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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Korea on March 30, 2022. It is noted, however, that applicant has not filed a certified copy of the KR 10-2022-0039422 application as required by 37 CFR 1.55.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Response to Amendment
The amendment filed on September 29, 2025 has been entered. Claims 1-3 and 6-7 have been canceled in the present application. Claims 4 and 11 have been amended in the present application. Claims 4-5 and 8-13 are pending in the present application. Applicant’s amendments to the specification has overcome each and every objection previously set forth in the Non-Final Office Action mailed July 8, 2025.
Response to Arguments
Applicant’s arguments with respect to claim 4 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 (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 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.
Claims 4-5, 8-10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Sharma et al. (U.S. Patent No. 11,073,697 – hereinafter referred to as “Sharma”) in view of Jeon et al. (U.S. Patent Application Publication No. 2021/0389585 – hereinafter referred to as “Jeon”).
Regarding claim 4, Sharma teaches a transparency-adjusting apparatus (Figure 1) comprising: a transparency-adjustable film (Figure 1A electroactive element 100) including a polymer (Column 5 line 52 electroactive element is a polymer material) and an array of pores (Figure 1A nanovoids 110) that are three-dimensionally ordered and connected to each other (Column 14 lines 40-56 nanovoids are distributed throughout the polymer and at least in part interconnected); and
a compressive-strain adjusting part (Figures 1A and 1B electrodes 109,111 and circuit 121) that adjusts a compressive strain of the transparency-adjustable film in a thickness direction (Figures 1A and 1B, Column 5 line 54 - column 6 line 4 electrodes compress electroactive element 100 in vertical direction) of the transparency-adjustable film (electroactive element 100),
wherein the pores have a shape extending in a direction (Column 6 lines 31-36 nanovoids may be ellipsoid shaped and thus extend in a direction)
wherein a transparency of the transparency-adjustable film increases when the transparency-adjustable film is compressed (Figure 1D, Column 7 line 62 – column 8 line 3 light is transmitted when compressed), and the transparency of the transparency-adjustable film decreases when the transparency-adjustable film is recovered (Figure 1C, Column 7 lines 44-61 light scatters in an uncompressed state).
Sharma fails to teach a tilting angle of the pores, which is defined by an angle between the extending direction of the pores and thickness direction, is 10° to 45°. However, Jeon teaches a light-scattering film with voids (Figure 8) where a tilting angle of the pores, which is defined by an angle between the extending direction of the pores and thickness direction ([0011] cross-section orientated in an inclined direction to a vertical direction), is 10° to 45° (Figure 8 [0088] orientation angle θ to horizontal direction is 50° to 80° thus angle with vertical (thickness) direction is 10° to 40°). Jeon further teaches inclining scattering units increases scattering area which increases the scattering effect and contrast of the film and reduce the force required to adjust the transparency ([0100]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the transparency-adjustable film taught by Sharma by tilting the pores as taught by Jeon in order to increase the scattering area which increases the scattering effect and contrast of the film and reduces the force required to adjust the transparency (Jeon [0100]).
Regarding claim 5, Sharma and Jeon teach all the limitations of the claimed invention with respect to claim 4. Sharma further teaches the transparency-adjustable film (electroactive element 100) includes polydimethylsiloxane (Column 20 lines 62-65 electroactive polymer includes polydimethylsiloxane).
Regarding claim 8, Sharma and Jeon teach all the limitations of the claimed invention with respect to claim 4. Sharma further teaches The transparency-adjustable film of claim 1, wherein a porosity of the transparency-adjustable film is 30% to 70% (Column 21 lines 23-34 porosity of electroactive element is 10%-90%). It is a well-established proposition that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP §2144.05(I). In the current instance Sharma discloses a range of 10%-90% which encompasses the narrower claimed range of 30%-70%. Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose a value of porosity within the narrower claimed range.
Regarding claim 9, Sharma and Jeon teach all the limitations of the claimed invention with respect to claim 4. Sharma further teaches the transparency-adjustable film includes a porous region having the pores and a solid region substantially without pores (Column 29 line 64 - column 30 line 3 non-polymeric component is used to form nanovoids in a plurality of regions and thus some regions do not have nanovoids).
Regarding claim 10, Sharama and Jeon teach all the limitations of the claimed invention with respect to claim 4. Sharma further teaches a first substrate disposed on a first surface of the transparency-adjustable film (Column 25 lines 29-31 first electrode deposited on substrate such as glass or a flexible polymer), and a second substrate disposed on a second surface of the transparency-adjustable film (Column 28 lines 11-16 addition layers disposed on second electrode form second substrate).
Regarding claim 12, Sharma and Jeon teach all the limitations of the claimed invention with respect to claim 10. Sharma further teaches the compressive-strain adjusting part (Figures 1A and 1B electrodes 109,111 and circuit 121) includes:
a first transparent electrode (Figure 1A electrode 109 Column 5 lines 57-59 electrodes are optically transparent) between the transparency-adjustable film and the first substrate (Column 25 lines 29-31 first electrode deposited on substrate such as glass or a flexible polymer); and
a second transparent electrode (Figure 1A electrode 111, Column 5 lines 57-59 electrodes are optically transparent) between the transparency-adjustable film and the second substrate (Column 28 lines 11-16 addition layers disposed on second electrode form second substrate),
wherein the first transparent electrode (electrode 109) and the second transparent electrode (electrode 111) are connected to a voltage-applying part (Figure 1A circuit 121, Column 5 line 66 generates electric field) to adjust the compressive strain of the transparency-adjustable film depending on polarities of voltages applied to the first transparent electrode and the second transparent electrode and on a difference between the voltages (Column 19 lines 54-67 compression based on voltage difference).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sharma (U.S. Patent No. 11,073,697) in view of Jeon (U.S. Patent Application Publication No. 2021/0389585) as applied to claim 10 above, and further in view of Aizenberg et al. (U.S. Patent Application Publication No. 2013/0222881 – hereinafter referred to as “Aizenberg”).
Regarding claim 11, Sharma and Jeon teach all the limitations of the claimed invention with respect to claim 10. Sharma further teaches the compressive-strain adjusting part (Figures 1A and 1B electrodes 109,111 and circuit 121) includes:
a movement member combined with the first substrate (Figure 1A electrode 109, Column 25 lines 29-31 first electrode deposited on substrate such as glass or a flexible polymer); and
wherein the movement member moves in the thickness direction to adjust the compressive strain of the transparency-adjustable film (Figures 1A and 1B distance between electrodes 109,111 decreases in compressed state).
Sharma and Jeon fail to teach a movement guide combined with the second substrate and the movement member moves along the movement guide. However, Aizenberg teaches a transparency-adjusting apparatus (Figure 6C) with a movement guide (Figure 6C movement guides on either side of screw). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the transparency-adjusting apparatus taught by Sharma and Jeon by adding the movement guide taught by Aizenberg in order to keep the layers of the transparency-adjusting apparatus aligned.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Sharma (U.S. Patent No. 11,073,697) in view of Jeon (U.S. Patent Application Publication No. 2021/0389585) as applied to claim 10 above, and further in view of Sako et al. (Japanese Patent Publication JP 2002090659 – cited by Applicant – hereinafter referred to as “Sako”).
Regarding claim 13, Sharma and Jeon teaches all the limitations of the claimed invention with respect to claim 10. Sharma and Jeon fail to teach The transparency-adjusting apparatus of claim 10, further comprising a cover member that covers edges of the first substrate, the second substrate and the transparency-adjustable film,
wherein the cover member includes a first portion facing an upper surface of the first substrate, a second portion facing a lower surface of the second substrate, and a third portion connecting the first portion and the second portion to each other,
wherein the compressive-strain adjusting part is disposed between the first portion of the cover member and the first substrate, and a vertical length of the compressive-strain adjusting part varies in response to an electric signal or a power applied thereto to adjust the compressive strain of the transparency-adjustable film.
However, Sako teaches a transparency-adjusting apparatus (Figure 1a) with a cover member (Figure 1 substrate 10 and seal 13) that covers the edges of the transparency-adjustable film (substrate 10 and seal 13 surround porous structure 11), wherein the cover member includes a first portion facing an upper surface of the first substrate (substrate 10 on upper surface), a second portion facing a lower surface of the second substrate (substrate 10 on lower surface), and a third portion connecting the first portion and the second portion to each other (seal 13 on either side connecting substrates 10),
wherein the compressive-strain adjusting part (Figure 1a and 1b piezoelectric element 14) is disposed between the first portion of the cover member and the first substrate, and a vertical length of the compressive-strain adjusting part varies in response to an electric signal or a power applied thereto to adjust the compressive strain of the transparency-adjustable film ([0015] height of piezoelectric element 14 varies to compress porous structure 11). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the transparency-adjusting apparatus taught by Sharma and Jeon by surrounding the first substrate, second substrate, and transparency-adjustable film of Sharma by with the cover member taught by Sako and adding the piezoelectric element taught by Sako in over to protect the transparency-adjusting apparatus and provide a simple, easy fabricate device (Sako [0016]) and piezoelectric elements are well-known in the art.
Conclusion
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 ALEX PARK RICKEL whose telephone number is (703)756-4561. The examiner can normally be reached Monday-Friday 8:30 a.m. - 6 p.m. ET.
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Alex Rickel
Examiner
Art Unit 2872
/A.P.R./Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872
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