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 .
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.
Claims 1-5 and 14-17 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 claim 1 “a mixture of a first base electrolyte containing silver (Ag), a second base electrolyte containing lithium (Li), and a solvent, wherein a concentration ratio of the second base electrolyte to the first base electrolyte is greater than 1:5 and less than 1:20” raises clarity issues. The claim is directed to a final product. The process of making said product has no patentable weight1. In this case, only the final mixture in the final product would have patentable weight. Further, the ratio of concentration ratios of unknown quantities makes the metes and bounds of the final mixture vague and indefinite. Particularly, while one could safely assume the first base electrolyte has a solution one has no idea if there are other solutes besides silver in it. Similarly, one has no idea if there are other solutes besides lithium in the second base electrolyte. Further, it is unspecified if the concentration ratios are in terms of mass or volume or molarity or parts per million, which would result in different concentration ratios for the same solution. Thus, there is no limitation regarding the amount/concentration/molarity of the final mixture, since there are no limitations of how much of the first base electrolyte and second base electrolyte are present in the final mixture. The specification repeats this language and sheds no light on these issues. The examiner cannot discern if applicant is claiming limitations on the precursor elements (i.e. “base electrolyes”) or the final mixture. Only the final product mixture would have patentable weight. (For example, it does not matter if the lithium was extracted from brine or spodumene rock, only that lithium is present.) The concentration of precursor ingredients does not limit the final mixture, i.e. one skilled in the art could not make any determination as to the amount and/or concentration of silver and lithium in the final solution. To be definite there would need to be further limitations, such as equal amounts of the first and second base electrolytes are mixed together to form the electrolyte (not discussed in or supported by the specification) and/or the composition of the first and second base electrolytes (not discussed in or supported by the specification), and units for the concentration ratios (not discussed in the specification). The only clear limitations for the claimed device is that it has an electrolyte with silver, lithium and a solvent. For purposes of examination the examiner will use “, the electrolyte containing silver (Ag),
Claims 2-5 and 14-17 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Regarding claim 2 “wherein a near-infrared ray blocking mode of transmitting visible light wavelengths, and blocking near-infrared wavelengths, is selectively implemented when voltage is applied to the first electrode and the second electrode, thereby causing the lithium ions to move from the electrolyte to the electrochromic layer” raises clarity issues. It is unclear if this is an intended method of use2 or if this is listing beneficial aspects of the smart electrochromic device that necessarily flow from the claimed structure (assumed). 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). While there is not enough structure to selectively control the transmission properties of the claimed device (e.g. a power supply applying voltage to the electrodes of the device) it is noted that electrochromic devices by definition control transmission of light inherently by a redox reaction (with the application of different voltages). For purposes of examination the examiner will use “wherein the smart electrochromic device is capable of a near-infrared ray blocking mode …”
Regarding claim 3 “wherein a black mode having transmittance of 1% or less for visible light wavelengths, and reflectance of 10% or less for visible light wavelengths, is selectively implemented when voltage is applied to the first electrode and the second electrode, thereby causing all of the silver ions and the lithium ions in the electrolyte to move from the electrolyte to the electrochromic layer” raises clarity issues. It is unclear if this is an intended method of use3 or if this is listing beneficial aspects of the smart electrochromic device that necessarily flow from the claimed structure (assumed). 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). While there is not enough structure to selectively control the transmission properties of the claimed device (e.g. a power supply applying voltage to the electrodes of the device) it is noted that electrochromic devices by definition control transmission of light inherently by a redox reaction (with the application of different voltages). For purposes of examination the examiner will use “wherein the smart electrochromic device is capable of a black mode …”
Regarding claim 4 “wherein a mirror mode having transmittance 2% or less for visible light wavelengths, and reflectance of 70% or more for visible light wavelengths, is selectively implemented when voltage is applied to the first electrode and the second electrode, thereby causing the silver ions to move from the electrolyte to the second electrode” raises clarity issues. It is unclear if this is an intended method of use4 or if this is listing beneficial aspects of the smart electrochromic device that necessarily flow from the claimed structure (assumed). 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). While there is not enough structure to selectively control the transmission properties of the claimed device (e.g. a power supply applying voltage to the electrodes of the device) it is noted that electrochromic devices by definition control transmission of light inherently by a redox reaction (with the application of different voltages). For purposes of examination the examiner will use “wherein the smart electrochromic device is capable of a mirror mode …”
Regarding claim 5 “wherein a transparent mode having transmittance of 70% or more for visible light wavelengths, and reflectance of 15% or less for visible light wavelengths, is selectively implemented when no voltage is applied to the first electrode and the second electrode, and the silver ions and the lithium ions do not move in the transparent mode” raises clarity issues. It is unclear if this is an intended method of use5 or if this is listing beneficial aspects of the smart electrochromic device that necessarily flow from the claimed structure (assumed). 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). While there is not enough structure to selectively control the transmission properties of the claimed device (e.g. a power supply applying voltage to the electrodes of the device) it is noted that electrochromic devices by definition control transmission of light inherently by a redox reaction (with the application of different voltages). For purposes of examination the examiner will use “wherein the smart electrochromic device is capable of a transparent mode …”
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 and 16-17 are rejected under 35 U.S.C. 102(a)(1 & 2) as being anticipated by Cho et al. US Patent Application Publication 2019/0025665, of record, with evidence of certain facts provided by Chandrasekhar international patent document WO2014/143011, of record.
Regarding claim 1 Cho discloses a smart electrochromic device (title e.g. see figure 1) comprising: first and second electrodes (e.g. second transparent electrode 22 & first transparent electrode 12, respectively) disposed facing each other (paragraph [0033] e.g. see figure 1); an electrochromic layer (e.g. counter electrode material layer 30 paragraph [0034] “an electrochromic material”) disposed between the first and second electrodes (e.g. see figure 1) and containing a metal oxide (paragraph [0030] “30 may include at least one out of tungsten oxide (WO3), cerium oxide (CeO2), titanium oxide (TiO2), nickel oxide (NiO), molybdenum oxide (MoO3), cobalt oxide (CoO2), iridium oxide (IrO2), and tin oxide (SnO2)”); and an electrolyte (e.g. electrolyte solution 40) disposed between the second electrode and the electrochromic layer (e.g. see figure 1) and the electrolyte containing silver (e.g. paragraph [0035] “40 may include silver”), lithium (e.g. paragraph [0035] “40 may further include lithium”), and a solvent (e.g. paragraph [0035] “40 may include at least one solvent”), wherein transmittance and reflectance for visible light wavelengths and transmittance and reflectance for near-infrared ray wavelengths are capable of6 being selectively controlled according to movements of at least one of silver ions or lithium ions in the electrolyte (inherent given the structure, composition, operation principles and function).
Regarding claim 2 Cho discloses the smart electrochromic device of claim 1, as set forth above. Cho further discloses wherein the smart electrochromic device is capable of7 a near-infrared ray blocking mode of transmitting visible light wavelengths, and blocking near-infrared wavelengths, is selectively implemented when voltage is applied to the first electrode and the second electrode, thereby causing the lithium ions to move from the electrolyte to the electrochromic layer (inherent capability that this state can be achieved given claimed structure, composition and operating principles, further paragraph [0062] “tungsten oxide film may be one of electrochromic materials that change color as a result of oxidation/reduction” and the fact that W03 reversibly blocks IR as evidenced by Chandrasekhar e.g. see figures 5-6).
Regarding claim 3 Cho discloses the smart electrochromic device of claim 1, as set forth above. Cho further discloses wherein the smart electrochromic device is capable of8 a black mode having transmittance of 1% or less for visible light wavelengths, and reflectance of 10% or less for visible light wavelengths, is selectively implemented when voltage is applied to the first electrode and the second electrode, thereby causing all of the silver ions and the lithium ions in the electrolyte to move from the electrolyte to the electrochromic layer (inherent capability that this state can be achieved given claimed structure, composition and operating principles).
Regarding claim 4 Cho discloses the smart electrochromic device of claim 1, as set forth above. Cho further discloses wherein the smart electrochromic device is capable of9 a mirror mode having transmittance 2% or less for visible light wavelengths, and reflectance of 70% or more for visible light wavelengths, is selectively implemented when voltage is applied to the first electrode and the second electrode, thereby causing the silver ions to move from the electrolyte to the second electrode (inherent capability that this state can be achieved given claimed structure, composition and operating principles, further e.g. see figure 7).
Regarding claim 5 Cho discloses the smart electrochromic device of claim 1, as set forth above. Cho further discloses wherein the smart electrochromic device is capable of10 a transparent mode having transmittance of 70% or more for visible light wavelengths, and reflectance of 15% or less for visible light wavelengths, is selectively implemented when no voltage is applied to the first electrode and the second electrode, and the silver ions and the lithium ions do not move in the transparent mode (inherent capability that this state can be achieved given claimed structure, composition and operating principles, further e.g. see figures 6-7).
Regarding claim 16 Cho discloses the smart electrochromic device of claim 1, as set forth above. Cho further discloses wherein the metal oxide includes tungsten oxide (inter alia paragraph [0034] “30 may include at least one out of tungsten oxide (WO3)”).
Regarding claim 17 Cho discloses the smart electrochromic device of claim 1, as set forth above. Cho further discloses wherein the electrolyte includes silver nitrate (paragraph [0035] “40 may further include silver nitrate (AgNO3)”).
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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. US Patent Application Publication 2019/0025665, of record, in view of Hernandez et al. “Electrolyte for Improved Durability of Dynamic Windows Based on Reversible Metal Electrodeposition” Joule 4, 1501–1513, July 15, 2020, of record.
Regarding claim 14 Cho discloses the smart electrochromic device of claim 1, as set forth above. Cho does not disclose wherein the electrolyte includes at least one of lithium perchlorate (LiClO4) or lithium bis(trifluoromethanesulfonyl)imide (Li-TFSI). Hernandez teaches a similar device (e.g. see figure on first page) and further teaches an improvement to the electrolyte that includes perchlorates (see summary on page 1501) for the purpose of permitting fully reversible metal electrodeposition without harming the substrate or introducing irreversible side reactions, having long-term durability, and no evidence of electrode etching (see summary on page 1501). 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 electrochromic device as disclosed by Cho to be improved by having perchlorate as taught by Hernandez for the purpose of permitting fully reversible metal electrodeposition without harming the substrate or introducing irreversible side reactions, having long-term durability, and no evidence of electrode etching.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. US Patent Application Publication 2019/0025665, of record, in view of Ye et al. “Electrodeposition-based electrochromic devices with reversible three-state optical transformation by using titanium dioxide nanoparticle modified FTO electrode” RSC Adv., 2016, 6, 30769, of record.
Regarding claim 15 Cho discloses the smart electrochromic device of claim 1, as set forth above. Cho does not disclose wherein a plurality of particles of the metal oxide are observed in the electrochromic layer. Ye teaches a similar electrochromic device (title e.g. see figure 3) including an electrochromic metal oxide material layer (e.g. see TiO2 layer in figure 3), and further teaches the metal oxide (e.g. TiO2) is in the form of particles (abstract “TiO2 nanoparticles”) for the purpose of effectively controlling the optical properties of the device in different states and having good stability (abstract). 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 electrochromic device as disclosed by Cho to have a plurality of particles of the metal oxide are observed in the electrochromic layer as taught by Ye for the purpose of effectively controlling the optical properties of the device in different states and having good stability.
Response to Arguments
Applicant’s arguments, see remarks, filed December 17, 2025, with respect to the claim rejections under 112 (as set forth in the Office action posted September 23, 2025) have been fully considered and in combination with the amendments are persuasive. The claim rejections under 112 (as set forth in the Office action posted September 23, 2025) have been withdrawn.
Applicant's arguments filed December 17, 2025 have been fully considered but they are not persuasive.
Regarding applicant’s argument centered on the ratio of concentration ratios of two precursor ingredients is not a recognized result-effective variable, the examiner is persuaded. However, given applicant’s discussion of the first and second base electrolytes (e.g. two precursor solutions mixed together to form the electrolyte) the examiner has reached the conclusion, as set forth in the 112 rejection above, that the only discernable limitations one skilled in the art can draw from claim 1 in light of the specification is that the (final) device has an electrolyte containing Ag, Li and a solvent. Cho anticipates a (final) device includes an electrolyte containing Ag, Li and a solvent, as set forth above. In plain language, it does not matter if the electrolyte was formed by mixing two or more electrolytes or if it was formed by mixing all of the ingredients as a single (final) electrolyte or it was formed by having ingredients added to an electrolyte. What has patentable weight is the composition of the final electrolyte in the device.
Further, the examiner notes that the amount/concentration of silver and lithium in a reversible electrodeposition/electrochromic device is a result-effective variable (evidential references listed below). Particularly, if there is not sufficient silver the mirror mode would not occur, since there would not be enough silver to deposit a continuous silver layer of sufficient thickness to reflect light. On the other hand, if there is too much silver (assuming the amount is still under saturation limits) the electrolyte would darken, effecting the transmission in a transmission mode, and require longer to switch from a mirror mode to a different mode, since there would be more silver that would need to be reversed to solution. Similarly, if there was insufficient amounts of lithium the redox reaction would be slow and uneven and if there was excessive amounts of lithium saturation would be reached, effecting the transmission in a transmission mode. Further the relative amounts of silver and lithium is known to affect the stability of the electrolyte. Therefore, the amount/concentration of lithium and silver in the (final) electrolyte is a result-effective variable, in it would change the optical and electrical properties, the transition time and stability of the electrolyte. Therefore, in arguendo, even if one could draw clear and definite ranges for the relative amount and/or concentrations of elements in the electrolyte one skilled in the art could adjust said amount and/or concentrations of elements to find a working range and/or optimize the composition to achieve performance – particular optical properties, electrical properties, transition times and/or chemical stability.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mason US Patent 5,209,871; in evidence that the concentration/amount of lithium in an electrolyte in a electrochromic device can be optimized by one skilled in the art, see column 5 line 61-column 6 line 21 discussing electrolyte composition using lithium salt and concludes by stating: “[t]he optimal amount of salt to be incorporated will be apparent to one skilled in the art”.
Tench et al. US Patent 6,111,685; in evidence that an electrolyte with silver and lithium in a reversible electrodeposition/electrochromic device has a silver ion to halide/pseudohalide anion (e.g. lithium ion) of 1:6 to increase stability, see column 8 lines 41-67.
Oh et al. US Patent Application Publication 2005/0231785; discussing the variation of ion concentration (e.g. lithium) in an electrolyte effects the performance of the electrochromic device, e.g. see paragraph [0067].
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.
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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 February 19, 2026
1 It has been held that the presence of process limitations in a product claim, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to the product. In re Stephens 135 USPQ 656 (CCPA 1965). Furthermore, the patentability of a product does not depend upon its method of production. If the product in a product by process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed Cir 1985). See MPEP 2113.
2 It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d, 1647, 1987; see MPEP 2114.
3 Ibid Ex parte Masham & MPEP 2114.
4 Ibid Ex parte Masham & MPEP 2114.
5 Ibid Ex parte Masham & MPEP 2114.
6 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).
7 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).
8 Ibid In re Hutchison & MPEP 2173.05(g).
9 Ibid In re Hutchison & MPEP 2173.05(g).
10 Ibid In re Hutchison & MPEP 2173.05(g).