DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 04/14/2026.
3. Claims 1-13, 15, 17 are pending. Claims 1-2, 12-13, 15, 17 are under examination on the merits. Claims 1-13, 15, 17 are amended. Claims 14, 16 are cancelled. Claims 3-11 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1-2, 12-13, 15, 17 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 102
6. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
7. Claims 1-2 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Hepburn et al. (Reductive Hydroxymethylation of 4-Heteroarylpyridines, Chem. Eur. J., 2020, 26, 1963- 1967, hereinafter “Hepburn”).
Regarding claims 1-2: Hepburn discloses an electrochromic compound represented by formula below (Page 1964, Scheme 2), wherein A is N, B is C-R2, R2 is aryl substituted by Z, D is O; E is C. Hepburn is silent regarding an electrochromic device.
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It is submitted that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
8. Claims 1-2 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Bauer et al. (US Pat. No. 3,678,062, hereinafter “Bauer”).
Regarding claims 1-2: Bauer discloses an electrochromic compound represented by 1-methyl-4-(1,2-benzisoxazol-3-yl)pyridinium iodide (Col. 3, lines 29-39, Example 4), wherein A is C-R2, R2 is aryl substituted by Z, B is N, D is O, and E is C, and a compound of formula below, wherein A is C-R2, R2 is aryl substituted by Z, B is N, D is N, and E is C, wherein R+ is lower alkyl and X- is a monovalent pharmaceutically acceptable anion (Col. 4, lines 51-59, Claim 1). Bauer is silent regarding an electrochromic device.
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It is submitted that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claim Rejections - 35 USC § 103
9. 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.
10. Claims 1-2, 12-13, 15, 17 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Okada et al. (JP 2013-245176 A, machine translation, hereinafter “Okada”) in view of Hepburn et al. (Reductive Hydroxymethylation of 4-Heteroarylpyridines, Chem. Eur. J., 2020, 26, 1963- 1967, hereinafter “Hepburn”) or by Bauer et al. (US Pat. No. 3,678,062, hereinafter “Bauer”).
Regarding claims 1-2: Okada teaches an electrochromic device comprising an electrochromic composition (Page 22/28, [0059], Example 2) comprises the structural formulae (1) to (40) of the electrochromic compounds (Pages 11-16/28, [0029]-[0033]) corresponding to the derivative of formula (I). Okada does not expressly teach an electrochromic compound represented by formula (I).
However, Hepburn teaches an electrochromic compound represented by formula below (Page 1964, Scheme 2), wherein A is N, B is C-R2, R2 is aryl substituted by Z, D is O; E is C.
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Alternatively, Bauer teaches an electrochromic compound represented by 1-methyl-4-(1,2-benzisoxazol-3-yl)pyridinium iodide (Col. 3, lines 29-39, Example 4), wherein A is C-R2, R2 is aryl substituted by Z, B is N, D is O, and E is C, and a compound of formula below, wherein A is C-R2, R2 is aryl substituted by Z, B is N, D is N, and E is C, wherein R+ is lower alkyl and X- is a monovalent pharmaceutically acceptable anion (Col. 4, lines 51-59, Claim 1).
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Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
benzoxazole derivatives) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
It is submitted that structurally similar compounds are generally expected to have similar properties. In re Gvurik, 596 F. 2d 1012,201 USPQ 552. Closely related homologues, analogs and isomers in chemistry may create a prima facie case of obviousness. In re Dillon USPQ 2d 1 897,1904 (Fed. Cir. 1990); In re Payne 203 USPQ 245 (CCPA 1979); In re Mills 126 USPQ 5 13 (CCPA 1960); In re Henze 85 USPQ 261 (CCPA 1950); In re Hass 60 USPQ 544 (CCPA 1944).
Regarding claim 12: The disclosure of Okada in view of Hepburn or Bauer is adequately set forth in paragraph above and is incorporated herein by reference. Okada teaches an electrochromic composition (Page 22/28, [0059], Example 2) comprising at least one compound (Page 21/28, [0055], Electrochromic Compound 10).
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Regarding claim 13: The disclosure of Okada in view of Hepburn or Bauer is adequately set forth in paragraph above and is incorporated herein by reference. Okada teaches the electrochromic composition, wherein said composition further comprises a host medium such as 2,2,3,3 tetrafluoro propanol (Page 22/28, [0059], Example 2).
Regarding claim 15: The disclosure of Okada in view of Hepburn or Bauer is adequately set forth in paragraph above and is incorporated herein by reference. Okada teaches the electrochromic device such as electrochromic display element (Page 22/28, [0059], Example 2).
Regarding claim 17: The disclosure of Okada in view of Hepburn or Bauer is adequately set forth in paragraph above and is incorporated herein by reference. Okada teaches the electrochromic device, wherein said electrochromic device is selected from such as electrochromic display element (Page 22/28, [0059], Example 2).
Response to Arguments
11. Applicant’s arguments with respect to claims 1-2, 12-13, 15, 17 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
12. 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 extension fee 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 date of this final action.
Examiner Information
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
05/19/2026
bijan.ahvazi@uspto.gov
Prosecution Insights