DETAILED ACTION
The amendment of February 5, 2026 is considered herein.
Claims 1, 3, 4, 7 and 8 have been amended.
Claim 15 has been added.
Claims 1-15 are pending and have been considered herein.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 now requires “a photoelectrode having formed at a first side thereof an active layer printed on a first transparent electrode layer”, but this is not clear and seems to either be missing punctuation or words. It is the Examiner’s understanding the photoelectrode comprises an active layer printed on a first transparent electrode layer. Requiring the photoelectrode to have an active layer formed at the first surface does not make sense when the active layer is part of the photoelectrode, not formed on it. Paragraph [0009] of the specification as filed forms the photoelectrode with an active layer on the surface because the photoelectrode of paragraph [0009] does not introduce a separate transparent electrode layer so these are not equivalent. Please amend the claim to reflect the photoelectrode as comprising the active layer and first transparent layer.
Claims 2-15 are rejected as being dependent from rejected claim 1.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 now requires the photoelectrode and counter electrode to be “electrically directly connected to each other” during charging but the specification does not support this structure. Discussion of charging in paragraph [0010] makes clear there is “an external charging circuit” between the photoelectrode and counter electrode. Paragraph [0052] further shows the external charging circuit to be component 50 in figure 2 which clearly shows the use of a switch within the connection between the two electrodes. There is no discussion of a direct connection between the photoelectrode and counter electrode unless one is to interpret the “direct” connection as allowing intermediate connection components between the two electrodes. For this reason, there is no support for the premise that there is a direct connection between the two electrodes and the limitation is therefore unsupported.
Claim 1 is further unclear as to the active layer comprising “a plurality of domains formed of a metal oxide” which were printed, but there is no discussion of “domains” or the possible meaning thereof. The term domain is not used in the specification and the plain meaning is generally not relevant to this type of discipline (including a domain within an internet address, a region of magnetism, an area of knowledge or an owned territory or region). The closest definition could be consistent with the third Merriam-Webster definition (“Domain Definition & Meaning.” Merriam-Webster, Merriam-Webster, www.merriam-webster.com/dictionary/domain. Accessed 19 Mar. 2026.) defining “a region distinctively marked by some physical feature” but it is unclear what the Applicant sees as the physical feature. The Applicant is encouraged to describe the metal oxide in terms conveyed in the specification as filed.
Claims 2-15 are rejected as being dependent from rejected claim 1.
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(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over BECHINGER (US Patent 6,369,934), in view of ZHANG et al (CN 109283766 A, wherein citations are made to the English machine translation supplied herein).
Regarding claim 1, BECHINGER et al teaches a photovoltaic-electrochromic-battery all-in-one device comprising:
a photoelectrode (14, “second transparent electrode”/18/28) having formed at a first side thereof an active layer (18, “semiconductor coating or layer”), wherein the active material has an outer surface coated with a dye (TiO2 metal oxide semiconductor layer with dye, c. 6, l. 25-32 and 47-51, specifically stating the dye being on the surface in c. 3, l. 35-37);
a counter electrode (12, “first transparent electrode”/16/26) comprising an electrochromic layer (16, “electrochromic material”) formed on a second transparent electrode layer (12, see figure 2), the electrochromic layer (16) comprising a tungsten oxide (WO3) layer (c. 6, l. 8-12); and
an electrolyte (22, “electrolyte”) comprising a lithium salt (c. 7, l. 32-50) filled between the photoelectrode and the counter electrode (see figure 2), and
wherein the active layer (18) comprises an anode active material of the secondary battery (BECHINGER et al teaches the active layer comprises titanium dioxide with Ru dye per c. 6, l. 36-42. The instant specification teaches the anode active material to be the active layer 15 of the photoelectrode in paragraph [0033] and the active layer to be metal oxide and dye in paragraph [0036] including titanium oxide in paragraph [0039] and Ru dye in paragraph [0038]. For this reason, the active layer of BECHINGER et al is interpreted to read on the anode active material of the secondary battery.) and the electrochromic layer (16) comprises a cathode active material of the secondary battery (BECHINGER et al teaches the use of a WO3 layer within the electrochromic layer of the photoelectrode in c. 6, l. 8-12. The instant specification as filed teaches the cathode active material to be the tungsten oxide layer 27 of the electrochromic layer 25 in paragraph [0043]. For this reason, the tungsten oxide layer of the electrochromic component of BECHINGER et al reads on the cathode active material of the claim),
wherein, during charging, the photoelectrode (14) and the counter electrode (12) are electrically directly connected to each other (shown in figure 2 of BECHINGER et al to have direct connection via the square component, wherein the instant application also shows direct connection with an intermediate component in figure 2 as well), and solar energy incident on a second side of the photoelectrode opposite to the first side of the photoelectrode (operational condition and not a structural impact, but taught to occur in c. 8, l. 39-47) causes generation of electrons in the active layer (dye substance of active layer in c. 8, l. 39-47) that are transferred to and stored in the electrochromic layer (c. 8., l. 47-52, retaining the coloring until removal is interpreted as storage), and
wherein, during discharging (c. 8, l. 52-55), the photoelectrode (14) and the counter electrode (12) are electrically connected to each other through a load (resistor, c. 8, l. 18-27), and the electrons stored in the electrochromic layer are dissipated by the load (c. 8, l. 18-27).
To be clear, these final two limitations are interpreted as intended use of the device (outside of the connections described which provide structure to the device). In a product claim, the method of operating the device is interpreted as intended use and not given patentable weight. The above analysis is provided in the interest of compact prosecution only.
BECHINGER et al teaches the device comprises the claimed photoactive and electrochromic functionality as addressed above but is silent to when in operation, the device simultaneously serves as a photovoltaic device, an electrochromic device and a secondary battery and a platinum (Pt) layer stacked over the tungsten oxide layer in a direction normal to a major surface of the counter electrode. BECHINGER et al is also silent to the active material being printed on a first transparent electrode layer, wherein the active layer comprises a plurality of domains formed of a metal oxide.
ZHANG et al teaches a dye sensitized photovoltaic and electrochromic energy storage device, just as in BECHINGER et al, as disclosed in the abstract and the 1st paragraph of the Summary of the Invention section. ZHANG et teaches the formation of the semiconductive film (analogous to the titanium dioxide active layer of BECHINGER et al) wherein figure 1 shows the film to be comprised of a plurality of spheres (domains as in the instant application, as this is shown in the instant figure 1) to hold the dye on the outer surfaces (see figure 1). ZHANG et al teaches an analogous structure to the device in the 4th paragraph of the Summary of the Invention section and the use of a tungstic acid electrochromic layer, analogous to that of the tungsten oxide of the instant claim, at the bottom of page 4. Moreover, based on the use of the same electrolyte arrangement, ZHANG et al teaches the addition of a platinum catalyst layer thereon to assist in the transition of the regeneration operation within the electrolyte easier to carry out, improving the performance of the device, as detailed in the 2nd paragraph from the bottom of page 4.
At the time of filing, it would have been obvious to utilize the plurality of semiconductive spheres of ZHANG et al as the semiconductive layer of BECHINGER et al, as both impart the same desired functionality of anchoring the dye material. To be clear, the use of the method of printing the active layer does not materially affect the structure of the active layer and is interpreted as a product-by-process limitation, fulfilled by the presence of the semiconductor spheres interpreted to be equivalent to the domains of the instant application. Moreover, it would have been obvious to one of ordinary skill in the art to add the platinum layer of ZHANG et al between the electrolyte and electrochromic layers of BECHINGER et al, as shown in ZHANG et al, so as to assist in the transition of the regeneration operation within the electrolyte easier to carry out, improving the performance of the device. The combination renders the structure of claim 1 which states “a platinum (Pt) layer stacked over the tungsten oxide layer in a direction normal to a major surface of the counter electrode and facing the active layer” (when this limitation is interpreted to refer to the structure of the instant application). Moreover, regarding the simultaneous operation of a photovoltaic, electrochromic or battery device, the claim is directed to an apparatus, not a method of using the device. For this reason, the device of the claim is considered in terms of the metes and bounds of the structure of the device, not its operation. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) [MPEP 2114]. Since the structure of the prior art teaches all structural limitations of the claim (see structural similarity of the combined structure of BECHINGER et al with the platinum layer of ZHANG and figures 2 and 3 of the instant application), the same is considered capable of meeting the intended use limitations. Moreover, in the interest of compact prosecution, as detailed above, the operation of the photovoltaic and electrochromic device is evident in the abstract and the battery is further present in the functionality of the photovoltaic operation, also reading on the claim.
Regarding claim 2, modified BECHINGER et al teaches (in BECHINGER et al unless otherwise stated) the active layer (18) of the photoelectrode (28/14/18) is configured to generate electrons with solar energy incident on a second surface opposite to the first surface (The use of same materials as the instant application, arranged in the same orientation, will render obvious the claimed functionality.) and to provide the generated electrons to the counter electrode (12/16/26) through an external charging circuit (figure 2, connection via components 44/46/48/50), thereby storing electric energy (The use of same materials as the instant application, arranged in the same orientation, will render obvious the claimed functionality.), and wherein the electrochromic layer (16) of the counter electrode (12/16/26) is configured to store the electrons generated in the active layer and to perform an electrochromic operation while storing the electrons (The use of same materials as the instant application, arranged in the same orientation, will render obvious the claimed functionality. More specifically, ZHANG et al teaches the tungsten electrochromic layer to specifically be “an electrochromism energy storage film” conveying the functionality of energy or electron storage.).
Regarding claim 3, BECHINGER et al teaches upon connecting the load between the photoelectrode (28/14/18) and the counter electrode (12/16/26) through an external discharging circuit (figure 2), wherein the electrochromic layer is configured to provide the electrons stored in the electrochromic layer to the load through the discharging circuit, thereby providing electric energy to the load (The connection of a load to the existing circuitry and transfer of stored electrons is interpreted as intended use. The same circuitry and materials are shown in figure 2 as are required for the operation described in the instant claim and are interpreted to fulfill the structural requirements of the structural claim.).
Regarding claim 4, modified BECHINGER et al teaches the photoelectrode (28/14/18) comprises (in BECHINGER et al):
a first transparent substrate (28) having light transmittance (glass plate, c. 5, l. 18-20);
a first transparent electrode layer (14, “transparent electrode”) formed on a first surface of the first transparent substrate (28) facing the counter electrode (12/16/26, see figure 2); and
the active layer (18) formed on the first transparent electrode layer (14) (see figure 2).
Regarding claim 5, BECHINGER et al teaches the active layer (18) comprises Ru-dye as the dye, and titanium oxide (TiO2) as the metal oxide (c. 6, l. 36-42).
Regarding claim 6, BECHINGER et al teaches the active layer is formed by screen-printing the metal oxide (TiO2) coated with the dye (Ru-dye) on the first transparent electrode layer (“formed by screen-printing” is considered a product-by-process limitation. The cited prior art teaches all of the positively recited structure of the claimed product. The determination of patentability is based upon the structure itself. The patentability of a product does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). In this case, the same materials are used to create the same structural relationship, fulfilling the claim as written.).
Regarding claim 7, BECHINGER et al teaches the counter electrode (12/16/26) comprises:
a second transparent substrate (26) having light transmittance (glass plate, c. 5, l. 18-20);
a second transparent electrode layer (16, “transparent electrode”) formed on a first surface of the second transparent substrate (26) facing the photoelectrode (28/14/18, see figure 2); and
the electrochromic layer (12) formed on the second transparent electrode layer (16, see figure 2).
Regarding claim 8, modified BECHINGER et al teaches the electrochromic layer (12 of BECHINGER et al, 8 of “inorganic porous electrochromism energy storage film” of ZHANG et al) comprises a structure where a tungsten oxide (WO3) layer (8, electrochromism layer of tungstic acid of ZHANG) and a platinum (Pt) layer (1, catalyst layer) are directly stacked over each other (see figure 1 for the claimed relationship when the claim is interpreted in light of the structure of the instant application).
Regarding claim 9, BECHINGER et al teaches the tungsten oxide (WO3) layer comprises an electro-deposited WO3 on the second transparent electrode layer; and the platinum (Pt) layer sputtered on the tungsten oxide (WO3) layer (The tungsten oxide layer comprising an “electro-deposited on the second transparent electrode layer” and the platinum (Pt) layer being “sputtered on the tungsten oxide (WO3) layer” are considered a product-by-process limitations. The cited prior art teaches all of the positively recited structure of the claimed product. The determination of patentability is based upon the structure itself. The patentability of a product does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). In this case, the same materials are used to create the claimed structural relationship, fulfilling the claim as written. However, in the interest of compact prosecution, BECHINGER et al teaches the deposition of the tungsten oxide film on the transparent electrode layer in c. 5, l. 35-42 and c. 5, l. 66-c. 6, l. 2 and ZHANG et al teaches sputtering of the platinum layers thereon in step 2 described in the 3rd full paragraph from the bottom of page 5.).
Regarding claim 10, modified BECHINGER et al teaches the lithium salt is at least one selected from the group consisting of LiI (c. 5, l. 9-12 of BECHINGER et al and/or the 5th paragraph of page 5 of ZHANG et al) and LiClO4 (c. 10, l. 58-63 of BECHINGER et al).
Regarding claim 11, BECHINGER et al teaches the metal oxide includes one or more of titanium oxide (TiO2), niobium oxide, hafnium oxide, indium oxide, tin oxide, and zinc oxide (TiO2, c. 6, l. 36-42).
Regarding claim 12, BECHINGER et al teaches the dye comprises one or more of Ru-dye (claim 7 of BECHINGER et al), a cyanine-based pigment, a porphyrin-based compound, or a phthalocyanine compound (claim 8 of BECHINGER et al).
Regarding claim 13, it is noted that this claim’s limitations do not positively limit the scope of the claim from which it depends since the option of Ru-dye is present in BECHINGER et al. This claim is therefore rejected by the disclosure of prior art, as discussed above in addressing claim 12, wherein the teaching and selection of the Ru-dye fulfills the claim.
Regarding claim 14, BECHINGER et al teaches a sealing layer (13, “SURLYN”) sealing a space between the photoelectrode and the counter electrode that is filled with the electrolyte (c. 10, l. 37-44).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over BECHINGER et al, in view of ZHANG et al and SUGA et al (US Patent 5,859,722).
Regarding claim 15, BECHINGER et al and ZHANG et al teach the use of an electrolyte comprising lithium salt, including lithium iodide (BECHINGER et al) and lithium bromide (ZHANG et al), but fails to disclose the use of the salts listed.
SUGA et al teaches the use of an electrolyte (ion conductive material) comprising a salt (c. 3, l. 59-62) within an electrochromic device, see abstract, just as in modified BECHINGER et al. SUGA et al further teaches the use of an array of salts which provide the same ion conductivity in cl. 4, l. 10-21, including lithium iodide, lithium perchlorate and a number of others (multiple overlapping components as that of the claim).
At the time of filing, it would have been obvious to one of ordinary skill in the art to substitute one known lithium salt (lithium perchlorate) for another known lithium salt (lithium iodide) within the electrolyte of modified BECHINGER et al, as listed in SUGA et al, to support the predictable result of ion conduction.
Response to Arguments
Applicant's arguments filed February 5, 2026 have been fully considered but they are not persuasive.
The Applicant’s representative argues BECHINGER et al does not teach the claimed domains of metal oxide material and argues absorbing into pores does not fulfill the claimed limitations.
The Examiner finds support for the amended subject matter in ZHANG et al which teaches an alternative preparation of the metal oxide semiconductor material claimed.
The Applicant argues the functionality claimed is not present in modified BECHINGER et al.
The Examiner disagrees with the recitation that modified BECHINGER et al does not operate equivalently to that of the instant application. It is unclear what structure is present in the instant application which is not present in the combination as the claim is directed to a product, not a method. Moreover, even if one were to consider the operation of the device, it is the position of the Examiner BECHINGER et al does teach the claimed steps as addressed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/KOURTNEY R S CARLSON/ Primary Examiner, Art Unit 1721 3/21/2026