DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner’s Comments
The examiner notes that the response by applicant fails to address all of the rejections of the Office Action of February 6, 2026, particularly the rejected under 35 U.S.C. 112(b) of claims 17 and 20. Since the response addresses the rest of the Office Action the examiner considers this a bona fide Response, and in an effort to maintain a compact prosecution will proceed as if the Response is fully responsive and maintain the rejected under 35 U.S.C. 112(b) of claims 17 and 20, as set forth below.
As previously noted, the subjective term “about” – Applicant has provided objective standard for determining the scope of the term, see MPEP 2173.05(b)IV. In discussing the term “about” paragraph [0015] states “differences of up to ten percent (10%) for the value are reasonable differences”. The examiner interprets a difference of up to 10% to be of the stated value and not an additive difference, e.g. about 10% means 10±1% and not 10±10%. As another example, “in a range of about 2 to 20 weight percent” would be interpreted as “in a range of 1.8 to 22 weight percent.” This interpretation is reasonable and well within the grasp of the ordinarily skilled and consistent the broadest reasonable interpretation in light of the specification as is required be the MPEP §2111.
As previously noted, the term “doped” and its variants – One skilled in the art would understand “doped with” would indicate intentionally introducing impurities into a chemical compound to change its electrical properties. Particularly, doping indicates a comparatively small number of dopant atoms added to a compound, e.g. 1:1e108 for light doping and 1:1e104 for heavy doping1. This is different from a chemical compound, which are composed of relatively similar numbers of elements. Even in the extreme looking at non-stoichiometric compounds one skilled in the art would expect a material of a compound to be at least 1% of a compound2. In the current case the independent claims (currently) have an EC layer of either tungsten oxide or niobium-tungsten oxide. The specification (and claims 16 & 19) makes it clear the amount of niobium (Nb) (about 2 to 20 weight percent) far exceeds one in the art would interpret as WOx doped with Nb. Given the specification (and claims) it is clear that when applicant refers to WOx being “doped” applicant means that a trinary molecule containing niobium, tungsten and oxygen, e.g. NbyW1-yOx. This interpretation is reasonable and well within the grasp of the ordinarily skilled and consistent the broadest reasonable interpretation in light of the specification as is required be the MPEP §2111.
Regarding the addition of “an electrical connection to provide electrical power to an electrochromic stack” to claim 18. The examiner notes that the specification has no clear reference to any electrical connections a new matter rejection is not being made. This is since (1) electrochromic stacks in electrochromic device implicitly (not inherently) use electrical connection to provide electrical power to operate, (2) paragraph [0031] notes “biasing conditions” for providing an “electrical field” or not, (3) paragraph [0048] notes an “operating voltage for an EC stack”, and paragraph [0098] notes that the “color is measured at different voltages.” This combination of factors that the high generalized addition of electrical connection to provide electrical power to the electrochromic stack, is sufficiently hinted at to not draw a new matter rejection.
Response to Arguments
Applicant’s arguments, see remarks, filed May 6, 2026, with respect to the claim warning have been fully considered and in combination with the amendments are persuasive. The claim warning has been withdrawn.
Applicant’s arguments that the 112 rejection for an improper Markush group have been fully considered. The examiner is largely unpersuaded. However in an effort to further prosecution the 112 rejection for an improper Markush group has been withdrawn and replaced with other 112 rejections, as set forth below.
Applicant's arguments filed May 6, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument: “Nowhere does Varaprasad describe structure such as a microstructure that is amorphous, crystalline, partially crystalline, polycrystalline or combinations thereof such that the structure itself, for example, a microstructure that is amorphous, crystalline, polycrystalline or combinations thereof is configured to at least partially cause the electrochromic stack to have a grey color in a dark state.” (emphasis in remarks); the examiner is unpersuaded. Regarding the color, the first sentence in the “Summary of the Invention” of Varaprasad (column 4 lines 50-56) states: “The present invention meets the needs expressed above concerning the desirability of a substantially non-spectral selective electrochromic mirror by providing such an electrochromic mirror that exhibits substantially non-spectral selectivity in the form of a substantially neutral or neutral gray appearance when dimmed to a colored state by the introduction of an applied potential.” That is to say the Varaprasad’s invention achieves the grey color in the dark state. Regarding the morphology, Varaprasad (column 8 lines 41-49) states: “electrochromic solid film may have a microstructure that is amorphous, crystalline, polycrystalline or combinations thereof ... desirable for the electrochromic solid film to possess a microstructure that is at least partially crystalline.” That is to say the electrochromic layer in Varaprasad’s discloses the claimed morphology and further indicates that partially crystalline (i.e. elected species) is desirable. As set forth below, Varaprasad anticipates all of the claimed features. Further, Varaprasad (column 13 lines 26-35) notes “Those of ordinary skill in the art may make appropriate choices among the various materials available as described herein for … electrochromic solid films … to prepare electrochromic mirrors and electrochromic devices capable of generating a substantially non-spectral selective gray color suitable for the desired application.” Varaprasad discloses the claimed material with the required morphology, which is chosen to generate a gray color in the dimmed state. Read as a whole, Varaprasad anticipates the invention of the independent claims. Varaprasad need not discuss (i.e. correlate) the underlying principles (a.k.a. natural phenomena) that causes the gray color.
Regarding applicant’s argument on page 8 that “Varaprasad ( or any other reference) describes either ‘wherein the MWOx material doped with the Nb dopant is configured to at least partially cause the electrochromic stack to have a grey color in a dark state;" or "wherein the reduced EC layer thickness and the increased CE layer thickness, selected such that, with 25 mC/cm2 of mobile Lithium, an average coloration efficiency of WOx in the EC layer is less than an average coloration efficiency of the CE layer, is configured to at least partially cause the electrochromic stack to have a grey color in a dark state,’” (emphasis in remarks); the examiner is unpersuaded. Applicant has withdrawn these species. Further, these are presented as alternatives to the elected species (found to be anticipated by Varaprasad).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 19, 2026 complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 15, 17-18 and 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 15 and 18 “a plurality of layers comprising one or more of:” “an electrochromic (EC) layer” and “a doped EC layer” and “an EC layer” has antecedent and clarity issues. It is unclear if there is a single EC layer or if there are three different EC layers claimed or three sublayers. Further, it is unclear if the “plurality of layers comprising one or more of” indicates/allows for multiple EC layers or if the plurality of layers indicates other layers (e.g. figure 1 transparent conductive layers 202 & 214; lithium layers 206, 210 & 213; an ion conducting layer 208 and/or a counter electrode layer 212). There is no mention of sublayers. In light of the specification, see figure 1 step 106 for forming EC layer 204, it is interpreted that the EC layer is a single layer and that the “plurality of layers” is directed to layers other than the EC layer (e.g. 202, 206, 208, 210, 212, 213 & 214). See below for language used for examination.
Claims 17 and 20 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claims 15 and 18, respectively, and therefore have the same deficiencies.
Regarding claims 15 and 18, the claim limitation “are respectively configured to at least partially cause the electrochromic stack to have respectively achieve a grey color for the electrochromic stack in a dark state … is configured to at least partially cause the electrochromic stack to have achieves a grey color for the electrochromic stack in a dark state … is configured to at least partially cause the electrochromic stack to have achieves a grey color for the electrochromic stack in a dark state” in claims 15 and 18 have been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) because while EC layers included the claimed materials clearly contribute to a darken state - it is unclear if an EC layer “configured” to partially cause a grey color is inherent to the claimed material(s) or if applicant is invoking some other “configuring” step that causes a grey color contribution or if the grey color contribution is inherent or if the grey color contribution is from the claimed material is implicit for EC devices with a grey dark state (interpretation assumed for examination). The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b)3. See below for language used for examination.
Claims 17 and 20 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claims 15 and 18, respectively, and therefore have the same deficiencies.
Regarding claims 17 and 18 the various species of EC layer(s) “achieves the grey color for the electrochromic stack in the dark state” raises clarity issues. It is unclear if replaces them being “configured to at least partially cause the electrochromic stack to have respectively achieve a grey color for the electrochromic stack in a dark state” or if it is an inadvertent editing oversight (assumed in light of the amendments). The examiner suggests and for purposes of examination omitting “achieves the grey color for the electrochromic stack in the dark state”.
Regarding claims 17 and 20 the three last paragraphs start with “when …(various EC species)… achieves the grey color for the electrochromic stack in the dark state” followed by requirement for additional structural elements of IC and CE layers raises clarity issues. It is unclear if when the various EC species is in a clear/high transmission state if the IC and CE layers are not required or present or if the device always has the IC and CE layers regardless of which state the EC layer is in (assumed). The examiner suggests removing “when”.
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.
Claims 15, 17-18 and 20 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 15, 17-18 and 20 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for a single EC layer “comprising one of:”, does not reasonably provide enablement for “comprising one or more of:”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Regarding claims 15 and 18 a single EC layer (e.g. figure 1 EC layer 204) “comprising one or more of:” amorphous WOx, or partially crystalized WOx and NbyW1-yOx is not enabled by the specification. As understood in the art morphology is in three mutually exclusive groupings: (1) amorphous, (2) crystalline or (3) partially crystallized; and the binary compound of WOx is distinct from the trinary compound of NbyW1-yOx, in at least one has niobium and the other does not (Wands factors B-D). The claim allows for all three elements in one EC layer (Wands factor A). There is nothing in the specification regarding sublayers of different materials and/or morphologies (Wands factors F-G). One could not simultaneously make a single layer with no sublayers of having both amorphous and partially crystalized morphology, since they are, by definition, mutually exclusive (Wands factors B-G). Similarly, one could not simultaneously make a single layer with no sublayers of having both WOx and NbyW1-yOx, since niobium is present in the mixture or it is not present in the mixture (Wands factors B-G). Considering all the evidence, as a whole, the examiner concludes that one of ordinary skill in the art would need to engage in undue experimentation to make or use the invention based on the content of the disclosure (Wands factor H), see MPEP 2164.01(a). However, the specification does enable a single EC layer with no sublayers to be one of amorphous WOx, or partially crystalized WOx and NbyW1-yOx. It is noted that the specification has language for mixing approaches (methods) of making, see figure 1 steps 106’, 106’’ and 106’’’, and paragraph [0025], however, if one were to mix these methods of making one would not end up with an EC layer with no sublayer that is simultaneously amorphous and partially crystalline and/or simultaneously containing niobium and not containing niobium. See below for language used for examination.
Claims 17 and 20 are rejected under 35 U.S.C. 112(a) as failing the scope of enablement set forth in the specification, since they depend on claims 15 and 18, respectively, and therefore have the same deficiencies.
Claims 15, 17-18 and 20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement4. The claims contain 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, at the time the application was filed, had possession of the claimed invention. Particularly, no of the examples had an EC layer with more than one of the features claimed, as set forth above. The examiner contends that applicant was not in possession of an EC layer with no sublayer that is simultaneously amorphous and partially crystalline and/or simultaneously containing niobium and not containing niobium. Applicant appears to be mixing embodiments without support in the specification, as originally filed, support for such a mixing is not expressly, implicitly, or inherently supported in the originally filed disclosure, nor has applicant has not pointed out where the amended claim is supported, see MPEP 2163. It has been held that “it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation” Hyatt v. Boone, 146 F.3d 1348, 1353, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998) and "examiner was explicit that while each element may be individually described in the specification, the deficiency was lack of adequate description of their combination" Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007).
In light that the current claims are device claims (not method of making), in conjunction with applicant’s election of Species A2, B1 and C2, to obviate the rejections above the examiner suggests and for purposes of examination will use:
Claims 1-14. Cancelled.
Claim 15. An electrochromic stack, comprising:
a plurality of layers comprising
an electrochromic (EC) layer overlying a substrate, the EC layer having x microstructure, wherein the EC layer at least partially causes the electrochromic stack to have a grey color in a dark state
Claim 16. Withdrawn.
Claim 17. The electrochromic stack of claim 15, wherein:
an ion-conducting (IC) layer, and a counter-electrode (CE) layer, wherein the IC layer overlies the EC layer, and wherein the CE layer overlies the IC layer
Claim 18. An electrochromic device, comprising:
an electrical connection to provide electrical power to an electrochromic stack; and
the electrochromic stack, the electrochromic stack comprising:
a substrate; and
an electrochromic (EC) layer overlying a substrate, the EC layer having x microstructure, wherein the EC layer at least partially causes the electrochromic stack to have a grey color in a dark state
Claim 19. Withdrawn.
Claim 20. The electrochromic device of 18, wherein:
an ion-conducting (IC) layer, and
a counter-electrode (CE) layer, wherein the IC layer overlies the EC layer, and wherein the CE layer overlies the IC layer
Applicant could also add new claims depending from 18 and 20 regarding EC and CE layer thicknesses and the like. However, any changes to the claim language would now be after final, with prosecution closed, and would requiring further searching and consideration.
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 15 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Varaprasad et al. US Patent 5,668,663, of record.
Regarding claim 15 Varaprasad discloses an electrochromic stack (e.g. figures 3b-7 electrochromic element 1 include electrochromic stacks), comprising: a plurality of layers (see figures 3b-7) comprising: an electrochromic (EC) layer (e.g. electrochromic solid film 7) overlying a substrate (e.g. substrate 2 or 3), the EC layer having a partially crystallized in amorphous matrix WOx microstructure (inter alia column 2 lines 49-53 “thin film layer of a solid electrochromic material, such as a tungsten oxide-type solid film” & column 8 lines 41-55 “electrochromic solid film may have a microstructure that is amorphous, crystalline, polycrystalline or combinations thereof ... desirable for the electrochromic solid film to possess a microstructure that is at least partially crystalline”), wherein the EC layer at least partially causes the electrochromic stack to have a grey color in a dark state (inter alia column 4 lines 50-59 disclose the invention has “neutral gray appearance when dimmed to a colored state” also see inter alia column 5 lines 40-58 “invention exhibit a substantially gray appearance when dimmed to a colored state” and column 13 lines 26-35 “[t]hose of ordinary skill in the art may make appropriate choices among the various materials available as described herein for … electrochromic solid films … to prepare electrochromic mirrors and electrochromic devices capable of generating a substantially non-spectral selective gray color suitable for the desired application.”).
Regarding claim 18 Varaprasad further disclose an electrochromic device (title e.g. figures 3b-7 electrochromic element 1), comprising: an electrical connection (e.g. electrical leads 10) to provide electrical power (inter alia column 21 lines 27-30 “applied potential may be introduced … by the electrical leads 10”) to the electrochromic stack of claim 15 (as set forth above).
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 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Varaprasad et al. US Patent 5,668,663, of record, in view of Agrawal et al. US Patent Application Publication 2004/0233537, of record.
Regarding claim 17 Varaprasad discloses the electrochromic stack of claim 15, as set forth above. Varaprasad further discloses it is further comprising: an ion-conducting (IC) layer (e.g. electrolyte 6).
Varaprasad does not disclose a counter-electrode (CE) layer wherein the IC layer is between the EC layer and the CE layer.
Agrawal teaches a similar device of multiple layer (title e.g. figures 2 & 4) including a substrate (e.g. substrates 20 & 40) an EC layer (e.g. electrochromic layers 23 & 43) and an IC layer (e.g. electrolyte layers 22 & 42) with a preferred dark state color of gray (paragraph [0137]), and further teaches (figure 4) a counter-electrode (CE) layer (e.g. counterelectrode layer 43) wherein the IC layer (e.g. 42) is between (see figure 4) the EC layer (e.g. 45) and the CE layer (e.g. 43) for the purpose of reversible storing ions (paragraph [0016]). 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 Varaprasad to have a counter-electrode (CE) layer wherein the IC layer is between the EC layer and the CE layer as taught by Agrawal for the purpose of reversible storing ions.
Regarding claim 20, the limitations of claim 20 are the same as the limitations of claim 17 and claim 20 is rejected for the same reasons.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cogan et al. US Patent 4,938,571, of record; in regards to a similar device (e.g. figures 1-2 devices 10 & 30 include electrochromic stacks), including an electrochromic (EC) layer (e.g. primary electrochromic layer 18) of WOx (column 4 lines 52-68 “preferred material is WO3”) overlying a substrate (e.g. transparent substrate 14’), a counter-electrode (CE) layer (e.g. counter electrode layer 16) an ion-conducting (IC) layer (e.g. electrolyte layer 20) between the EC and CE layer (see figures 1-2) and notes the morphology of the EC layer is varied (column 2 lines 55-65 notes color change due to “degree of crystallinity”), and the electrochromic stack capable of a grey color in a dark state (column 6 line 67-column 7 line 14 “variable grey scale filter”). Cogan teaches that the degree of crystallinity is varied to achieve different dark state colors. Therefore one skilled in the art confront with applicant’s issue of achieving a grey (neutral) color in the dark state would be motivated to adjust the “degree of crystallinity” to achieve a grey color.
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.
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/George G. King/Primary Examiner, Art Unit 2872 June 15, 2026
1 As evidenced by Wikipedia webpage “Doping (semiconductors)” as of 2008, of record.
2 As evidenced by Wikipedia webpage “Non-stoichiometric compound” as of 2008, of record.
3 In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
4 As a point of clarity the written description requirement is separate and distinct from the enablement requirement. Ariad Pharm., Inc. v. Eli Lilly and Co., Fed. Cir. 2010, see MPEP 2161.
Prosecution Insights