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 .
Election/Restrictions
Applicant's election with traverse of Invention I, Species I (claims 16-17, 19, 20, and 22-25) in the reply filed on 4/27/2026 is acknowledged. The traversal is on the ground(s) that the finding that there is lack of unity is incorrect because there are additional features common to claims 16 and 26 beyond the a)-e) stack. Applicant argues that the additional features are not disclosed in Melcher and therefore does define a contribution over the prior art and qualifies as a special technical feature within the meaning of PCT Rule 13.2. This is not found persuasive because the recited limitations common to claims 16 and 26 are disclosed in Melcher as noted in the Requirement for Restriction/Election. Applicant argues that there are additional features beyond the a)-e) stack that are common to claims 16 and 26 such as:
(i) a contact region in which the first carrier film, the first planar electrode, and the active layer are absent (claim 16) or stripped away to expose the second planar electrode (claim 26, steps (B)-(D)), and
(ii) the contact region having the shape of a strip with tapered ends (recited verbatim in both independent claims).
Regarding Applicant’s argument in (i) above, Examiner disagrees with Applicant’s arguments and notes that the steps (B)-(D) in claim 26 does not automatically lead to one of ordinary skill in the art before the time of the effective filing of the claimed invention to assume the structure of “in a first contact region, the first carrier film, the first planar electrode and the active layer are absent, such that the second planar electrode is exposed…” Examiner notes that claim 26 does not explicitly recite the claim 16 limitations of “the second planar electrode is exposed.” Therefore, one of ordinary skill in the art before the time of the effective filing of the claimed invention would not automatically assume that “the second planar electrode is exposed” based on the limitations of claim 26.
Regarding Applicant’s argument in (ii) above, Examiner notes that claim 26 does not explicitly recite that “the first contact region is in the shape of a strip with tapered ends” as in claim 16. Examiner notes that claim 26 recites that “the cut surrounds the contact region in the shape of a strip with tapered ends,” which is distinct from reciting that “the first contact region is in the shape of a strip with tapered ends.” Claim 26 only describes the shape of the cut that “surrounds the contact region” but not explicitly the shape of the contact region itself. Therefore, the Requirement for Restriction/Election is maintained.
Applicant further argues that Melcher does not disclose (i) and (ii) above. However, Applicant’s arguments are moot for the reasons as noted above. Furthermore, since there is no “additional features” common to claims 16 and 26, there is no special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 18, 21, and 26-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/27/2026.
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.
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) 16-17 and 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Collins et al. (U.S. 2012/0026573) in view of Yoon et al. (U.S. 2012/014697).
Regarding claim 16, Collins discloses a multilayer film (400, Fig. 4A; page 8, para [0061]) having electrically controllable optical properties (electrochromic properties, Fig. 4A; page 8, para [0061]), comprising in the order specified and arranged one above the other in a flat manner:
a first carrier film (BUS BAR 1, Fig. 4A; page 8, para [0063]),
a first planar electrode (SECOND TCO, Fig. 4A; page 8, para [0061]),
an active layer (EC STACK, Fig. 4A; page 3, para [0029]) comprising one or more layers in sequence, the active layer (EC STACK, Fig. 4A) having electrically controllable properties (page 3, para [0029]),
a second planar electrode (FIRST TCO, Fig. 4A; page 8, para [0061]) and
a second carrier film (410, Fig. 4A; page 8, para [0061]),
wherein, in a first contact region (such as region 430, Fig. 4A; page 8, para [0062]), the first carrier film (BUS BAR 1, Fig. 4A), the first planar electrode (SECOND TCO, Fig. 4A) and the active layer (EC STACK, Fig. 4A) are absent, such that the second planar electrode (FIRST TCO, Fig. 4A) is exposed,
wherein the first contact region (430, Fig. 4A) is int eh shape of a strip.
Collins does not expressly disclose that the first contact region (430, Fig. 4A) has tapered ends. However, Yoon discloses a multilayer film (Fig. 1; page 3, para [0065]) comprising a contact hole region (C1, Fig. 1; page 7, para [0130]) that can be formed to have sidewalls that are perpendicular to a planar surface or sidewalls that have tapered ends relative to the planar surface (page 7, para [0130]) as art recognized equivalent alternatives to forming a contact hole region (page 7, para [0130]). Therefore, before the time of the effective filing of the claimed invention, it would have been obvious to one of ordinary skill in the art to form the first contact region (Collins: 430, Fig. 4A) of Collins that is analogous to the first contact hole region (Yoon: C1, Fig. 1) of Yoon to have the art recognized equivalent alternative configuration of having sidewalls that have tapered ends relative to a planar surface (Yoon: such as upper surface of FIRST TCO, Fig. 4A) in order to obtain the benefits of forming an art recognized equivalent configuration of a contact hole region as evidenced by Yoon (Fig. 1).
Regarding claim 17, Collins as modified by Yoon discloses a multilayer film with all the limitations above but does not expressly disclose wherein the first contact region (Collins: 430, Fig. 4A) is in the shape of an elongated hexagon. However, official notice is taken that it is well known to one of ordinary skill in the art before the time of the effective filing of the claimed invention that a conductive contact region can be formed into a shape of an elongated hexagon in order to increase an area of the contact surface of the contact region. Therefore, before the time of the effective filing of the claimed invention, it would have been obvious to one of ordinary skill in the art to configure the first contact region (Collins: 430, Fig. 4A) of Collins as modified by Yoon to have a shape of an elongated hexagon in order to obtain the benefits of increasing an area of the contact surface of the contact region as is well known in the art.
Regarding claim 24, Collins as modified by Yoon discloses a multilayer film with all the limitations above and further discloses wherein the multilayer film is an electrochromic multilayer film (Collins: page 3, para [0029]) having electrochromic active layers (Collins: page 3, para [0029]), the electrochromic active layers comprising in the order specified and arranged one above the other in a flat manner:
c1) an ion storage layer (Collins: page 3, para [0029]),
c2) an electrolyte layer (Collins: such as a conductive layer; page 3, para [0029]), and
c3) an electrochromic layer (Collins: electrochromic layer; page 3, para [0029]).
Regarding claim 25, Collins as modified by Yoon discloses a multilayer film with all the limitations above and further discloses a laminated pane (Collins: 500, Fig. 5B; page 8, para [0066]) comprising two glass panes (Collins: GLASS and GLASS 2, Fig. 5B; page 8, para [0066]) and a multilayer film (Collins: 400, Fig. 4A) according to claim 16, wherein the multilayer film (Collins: 400, Fig. 4A) is arranged between the two glass panes (Collins: GLASS and GLASS 2, Fig. 5B) and is connected to each pane via at least one thermoplastic connecting film (Collins: 515, Fig. 5B; page 8, para [0065]; page 6, para [0052]).
Allowable Subject Matter
Claims 19-20 and 22-23 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art as presently searched does not disclose the multilayer film of claim 19 (having all the combination of features including wherein the tapered ends are defined by two touching sections of a boundary line of the first contact region, which form an angle of less than 90°), does not disclose the multilayer film of claim 22 (having all the combination of features including a current busbar arranged in the contact region on the second planar electrode, wherein the current busbar is a strip of an electrically conductive film), and does not disclose the multilayer film of claim 23 (having all the combination of features including in a second contact region the second carrier film, the second planar electrode and the active layer are absent, such that the first planar electrode is exposed, wherein the second contact region is in a shape of a strip with tapered ends). Claim 20 is objected to as being dependent on claim 19.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL CHANG LEE whose telephone number is (571)270-7923. The examiner can normally be reached M-F 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Caley can be reached at 571-272-2286. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL C LEE/Primary Examiner, Art Unit 2871
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