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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 27, 2026 has been entered.
Examiner’s Comments
The reply filed on December 29, 2025 is not fully responsive to the prior Office action, similar to the reply of September 10, 2025, because of the following formal matters. Claims 16 and 19 are incorrectly marked as required by 37 CFR 1.121(c)(2), see MPEP 714. Particularly, claims 16 and 19 are marked as “Original”, however, claims 16 and 19 were withdrawn from consideration by the election (with traverse) made on May 28, 2025, see Office correspondence of June 10, 2025. The claims should be marked “Withdrawn”. 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 he will proceed as if the Response is fully responsive.
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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 4, 2025 complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant’s arguments, see remarks, filed December 29, 202, 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 filed December 29, 2025 have been fully considered but they are not persuasive.
Regarding applicant’s argument: “Nowhere does Varaprasad correlate a microstructure that is amorphous, crystalline, partially crystalline, polycrystalline or combinations thereof with a grey color in a dark state such that the microstructure that is amorphous, crystalline, polycrystalline or combinations thereof achieves the grey color in the 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. Varaprasad need not discuss (i.e. correlate) the underlying principles that causes the gray color.
Regarding applicant’s arguments that Varaprasad and/or Agrawal do not disclose niobium-tungsten-oxide or a combination of EC and CE layers with particular thicknesses, each having a grey colored dark state, the examiner is unpersuaded. These are withdrawn species that were presented in the alternative to the elected species. Since the elected species has been anticipated and/or found obvious as set forth below this argument is moot.
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.
Claims 15, 17-18 and 20 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of (1) different morphologies (2) different compositions and (3) different layers in specific thickness ranges is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the three groupings noted above are variations on different and distinct aspects that utilize distinct mechanisms (i.e. do not share both a single structural similarity) to achieve a gray dark state.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use. See below for an interpretation used for examination.
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”.
To overcome the clarity issues outlined 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 an amorphous WOx microstructure or a partially crystallized in amorphous matrix WOx microstructure, wherein the amorphous WOx microstructure and the partially crystallized in amorphous matrix WOx respectively achieve a grey color for the electrochromic stack in a dark state
Claim 16. Withdrawn.
Claim 17. The electrochromic stack of claim 15, wherein:
[[when]] the amorphous WOx microstructure or the partially crystallized in amorphous matrix WOx achieves the grey color for the electrochromic stack in the dark state, the electrochromic stack further comprises:
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 electrochromic stack, the electrochromic stack comprising:
a substrate; and
one or more of:
an electrochromic (EC) layer overlying the substrate, the EC layer having an amorphous WOx microstructure or a partially crystallized in amorphous matrix WOx microstructure, wherein the amorphous WOx microstructure and the partially crystallized in amorphous matrix WOx respectively [[to]] achieves a grey color for the electrochromic stack in a dark state
Claim 19. Withdrawn.
Claim 20. The electrochromic device of 18, wherein:
[[when]] the amorphous WOx microstructure or the partially crystallized in amorphous matrix WOx achieves the grey color for the electrochromic stack in the dark state, the electrochromic stack further comprises:
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 Warning
Applicant is advised that should claims 15 and 17 be found allowable, claims 18 and 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 amorphous WOx microstructure and the partially crystallized in amorphous matrix WOx respectively achieve 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”).
Regarding claim 18 Varaprasad further disclose an electrochromic device (title e.g. figures 3b-7 electrochromic element 1), comprising: 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 including various morphologies that achieves a gray color in a darkened state, 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571) 272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George G. King/Primary Examiner, Art Unit 2872 February 4, 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.