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 .
Claim Rejections - 35 USC § 112
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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. Claim 1 was amended to remove the following diamine structure, however claim 4 requires TFMB which is the following structure where R45 and R46 are both independently -CF3. Therefore claim 4’s alternative TFMB does not further limit claim 1.
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Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kourtakis et al. US 2020/0123336A1 in view of Kloeppner et al US 2017/0357136 A1.
Kourtakis teaches a low haze polymer film which includes a polyimide and nanoparticles which is suitable for electronic device applications such as an electrochromic device (abstract and para [0072]).
Reference Kloeponer teaches electrochromic device (abstract).
The required composition is converted from parts by weight to weight percentage as shown below, where the polyimide and silica nanoparticles are maintained to be 100 parts in all combinations.
Component
Lowest parts
Highest parts
Lowest wt% possible
Highest wt% possible
Polyimide
20
80
20/(100+50+1200)=1.5 wt%
80/(100+1+850)=8.4 wt%
SiO2 nanoparticle
20
80
20/(100+50+1200)=1.5 wt%
80/(100 +1+850)=8.4 wt%
Electrochromic material
1
50
1/ (1+100+1200)=0.08 wt%
50/(50+100+850)= 5 wt%
Organic substance
850
1200
850/(850+100+50)=85 wt%
1200/(1200+100+1)=92.2 wt%
Regarding claims 1-7 and 9-10, Kourtakis teaches a low haze polymer film which can be (reference claims 1 and 2) a polyimide derived from dianhydride which can be selected to be pyromellitic dianhydride (PMDA) and a suitable diamine which can be selected to be 4,4'-diaminodiphenyl ether (ODA) (para [0036]) (instant claims 3 and 4), and which correspond to the claimed dianhydride and diamine structures as shown below:
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Where R1 and R2 are hydrogen,
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Where R31 and R32 are hydrogen
Kourtakis discloses inclusion of 5 to 50 volume percent of a nanoparticle aggregate in the form of a blend, in the polymer film, where mixture of two nanoparticles such as TiO2 and SiO2 can be present at 25 vol% and 75 vol% (paras [0070] and [0050]). Kourtakis notes that nanoparticles can be spherical with particle size of less than 100nm (para [0043]). Kourtaskis provides an example (para [0046]) of colloidal SiO2 nanoparticles DMAC-ST from Nissan with particle diameter of 16 nm, which meets applicant’s spherical silicon oxide nanoparticle (instant claims 5-6).
Kourtakis further teaches (para [0054]) that the polyamic acid solution (which is used for solvent casting of the final polyimide) is dissolved in an organic solvent at a concentration from about 5 to 15 wt%, which overlaps applicant’s solid content (instant claim 2), and implies that the solvent is present in the range of 95 to 85 wt%. Kourtakis teaches (para [0034]) that gamma-butyrolactone as a suitable organic solvent (instant claim 10). The organic solvent corresponds to the required organic substance and overlaps the required weight percent range as calculated above.
Kourtakis notes that various modifications and changes can be made by one of ordinary skilled in the art (para [0091]). An obvious composition of Kourtakis generated by the teaching of Kourtakis would be where 50g of polyimide is mixed with 37.5 vol % of SiO2 nanoparticles with respect to the polyimide (which is obtained from 50 vol% nanoparticle blend composed of 25 vol% TiO2 and 75 vol% SiO2, resulting in 37.5 vol% SiO2), present in a 900 g solvent gamma-buytrolactone. When colloidal silica density of 2.1g/cm3 is utilized to calculate the weight %, 37.5 vol% would result in (37.5 x 2.1)= 78.75 wt% of SiO2 nanoparticle with respect to the polyimide. 78.75wt% SiO2 particles with respect to 50g of polyimide would lead to 39.4g of SiO2, present in a 900g of gamma-butyrolactone solvent. The resultant overall composition would be composed of 5 wt% of polyimide, 4 wt% of silica nanoparticles, and 91 wt% of butyrolactone, and meets the claimed range of the polyimide, silica nanoparticles and the organic substance.
Kourtakis highlights the use of the polyimide film for an electrochromic device (para [0072]), but fails to mention incorporation of an electrochromic material to the polyimide film to generate such a device. One of ordinary skill in the art would take guidance from related disclosures to ascertain what might be used in that capacity. One such disclosure is Kloeppner which teaches an electrochromic device (title and abstract). Kloeppner discloses the sequestration of cathodic or anodic materials within a polymer matrix which can be a polyimide (para [0092]), which can be present at a concentration of 2mM to 100mM with respect to the electrochromic medium which includes the solvent (paras [0055]-[0056]). Kloeppner notes phenothiazine (reference claim 15) as one of the anodic materials, which corresponds to the required structure (instant claim 9), with R49 as hydrogen (shown below).
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Advantageously, Kloeppner provides the motivation to utilize the anodic material (material that is oxidizable) so as to change the absorption of the electrochromic medium and thereby result in a change in transmission upon application of the potential (para [0022]).
An obvious composition of Kourtakis in view of Kloeppner would be where 10mM of the phenothiazine (with MW of 199.3 g/mole) is incorporated in 900g of gamma butyralactone solvent which has a density of 1.13g/ml. 10 mM = 10 x 10-3 mole/1000 ml, which results in phenothiazine concentration of 10 x 10-6 mole/ml x 199.3 g/mole, which would be present in 900 /1.13 =796.5 ml of gamma butyrolactone solvent, which results in (10 x 10-6 x 199.3 x 796.5 ) approximately =1.6g of phenothiazine.
The weight percent of 1.6g of phenothiazine present in the overall composition with 50g of polyimide, 39.4g of silica nanoparticle and 900g of gamma-butyrlactone solvent = (1.6/ (1.6+50+39.4 +900)) x 100 = 0.16 wt%, which meets the claimed requirement of electrochromic anodic material.
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Kourtakis polyimide composition with the anodic material as taught by Kloeppner for the same application of creating an electrochromic device to achieve the desired absorption (and transmission) characteristics.
Regarding claim 8, Kloeppner teaches cathodic electrochromic material such as methyl viologen, where the anion can be BF4-, which corresponds to applicant’s structure with R47 as C1 alkyl, thus making the claimed requirement obvious (Kloeppner, para [0052]).
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Regarding claims 11-12, Kourtakis does not address the presence of an electrolyte in the electrochromic composition, however Kloeppner teaches incorporation of an electrolyte which include lithium salt to facilitate charge movement between electrodes, thus rendering the claimed requirement obvious (Kloeppner para [0021] and para [0095]).
Regarding claim 13, Kourtakis and Kloeppner do not provide an explicit range of the electrolyte salt concentration, however Kloeppner indicates inclusion of 1.6 g of tetramethylammonium tetrafluoroborate (MW 161 g/mol) in 88 g of propylene carbonate, which results in concentration of 0.1 M (density of 1g/ml of propylene carbonate is utilized for the molarity calculation). Obvious composition of Kourtakis in view of Kloeppner would be where the electrochromic composition as discussed when addressing claim 1, also incorporates similar level of electrolyte salt.
Regarding claim 14, Kourtakis in view of Kloeppner do not address the viscosity range of the electrochromic compositions in their general disclosure. Since the compositions derived from combination of Kourtakis and Kloeppner are being utilized for similar end products, such as an electrochromic device, it would be obvious to optimize the polyimide compositions such that they exhibit similar viscosity levels so that they can be readily processed either for coating or film preparation.
Response to Arguments
Applicant's arguments filed on 02/11/2026 have been fully considered, please see the response below.
For claims 1-14 rejected under 35 U.S.C. § 103 as being unpatentable over Kourtakis et al. '336 (US 2020/0123336) in view of Kloeppner et al. '136 (US 2017/0357136), the applicant argues (first para, page 11 remarks) that the examiner bears the initial burden of presenting a prima facie case of obviousness and that some articulated reasoning to support obviousness must be presented.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, as discussed in the rejection above, the primary reference Kourtakis teaches polyimide which are suitable for an electrochromic device and the secondary reference Kloeppner teaches an electrochromic device and discloses the inclusion of an electrochromic material. Kloeppner provides the appropriate motivation to include an electrochromic material to manage the absorption (and transmission) characteristics of the electrochromic device. Thus, applicant’s argument on the absence of articulated reasoning for the reference combination is not convincing.
Applicant adds that (remarks, page 17) that Kourtakis (and Kloeppner) fail to disclose or suggest that the electrochromic composition comprises a polyimide wherein the diamine is selected from the group of structures as presented in the amended claim 1. As indicated in the rejection above, applicant’s argument is not compelling since Kourtaskis teaches 4,4'-diaminodiphenyl ether (ODA) (para [0036]) as a suitable diamine for the creation of a low haze polyimide film, which meets the required diamine.
Applicant’s arguments against the reference combination of Kourtakis and Kloeppner are not persuasive, and the references continue to provide the support for maintaining the rejection of the amended claims 1-14.
Conclusion
THIS ACTION IS MADE FINAL. 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 Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
/S.M.D./
Examiner
Art Unit 1765