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 1-10 and 16-19), species ii (polyfunctional polymer (b) a copolymer prepared from vinyl acetate monomer and at least one ethylenically unsaturated organic carboxylic monomer containing 3 to 9 carbon atoms and at least one carboxylic group), species xv (crosslinking agent polycarbodiimide), and species xvii (electrochromic oxidizing compound of formula (Ia)) in the reply filed on 3/3/2026 is acknowledged. The traversal is on the ground(s) that no statement is made regarding the patentable distinctness of the species; and the office action does not show a search burden and a search has not been conducted.
This is not found persuasive because the restriction is based on lacking unity of invention; and the species are independent or distinct because the species are mutually exclusive, as stated in the office action of 11/3/2025. This would require separate fields of search including different search queries. Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions (e.g., employing different search queries), a different field of search is shown. See MPEP 808.02. This is sufficient to establish a serious search and/or examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-15, 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/3/2026.
Claim Objections
Claim 10 is objected to because of the following informalities: the structure in formula Ia lacks 2X- (the counterion). Appropriate correction is required.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claim(s) 1-5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kloeppner et al (US 20040061097 A1) in view of Seok et al (KR 20140037989 A, machine translation is referenced herein), and Hara et al (US 20180305537 A1).
Regarding claims 1-5 and 16, Kloeppner teaches an electrochromic medium for use in an electrochromic device comprising at least one non-aqueous solvent and a self-healing cross-linked polymer gel [abstract, 0036].
In Experiment No. 1 [0046], the non-aqueous solvent propylene carbonate (PC) in the gel medium is 85 wt% as calculated by the examiner, meeting the claimed at least 30 wt% in claim 1 and at least 50 wt% in claim 16.
The cross-linked polymer gel includes a backbone containing polyvinyl acetates and carboxylic acids [0037-0038]. It would have been obvious to one of ordinary skill in the art at the time of filing to select polyvinyl acetates and carboxylic acids as the cross-linked polymer in Kloepner’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The cross-linked polymer backbone is cross-linked with a cross-linking reactant having a cross-linking function group [0040].
Kloeppner does not teach that the polymer backbone contains at least two carboxyl moieties capable of undergoing crosslinking reactions, and has a molecular weight from 2,000 g/mol to 3,000,000 g/mol.
In the same field of endeavor, Seok teaches a gel polymer for electrochromic device [abstract]. The gel polymer comprises a polymerizable compound comprising a compound having an unsaturated bond and a carboxylic acid group in one molecule, such as fumaric acid [P3 para.3-6], and a compound having an unsaturated bond, such as vinyl acetate [P3 para.7]. It would have been obvious to one of ordinary skill in the art at the time of filing to select fumaric acid as the carboxylic acid in Kloepner’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Seok teaches copolymer as the polymerizable compound having molecular weight of 3,000 – 40,000 [P4 1st para.]. Even though this copolymer is not a copolymer of vinyl acetate and fumaric acid, one of ordinary skill in the art would use this molecular weight range as a starting point or guide for making the copolymer of vinyl acetate and fumaric acid, as both copolymers are used for the same purpose as a gel polymer.
The copolymer of vinyl acetate and fumaric acid having molecular weight of 3,000 – 40,000 meets the claimed polyfunctional polymer containing at least two carboxyl moieties capable of undergoing crosslinking reactions, said polyfunctional polymer having a molecular weight from 2,000 g/mol to 3,000,000 g/mol, the carboxylic acids functional polyvinylacetate copolymer specified in claim 2, and the copolymer prepared from vinyl acetate monomer and at least one ethylenically unsaturated organic carboxylic monomer containing 3 to 9 carbon atoms and at least one carboxylic group as specified in claim 3.
Kloeppner does not teach that the cross-linking reactant having a cross-linking function group is chosen from a polycarbodiimide. However, Kloeppner teaches that any cross-linking functional groups that would be known to those with ordinary skill in the art are contemplated for use [0040].
Hara teaches a resin composition used for optical display and electronic components [0048] comprising CARBODILITE® V-02 and V-02-L2 as a cross-linking agent to react with carboxylic groups [0037-0038]. It would have been obvious to one of ordinary skill in the art at the time of filing to select CARBODILITE® V-02 and V-02-L2 as a cross-linking agent in Kloepner’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
CARBODILITE® V-02 and V-02-L2 read on the claimed crosslinking agent as specified in claims 4-5.
Claim(s) 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kloeppner in view of Seok and Hara as applied to claim 1 above, further in view of Biver et al(US 20160231636 A1).
Regarding claims 6-10, Kloeppner in view of Seok and Hara teaches the gel medium in claim 1. Kloeppner is silent about the claimed dye. However, Kloeppner teaches that the composition comprises a redox additive including reducing agent and oxidizing agent [0026, 0029, 0042].
In the same field of endeavor, Biver teaches electrochromic composition comprising a reducing compound including ferrocene, phenoxazine, phenazine and phenothiazine [0099-0103]; and an oxidizing agent selected from viologen derivatives including I-9, I-12, I-21, I-24, etc. [0080, P7-11].
The examiner submits that the above combination of reducing agent and oxidizing agent meets the claimed electrochromic dye and redox chemical mixture as specified in claims 6-10, with the viologen derivatives of I-9, I-12, I-21, I-24 meeting the claimed formula (Ia).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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