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 .
Response to Arguments
Applicant’s arguments, see remarks, filed July 31, 2025, with respect to claim rejections under 112 have been fully considered and in combination with the amendments are persuasive. The claim rejections under 112 have been withdrawn.
Applicant’s arguments with respect to prior art rejection based on the combination of Karmhag as modified by Shin (and Kozlowski or Dalavi) 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.
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.
Claim 20 is 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.
Regarding claim 20 “wherein the first angle and the second angle are less than an incident angle of the angle deposition and wherein the incident angle of the angle deposition is 80 degrees to 89 degrees” raises clarity issues. The method of making, i.e. the incident angle of the angle deposition, is a process in a device claim. It has been held that the presence of process limitations in a product claim, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to the product. In re Stephens 135 USPQ 656 (CCPA 1965). Furthermore, the patentability of a product does not depend upon its method of production. If the product in a product by process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed Cir 1985). See MPEP 2113. It is unclear if applicant is claiming the process of making or the first and second angles being less than 80° or the first and second angles being less than 89°. Since the claims are directed to a device the examiner will use the broadest reasonable interpretation that limits the device – and not limitations regarding the process of making the device. For purposes of examination the examiner will use “wherein the first angle and the second angle are less than
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.
Insofar as they are understood, claims 1-4, 10-14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Karmhag et al. US Patent Application Publication 2009/0262411, of record, in view of Ishimatsu foreign patent document JPS5577724A.
Regarding claims 1 and 20 Karmhag discloses a device (title e.g. figure 4E electrochromic device 10), comprising: a pair of lenses (e.g. first and second plastic substrates 22 & 24); and an electro-chromic stack disposed between the pair of lenses (e.g. central five layers 12, 14, 16, 18, 20), comprising, in the order: a first electrode (e.g. electron conducting layer 14); a first electro-chromic layer (e.g. electrochromic layer 16) having a first bulk portion (see figure 4E) that includes electro-chromic material (inherent for eponymously named electrochromic layer) formed by angle deposition (no patentable weight1); an ion conducting layer (electrolyte layer/ion conductor 20); a second electro-chromic layer (e.g. counter electrode film 18) having a second bulk portion (see figure 4E) that includes electro-chromic material (inter alia paragraph [0021] “18 may entirely or partly be constituted by a second electrochromic film”) formed by angle deposition (no patentable weight2); and a second electrode (e.g. electron conducting layer 12), wherein the first bulk portion of the first electro-chromic layer and the second bulk portion of the second electro-chromic layer face each other (see figure 4E).
Karmhag does not disclose the first and second electro-chromic layers further have a first set of nanosized features of electro-chromic material extending at a first angle relative to the first bulk portion, and a second set of nanosized features of electro-chromic material extending at a second angle relative to the second bulk portion, as required by claim 1; or wherein the first angle and the second angle are less than 89 degrees, as required by claim 20
Ishimatsu teaches a similar device (abstract e.g. figure 1-2) including a substrate (e.g. substrate 1), a transparent electrode (e.g. electrode 2) and an electrochromic layer (e.g. tungsten oxide coating 3) with a bulk portion (e.g. portion 3a3); and further teaches the electrochromic layer has a set of nanosized features (e.g. portion 3b of tungsten oxide coating 3) of electro-chromic material extending at an angle relative less than 89° to the bulk portion (see figure 2) for the purpose of providing a columnar electrochromic material layer with adhesion to the substrate and achieving an electrochromic display with high response, high color productivity, and long life (abstract and last sentence of paragraph [0002]). 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 layer including a bulk portion in the device as disclosed by Karmhag to further have a set of nanosized features of electrochromic material extending at an angle less than 89° relative to the bulk portion as taught by Ishimatsu for the purpose of providing a columnar electrochromic material layer with adhesion to the substrate and achieving an electrochromic display with high response, high color productivity, and long life.
Ishimatsu does not teach two electrochromic layers having a columnar electrochromic material layer. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have both electrochromic layers in Karmhag to be modified as taught by Ishimatsu, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art, St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 (1977); and further it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), see MPEP 2144.04. In this case one would be motivated to duplicate the columnar electrochromic material layer on the bulk portion for the purpose of increasing the surface area of the electrochromic material in contact with the electrolyte, thereby improving response speed at low voltage (inter alia Ishimatsu paragraph [0002]). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for both electrochromic layers in the device as disclosed by Karmhag to be modified as taught by Ishimatsu for the purpose of increasing the surface area of the electrochromic material in contact with the electrolyte, thereby improving response speed at low voltage and since duplicating this feature has no new or unexpected result.
Regarding claim 2 the combination of Karmhag as modified by Ishimatsu discloses the device of claim 1, as set forth above. Regarding wherein the angle deposition is a glancing-angle deposition, this is a “product by process” claim and no patentable weight is given. It has been held that the presence of process limitations in a product claim, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to the product. In re Stephens 135 USPQ 656 (CCPA 1965). Furthermore, the patentability of a product does not depend upon its method of production. If the product in a product by process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed Cir 1985). See MPEP 2113.
Regarding claim 3 the combination of Karmhag as modified by Ishimatsu discloses the device of claim 1, as set forth above. Regarding, wherein the angle deposition is an oblique-angle deposition, this is a “product by process” claim and no patentable weight is given. It has been held that the presence of process limitations in a product claim, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to the product. In re Stephens 135 USPQ 656 (CCPA 1965). Furthermore, the patentability of a product does not depend upon its method of production. If the product in a product by process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed Cir 1985). See MPEP 2113.
Regarding claim 4 the combination of Karmhag as modified by Ishimatsu discloses the device of claim 1, as set forth above. Karmhag further discloses wherein the electro-chromic stack is configured to survive post-processing (inter alia paragraph [0012] & figure 3A describes assembling the stack, steps 210-230, and then thermoforming into a permanent curvature, step 240, and then notes after thermoforming the device may be cut, step 260, or have the surface modified; also see figures 3B-3C), wherein the post-processing of the electro-chromic stack comprises at least one of: surfacing the electro-chromic stack according to a prescription of the pair of lenses; edging the electro-chromic stack into a different shape (inter alia figures 3A-3C steps 260 & 255 and paragraphs [0041-42, 0054 & 0061]); or grooving the electro-chromic stack.
Regarding claims 10-12, the limitations of claims 10-12 are contained in the limitations of claims 1 and 4 and claims 10-12 are rejected for the same reasons.
Regarding claim 13 the combination of Karmhag as modified by Ishimatsu discloses the electro-chromic device of claim 10, as set forth above. Karmhag further discloses wherein post-processing of the lens blank or semi-finished lens blank comprises edging the lens blank or semi-finished lens blank into a different shape (inter alia figures 3A-3C steps 260 & 255 and paragraphs [0041-42, 0054 & 0061] as discussed above).
Regarding claim 14 the combination of Karmhag as modified by Ishimatsu discloses the electro-chromic device of claim 10, as set forth above. Karmhag further discloses wherein post-processing of the lens blank or semi-finished lens blank comprises surfacing the lens blank or semi-finished lens blank according to a prescription (paragraph [0002] makes it clear that “a refractive lens derives its ability to converge or diverge light from the difference in the curvature of the front and the rear surface” figures 3A & 3B step 240 which paragraphs [0041-42] disclose as putting respective curvatures on to the two outer surfaces, i.e. setting a particular focusing power, after the electrochromic device is laminated, i.e. a post process).
Claims 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Karmhag et al. US Patent Application Publication 2009/0262411, of record, in view of Ishimatsu foreign patent document JPS5577724A and in further view of Kozlowski et al. US Patent Application Publication 2010/0243427, of record.
Regarding claim 5 the combination of Karmhag as modified by Ishimatsu discloses the device of claim 1, as set forth above. Karmhag further discloses wherein the first electro-chromic layer (e.g. 16) or the second electro-chromic layer (e.g. 18) comprise WOx (paragraph [0023] “examples of electrochromic layers 16 are cathodically coloring thin films of oxides based on tungsten …” and/or paragraph [0027] “counter electrode layers 18 are cathodically coloring electrochromic thin films of oxides based on tungsten”).
Karmhag and Ishimatsu do not disclose or teach where 2.7 < x < 2.9.
Kozlowski a similar device (title e.g. figure 1 electrochromic device 100) including two electrodes (104 & 114) an electrochromic layer (106) made of tungsten oxide (paragraph [0044]), an ion conductive layer (108) and a counter electrode/ion storage layer (110); and further teaches the electrochromic layer is WOx, where x is between about 2.7 and about 2.9 (paragraph [0045]) for the purpose of exhibiting electrochromism, which only occurs in sub-stoichiometric tungsten oxide (paragraph [0045]). 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 device as disclosed by the combination of Karmhag as modified by Ishimatsu to have 2.7 < x < 2.9 as taught by Kozlowski for the purpose of exhibiting electrochromism, which only occurs in sub-stoichiometric tungsten oxide.
Regarding claim 19 the limitations of claim 19 are the same as the limitations of claim 5 and claim 19 is rejected for the same reasons.
Claims 6-9 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Karmhag et al. US Patent Application Publication 2009/0262411, of record, in view of Ishimatsu foreign patent document JPS5577724A and in further view of Dalavi et al. “Efficient electrochromic performance of nanoparticulate WO3 thin films” Journal of Materials Chemistry C, 2013, 1, 3722-3728, of record.
Regarding claims 6-9 the combination of Karmhag as modified by Ishimatsu discloses the device of claim 1, as set forth above. Karmhag and Ishimatsu do not disclose or teach wherein the electro-chromic stack is configured to transmit at least 75% of visible light in a transmissive state, as recited in claim 6; wherein the first nano-structured electro-chromic layer and the second nano-structured electro-chromic layer have a dynamic response time of less than 30 seconds, as recited in claim 7; wherein the first nano-structured electro-chromic layer and the second nano-structured electro-chromic layer have a coloration efficiency of greater than 50 cm2/C in the visible spectral range, as recited in claim 8; wherein the first nano-structured electro-chromic layer and the second nano-structured electro-chromic layer have an actuation voltage equal to or less than 4 Volts, as recited in claim 9.
Dalavi teaches a similar electrochromic device (see figure 1a) where the electrochromic layer (e.g. NP-WO3) with nano-structured surface (page 3724 left column lines 1-10 “continuous thin film with nanocracks and cavities into the film”); and further teaches the device has the physical properties of a bleached transmissive state transmits 97.16%, has a response time of 3.7 seconds to a bleached state and 5.2 seconds to a dark state, a coloration efficiency of 137 cm2 C-1 using an applied voltage of -1.4 volts (e.g. Table 1 line/example 4) and for the purpose of having a device where the electrochromic layer has a large active surface area and extensive grain boundaries, which shorten the diffusion pathway among the materials and gives rise to high optical modulation, fast switching times and excellent coloration efficiency (inter alia abstract and conclusion). 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 device as disclosed by the combination of Karmhag as modified by Ishimatsu to have the electro-chromic stack be configured to transmit at least 75% of visible light in a transmissive state, a dynamic response time of less than 30 seconds, a coloration efficiency of greater than 50 cm2/C in the visible spectral range, and an actuation voltage equal to or less than 4 Volts as taught by Dalavi for the purpose of having a device where the electrochromic layer has a large active surface area and extensive grain boundaries, which shorten the diffusion pathway among the materials and gives rise to high optical modulation, fast switching times and excellent coloration efficiency.
Regarding claims 15-18 the limitations of claims 15-18 are the same as the limitations of claims 6-9, respectively, and claims 15-18 are rejected for the same reasons.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Vick et al. “Self-shadowing and surface diffusion effects in obliquely deposited thin films” Thin Solid Films 339 (1999) 88-94; in regard to the artifact of deposited columnar nanostructures deposited by angular deposition being at a smaller angle than the deposition angle.
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 October 21, 2025
1 It has been held that the presence of process limitations in a product claim, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to the product. In re Stephens 135 USPQ 656 (CCPA 1965). Furthermore, the patentability of a product does not depend upon its method of production. If the product in a product by process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed Cir 1985). See MPEP 2113.
2 Ibid.
3 The examiner notes a drafting/translation issue where the continuous portion of layer 3 is referred to as 3a, 3a and 3cL. However, in context it is clear that they all refer to the continuous portion of the electrochromic layer. For clarity the examiner will use 3a.