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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 12, 2026 has been entered.
Response to Arguments
Applicant’s arguments, see remarks, filed February 12, 2026, with respect to claim rejections under 112(b) have been fully considered and in combination with the amendments are persuasive. The claim rejections under 112(b) have been withdrawn.
Applicant's arguments filed February 12, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument that claim 14 further limits the invention, the examiner is unpersuaded. In the Office action of May 30, 2025 the examiner made a clarity rejection that “below” was vague and indefinite, since no frame of reference had been established. Applicant’s remarks of August 29, 2025 persuaded the examiner to remove the 112(b) rejection by clarifying that the relative positioning of two elements establishes the direction “below.” Defining a direction by the relative position of two elements establishes a directional framework. However, that does not structurally or functionally change the invention. So either (1) the claim is indefinite since there is no framework to establish which direction is “below” – or – (2) the claim fails to further limit since defining a relative position does not further limit the structure or function of the invention. Since applicant argues both sides the examiner cannot determine the intended limitation and both rejections are made below. To overcome the rejection(s) applicant needs to (1) establish a direction framework so that the “below” direction adds a limit – or – (2) have some other element positioned “above” or “further below” so that the relative arrangement of elements would further limit the invention – or – (3) cancel claim 14.
Regarding applicant’s argument centered on Lam failing to disclose the being specifically located between the electronics module and the first panel and coupled to the first panel, as recited in claim 1, the examiner is unpersuaded. Applicant is referencing figure 3. However, the examiner referenced figure 9, which shows all of those features, see figure A 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 A. Annotated version of Lam figure 9.
Regarding applicant’s argument centered on Brown failing to disclose the feature wherein the second length is less than the first length, since Brown does not state the drawings are to scale, the examiner is unpersuaded. The examiner agrees that Brown does not state the drawings are to scale. Applicant references Hockerson-Halberstadt, Inc. v. Avia Group Int’l, in support that precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue. The examiner agrees. However, “less than” is a general open ended proportional relationship and is not what one would consider “precise proportions” and/or “particular sizes.” It has been held that “drawings and pictures can anticipate claims if they clearly show the structure which is claimed” In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972); and “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. In this case, Brown’s figure 10E clearly shows that a length of panel 1000a (commensurate with the claimed first length) extends further than panel 1000b (commensurate with the claimed second length), which reasonably discloses to one of ordinary skill in the art that “wherein the second length is less than the first length,” as claimed, see figure B below. Regarding applicant noting that the figure only shows a corner of an IGU, the examiner has no reason to expect the other corners to be different. The examiner contends that figure 10E reasonably discloses and suggests to one of ordinary skill in the art that the second length is less than the first length.
[AltContent: textbox (1000a clearly extending beyond the area covered by 1000b & 1001)][AltContent: textbox (straight line at corner indicates the edges of 1000b are parallel with the edges of 1001)]
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Figure B. Annotated version of Brown figure 10E.
Regarding applicant’s statement “Lam is silent to the photovoltaic module being within the frame and specifically being located between the electronics module and the first panel and coupled to the first panel, as recited in claim 1. As such, Lam does not teach, suggest, or otherwise render obvious each and every element of claim 1.” And that Perez does not cure these deficiencies, the examiner is unpersuaded. Claim 1 does not recite “the photovoltaic module being within the frame”. Indeed, the term “frame” (or any synonymous terms) does not appear in any claim. 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). Regarding the photovoltaic module being located between the electronics module and the first panel and coupled to the first panel, see discussion above and figure A above.
Regarding applicant’s argument centered on the combination of Lan and Pertz failing to disclose or teach “the second length is between 60% and 90% of the first length” as recited in claim 16, the examiner is unpersuaded. As set forth below, the combination of Lan and Pertz disclose all of the claimed elements disposed as claimed, including a first length being greater than the second length. The examiner agrees that the combination does not disclose or teach the relative length having a working range of 60-90%. 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.
Regarding applicant indicating that claims 18 and 19 depend from claim 16 and that the examiner rejected them as anticipated (102-type rejection) and 18-19 are allowable since 16 is allowable, the examiner is unpersuaded. The examiner respectfully notes that claims 18 and 19 depend from claim 1 and that the rejections were made as single reference obviousness (103-type) rejection.
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 14 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 14 “the electronics module is below the electrochromic device” particularly “below” renders the claim vague and indefinite. In the case where the relative positions of the electronics module and the electrochromic device do not establish a directional framework – there is no directional framework to establish which direction is down to give meaning to one element to be “below” another. Further, the implications of a horizontally placed insulated glazing unit (e.g. a skylight) or a vertically placed insulated glazing unit (e.g. a window in a wall) increases the possible arrangements. For purposes of examination the examiner will interpret the direction defining “below” is defined by the placement of the electronics module in relation to the electrochromic device. The examiner respectfully suggests cancelling this claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Regarding claim 14, in the case where the relative positions of the electronics module and the electrochromic device establishs a directional framework – the sole limitation of “wherein the electronics module is below the electrochromic device” fails to further limit the invention. As noted above, in the remarks of August 29, 2025 applicant successfully argued that the limitation is defining the direction of “below” based on the relative positioning of the two elements. This directional definition fails to limit the structure or function of the device. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements. The examiner respectfully suggests cancelling this claim.
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) 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 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).
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).
Insofar as they are understood claims 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown et al. US Patent Application Publication 2019/0243206, of record.
Regarding claim 11 Brown discloses an insulated glazing unit (title e.g. figure 10E), comprising: a first panel (e.g. outboard lite 1000a) having a first length (inherent feature of a panel); a second panel (e.g. inboard lite 1000b) having a second length (inherent feature of a panel), wherein the second length is less than the first length (figure 10E shows1 1000b being smaller than 1000a); 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).
Regarding claim 12 Brown discloses the insulated glazing unit of claim 11, as set forth above. Brown further discloses 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”).
Regarding claim 13 Brown discloses the insulated glazing unit of claim 12, as set forth above. Brown further discloses 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”).
Regarding claim 14 Brown discloses the insulated glazing unit of claim 11, as set forth above. Brown further discloses wherein the electronics module is below the electrochromic device (as set forth in the 112 section above, this limitation is interpreted to be establish the direction of “below” using two elements – as successfully argued by applicant – one could define “below” the relative positions of electronics module and the electrochromic device as seen in figure 10E).
Regarding claim 15 Brown discloses the insulated glazing unit of claim 11 including the electronics module being coupled to the second panel, as set forth above. Brown further discloses wherein the electronics module is coupled to (see figure 10E) and below the second panel (as set forth in the 112 section above, this limitation is interpreted to be establish the direction of “below” using two elements – as successfully argued by applicant – one could define “below” the relative positions of electronics module and the electrochromic device as seen in figure 10E).
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.
Claim 16 is 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 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.
Insofar as they are understood 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.
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.
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/George G. King/Primary Examiner, Art Unit 2872 February 24, 2026
1 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.