DETAILED ACTION
Status of Claims
Claims 1-38, 40-41, 43, 46-48, 50-52, 54 and 56-58 are pending.
Claims 32-38, 40-41, 43, 46-48, 50-52, 54 and 56-58 are withdrawn from consideration.
Claims 39, 42, 44-45, 49, 53, 55 and 59 are cancelled.
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 .
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 1-31 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 claims 1 and 31, the usage of parenthesis renders the claim indefinite because it is unclear if the phrasing within the parenthesis is required. It is unclear if the claims require “at least 80% light transmission at 600 nm” and/or “<0.1% light transmission at 600 nm”.
Regarding claim 20, the claimed phrase “often 0.5 M” renders the claimed indefinite because it is unclear what concentration is required. The usage of “often” is a relative term and vague in regards to it being required or not.
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 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) 1-3, 5-6, 10, 12, 14-16, 21, 25-27 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (“Aqueous alkaline electrolytes for dynamic windows based on reversible metal electrodeposition with improved durability”, Journal of Materials Chemistry C, 2020, 8, 1826).
Regarding claim 1, Miller discloses a dynamic window (title) (= a dynamic glass element or window) comprising a tin-doped indium oxide transparent conductor (abstract) (= comprising a transparent working conductive electrode or cathode), a Cu foil (page 1828, left column) (= a counter electrode or anode), an alkaline electrolyte (abstract, Table 1) (= an aqueous electrolyte composition as a solution or gel located between the cathode and the anode), wherein the electrolyte comprises:
80, 120, 400 mM bismuth
5, 20, 25, 100 mM copper (Table 1)
pH 8.5 (page 1827, left column, 4th paragraph)
(= wherein the electrolyte composition comprises an aqueous solution of a salt selected from the group consisting of at least one zinc salt, at least one bismuth salt, at least one copper salt or a mixture of at least one bismuth salt and at least one copper salt at a pH ranging from about 3-11, wherein the zinc salt is included in the electrolyte composition at a concentration of 0.01 M to 5.0 M, the bismuth salt, the copper salt or the mixture of the bismuth salt and copper salt are each included in said electrolyte composition at a molar concentration ranging from 5 to 25 mM). Regarding the claimed “wherein said electrolyte composition deposits zinc, bismuth, copper or bismuth and copper onto the surface of said cathode…to highly opaque..” is directed towards the manner of operating the claimed device. The instant claim is interpreted as an apparatus, device or additionally a device as a product. The manner of operating the claimed device does not further structurally limit the claimed apparatus (MPEP § 2114 II). The copper concentration of Miller falls within and overlaps the claimed range. The bismuth concentration of Miller lies outside the claimed range however one of ordinary skill in the art would expect the same or similar predictable result. Moreover, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Regarding claim 2, the instant claim is directed towards the method of operating the claimed device. Moreover, the device of Miller transitions from transparent to opaque (Figure 9).
Regarding claim 3, the instant claim is directed towards the manner of operating the claimed device and does not further structurally limit the claimed device.
Regarding claim 5, Miller discloses the electrolyte comprising bismuth, copper and a chelating agent (abstract). Regarding the “an effective amount of a chelating agent to solubilize said salt in said composition” the phrase does not further structurally limit the claimed device.
Regarding claim 6, Miller discloses bismuth chelating agent (e.g. equation 2).
Regarding claim 10, Miller discloses bismuth nitrate (Table 1).
Regarding claims 12 and 14, Miller discloses copper chloride (Table 1).
Regarding claims 15-16, Miller discloses the inclusion of a halide (e.g. 1 M K, 1 or 2 M Na) (Table 1). The claimed “an effective amount” is not particularly limiting to a specific amount. The ranges of Miller fall within the claimed range of claim 16.
Regarding claim 21, Miller discloses the chelating agent including EDTA (Table 1).
Regarding claims 25-26, Miller discloses tin-doped indium oxide (abstract).
Regarding claim 27, Miller discloses ITO on glass (Experimental section, page 1827, right column).
Regarding claim 30, Miller discloses a copper foil anode (page 1828, left column).
Claim(s) 4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (“Aqueous alkaline electrolytes for dynamic windows based on reversible metal electrodeposition with improved durability”, Journal of Materials Chemistry C, 2020, 8, 1826) in view Han et al. (“Origin of electrochemical, structural, and transport properties in nonaqueous zinc electrolytes” ACS Applied Materials & Interfaces, 2016, 8, 3021-3031).
Regarding claim 4, Miller fails to disclose said electrolyte composition comprises at least one zinc salt.
In the same or similar field of reversible electrodeposition, Han discloses utilizing a zinc electrolyte comprising a zinc salt (abstract). Han discloses the use of zinc for its number of promising features including highly efficient reversible zinc deposition, relatively lower activation barrier energy for migration of zinc ions in a variety of cathode materials, similar ionic radius compared with lithium and magnesium and much higher volumetric capacity compared to other multivalent metals such as magnesium and calcium (page 3022, left column).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a system comprising zinc salt because Han discloses that zinc can be reversibly electrodeposited and has several beneficial aspects including highly efficient reversible zine deposition, relatively lower activation barrier energy for migration of zinc ions in a variety of cathode materials, similar ionic radius compared with lithium and magnesium and much higher volumetric capacity compared to other multivalent metals such as magnesium and calcium (page 3022, left column). It would have been obvious to deposit any number of metals such as copper, bismuth and/or zinc and therefore the electrolyte would include a zinc salt.
Regarding claim 7, Han discloses a zinc TFSI (abstract).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (“Aqueous alkaline electrolytes for dynamic windows based on reversible metal electrodeposition with improved durability”, Journal of Materials Chemistry C, 2020, 8, 1826), in view Han et al. (“Origin of electrochemical, structural, and transport properties in nonaqueous zinc electrolytes” ACS Applied Materials & Interfaces, 2016, 8, 3021-3031) and in view of Noh et al. (US 2012/0147447).
Regarding claim 8, Han discloses a zinc containing electrolyte. Han does not disclose the zinc salt including zinc bromide, zinc sulfate, zinc perchlorate, zinc chloride or a mixture.
Noh et al. disclose an electrochromic device including a zinc salt which may be any one of zinc acetate, zinc carbonyl, zinc carbonate, zinc sulfate, zinc chloride, etc. [0005], [0022].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill to produce a device comprising a zinc salt such as zinc sulfate or zinc chloride because in the similar field of electrochromatics, Noh discloses that zinc may be provided in an electrolyte with any number of salts such as sulfate or chloride.
Regarding claim 9, Miller discloses the electrolyte comprising bismuth, copper and a chelating agent (abstract). It would have been obvious to present zinc salt as a metal chelate given the teachings of Miller that disclose chelating the metal salt with a chelating agent. One of ordinary skill in the art would expect the same or similar predictable result.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (“Aqueous alkaline electrolytes for dynamic windows based on reversible metal electrodeposition with improved durability”, Journal of Materials Chemistry C, 2020, 8, 1826) in view Iuchi et al. (US 2017/0330850).
Regarding claim 11, Miller discloses a bismuth salt however fails to disclose bismuth chloride, bismuth bromide, bismuth sulfate, bismuthyl perchlorate and mixtures thereof.
Iuchi discloses that bismuth salt may be present in an electrolyte including any number of compounds such as bismuth sulfate, bismuth bromide, bismuth nitrate [0061].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a device comprising a bismuth salt such as bismuth chloride, bismuth bromide, bismuth sulfate, bismuthyl perchlorate and mixtures thereof because Iuchi discloses that bismuth chloride, bismuth sulfate and bismuth nitrite are known equivalents in the same or similar field. One of ordinary skill in the art would expect the same or similar predictable result of electrodepositing bismuth.
Claim(s) 13 and 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (“Aqueous alkaline electrolytes for dynamic windows based on reversible metal electrodeposition with improved durability”, Journal of Materials Chemistry C, 2020, 8, 1826) in view Cho et al. (US 2008/0268280).
Regarding claim 13, Miller discloses a copper salt such as copper chloride however fails to disclose copper sulfate, copper bromide or a mixture thereof.
Cho discloses examples of copper salts including copper chloride and copper sulfate [0065].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a device comprising a copper sulfate salt because Cho discloses that copper chloride and copper sulfate are known equivalents in the same or similar field of endeavor. One of ordinary skill in the art would expect the same or similar predictable result of electrodepositing copper.
Regarding claims 23-24, Cho discloses the electrolyte comprising thiourea (Table 1).
Claim(s) 17-18 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (“Aqueous alkaline electrolytes for dynamic windows based on reversible metal electrodeposition with improved durability”, Journal of Materials Chemistry C, 2020, 8, 1826) in view Islam et al. (“Dynamic windows based on reversible metal electrodeposition with enhanced functionality”, ECS, 166, 8, D333-D338, 2019).
Regarding claims 17-18, Miller fails to disclose the electrolyte composition comprising a gelling agent.
In the same or similar field of reversible dynamic windows, Islam discloses the electrolyte comprising hydroxyethylcellulose (Experimental, 3rd paragraph). Islam discloses that the windows harness the electrodeposition of copper from an aqueous based gel electrolyte along with a second metal such as Bi (page D333, left column, 3rd paragraph).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a device comprising a gel electrolyte because Islam discloses producing the same or similar predictable result of a dynamic window with reversible electrodeposition using a gel electrolyte. The electrolyte compositions of Miller and Islam overlap in several aspects and therefore one of ordinary skill in the art would expect the same or similar predictable result. An effective amount of gel is not particularly limiting.
Regarding claim 31, Miller in view of Islam disclose the claimed invention as applied above. Miller discloses ITO (abstract). Islam discloses a gel electrolyte (page D333). Miller discloses the chelating agent including EDTA (Table 1). Miller discloses pH 8.5 (page 1827, left column, 4th paragraph) which is close enough to the claimed range that one of ordinary skill in the art would expect the same or similar predictable result.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (“Aqueous alkaline electrolytes for dynamic windows based on reversible metal electrodeposition with improved durability”, Journal of Materials Chemistry C, 2020, 8, 1826), in view Han et al. (“Origin of electrochemical, structural, and transport properties in nonaqueous zinc electrolytes” ACS Applied Materials & Interfaces, 2016, 8, 3021-3031) and in further view of Mikkola et al. (US 2004/0217009).
Regarding claim 19, Han discloses the inclusion of zinc salt in the electrolyte. Miller in view of Han fail to disclose copper acetate in the electrolyte.
In the same or similar field of electroplating baths, Mikkola discloses an electrolyte comprising zinc and copper acetate as a copper source [0018].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a device comprising copper acetate because Mikkola discloses that a copper ion source in an electrolyte may include copper acetate. Regarding the claimed “in an effective amount to said composition to inhibit the formation and/or facilitate the release of ZnO and Zn(OH)2 from the electrodeposited cathode” the phrasing does not appear to positively recite a specified amount. Moreover, the phrasing is directed towards the manner of operating the claimed device and does not further structurally limit the claimed device.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (“Aqueous alkaline electrolytes for dynamic windows based on reversible metal electrodeposition with improved durability”, Journal of Materials Chemistry C, 2020, 8, 1826) in view of Dewaki et al. (WO 2010089840).
Regarding claim 22, Miller discloses the chelating agent including EDTA (Table 1).
Miller fails to disclose the chelating agent including ED3A, EDDA or ED3A-OH.
In the same or similar field of electroplating metals, Dewaki discloses electroplating using a chelating agent or complexing agent including EDTA, ethylenediaminediacetic acid (EDDA) and other chelating agents (page 8, 3rd paragraph). Dewaki discloses electroplating metals such as bismuth (page 6 2nd paragraph).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a device comprising EDDA chelating agent because Dewaki recognizes in the same field of endeavor that EDDA and EDTA are equivalent chelating agents.
Claim(s) 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (“Aqueous alkaline electrolytes for dynamic windows based on reversible metal electrodeposition with improved durability”, Journal of Materials Chemistry C, 2020, 8, 1826) in view Heimann et al. (US 2005/0194262).
Regarding claims 28-29, Miller discloses a copper foil counter electrode as described above. Miller fails to disclose the anode comprising zinc.
In the same or similar field of electrochemical devices, Heimann discloses anodes that may be comprised of materials such as zinc and steel and wherein the anode may be any suitable configuration such as mesh [0082]. Hiemann discloses the process for modifying by employing apparatus and methods conventionally associated with electroplating processes [0081].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce an anode comprising zinc with steel in a mesh or grid configuration because Hiemann discloses that zinc and steel alloys in a mesh orientation for use in electroplating systems. It would have been obvious that substituting one anode for another would produce the same or similar predictable result. Regarding the claimed “coated with zinc via a lithographic…process” is directed towards product by process claim language and is not further structurally limiting.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEFANIE S WITTENBERG whose telephone number is (571)270-7594. The examiner can normally be reached Monday - Friday, 7:00 am -4:00 pm EST.
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/Stefanie S Wittenberg/ Primary Examiner, Art Unit 1795
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