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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 23, 2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 23, 2026 complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant's arguments filed March 23, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s statement “the amendments to claims 1 and 13 provide sufficient structure for the solution to the stated problem, such that the claims are now sufficiently clear”, the examiner is unpersuaded. While claims 1 and 13 have more details regarding the electrolyte the phrase “wherein the electrolyte comprises an anion that is configured to (i) maintain solubility of components in the electrolyte and (ii) minimize or prevent etching of the transparent or translucent conductive electrode” remains vague and indefinite. Particularly, etching of the electrode depends on the electrode material, as at least evidenced by instant application paragraph [8] and Table 1 noting ITO electrode may be etched by SiO42-, Cl- an FTO electrode is stable and would not suffer from etching. Applicant appears to be claiming the selection of the acidic electrolyte void of Cl- and comprising perchlorate anions and Bi metal cations that tends to have certain beneficial properties when interfaced with the claimed electrode – without specifically claiming particular electrolyte materials (i.e. an electrolyte consisting of as opposed to comprising) and/or specific solubility levels or etching rates for any transparent or translucent conductive electrode. It has been held “when 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).
Regarding applicant argument centered on Tench (and/or Hernandez) fails to disclose or teach the electrolyte is acidic, the examiner is unpersuaded. It would necessarily flow from Tench column 5 lines 55-column 6 line 52 that the electrolyte would be acidic. Particularly, component 2 notes the electrolyte comprises 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.” When adding the strongly acidic1 component with the other constituent components, which are neutral/weakly acidic, would not result in a basic composition.
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, 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 argument centered on Tench (and/or Hernandez) fails to disclose or teach the acidic electrolyte comprises perchlorate ions; and wherein the metal cations comprise Bi, the examiner is unpersuaded. At least Tench in describing possible electrolytic composition in column 5 lines 55-column 6 line 52 covers anticipates an acidic electrolyte comprising perchloric and bismuth ions. Specifically, component 2 notes the electrolyte comprises a “supporting electrolyte salt, such as a lithium salt with a strongly acidic anion, e.g., perchlorate” and component 3 notes an “active metal salt or complex … based on various metal ions, e.g., silver(I), copper(I), bismuth(III), or other metal systems.” Thus, Tench explicitly discloses the acidic electrolyte may comprises perchlorate and bismuth ions.
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.
Claim 38 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim 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, at the time the application was filed, had possession of the claimed invention.
Regarding claim 38 “wherein the electrolyte comprises perchloric acid” amounts to prohibited new matter. While the application clearly has an electrolyte with perchloric anions it does not mention perchloric acid (HClO4), per se. For example, Table 1 has acid-free and acidic electrolytes (rows 1 & 2, respectively) including perchloric ions (column 3). For purposes of examination the examiner will assume support exists, see below for an interpretation.
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.
Claims 1, 5, 7-9, 11, 13, 21 and 27-38 are 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 claims 1 and 13 “wherein the electrolyte comprises an anion that is configured to (i) maintain solubility of components in the electrolyte and (ii) minimize or prevent etching of the transparent or translucent conductive electrode” raises clarity issues. Particularly, etching of the electrode depends on the electrode material, as at least evidenced by instant application paragraph [8] and Table 1 noting ITO electrode may be etched by SiO42-, Cl- FTO electrode is stable and would not suffer from etching. Applicant appears to be claiming the selection the acidic electrolyte void of Cl- and comprising perchlorate anions and Bi metal cations that tends to have certain beneficial properties when interfaced with the claimed electrode – without specifically claiming particular electrolyte materials (i.e. an electrolyte consisting of as opposed to comprising) and/or specific solubility levels or etching rates for any transparent or translucent conductive electrode. It has been held “when 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 assume that configuring materials that maintain solubility and does not etch away the electrode is inherent.
Claims 5, 7-9, 11 and 34-38 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Claims 21 and 27-33 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 13 and therefore have the same deficiencies.
Regarding claim 38 “wherein the electrolyte comprises perchloric acid” raises clarity issues. While the application clearly has an electrolyte with perchloric anions (ClO4-) it does not mention perchloric acid (HClO4), per se. For example, Table 1 has acid-free and acidic electrolytes including perchloric ions. It is unclear if applicant is claiming a precursor ingredient used to supply the required perchloric ions (ClO4-) or if perchloric acid (HClO4) is separately/additionally present. While support for perchloric acid being separately/additionally present is not explicitly present in the application it is, for purposes of examination, assumed. Said assumed support requires the presence of perchloric acid being inherently present in the claimed composition. Therefore, for purposes of examination the examiner will assume that an acidic electrolyte comprising perchloric ions (ClO4-) inherently has some perchloric acid (HClO4). The examiner respectfully suggests cancelling this claim.
Claim Rejections - 35 USC § 102
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 and 27-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tench et al. US Patent 5,903,382, of record.
Regarding claim 1 Tench discloses an electrochromic dynamic glass article (title e.g. figures 1-3) capable of reversible metal electrodeposition (inter alia abstract see figures 1-3), comprising: a transparent or translucent conductive electrode (column 3 lines 33-36 “electrically conducting and electrochemically stable film 106, which is also substantially transparent” e.g. first electrode 106); an electrolyte (e.g. electrolytic solution 112) in contact with the transparent or translucent conductive 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 conductive 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 comprises an anion that is configured to (i) maintain solubility of components in the electrolyte and (ii) minimize or prevent etching of the transparent or translucent conductive electrode (inherent as discussed in 112 section above, further column 1 lines 45-51 notes bromide, iodide, or chloride electrolytes with introduce chemistry-related instabilities during long term operation), 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 no other component would make the electrolyte a base); 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).
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 conductive electrode (e.g. 106) comprises a transparent conducting oxide electrode which comprises at least one of indium tin oxide or fluorine-doped tin oxide (e.g. column 5 lines 39-44 “ITO”, also see claim 16).
Regarding claim 13 Tench discloses an electrochromic dynamic glass article (title e.g. figures 1-3) capable of reversible metal electrodeposition (inter alia abstract see figures 1-3), comprising: a transparent or translucent conductive electrode (e.g. 106); an electrolyte solution (e.g. 112) in contact with the transparent or translucent conductive electrode (e.g. see figure 1), the electrolyte solution comprising metal cations (e.g. 116) that can be reversibly electrodeposited onto the transparent or translucent conductive electrode upon application of a cathodic potential (inter alia column 3 lines 58-62 e.g. see figure 2); and a counter electrode (e.g. 110); wherein the electrolyte comprises an anion that is configured to (i) maintain solubility of components in the electrolyte and (ii) minimize or prevent etching of the transparent or translucent conductive electrode (inherent as discussed in 112 section above, further column 1 lines 45-51 notes bromide, iodide, or chloride electrolytes with introduce chemistry-related instabilities during long term operation), 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 no other component would make the electrolyte a base); 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).
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 electrochromic dynamic glass 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 electrochromic dynamic glass 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 electrochromic dynamic glass 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%”).
Claim Rejections - 35 USC § 103
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 9 and 21 are 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 conductive electrode comprises Pt nanoparticles.
Hernandez teaches a similar an electrochromic dynamic glass article capable of reversible metal electrodeposition (title), comprising: a transparent or translucent conductive electrode (page 104 3rd paragraph “windows are comprised of a transparent conducting working electrode”); 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 conductive 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 conductive 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.
Regarding claim 21 Tench discloses the article as recited in claim 13, as set forth above. Tench further discloses wherein the electrolyte solution is aqueous (column 2 line 67-column 3 line 3 “aqueous”)and acidic (e.g. column 5 line 65 “strongly acidic”), wherein the metal cations comprise Cu and at least one of Bi or Li (column 6 lines 8-15 “copper(I), bismuth(III)”, also see claim 26), wherein the transparent or translucent conductive electrode (e.g. 106) comprises a transparent conducting oxide electrode (e.g. column 5 lines 39-44 “ITO”, also see claim 16).
Tench does not disclose the transparent or translucent conductive electrode comprises Pt nanoparticles.
Hernandez further teaches wherein the transparent or translucent conductive 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.
Claims 34-38 are rejected under 35 U.S.C. 103 as being unpatentable over Tench et al. US Patent 5,903,382, of record, with 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 claim 34-37 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 6, as recited by claim 34; or alternatively wherein the electrolyte has a pH of less than 4, as recited by claim 35; or alternatively wherein the electrolyte has a pH of less than 3, as recited by claim 36; or alternatively 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]). This 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 6 or less than 4 or less than 3 or less than 2 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). 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<6 or pH<4 or pH<3 or pH<2 for the purpose of avoiding insolubility issues, 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 and since discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 38 Tench discloses the article as recited in claim 36, as set forth above. Tench further discloses wherein the electrolyte comprises perchloric acid (inherent given at least column 5 line 55-column 6 line 51 disclose the electrolyte components – column 5 line 65 “e.g., perchlorate”, see 112(a & b) rejections above).
Conclusion
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.
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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 April 5, 2026
1 A “strong” acid is understood to have a pH between 0 to 1, as evidenced by Clark Libretexts Chemistry “2. Strong and Weak Acids” https://chem.libretexts.org/Bookshelves/Physical_and_Theoretical_Chemistry_Textbook_Maps/Supplemental_Modules_(Physical_and_Theoretical_Chemistry)/Equilibria/Acid-Base_Equilibria/2._Strong_and_Weak_Acids, as of 2019.
2 See MPEP 2144.05.
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