae, Meng and Wang, as set forth above. Fan teaches a similar electrochromic fiber with two parallel metal counter electrodes. Fan further teaches the two parallel metal counter electrodes are coated with ITO for the purpose of the more uniform electric field distribution and fast electron transfer and improving environmental stabilities, as set forth above. The examiner contends that using an ITO coating on the metal counter electrodes would be combining prior art elements according to known methods to yield predictable results and that the electrochromic fiber would still function as intended. Further, it has been held 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. Further, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Regarding applicant’s arguments centered on the combining Bae with Meng would change that principle of operation, the examiner is unpersuaded. Bae and Meng are electrochromic devices that use the principle of redox reactions to change color. The examiner contends that the combinations set forth above would still operate using a redox principle. Further, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Further, it has been held 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.
Regarding applicant’s arguments centered on the combining Bae with Konkin would change that principle of operation, the examiner is unpersuaded. Bae and Konkin are electrochromic devices that use the principle of redox reactions to change color. The examiner contends that the combinations set forth above would still operate using a redox principle. Further, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Further, it has been held 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.
Regarding applicant’s arguments centered on the combining Bae with Fan would change that principle of operation, the examiner is unpersuaded. Bae and Fan are electrochromic devices that use the principle of redox reactions to change color. The examiner contends that the combinations set forth above would still operate using a redox principle. Further, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Further, it has been held 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.
Regarding applicant’s arguments centered on identifying a problem others did not and there is no motive to combine, the examiner is unpersuaded. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the examiner has identified teaching references that include motivations, albeit different motives than applicant argues. Applicant’s arguments centered on fiber length, manufacturing yield, inconsistent performance and voltage control of an infrared camouflaging fabric are all directed to features not in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The examiner is interpreting the claims, as written, without adding any unclaimed limitations, in light of the specification. The claims define the property rights provided by a patent, and thus require careful scrutiny. The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention. The opinion in In re Hiniker Co., 47 USPQ2d 1523 (Fed. Cir. 1998) stated "...the name of the game is the claim.” See MPEP 2103.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Goldner et al. “High near-infrared reflectivity modulation with polycrystalline electrochromic WO3 films” Applied Physics Letters Vol. 43, pp 1093-95, 1983, as noted above.
Hampp et al. US Patent Application Publication 2011/0164303, as noted above.
Marcel et al. US Patent Application Publication 2014/0002884, as noted above.
Chandrasekhar internation patent document WO2014/143011, as noted above.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571) 272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/George G. King/Primary Examiner, Art Unit 2872 September 10, 2025