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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 18, 2026 has been entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “wherein the electronics module is hidden from view” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-9 and 18-20 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 electronics module is hidden from view” raises clarity issues. It is unclear if “hidden from view means that the electronics module is covered by a removable front panel (as in claim 12), or if it is covered by drapes/blinds/valance for aesthetic purposes (not supported by the specification), or if it is not in viewing region front of the first panel or the second panel or both (not shown in the figures). Paragraph [0027] notes the electronics module 250 “can be hidden from view on the bottom … [or] … on a side … [or] … on the top of the IGU.” In light of this disclosure the examiner is interpreting the module is outside usable/viewing region of the IGU (a.k.a. double pane window). For purposes of examination the examiner will use “wherein the electronics module is hidden from view by being position outside of the edges of both the first and second panels.”
Claims 2-9 and 18-20 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Response to Arguments
Applicant's arguments filed September 18, 2026 have been fully considered but they are not persuasive.
Regarding claim 1 – applicant's arguments (on pages 5-7) do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. In this case, applicant has recited all of the elements of claim 1 and stated: “Lam does not teach each and every element of claim 1.” Applicant fails to make any indication of how the previous rejection was flawed. The examiner guesses that applicant is relying on the new limitation of “wherein the electronics module is hidden from view” in claim 1. As set forth above, the scope of this limitation is vague and indefinite. Insofar as the specification discusses the electronics module being “hidden from view” (see paragraph [0029]) it appears to be placing the electronics module above/below/atop of the IGU – implying that “hiding” aspect is that the electronics module is not visible through the IGU window, as set forth above. Insofar as this limit is understood Lam illustrates the electronics module positioned such that it would not visible through the IGU window, see annotated figure A below.
[AltContent: arrow][AltContent: textbox (second panel (114))][AltContent: textbox (outside viewing region of IGU
inside viewing region of IGU)][AltContent: connector][AltContent: textbox (electronics module (145))][AltContent: textbox (first panel (112))]
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Figure A. Annotated version of Lam figure 9.
Applicant’s arguments with respect to claims 11-15 (on pages 9-9) 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.
Regarding claim 16 – applicant's arguments (on pages 10-11) appears to center on the combination of Lam as modified by Pertz failing to disclose or teach the photovoltaic module being located between the electronics module and the first panel and coupled to the first panel, the examiner is unpersuaded. As discussed in previous Office Actions Lam discloses the photovoltaic module being located as claimed, see annotated figure B below.
[AltContent: textbox (153 on/coupled to 112
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153 between 112 & 145)][AltContent: textbox (photovoltaic module (153) )][AltContent: textbox (first panel (112))][AltContent: textbox (electronics module (145))]
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Figure B. Annotated version of Lam figure 9.
Further regarding claim 16 – applicant's further argues (on page 10) that claim 16 is allowable since Lam does not disclose “both the photovoltaic module and the electronics module form an edge of the insulating glazing unit, as recited in claim 1. As such, Lam does not teach, suggest, or otherwise render obvious each and every element of claim 1.” The examiner is confused and unpersuaded. As discussed in previous Office Actions – these features are in claim 1. As discussed in previous Office Actions – claim 16 is an independent claim. As discussed in previous Office Actions – claim 16 does not claim these features. Arguments directed to features other independent claims (such as a claim 1) but in not claimed in this independent claim (i.e. 16) are not germane. Further, in arguendo, discussed in previous Office Actions, as seen in figures A & B above the electronics module is at the edge of the device. Regarding the position of the photovoltaic module Lam clearly discloses in paragraph [0144]: “Where the device is a window, the PV-EHPS may be incorporated along an edge, in a corner or another less obtrusive portion of the window itself, without affecting the window.”
Regarding claims 18-19 – applicant's arguments (on pages 11-12) are unpersuasive. Applicant states: “Claims 18 and 19 stand rejected as being anticipated by … Lam” and “Claims 18-19 depend from claim 16.” As discussed in previous Office Actions – claims 18 and 19 depend from claim 1 and the rejections were made as single reference obviousness (103) rejection combining features from different embodiments in Lam. Applicant implies that because all of the features of claim 1 (labeled as claim 16?) (without clearly pointing out the patentable novelty features) that 18 and 19 are allowable. Claim 1 is not allowable as discussed above and set forth below.
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 1-9 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lam et al. US Patent Application Publication 2013/0278989, of record.
Regarding claim 1 Lam discloses an insulated glazing unit (title e.g. figure 9 variable transmittance window 150), comprising: a first panel (e.g. first pane 112); a second panel (e.g. second pane 114); an electrochromic device (e.g. variable transmittance optical filter 116) coupled to the first panel (see figure 9); an electronics module (e.g. control system 145 & wire 152) coupled to the second panel (see figure 9); and a photovoltaic module (e.g. energy-harvesting power source/EHPS 153) coupled to the electronics module, the electrochromic device, and the first panel (e.g. via 152), wherein the photovoltaic module is located between the electronics module and the first panel (e.g. 153 is between 145 and 112), and wherein the photovoltaic module is coupled to the first panel (e.g. 153 is on the inside surface of 112), and wherein both the photovoltaic module (e.g. 153) and the electronics module (e.g. 145 & 152) form an edge (e.g. see figure 9 where 145 is at the edge & paragraph [0144] “[w]here the device is a window, the PV-EHPS may be incorporated along an edge”) of the insulating glazing unit (e.g. 150), and wherein the electronics module is hidden from view by being position outside of the edges of both the first and second panels (e.g. see annotated figure A above showing the electronics module positioned such that it would not visible through the panels).
Regarding claim 2 Lam discloses the insulated glazing unit of claim 1, as set forth above. Lam further discloses wherein the electrochromic device (e.g. details of variable transmittance optical filter 116 can be seen in figure 1 general variable transmittance optical filter 20), comprises: a substrate (e.g. first transparent substrate 22); a first transparent conductive layer (e.g. first transparent conductive layer 24) on the substrate (see figure 1); a second transparent conductive layer (e.g. second transparent conductive layer 28); an electrochromic layer between the first transparent conductive layer and the second transparent conductive layer; a counter electrode layer between the first transparent conductive layer and the second transparent conductive layer; and an electrolyte layer between the electrochromic layer and the counter electrode layer (e.g. switching material 30 & paragraph [0080] “the switching material may be an electrochromic … Electrochromic technology typically involves applying thin coatings of electrochromic materials to two transparent electrodes and sandwiching an electrolyte material in between”).
Regarding claim 3 Lam discloses the insulated glazing unit of claim 2, as set forth above. Lam further discloses wherein the electrochromic layer comprises a material selected from the group consisting of WO3, V2O5, MoO3, Nb2O5, TiO2, CuO, Ni2O3, NiO, Ir2O3, Cr2O3, Co2O3, Mn2O3, mixed oxides (e.g., W-Mo oxide, W-V oxide), lithium, aluminum, zirconium, phosphorus, nitrogen, fluorine, chlorine, bromine, iodine, astatine, boron, a borate with or without lithium, a tantalum oxide with or without lithium, a lanthanide-based material with or without lithium, another lithium-based ceramic material, or any combination thereof (e.g. paragraph [0080] “materials include tungsten oxide, polyaniline, viologens, polyoxotungstates or the like”).
Regarding claim 4 Lam discloses the insulated glazing unit of claim 3, as set forth above. Lam further discloses wherein the substrate comprises a material selected from the group consisting of glass, sapphire, aluminum oxynitride, spinel, polyacrylic compound, polyalkene, polycarbonate, polyester, polyether, polyethylene, polyimide, polysulfone, polysulfide, polyurethane, polyvinylacetate, another suitable transparent polymer, co-polymer of the foregoing, float glass, borosilicate glass, or any combination thereof (e.g. paragraph [0070] “suitable materials that can be used as a substrate in embodiments of the present invention include, but are not limited to, glass, plastics and thermoplastic polymers. Suitable thermoplastic polymers include polyesters (PE), polycarbonates, polyamides, polyurethanes, polyacrylonitriles, polyacrylacids, (e.g. poly(methacrylic acid), including polyethylene terephthalate (PET), polyolefins (PO) or copolymers or heteropolymers of any one or more of the above, or copolymers or blends of any one or more of the above with poly(siloxane)s, poly(phosphazenes)s, or latex. Examples of polyesters include homopolymers or copolymers of aliphatic, semi-aromatic or aromatic monomeric units, for example polycondensed 4-hydroxybenzoic acid and 6-hydroxynapthalene-2-carboxylic acid (VECTRAN.TM.), polyethylene napthalate (PEN), polytrimethylene terephthalate (PTT), polybutylene terephthalate (PBT), polyethylene terephthalate (PET), polyhydroxyalkanoate (PHA), polyethylene adipate (PEA), polycaprolactone (PCL) polylactic acid (PLA), polyglycolic acid (PGA) or the like”).
Regarding claim 5 Lam discloses the insulated glazing unit of claim 2, as set forth above. Lam further discloses wherein the first transparent conductive layer comprises a material selected from the group consisting of indium oxide, indium tin oxide, doped indium oxide, tin oxide, doped tin oxide, zinc oxide, doped zinc oxide, ruthenium oxide, doped ruthenium oxide, silver, gold, copper, aluminum, and any combination thereof (e.g. paragraph [0076] “Exemplary conductive materials include layers of doped indium tin oxide, doped tin oxide, doped zinc oxide, antimony tin oxide, polyaniline, graphene, PEDOT (poly(3,4-ethylenedioxythiophene)), PEDOT:PSS (poly(3,4-ethylenedioxythiophene) poly(styrenesulfonate)), and polypyrrole, as well as thin, substantially transparent metallic layers such as gold, silver, aluminum, and nickel alloy”).
Regarding claim 6 Lam discloses the insulated glazing unit of claim 2, as set forth above. Lam further discloses wherein the second transparent conductive layer comprises a material selected from the group consisting of indium oxide, indium tin oxide, doped indium oxide, tin oxide, doped tin oxide, zinc oxide, doped zinc oxide, ruthenium oxide, doped ruthenium oxide and any combination thereof (e.g. paragraph [0076]).
Regarding claim 7 Lam discloses the insulated glazing unit of claim 2, as set forth above. Lam further discloses wherein the counter electrode layer comprises an inorganic metal oxide electrochemically active material (e.g. paragraph [0080] “tungsten oxide”), selected from a group consisting of WO3, V2O5, MoO3, Nb2O5, TiO2, CuO, Ir2O3, Cr2O3, Co2O3, Mn2O3, Ta2O5, ZrO2, HfO2, Sb2O3,a lanthanide-based material with or without lithium, another lithium-based ceramic material, a nickel oxide (NiO, Ni2O3, or combination of the two), and Li, nitrogen, Na, H, or another ion, any halogen, or any combination thereof (e.g. paragraph [0080]).
Regarding claim 8 Lam discloses the insulated glazing unit of claim 1, as set forth above. Lam further discloses it is further comprising an insulating layer (e.g. sealed gap 118) between the photovoltaic module and the electronics module (see figure 9).
Regarding claim 9 Lam discloses the insulated glazing unit of claim 1, as set forth above. Lam further discloses it is further comprising a lamination interlayer (e.g. paragraph [0151] discusses unshown interlayer materials) between the first panel and the electrochromic device (axiomatic e.g. see inter alia paragraph [0152] and paragraph [0152] discussing optical filter being laminated with an interlayer).
Regarding claim 20 Lam discloses the insulated glazing unit of claim 1, as set forth above. Lam further discloses it further comprising a spacer (e.g. spacer 120) between the first panel and the second panel (see figure 9).
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 11 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lam et al. US Patent Application Publication 2013/0278989, of record, in view of Pertz US Patent 2,052,244, of record.
Regarding claim 11 Lam discloses an insulated glazing unit (title e.g. figure 9 150), comprising: a first panel (e.g. 112) having a first length (inherent that the panel is not infinite in length); a second panel (e.g. 114) having a second length (inherent that the panel is not infinite in length), an electrochromic device (e.g. 116) coupled to the first panel (see figure 9); an electronics module (e.g. 145 & 152) coupled to the second panel (see figure 9); and a photovoltaic module (e.g. 153) coupled to the electronics module, the electrochromic device, and the first panel (e.g. via 152), wherein the photovoltaic module is located between the electronics module and the first panel (e.g. 153 is between 145 and 112), and wherein the photovoltaic module is coupled to the first panel (e.g. 153 is on the inside surface of 112).
Lam does not disclose wherein the second length is less than the first length.
Pertz teaches a similar insulated glazing unit (title e.g. figure 2) including a first panel (e.g. glass panel 4), a second panel (e.g. glass panel 5); and further teaches the first panel has a length greater than the second panel (see figure 2) for the purpose of having the edge of the first panel projects out past the edge of the second panel to provides a glazing or clamping margin (inter alia column 1 lines 32-36 & column 2 lines 20-23). 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 insulated glazing unit as disclosed by Lam to have the second length be less than the first length as taught by Pertz for the purpose of having the edge of the first panel projects out past the edge of the second panel to provides a glazing or clamping margin.
Regarding claim 14 the combination of Lam as modified by Pertz discloses the insulated glazing unit of claim 11, as set forth above. Lam further discloses wherein the electronics module abuts one end of the electrochromic device on a first end and in part forms an outside edge of the insulated glazing unit (e.g. 152 abuts 116 at the edge of 112).
Regarding claim 15 the combination of Lam as modified by Pertz discloses the insulated glazing unit of claim 11, as set forth above. Lam further discloses wherein the electronics module is coupled to (see figure 9) and below the second panel (see figure 9 – for clarity applicant has asserted that the direction “below” is defined by the relative position of the electronics module, i.e. wherever the electronic module defines below).
Regarding claim 16 Lam discloses an insulated glazing unit (title e.g. figure 9 variable transmittance window 150), comprising: a first panel (e.g. 112) having a first length (inherent feature of a panel); a second panel (e.g. 114) having a second length (inherent feature of a panel); an electrochromic device (e.g. 116) coupled to the first panel (see figure 9); an electronics module (e.g. 145) coupled to the second panel (see figure 9); and a photovoltaic module (e.g. 153) coupled to the electronics module (e.g. via wires 152), wherein the photovoltaic module is located between the electronics module and the first panel (e.g. 153 is between 145 and 112), and wherein the photovoltaic module is coupled to the first panel (e.g. 153 is on the inside surface of 112).
Lam does not disclose the second length is between 60% and 90% of the first length.
Pertz teaches a similar insulated glazing unit (title e.g. figure 2) including a first panel (e.g. glass panel 4), a second panel (e.g. glass panel 5); and further teaches the first panel has a length greater than the second panel (see figure 2) for the purpose of having the edge of the first panel projects out past the edge of the second panel to provides a glazing or clamping margin (inter alia column 1 lines 32-36 & column 2 lines 20-23). 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 insulated glazing unit as disclosed by Lam to have the second length be less than the first length as taught by Pertz for the purpose of having the edge of the first panel projects out past the edge of the second panel to provides a glazing or clamping margin.
Pertz does not disclose the second length is between 60% and 90% of the first length. However, 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 Lam as modified by Pertz disclose an insulated glazing unit including an electrochromic device, an electronics module, a photovoltaic module and a larger first panel, fulfilling the general conditions of the claim. One would be motivated to choose a particular ratio of sizes for the purpose of achieving a sufficient margin for glazing given a particular size window. Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the insulated glazing unit as disclosed by the combination of Lam as modified by Pertz to have the second length is between 60% and 90% of the first length for the purpose of achieving a sufficient margin for glazing given a particular size window and since discovering the optimum or workable ranges involves only routine skill in the art.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lam et al. US Patent Application Publication 2013/0278989, of record, in view of Pertz US Patent 2,052,244, of record, and in further view of Brown et al. US Patent Application Publication 2019/0243206, of record.
Regarding claims 12-13 the combination of Lam as modified by Pertz discloses the insulated glazing unit of claim 11, as set forth above. Lam and Pertz do not disclose or teach wherein the electronics module further comprises a removable front panel, as recited in claim 12; or wherein the removable front panel extends into a visible area of the electrochromic device, as recited in claim 13.
Brown teaches a similar insulated glazing unit (title e.g. figure 10E), including: a first panel (e.g. outboard lite 1000a); a second panel (e.g. inboard lite 1000b); an electrochromic device coupled to the first panel (paragraph [0141] indicates 1000a with bus bar leads 1025a-1025b is an electrochromic lite); and an electronics module (e.g. dock/base 1007 and inter alia paragraph [0129] discloses 1007 may include a programmable chip) coupled to the second panel (see figure 10E). Brown further teaches wherein the electronics module further comprises a removable front panel (inter alia paragraph [0023] “In some cases, a cover is provided over the dock” & paragraph [0097] “cover can be removed”) and wherein the removable front panel extends into a visible area of the electrochromic device (inter alia paragraph [0023] “the cover extends no more than about 0.1 inches from a surface on which the dock is positioned”) for the purpose of helping protect the controller when it is not being actively accessed (paragraph [0092]) while providing easy or instant access especially where the controller is expected to be accessed frequently (paragraph [0108]). 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 insulated glazing unit as disclosed by the combination of Lam as modified by Pertz to have the electronics module further comprises a removable front panel, and wherein the removable front panel extends into a visible area of the electrochromic device as taught by Brown for the purpose of helping protect the controller when it is not being actively accessed while providing easy or instant access especially where the controller is expected to be accessed frequently.
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Lam et al. US Patent Application Publication 2013/0278989, of record.
Regarding claims 18-19 Lam figure 9 discloses the insulated glazing unit of claim 1, as set forth above. Lam further discloses wherein the electrochromic device has a first width (inherent feature of an electrochromic device), the first panel has a second width (inherent feature of a panel).
Lam figure 9 does not disclose wherein the first width is the same as the second width, as required by claim 18; or in the alternative wherein the first width is between 50% and 99% the second width, as required by claim 19.
Lam teaches similar embodiments of insulated glazing units (e.g. figures 16 & 18) including a first panel (e.g. first pane 369) with an electrochromic device (e.g. variable transmittance optical filter 368 or 384) on the first panel (see figures 16 & 18), a second panel (e.g. second pane 366), and further teaches an embodiment (e.g. figure 18) where the electrochromic device (e.g. 384) is the same size as the first panel and another embodiment (e.g. figure 16) where the electrochromic device (e.g. 368) is smaller than the first panel. One would be motivated to choose either embodiment based on design/engineering decisions. For example, one might choose to have the electrochromic device and the first panel be the same size as a matter of simplified production of having a first panel/electrochromic layer cut from a larger pre-made panel. On the other hand, one might choose to have the electrochromic device be smaller to save money and reduce voltage required and/or transition time, since the edges of the first panel are covered by the frame and are not part of the viewing area. Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the insulated glazing unit as disclosed by the combination of Lam figure 9 to have either the first width is the same as the second width, or in the alternative, the first width is less than the second width as further taught by Lam figures 16 and 18 for the purpose of satisfying design/engineering/operating consideration, such as cost and/or operating conditions.
Lam figure 16 does not explicitly teach the first width is between 50% and 99% the second width, as required by claim 19. However, figure 16 suggests that width is greater than 50% and less than 99% the width of the first panel. It has been held the drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979), see MPEP 2125. 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 have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the insulated glazing unit as disclosed by the combination of Lam figure 9 as modified by Lam figures 16 to have either the first width is the same as the second width, or in the alternative, the first width is between 50% and 99% as suggested by figure 16 and since discovering the optimum or workable ranges involves only routine skill in the art.
Conclusion
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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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.
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/George G. King/Primary Examiner, Art Unit 2872 September 23, 2026
