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 filed October 30, 2025, have been considered, but are not persuasive.
Applicant argues on page 7 of the Reply with respect to Claim 1 that Fong (US 2010/0098886) does not specifically disclose or suggest that the outermost layer closest to the electrochromic medium should be a nonpolar polymer layer as claimed; but that at best, Fong discloses a list including nonpolar polymer materials, but Fong does not state any order in which layers of such materials may be assembled. This is not persuasive. Specifically, Fong teaches suitable materials for a multilayer polymer film, including nonpolar polymer layers, and selecting from a finite number of identified, predictable solutions with a reasonable expectation of success would have been obvious (e.g., MPEP § 2143 (I)); and also rearranging the layers taught by Fong within the multilayer film would have been obvious as a matter of design choice, yielding predictable results, absent evidence of criticality or otherwise unobvious results from the claim features (e.g., MPEP § 2144.04(VI)).
Applicant argues on page 8 of the Reply with respect to Claim 3 that it would not have been obvious to replace the inorganic layers of DeNolf (US 2020/0310211) with the polar polymer layers of Fong because Fong does not provide a suggesting to do so. This is not persuasive. Fong teaches nonpolar polymer layers, such as polyethylene or polypropylene, may be used as suitable materials for water resistant layers (paragraphs [0060]-[0061] of Fong, such as the oxygen and water barriers of the multilayer structure of DeNolf). According to MPEP § 2144.07, “[t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination,” such that in this case, it would have been obvious to select the nonpolar polymer materials of Fong to achieve the desired results of DeNolf as a suitable configuration for such.
Applicant argues on pages 8–9 of the Reply with respect to Claim 16 that Fong does not disclose forming the multilayer film by separately extruding polymer layers that are subsequently laminated together, but instead teaches that only the molten polymer of Fong is extruded, not the substrate, such that the polymer layers of the substrates are not extruded, and thus are not extruded separately. This is not persuasive. Claim 16 recites an electrochromic device, where the multilayer polymer film comprises a plurality of separately extruded polymer layers that are subsequently laminated together to form the multilayer polymer film. As noted by Applicant, Fong teaches that the molten polymer is extruded, and that the resulting extrudate is laminated with the substrates. This appears to satisfy the claim limitations, as the claims do not require that all of the layers of the multilayer polymer film are separately extruded polymer layers, but the claim only requires that a plurality are separately extruded, which Fong appears to teach. Further, this limitation appears to be a product by process limitation, and where the combination of DeNolf and Fong appears to render obvious the resultant structure, a prima facie case of obviousness is established, with opportunity for Applicant to rebut with a sufficient showing that the resulting product differs from that of DeNolf and Fong because of the process by which the product was made (e.g., MPEP § 2113).
Applicant argues on page 9 of the Reply with respect to Claim 22, that DeNolf and Fong are deficient with respect to the extrusion steps, similar to the arguments made with respect to Claim 16. This is not persuasive for similar reasons as noted above with respect to Claim 16. Specifically, Fong teaches that the molten polymer is extruded, and that the resulting extrudate is laminated with the substrates. This appears to satisfy the claim limitations, as the claims do not require that all of the layers of the multilayer polymer film are separately extruded polymer layers, but the claim only requires that a plurality are separately extruded, which Fong appears to teach.
Accordingly, the previous rejections are maintained, modified in view of the amendments to the Claims, as set forth below.
Applicant’s arguments filed March 16, 2016, have been considered. The §112 rejection is withdrawn.
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 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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1–4, 6–12, 16–18, and 22–24 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2020/0310211 to DeNolf et al. in view of U.S. Patent Application Publication No. 2010/0098886 to Fong et al.
Regarding Claim 1, DeNolf discloses (e.g., Fig. 1 and its corresponding description, including paragraphs [0028]–[0038]) an electrochromic device comprising: a first substrate 20 having a first surface and a second surface opposite the first surface, the first substrate comprising a multilayer polymer film 26 (paragraph [0034], “the first and/or second barrier layers 26, 38 can include a polymer multi-layer film. . . Polymer multi-layer (PML) films typically consist of alternating layers of cross-linked polymer and inorganic layers to form optically clear, flexible, oxygen and water barriers which provide resistance to the permeation of oxygen and water into the chamber 50”); a first electrode 28; a second substrate 32 having a third surface and a fourth surface opposite the third surface, the second substrate spaced from the first substrate with the second and third surfaces facing but spaced from one another (Fig. 1); a second electrode 40; and an electrochromic medium 30/42 (paragraphs [0028]–[0031], and [0039]–[0049]) positioned between the first and second electrodes, wherein the first electrode is positioned between the second surface and the electrochromic medium and the second electrode is positioned between the third surface and the electrochromic medium (Fig. 1).
DeNolf does not explicitly disclose wherein the multilayer polymer film comprises a nonpolar polymer layer as an outermost layer closest to the electrochromic medium.
Fong discloses that layers having special properties such as resistance to penetration by moisture (similar to the multilayer polymer barrier film 26 of DeNolf) may be formed using polyethylene or polypropylene (e.g., paragraphs [0060]–[0061], where these form nonpolar polymer layers).
It would have been obvious to one of ordinary skill in the art at the time of effective filing to modify the device of DeNolf such that the multilayer polymer film comprises a nonpolar polymer layer as an outermost layer closest to the electrochromic medium, as suggested by Fong, where Fong teaches a suitable configuration for a barrier layer of a multilayer barrier structure (e.g., MPEP §§ 2144.06–07), and rearranging the layers taught by Fong within the multilayer film would have been obvious as a matter of design choice, yielding predictable results, absent evidence of criticality or otherwise unobvious results from the claim features (e.g., MPEP § 2144.04(VI)).
Regarding Claim 2, the combination of DeNolf and Fong would have rendered obvious wherein the multilayer polymer film further comprises a polar polymer layer (paragraphs [0087]–[0092] of Fong, e.g., an EVOH barrier layer).
Regarding Claim 3, the combination of DeNolf and Fong would have rendered obvious wherein the multilayer polymer film further comprises a plurality of alternating polar and nonpolar polymer layers (e.g., where DeNolf teaches alternating layers, paragraph [0034], and Fong teaches polar and nonpolar polymer layers, paragraphs [0061], [0090]).
Regarding Claim 4, the combination of DeNolf and Fong would have rendered obvious wherein the multilayer polymer film further comprises a plurality of tie layers, wherein one of the tie layers is provided between pairs of the plurality of alternating polar and nonpolar polymer layers (e.g., paragraph [0083] of Fong, adhesive tie layer).
Regarding Claim 6, the combination of DeNolf and Fong would have rendered obvious wherein the polymer layers are separately formed by extrusion and then laminated together (e.g., paragraph [0052] of Fong).
Regarding Claim 7, the combination of DeNolf and Fong would have rendered obvious wherein the nonpolar polymer layer comprises a polymer selected from the group consisting of: polypropylene and polyethylene (paragraph [0061] of Fong).
Regarding Claim 8, the combination of DeNolf and Fong would have rendered obvious wherein the optical thicknesses of the plurality of alternating polar and nonpolar polymer layers are selected to provide anti-reflective properties (e.g., paragraphs [0031] and [0034] of DeNolf).
Regarding Claim 9, the combination of DeNolf and Fong would have rendered obvious wherein the optical thicknesses of the plurality of alternating polar and nonpolar polymer layers are selected to provide reflective properties with respect to a band of radiation (e.g., paragraphs [0031] and [0034] of DeNolf).
Regarding Claim 10, the combination of DeNolf and Fong would have rendered obvious wherein the second substrate comprises a polymer (paragraphs [0029], [0033], and [0034] of DeNolf).
Regarding Claim 11, the combination of DeNolf and Fong would have rendered obvious wherein the second substrate comprises a second multilayer polymer film (barrier 38, paragraphs [0029], [0033], and [0034] of DeNolf).
Regarding Claim 12, the combination of DeNolf and Fong would have rendered obvious a vehicle sunroof comprising the electrochromic device of claim 1 (e.g., paragraph [0081] of DeNolf, usable with vehicle windows and sunroofs).
Regarding Claim 16, DeNolf discloses (e.g., Fig. 1 and its corresponding description, including paragraphs [0028]–[0038]) an electrochromic device comprising: a first substrate 20 having a first surface and a second surface opposite the first surface, the first substrate comprising a multilayer polymer film 26 (paragraph [0034], “the first and/or second barrier layers 26, 38 can include a polymer multi-layer film. . . Polymer multi-layer (PML) films typically consist of alternating layers of cross-linked polymer and inorganic layers to form optically clear, flexible, oxygen and water barriers which provide resistance to the permeation of oxygen and water into the chamber 50”); a first electrode 28; a second substrate 32 having a third surface and a fourth surface opposite the third surface, the second substrate spaced from the first substrate with the second and third surfaces facing but spaced from one another (Fig. 1); a second electrode 40; and an electrochromic medium 30/42 (paragraphs [0028]–[0031], and [0039]–[0049]) positioned between the first and second electrodes, wherein the first electrode is positioned between the second surface and the electrochromic medium and the second electrode is positioned between the third surface and the electrochromic medium (Fig. 1).
DeNolf does not explicitly disclose wherein the multilayer polymer film comprises a plurality of separately extruded polymer layers that are subsequently laminated together to form the multilayer polymer film.
Fong discloses that layers having special properties such as resistance to penetration by moisture (similar to the multilayer polymer barrier film 26 of DeNolf) may be formed as a plurality of separately extruded polymer layers that are subsequently laminated together to form the multilayer polymer film (e.g., e.g., paragraph [0052] of Fong).
It would have been obvious to one of ordinary skill in the art at the time of effective filing to modify the device of DeNolf such that the multilayer polymer film comprises a plurality of separately extruded polymer layers that are subsequently laminated together to form the multilayer polymer film, as suggested by Fong, where Fong teaches a suitable configuration for a barrier layer of a multilayer barrier structure and method of manufacturing the same (e.g., MPEP §§ 2144.06–07).
Regarding Claim 17, the combination of DeNolf and Fong would have rendered obvious wherein the multilayer polymer film comprises a nonpolar polymer layer as an outermost layer adjacent the first electrode (e.g., paragraphs [0060]–[0061] of Fong).
Regarding Claim 18, the combination of DeNolf and Fong would have rendered obvious wherein the multilayer polymer film comprises a polar polymer layer (paragraphs [0087]–[0092] of Fong, e.g., an EVOH barrier layer).
Regarding Claim 22, Claim 22 recites a method of making the electrochromic device similar to the one recited in Claim 1 or Claim 16, including generic steps for separately extruding layers and then laminating those layers together, similar to Claim 6 or Claim 16, and would have been obvious in view of DeNolf and Fong as outlined above with respect to those claims.
Regarding Claim 23, the combination of DeNolf and Fong would have rendered obvious wherein the first polymer layer is formed of a nonpolar polymer (e.g., paragraphs [0060]–[0061] of Fong) and is disposed as an outermost layer adjacent the first electrode (rearranging the layers taught by Fong within the multilayer film would have been obvious as a matter of design choice, yielding predictable results, absent evidence of criticality or otherwise unobvious results from the claim features (e.g., MPEP § 2144.04(VI))).
Regarding Claim 24, the combination of DeNolf and Fong would have rendered obvious wherein the second polymer layer is formed of a polar polymer (paragraphs [0087]–[0092] of Fong, e.g., an EVOH barrier layer).
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 RYAN CROCKETT whose telephone number is (571)270-3183. The examiner can normally be reached M-F 8am to 5pm.
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, Michael Caley can be reached at 571-272-2286. 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.
/RYAN CROCKETT/ Primary Examiner, Art Unit 2871