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 .
Response to Arguments
Applicant’s arguments, see remarks, filed July 8, 2026, with respect to claim rejections under 112 have been fully considered and in combination with the amendments are persuasive. The claim rejections under 112 have been withdrawn.
Applicant's arguments filed July 8, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument centered on Tench failing to disclose an acidic electrolyte, the examiner is unpersuaded. The examiner agrees that Tench does not explicitly state that perchloric acid (HClO4) is used, which is similar to applicant’s specification that also does not have any reference to perchloric acid (HClO4) being used to make the perchloric electrolyte. Applicant notes that a neutral salt (e.g. NaCl) in water results in a neutral solution. The examiner agrees. However, as applicant notes Tench column 5 line 64-column 6 line 1 notes “A supporting electrolyte salt, such as a lithium salt with a strongly acidic anion, e.g., perchlorate, hexafluorophosphate, trifluoromethanesulfonate, bistrifluoromethanesulfonimide, etc., to provide conductivity to the electrolyte.” However, there are other elements in the electrolyte, e.g. g-butyrolactone (column 6 line 3) and water (column 3 line 1 e.g. claim 20). g-butyrolactone in an aqueous solution turns into g-hydroxybutyric acid.
Regarding applicant’s contention that Tench’s addition of a polymer stiffener (component 5) such as PMMA is not stable as an acid, the examiner is unpersuaded. Tench column 6 lines 43-45 states: “The electrochemical device of this invention can be fabricated using a liquid (without the polymer stiffener) or a gel electrolyte, with the latter being preferred.” Therefore, the liquid embodiment does not have polymer stiffener, such as PMMA, making applicant’s argument moot. Furthermore, in arguendo, PMMA can be acidic, as evidenced by Arora et al. “Synthesis of polymethyl methacrylate (PMMA) by batch emulsion polymerization” African Journal of Pure and Applied Chemistry Vol. 4(8), pp. 152-157, August 2010, of record, see Table 5 listing PMMA listing pH values of 5.5 to 6.4, and page 156 the sentence spanning left and right column states: “pH of the polymer solution varies from 5.5 to 6”.
Regarding applicant’s statement that “one of ordinary skill in the art would never modify Tench to include a low pH value of less than 4”, the examiner is unpersuaded. The examiner agrees that Tench is silent on the physical property of the electrolyte’s pH. Applicant’s stated issue to have a low pH is to avoid insolubility (instant application paragraph [0008]). This is an art recognized result effective variable1 as evidenced by Hernandez page 105 lines 51-54 “solubility is dependent on acid concentration to prevent the precipitation of insoluble”. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. Tench has a similar article with an acidic electrolyte including perchlorate ions and bismuth ions, fulfilling the general conditions of the claim, as set forth below. One would be motivated to have the pH less than 4 for the purpose of avoiding insolubility issues (evidenced by Hernandez page 105 lines 51-54) and to tune the electrolyte composition to promote reversible metal deposition while also avoiding potential side reactions such as H2(g) evolution (evidenced by Hernandez page 105 lines 55-58).
Regarding applicant’s statement that in the present application, the electrolyte being acidic, and comprising perchlorate ions and having a pH of less than 4 “where the pH of less than 4 is achieved using perchloric acid, rather than HCl, HBr, HN03, or H2S04”, the examiner notes that the specification does not disclose perchloric acid (HClO4) or that the perchlorate ions (ClO4–) are from disassociated perchloric acid or that the low pH is due to perchloric acid. Particularly, Table 1 has 5 different anions in acid free and acidic aqueous solutions. While the anions are listed (e.g. ClO4–) there is no description that the acid-free and acidic aqueous solutions use salts in water (e.g. LiClO4) to make an acid-free solution including particular anions (e.g. ClO4–) and/or that acid solution is from an acid disassociating from the particular ion noted (e.g. HClO4 disassociated into H+ and ClO4–) instead of having the acid-free solution with an additional acid added have the solution have a pH<7.
Regarding applicant’s argument that one skilled in the art would not modify Tench using the Hernandez to lower the pH, since they use different chemical compositions. The examiner did not rely upon Hernandez to teach a specific composition or to substitute ingredients or otherwise bodily incorporate Hernandez to adjust the pH. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, in regards to the pH Hernandez was referenced to provide evidence that a lower pH is an art recognized result effective variable that directly addresses applicant’s stated issue. Being an art recognized result effective variable that directly addresses applicant’s stated issue it is obvious to try lowering the pH for the purpose of avoiding insolubility issues (evidenced by Hernandez page 105 lines 51-54), which addresses applicant’s stated issue, and to tune the electrolyte composition to promote reversible metal deposition while also avoiding potential side reactions such as H2(g) evolution (evidenced by Hernandez page 105 lines 55-58) and since discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05.
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.
Claims 39 and 41 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention. Regarding claims 39 and 41 – “the electrolyte … comprises HClO4” in claim 39 and “wherein sufficient HClO4 is present” and claim 41 amounts to prohibited new matter. The specification has no mention of perchloric acid (HClO4). See below for interpretation.
Claim 39 (and therefore its dependent claim 41) is further rejected under 35 U.S.C. 112(a) because the specification, while being enabling for “the electrolyte … comprises hydrogen ions and perchlorate ions”, does not reasonably provide enablement for “the electrolyte … comprises HClO4”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. The specification makes it clear that the electrolyte contains perchlorate anions (ClO4–), see abstract, paragraphs [0008, 0010-11, 0021, 0043-44, 0046, 0050-57, 0059, 0066, 0069-70, 0075, 0080, 0082-88 & 0091] and Table 1. As noted above the specification has no mention of perchloric acid (HClO4). Further,
p
H
=
-
log
10
H
+
, i.e. it indicates the hydrogen ion concentration. Since perchloric acid is a superacid, in an electrolytic composition it would be completely disassociated, i.e. there would be H+ ions (lowering the pH) and ClO4– ions (as supported in the specification) but not “HClO4”, per se. For purposes of examination the examiner will use “the electrolyte … comprises [[HClO4]] hydrogen ions and perchlorate ions”..
Claim 41 is also further rejected under 35 U.S.C. 112(a) because the specification, while being enabling for “wherein sufficient hydrogen ions are present to provide the electrolyte with a pH of less than 4”, does not reasonably provide enablement for “wherein sufficient HClO4 is present to provide the electrolyte with a pH of less than 4”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. Following the reasoning above, particularly since
p
H
=
-
log
10
H
+
, for purposes of examination the examiner will use “wherein sufficient hydrogen ions are present to provide the electrolyte with a pH of less than 4.”.
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.
Claim 40 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 40 “wherein the article is or comprises a reversible metal electrodeposition cell” raises clarity issues. It is unclear if the (reversible metal electrodeposition) article claimed is being “renamed” as a reversible metal electrodeposition cell, or if a reversible metal electrodeposition cell has some unclaimed feature that would differentiate it from the (reversible metal electrodeposition) article, or if the article has a new, additional structure of a reversible metal electrodeposition cell can be part of the article. Thus, the metes and bounds of the claim are vague and indefinite. Insofar as the examiner can determine, since the article of claim 1 lines 4-6 clearly limits the invention to a reversible metal electrodeposition element, and since the specification does not support a new/additional reversible metal electrodeposition cell in the claimed article the examiner interprets the clause as not adding any new limit. The examiner suggests and for purposes of examination will use “wherein the article is
Further regarding claim 40, insofar as it is understood, “wherein the article is naturally flow from the article (assumed in light of the specification, see inter alia abstract). It has been held that claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008), see MPEP 2173.05(g). For purposes of examination the examiner will interpret the limitation naturally flows, i.e. is inherent, for the device set forth in claim 1. The examiner respectfully suggests deleting this clause to overcome this rejection.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 41 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Regarding claim 41, as currently interpreted, “wherein sufficient hydrogen ions are present to provide the electrolyte with a pH of less than 4” fails to further limit the claim. As noted above, by definition pH indicates hydrogen ion concentration. Thus, insofar as it is understood, claim 41 states a definition fails to further limit the invention of claim 39. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Warning
Applicant is advised that should claims 1 and 11 be found allowable, claims 13 and 39, respectively, will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5, 7-8, 11, 13, 21, 27-33, 36-37 and 39-41 are rejected under 35 U.S.C. 103 as being unpatentable over Tench et al. US Patent 5,903,382, of record, w/ evidence of certain facts provided by Hernandez et al. “Bistable Black Electrochromic Windows Based on the Reversible Metal Electrodeposition of Bi and Cu” ACS Energy Lett. 2018, 3, 104−111, of record.
Regarding claims 1 and 36-37 Tench discloses an electrochromic dynamic article (title e.g. figures 1-3) capable of reversible metal electrodeposition (inter alia abstract see figures 1-3), comprising: a transparent or translucent indium tin oxide electrode (column 3 lines 33-36 “electrically conducting and electrochemically stable film 106, which is also substantially transparent” & column 5 lines 39-42 “preferred first electrode … ITO” e.g. first electrode 106); an electrolyte (e.g. electrolytic solution 112) in contact with the transparent or translucent indium tin oxide electrode (e.g. see figure 1), the electrolyte comprising metal cations (e.g. metal ions 116) that can be reversibly electrodeposited onto the transparent or translucent indium tin oxide electrode (inter alia column 3 lines 58-62 “metal atoms … dissolved within the electrolytic solution 112 such that the metal atoms in solution can be reversibly electrodeposited on and electrodissolved from the first and second electrodes”); and a counter electrode (e.g. electrode 110); wherein the electrolyte is substantially void of Cl- ions (column 5 line 55-column 6 line 51 disclose the electrolyte components, none of which would generate a Cl- ion); wherein the electrolyte comprises perchlorate ions (column 5 line 55-column 6 line 51 disclose the electrolyte components – column 5 line 65 “e.g., perchlorate”); wherein the electrolyte is acidic (inherent given column 5 line 55-column 6 line 51 disclose the electrolyte components – column 5 line 65 “strongly acidic” and column 6 line 3 notes “g-butyrolactone” & column 3 line 1 and also claim 20 add water and g-butyrolactone in an aqueous solution turns into g-hydroxybutyric acid); and wherein the metal cations comprise Bi (column 5 line 55-column 6 line 51 disclose the electrolyte components – column 6 lines 8-15 “bismuth(III)”, also see claim 26).
Tench discloses the article as recited in claim 1 including an acidic electrolyte, as set forth above. Tench is silent on the physical property of the electrolyte’s pH. Specifically, Tench does not disclose wherein the electrolyte has a pH of less than 4, as recited by claim 1; or wherein the electrolyte has a pH of less than 3, as recited by claim 36; or wherein the electrolyte has a pH of less than 2, as recited by claim 37.
Applicant’s stated issue to have a low pH is to avoid insolubility (instant application paragraph [0008]). It is an art recognized result effective variable2 as evidenced by Hernandez page 105 lines 51-54 “solubility is dependent on acid concentration to prevent the precipitation of insoluble”.
It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Tench has a similar article with an acidic electrolyte including perchlorate and bismuth ions, fulfilling the general conditions of the claim. One would be motivated to have the pH less than 4 or less than 3 or less than 2 for the purpose of avoiding insolubility issues. Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the electrolyte in the article disclosed by Tench to have the pH< 4 or 3 or 2 since it is an art recognized result effective variable that addresses applicant’s stated issue and discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 5 Tench discloses the article as recited in claim 1, as set forth above. Tench further discloses wherein the metal cations further comprise Cu (column 6 lines 8-15 “copper(I)”, also see claim 26).
Regarding claim 7 Tench discloses the article as recited in claim 1, as set forth above. Tench further discloses wherein the metal cations further comprise Cu (column 6 lines 8-15 “copper(I)”, also see claim 26) and Li (column 5 line 64 “lithium”).
Regarding claim 8 Tench discloses the article as recited in claim 1, as set forth above. Tench further discloses wherein the electrolyte is an aqueous electrolyte solution (column 2 line 67-column 3 line 3 “electrolytic solution may include a gelling agent to form an aqueous or a non-aqueous gel electrolyte”).
Regarding claim 11 Tench discloses the article as recited in claim 1, as set forth above. Tench further discloses wherein the transparent or translucent indium tin oxide electrode (e.g. 106) comprises a transparent conducting oxide electrode (column 3 lines 33-36 “electrically conducting and electrochemically stable film 106, which is also substantially transparent”) which comprises indium tin oxide (e.g. column 5 lines 39-44 “ITO”, also see claim 16).
Regarding claim 13, the limitations of claim 13 are contained in the limitations claim 1 and claim 13 is rejected for the same reasons.
Regarding claim 21, the limitations of claim 21 are contained in the limitations claims 7 and 8 and claim 21 is rejected for the same reasons.
Regarding claim 27 Tench discloses the article as recited in claim 13, as set forth above. Tench further discloses wherein the counter electrode (e.g. 110) comprises a same metal (e.g. figure 1 metallic layer 114) as a metal cation (e.g. 116) in the electrolyte solution (column 3 lines 58-62 “Metal ions 116, which contain the same metal atoms as the layer 114, are dissolved within the electrolytic solution 112”).
Regarding claim 28 Tench discloses the article as recited in claim 13, as set forth above. Tench further discloses wherein the counter electrode (e.g. 110) comprises a different metal (column 5 lines 45-54 “second electrode includes an adherent, electrochemically inert metal grid pattern, e.g., Ti/Au or Cr/Au”) as compared to the metal cations in the electrolyte solution (column 6 lines 13 “metal ions, e.g., silver(I), copper(I), bismuth(III)” & claim 26 “Ag+, B3+, Cu+/2+, Cd2+, Hg2+, In3+, Pb2+, Sb3+, Tl+/3+, and Zn2+”).
Regarding claim 29 Tench discloses the article as recited in claim 13, as set forth above. Tench further discloses wherein the article comprises a third electrode (e.g. figure 4).
Regarding claim 30 Tench discloses the article as recited in claim 13, as set forth above. Tench further discloses wherein the electrolyte has a deposition voltage tolerance window of at least 0.2 V (e.g. column 7 lines 5-6 “cell was switched at ±0.3 V”).
Regarding claim 31 Tench discloses the article as recited in claim 13, as set forth above. Tench further discloses wherein the article darkens within 6 minutes of application of the cathodic potential (inherent given structure and function).
Regarding claim 32 Tench discloses the article as recited in claim 13, as set forth above. Tench further discloses wherein the article returns to its initially transparent or translucent condition within 6 minutes of reversing a polarity of an applied voltage (inherent given structure and function).
Regarding claim 33 Tench discloses the article as recited in claim 13, as set forth above. Tench further discloses wherein the article provides a contrast ratio of at least 30% between darkened and lightened conditions (column 4 lines 24-26 “the device may be adjusted to any transmissive value from approximately 0% to approximately 100%”).
Regarding claims 39 and 41, insofar as they are understood, since the presence of hydrogen ions (H+) is necessarily (i.e. inherently) required to achieve a pH of less than 4 (by definition of pH, see 112 section above), the other limitations of claim 39 and 41 are the same as the limitations of claim 11 and claims 39 and 41 are rejected for the same reasons.
Regarding claim 40 Tench discloses the article as recited in claim 1, as set forth above. Tench further discloses wherein the article is capable of3 extended cycle life and extended shelf life while maintaining transmission performance inherent given structure and composition, see 112 section above), wherein the counter electrode (e.g. 110) is a transparent or translucent conductive counter electrode (inter alia column 2 lines 56-57 “the second electrode may be made substantially transparent to the radiation”).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tench et al. US Patent 5,903,382, of record, in view of Hernandez et al. “Bistable Black Electrochromic Windows Based on the Reversible Metal Electrodeposition of Bi and Cu” ACS Energy Lett. 2018, 3, 104−111, of record.
Regarding claim 9 Tench discloses the article as recited in claim 1, as set forth above. Tench does not disclose wherein the transparent or translucent indium tin oxide electrode comprises Pt nanoparticles.
Hernandez teaches a similar an electrochromic dynamic glass article capable of reversible metal electrodeposition (title), comprising: a transparent or translucent indium tin oxide electrode (page 104 3rd paragraph “windows are comprised of a transparent conducting working electrode” & page 105 right column lines 3-7 “ITO”); an electrolyte (page 104 3rd paragraph “windows are comprised of … an electrolyte containing colorless solubilized metal cations”) in contact with the transparent or translucent conductive electrode (page 104 3rd paragraph “Metal-based dynamic windows change transparency through the electrochemical movement of metal between the two electrodes”), the electrolyte comprising metal cations (page 104 3rd paragraph “electrolyte containing colorless solubilized metal cations”) that can be reversibly electrodeposited onto the transparent or translucent indium tin oxide electrode (axiomatic, further page 104 3rd paragraph “windows from transparent to opaque, metal cations in the electrolyte are electrochemically reduced to metal films on the transparent working electrode upon application of a voltage. Metal oxidization on the counter electrode compensates for this reduction reaction. Reversing the polarity of the applied voltage restores the transparency of the window by stripping metal off of the working electrode and replating it on the counter electrode”); and a counter electrode (page 104 3rd paragraph “windows are comprised of … a metal counter electrode, and an electrolyte containing colorless solubilized metal cations”) ; wherein the electrolyte is configured to maintain solubility of components in the electrolyte and (see page 106 4th paragraph discussing electrolyte ensuring adequate solubility); and further teaches wherein the transparent or translucent indium tin oxide electrode comprises Pt nanoparticles (abstract “Pt-modified transparent conducting electrodes”) for the purpose of increasing Coulombic efficiency and metal nucleation (page 106 3rd paragraph ). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the article as disclosed by Tench to have the transparent or translucent conductive electrode comprises Pt nanoparticles as taught by Hernandez for the purpose of increasing Coulombic efficiency and metal nucleation.
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 George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571) 272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George G. King/Primary Examiner, Art Unit 2872 July 24, 2026
1 See MPEP 2144.05.
2 See MPEP 2144.05.
3 It has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense; In re Hutchison, 69 USPQ 138. Also see Intel Corp. v. U.S. Int'l Trade Comm’n, 946 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991), MPEP 2114. IV and MPEP 2173.05(g).
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