Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 18th, 2026, has been entered.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claims 6 and 14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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.
Claim 6 recites a counter-substrate comprising glass or a flexible material, but claim 2, from which claim 6 depends, already requires the counter-substrate to be formed of a tempered glass. Therefore, claim 6 broadens past claim 2 (i.e., fails to include all the limitations of the claim upon which it depends), as it redefines the counter-substrate to comprising materials other than tempered glass.
Claim 14 recites the inclusion of an electrode coating, electrochemically active film, or an electrolyte film, but claim 2, from which claim 14 depends, requires each of these structural features. Therefore, claim 14 fails to further limit past claim 2.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim 16 is rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Poll et al (US2002/0075552A1).
With regards to claim 16, Poll discloses an electrochromic window (i.e., a glazing unit) depicted as comprising a first transparent element 28 (i.e., a first substrate) and a second transparent element 30 (i.e., a second substrate), with a combination of transparent electrodes 32 and 34 and electrochromic medium located therebetween (i.e., an electrochemical system disposed between the first and second substrates, the electrochemical system comprising a first coated electrode, a first electrochemically active film, and a second electrode), and a transparent substrate 14 (i.e., counter-substrate) depicted as disposed opposite the electrochemical system across the first substrate, the first substrate set back relative to the counter-substrate relative to the counter-substrate over an entire circumference of the first substrate, and the second substrate set back relative to the counter substrate over an entire circumference of the second substrate (Poll: abstract; para. [0044]-[0045] and [0106]; Figs. 1A-1B). Poll further notes that the transparent substrate 14 (i.e., counter-substrate) may be made of tempered glass (Poll: para. [0040]).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2-15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Poll et al in view of Agrawal et al (US2005/0025980A1).
With regards to claim 2, Poll discloses an electrochromic window (i.e., a glazing unit) depicted as comprising a first transparent element 28 (i.e., a first substrate) and a second transparent element 30 (i.e., a second substrate), with a combination of transparent electrodes 32 and 34 and electrochromic medium located therebetween (i.e., an electrochemical system disposed between the first and second substrates, the electrochemical system comprising a first coated electrode, a first electrochemically active film, and a second electrode), and a transparent substrate 14 (i.e., counter-substrate) depicted as disposed opposite the electrochemical system across the first substrate, the first substrate set back relative to the counter-substrate relative to the counter-substrate over an entire circumference of the first substrate, and the second substrate set back relative to the counter substrate over an entire circumference of the second substrate (Poll: abstract; para. [0044]-[0045] and [0106]; Figs. 1A-1B). Poll further notes that the transparent substrate 14 (i.e., counter-substrate) may be made of tempered glass (Poll: para. [0040]).
Poll does not disclose its electrochemical system as comprising a first electrode coating, an electrolyte film, and a second electrochemically active film.
Agrawal is directed to an electrochromic glazing comprising an electrochromic device formed of plurality of coated layers, the coated layers including two electrodes (i.e., a first coated electrode and a second electrode), an electrochromic layer (i.e., a first electrochemically active film), an electrolyte film, and an ion storage layer (i.e., a second electrochemically active film) (Agrawal: para. [0018], [0024], and [0066]-[0069]; Figs. 1a-3c). This particular structure, according to Agrawal, is known in the art, as electrochromic devices comprising sandwich constructions including electrodes for passing current and coatings which allow for movement of charged species, are well-known configurations (Agrawal: para. [0002]-[0005] and [0013]; Figs. 1a-1c). Agrawal further teaches that such a configuration remains bonded even after impact fracture, and further, the overall structure has improved adhesion (Agrawal: para. [0013] and [0018]). Poll and Agrawal are analogous art in that they are related to the same field of endeavor of electrochromic devices. A person of ordinary skill in the art would have found it obvious to have selected the electrochromic device of Agrawal (i.e., comprising a first electrode coating, a first electrochemically active material, an electrolyte film, a second electrochemically active material, and a second electrode), as such a structure is well-known in the art, and further, in order to provide improved adhesion which is maintained even when the device of Poll is fractured (see above discussion).
With regards to claim 3, Poll depicts its second substrate as set back relative to its counter-substrate over an entire circumference of the second substrate.
With regards to claim 4, the transparent element 28 (i.e., first substrate) comprises glass (Poll: para. [0055]).
With regards to claim 5, the transparent element 28 (i.e., first substrate) comprises soda lime glass (i.e., soda-lime-silicate glass) (Poll: para. [0055]).
With regards to claim 6, the counter-substrate comprises glass (see above discussion).
With regards to claim 7, the structure of Poll further includes an additional transparent layer 12 formed of glass, which is depicted as disposed opposite the electrochemical system across the second substrate (Poll: Fig. 1A).
With regards to claim 8, the glazing sheet is depicted as spaced from the second substrate (Poll: Fig. 1A).
With regards to claim 9, a chamber 24 (i.e., space) is depicted as present between the glazing sheet and the second substrate, the space comprising gas (Poll: para. [0063]).
With regards to claim 10, the transparent layer 12 (i.e., glazing sheet) comprises tempered glass (see above discussion).
With regards to claim 11, Poll depicts the first substrate as set back relative to the glazing sheet over the entire circumference of the first substrate.
With regards to claim 12, Poll depicts the first substrate as set back relative to the glazing sheet over the entire circumference of the first substrate (see above discussion).
With regards to claim 13, a person of ordinary skill in the art would have found it obvious to have enabled the electrochromic system to exhibit a user-controlled color change or change between clear and opaque states via electrodes (i.e., an optical-related property that is electrically controllable) in order to allow a user to set a desirable color to the electrochromic system (Agrawal: para. [0003] and [0030]-[0031]).
With regards to claim 14, the electrochemical system comprises two electrode coatings, two electrochemically active films, and an electrolyte film (see above discussion).
With regards to claim 15, seals 36 (i.e., intermediate layers, or interlayers) may be placed between each of the first substrate, second substrate, counter-substrate, and glazing sheet (i.e., inclusive of adhering the counter substrate to the second substrate via an interlayer), wherein the seals 36 are formed of an epoxy or sealant which provides a joining function (i.e., an adhesive) (Poll: para. [0007] and [0045]; Fig. 4A).
Response to Arguments
New grounds of rejection under 35 U.S.C. 103 are made over separate combinations of structural features across the Poll and Agrawal references, and a new ground of rejection under 35 U.S.C. 102(a)(1) under Poll is further made. Several of Applicant’s arguments are therefore rendered moot (namely, Applicant’s arguments to Agrawal on pages 5-10, since, as best understood, Applicant is essentially arguing that Agrawal does not teach each and every limitation of the claims, and is also an improper starting point for achieving the claimed invention, but Agrawal is no longer relied upon to teach every limitation, and Agrawal is no longer considered a primary reference).
The remainder of Applicant’s arguments which remain relevant to the present grounds of rejection have been fully considered but they are not found persuasive.
Applicant argues that Poll is silent as to a first substrate as being set back relative to a counter-substrate over an entire circumference of the first substrate, the counter-substrate being disposed opposite the electrochemical system. This argument is not found persuasive as Applicant has not provided evidentiary support for these assertions. Poll depicts a counter-substrate which is simultaneously spaced from first and second substrates (i.e., with respect to an entire circumference of the first and second substrates) and which has a larger circumference encompassing the circumferences of the first and second substrates. It is not clear how the structure of Poll fails to meet the limitations argued by Applicant.
Applicant argues that modification of Agrawal’s structure would be improper, as the structure of Poll adversely affects the lamination process of Agrawal (the general argument that Agrawal’s process is non-combinable or otherwise adverse to the claimed invention is considered to remain pertinent to the current grounds of rejection, despite this argument now being made with respect to a secondary reference). Arguments directed to the inoperability or non-combinability of Agrawal are not found persuasive as Agrawal is principally relied upon to teach that electrochemical systems according to the present claims are well-known in the art. As best understood, Agrawal’s specific process need not be used to obviate forming an electrochemical system according to the present claims. Alternatively, Applicant’s arguments do not preclude a person of ordinary skill from separately forming an electrochemical system according to Agrawal’s process, and then providing such a system within the overall structure of Poll.
Conclusion
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/ETHAN WEYDEMEYER/
Examiner, Art Unit 1783
