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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 9, 2026, has been entered.
Response to Arguments
Applicant’s arguments filed February 9, 2026, have been considered, but are not persuasive. Applicant’s arguments focus on the newly recited limitations in the claims, and thus are moot in view of those amendments as compared with the prior rejections. As explained below, the newly recited limitations introduce new §112 issues. The previous rejection is modified in view of the amendments to the claims, as set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3–16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In particular, Claim 1 newly recites “the reflectivity being distinct from a drive voltage used to drive the electrochromic device,” and Claims 3–16 depend from Claim 1 and also incorporate the new limitation. The term “distinct” generally refers to separate or distinguishable things (and Applicant’s specification does not appear to provide an alternative definition of the term). While “the reflectivity” and “a drive voltage” are clearly distinct concepts, they are directly related to each other. Referring to the U.S. Publication of Applicant’s specification, paragraph [0038] teaches that “the voltage controller applies a voltage to the electrochromic device to control the degree of attenuation,” and paragraph [0030] states, in part:
The voltage controller determines the degree of attenuation provided by the electrochromic device by adjusting the reflectivity of the electrochromic device; this may include adjusting a digital signal provided by the voltage controller to the electrochromic device to increase or reduce the respective reflective and non-reflective areas of the surface of the electrochromic device upon which the optical signal is incident.
From these passages, Applicant appears to teach that the reflectivity is substantially related to the drive voltage. Applicant does not appear to describe any alternative where the reflectivity and the drive voltage are distinct. It is unclear how the two are “distinct” from each other.
In summary, the term “distinct” generally understood to refer to separately distinguishable things, which does not appear to apply in this instance, because Applicant teaches that the reflectively is directly or at least substantially related to the drive voltage, which is inconsistent with the newly claimed "distinct" characteristic, meaning that the subject matter “the reflectivity being distinct from a drive voltage used to drive the electrochromic device” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 3–16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
As noted above, the subject matter “the reflectivity being distinct from a drive voltage used to drive the electrochromic device” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In view of this deficiency, this limitation was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention, at least because it is unclear how the elements, which are described as directly or substantially related, are actually distinct.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 3–16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1 (and Claims 3–16 in view of their dependence therefrom), the limitation “the reflectivity being distinct from a drive voltage used to drive the electrochromic device” is unclear. Specifically, it is unclear how the drive voltage, which controls attenuation by adjusting characteristics of the electrochromic device, is distinct from reflectivity, where attenuation is achieved through controlling reflectivity. A review of the specification provided no further explanation of these limitations.
Appropriate clarification and correction are required.
In view of the above §112(a) and §112(b) rejections, the limitation “the reflectivity being distinct from a drive voltage used to drive the electrochromic device” will be considered removed from the claims for purposes of examination, due to the insufficient clarity of the meaning or scope of the limitation.
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, 3, 6–9, and 13–16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2019/0146296 to Yeo et al.
Regarding Claim 1, Yeo discloses (e.g., at least Fig. 7 and paragraphs [0087]–[0091]) a telecommunications network optical attenuator (e.g., paragraph [0003], variable optical attenuator is widely used in optic communication system) comprising an electrochromic device 700, wherein the optical attenuator is configured to reflect or refract an input optical signal using the electrochromic device (“the reflective electrochromic device 700 may control a reflectivity or reflectance of the input light and attenuate an intensity of the reflected light based on a voltage to be applied thereto,” paragraph [0088]), and wherein the electrochromic device is configured to provide adjustable optical attenuation levels (“the variable optical attenuator may monitor input optical power [and] may adjust a reflectivity of the reflective electrochromic device 700 based on a result of the monitoring,” paragraph [0090]; also see paragraph [0075]).
Yeo would have rendered obvious a voltage controller, wherein the voltage controller is configured to apply a voltage to the electrochromic device (e.g., ”reflective electrochromic device 700 may control a reflectivity or reflectance of the input light and attenuate an intensity of the reflected light based on a voltage to be applied thereto,” paragraph [0088], reasonably suggesting a “voltage controller” that applies the voltage).
Yeo further would have rendered obvious the voltage controller configured to: determine a degree of attenuation provided by the electrochromic device by adjusting reflectivity of the electrochromic device based on measurements of optical power at the optical attenuator (e.g., paragraph [0046],
a variable optical attenuator 100 may monitor a portion of optical power of input light using an electrochromic device having a transflective property that may adjust a reflectivity and a transmissivity by controlling a voltage and a light absorptivity. In addition, the variable optical attenuator 100 may adjust an intensity of light to be attenuated, or interchangeably referred to as an attenuation intensity of light to be output, by controlling a voltage to be applied to the electrochromic device based on a result of the monitoring, and by adjusting the reflectivity and the transmissivity;
also paragraph [0064],
it is possible to attenuate output optical power of light to be reflected or transmitted after the light is input to an electrochromic device by adjusting a voltage to be applied to the electrochromic device and changing a light absorptivity without a physical movement of a device configured to adjust an amount, or an intensity, of light;
both sections teaching and suggesting that the degree of attenuation provided by the electrochromic device is determined by adjusting reflectivity of the electrochromic device; see also paragraphs [0007] and [0084]; and paragraph [0090] which teaches that “the variable optical attenuator may monitor input optical power by adding, between the lens 720 and the reflective electrochromic device 700, a filter 730 configured to split a portion of the input light and an optical detector 740 . . . [and] may adjust a reflectivity of the reflective electrochromic device 700 based on a result of the monitoring”).
Regarding Claim 3, Yeo would have rendered obvious a photovoltaic cell, wherein the photovoltaic cell is configured to generate electrical power from a portion of the input optical signal (e.g., optical detector 740, or 140, “optical detector 140 extracts input optical power of the input light that is initially input to the inputter 110 by monitoring the light transmitted from the electrochromic device 130,” paragraph [0075], reasonably suggesting a device such as a photovoltaic cell, capable of extracting optical power to generate electrical power).
Regarding Claim 6, Yeo would have rendered obvious wherein the power generated by the photovoltaic cell is used by the voltage controller (where the specific power source is not discussed in Yeo; however, using available power in the immediate vicinity which has no other apparent use after being used to detect the intensity of the incoming optical signal would have been obvious as a matter of design choice, to maximize efficiency and reduce wasted energy).
Regarding Claim 7, Yeo would have rendered obvious wherein a voltage applied to the electrochromic device by the voltage controller is determined based on the level of electrical power generated by the photovoltaic cell (e.g., paragraphs [0075] and [0090]).
Regarding Claim 8, Yeo would have rendered obvious a photodiode sensor configured to monitor an output optical signal reflected by the electrochromic device (e.g., optical detector 140/740, Figs. 7 and 8, paragraphs [0090] and [0094], where a photodiode sensor is a well-known type of optical detector, and the illustration in Figs. 7 and 8 appears to be a photodiode, such that selecting a photodiode specifically as the generically recited optical detector would have been an obvious selection, e.g., MPEP §§ 2144.06–07).
Regarding Claim 9, Yeo would have rendered obvious wherein a voltage applied to the electrochromic device by the voltage controller is determined by the monitoring results of the photodiode sensor (e.g., paragraphs [0075], [0090], and [0094]).
Regarding Claim 13, Yeo would have rendered obvious wherein, if no voltage is applied to the electrochromic device for a time period, the electrochromic device is configured to provide a resting optical attenuation level (not explicitly described, but the general nature of liquid crystals within the electrochromic device is such that without a voltage applied, a natural or resting state of the crystals, and thus the optical attenuation, would occur; regardless, setting a default condition would have been obvious as a matter of design choice to ensure that the state of the system is known).
Regarding Claim 14, Yeo would have rendered obvious wherein the resting optical attenuation level is the same as a minimum optical attenuation level of the electrochromic device (where the resting liquid crystal state is typically a normally on or normally off state, and selecting between the two states to have the resting state provide minimal optical attenuation would have been obvious as a matter of design choice, and obvious to try, with only two configurations, both yielding predictable results).
Regarding Claim 15, Yeo would have rendered obvious wherein the input optical signal has a wavelength of approximately 1550 nanometers, nm (where Yeo does not explicitly disclose the wavelength of input light, but Yeo does teach filtering to yield desired wavelengths from within the input light, e.g., paragraph [0012], suggesting that the device of Yeo is capable of handling a wide range of input light, including the claimed 1550 nm).
Regarding Claim 16, Yeo would have rendered obvious wherein the optical attenuation level range of the electrochromic device is between approximately 10% attenuation and approximately 90% attenuation (where selecting a working range for the optical attenuator would have been obvious in view of specific design needs, and would yield predictable results, absent evidence of criticality or otherwise unobvious results).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yeo in view of U.S. Patent Application Publication No. 2012/0128371 to Einicke et al.
Regarding Claim 4, Yeo does not explicitly disclose wherein the portion of the input optical signal used by the photovoltaic cell to generate electrical power is provided by a Power over Fibre (PoF) source.
Einicke teaches, in an optical communication device, that a battery may be trickle charged using an optical fiber input, including a power over fibre (e.g., paragraphs [0039] and [0060]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing to modify the device of Yeo such that the portion of the input optical signal used by the photovoltaic cell to generate electrical power is provided by a Power over Fibre (PoF) source, as suggested by Einicke, as a suitable means for keeping the battery charged during use (e.g., also, MPEP §§ 2144.06–07).
Claims 5 and 10–12 are rejected under 35 U.S.C. 103 as being unpatentable over Yeo in view of U.S. Patent Application Publication No. 2012/0081625 to Suh.
Regarding Claim 5, Yeo does not explicitly disclose a buffer battery, wherein the electrical power generated by the photovoltaic cell is used to charge the buffer battery.
Suh discloses a variable optical attenuator using liquid crystals, similar to Yeo, and teaches that a battery may be used to generate the voltage that controls the attenuator (e.g., paragraph [0061]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing to modify the device of Yeo to include a buffer battery, wherein the electrical power generated by the photovoltaic cell is used to charge the buffer battery, as suggested by Suh, as a suitable configuration for driving the attenuator (e.g., MPEP §§ 2144.06–07), and where it is well known that batteries may be rechargeable.
Regarding Claim 10, the combination of Yeo and Suh would have rendered obvious including a battery (e.g., paragraph [0061] of Suh, to drive the attenuator).
Regarding Claim 11, the combination of Yeo and Suh would have rendered obvious wherein the power from the battery is used by the voltage controller (e.g., paragraph [0061] of Suh, using a battery as the power source to drive the attenuator).
Regarding Claim 12, the combination of Yeo and Suh would have rendered obvious wherein the battery is configured to be recharged periodically (where Yeo and Suh appear silent regarding the specific rechargeability of the battery, but periodically recharging a battery is well-known and a predictable use of a battery, absent evidence of criticality or otherwise unobvious results by using a rechargeable battery as opposed to a non-rechargeable battery).
Conclusion
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.
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/RYAN CROCKETT/ Primary Examiner, Art Unit 2871