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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-11 in the reply filed on 1/22/2026 is acknowledged. The traversal is on the ground(s) that there is no undue burden to search all claims. This is not found persuasive because the different groups have found separate status in the art, and there is nothing of record to show them as obvious variants.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/22/2026.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Bauman et al. (WO-2017087019).
Regarding claims 1-4
Bauman discloses an electrochromic device (abstract), that has first and second substantially transparent substrate with a cell distance of 250 microns (i.e., in opposed spaced opposition),that have electrically conductive materials coated on the first and second substrate (i.e., first and second transparent electrode layers) and a sealing member adhesively bonded to the first and second substrate to seal a chamber and that an electrochromic composition (i.e., electrochromic layer) is within the chamber (i.e., interposed between first and second electrically conductive layers) (paras 0064-0065).
Bauman discloses (i) a cathodic material in the electrochromic composition maybe compound 7 (i.e., a cation of N,N’-bis (1-sulfobutane)-4,4’-bipyridyl) (para 0076). This reads directly on instant Formula (I) when R1 and R2 read on Formula (III), and R6 is propyl.
Bauman discloses (ii) an anodic material in the electrochromic composition comprising N-(4-sulfatobutane)-phenothiazene (para 0032). This reads directly on instant Formula (V), where R9 is a butyl group (i.e., C4 alkane linking group).
Bauman discloses (iv) a cross-linked polymer matrix in the electrochromic medium (para 0054).
Although Bauman does not explicitly disclose the use of compound 7 with the N-(4-sulfatobutane)-phenothiazene, Bauman discloses that one may be used as the cathodic material and the other as the anodic material, making it obvious if not anticipated to use them in combination together as the required anodic and cathodic materials.
Regarding claim 5
Bauman discloses that the net charge of the ion-paired electrochromic material (i.e., anodic and cathodic materials) is zero (para 0004).
Regarding claims 6-7
Bauman discloses that the cathodic material may have a tetraalkyl ammonium counterion such as (CH3CH2)4N+ (para 0021).
Regarding claim 8
Bauman discloses that the cathodic material may have a counterion such as BF4-, PF6-, ClO4-, (CF3SO2)2N- or (CF3SO2)3C- (para 0030).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Bauman et al. (WO-2017087019), as applied to claims 1-8 above, in view of Ahmad et al. (DE-1020090224207-A1).
Regarding claim 9
Although Bauman does not disclose the claimed electrolyte, Bauman does disclose an electrolyte in the electrochromic medium (para 0051). However, Ahmad discloses that in electrochromic devices that as the electrolyte an ionic liquid can be used such as 1-ethyl-3-methylimidazolium bis(trifluormethylenesulfonyl)imide (EMITFS) (Example 1: Preparation of ionic liquid). Therefore, it would have been prima facie obvious at the time of the invention to add to the teachings of Bauman by using EMITFS with these anions and cations as the electrolyte, with a reasonable expectation of forming a useful electrochromic device as suggested by Ahmad.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Bauman et al. (WO-2017087019), as applied to claims 1-8 above, in view of Choi et al. (US 20210313569).
Regarding claims 10-11
Although Bauman does not teach the claimed polymeric matrix, Bauman does disclose the sue of a polymeric matrix. However, Choi discloses that in similar electrochromic devices that as the polymer matrix that poly(diallyldimethylammonium)-bis(trifluormethanesulfonyl)imide may be used (para 0127). Therefore, it would have been prima facie obvious at the time of the invention to add to the teachings of Bauman by using poly(diallyldimethylammonium)-bis(trifluormethanesulfonyl)imide as the polymer matrix, with a reasonable expectation of forming a useful electrochromic device as suggested by Choi.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-15 of co-pending Application No. 18/133,000 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘000 applications discloses each and every limitations of the instant claims, except for the Markush groups, but does teach explicit examples therefrom.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-13 of co-pending Application No. 18/133,045 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘045 applications discloses each and every limitations of the instant claims, except for the Markush groups, but does teach explicit examples therefrom. Further, any additional ingredients in the ‘045 applications are not excluded by the comprising language of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-9 of co-pending Application No. 18/134,057 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘057 applications discloses each and every limitations of the instant claims, except for the Markush groups, but does teach explicit examples therefrom. Further, any additional ingredients in the ‘057 applications are not excluded by the comprising language of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734