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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/22/2026 has been entered.
Response to Amendment
Applicant’s amendment filed 5/22/2026 has entered prosecution.
Claims 1-2, 4-11, 22-24 are pending examination. Claims 14-20 remain withdrawn from consideration.
Applicant’s amendment necessitates the new grounds of rejection presented in this office action.
Response to Arguments
Applicant's arguments filed 5/22/2026 have been fully considered but they are not persuasive. Applicant tenders the argument that the examiner has used hindsight reasoning to combine references where no explicit motivation between them to justify such a combination, and furthermore, to effectively reconstruct the instant claims. This is not persuasive as the courts have held that there need not be an express, written motivation to combine references within the prior art in order to find obviousness (see MPEP 2145 X A). Further, any finding of obviousness is necessarily a reconstruction based on hindsight reasoning, but it is absolutely permissible when taking into account what is known by a person of ordinary skill at the time.
In this case, the electrochemical arts have known broadly for well over half a century that pulsed electrodeposition provides finer grain structure owing to a higher density of nucleation points coupled with the subsequent depletion and replenishment of the diffusion boundary layers immediate to said nucleation points, which is expressly disclosed by Tomantschger. This would be obvious for one of ordinary skill to try in combination with Hernandez for the obvious purpose of controlling the grain structure of the resultant bimetallic film. Additionally, it is clearly well known, as per Kurapova, that preconditioning a Bi-Cu bimetallic film growth with a Cu wetting layer improves the mechanical properties of the resulting bimetallic deposit. This would also be obvious to try with Hernandez to improve the mechanical robustness of the resultant electrodeposited film. Summarily, while not ceding the presence or absence of allowable subject matter being contained within the present application, these arguments are not persuasive because they do not demonstrate novelty. All of the claimed components are known by one of ordinary skill, there is good reason one of ordinary skill would apply these components to achieve the present method, and therefore the present arguments do not overcome the threshold of the prima facie case of obviousness previously and currently presented.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 22-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The instant claim requires that the method of 22 further requires a second DC voltage which is then followed by applying a second pulse voltage in this dissolution phase to remove the metallic film from the working electrode. Applicant cites [0040] and [0060] to justify this limitation. These sections do not contain any detail regarding the electrodissolution process, but only the plating. Accordingly, there is no support within the instant specification to allow for the limitation that the dissolution step requires a “second pulsed voltage” which removes the film from the working electrode. Attention is required.
Claim Rejections - 35 USC § 103
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 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, 4-11, 24 are rejected under 35 U.S.C. 103 as being unpatentable over Tyler S. Hernandez, Christopher J. Barile, Michael T. Strand, Teresa E. Dayrit, Daniel J. Slotcavage, and Michael D. McGehee. “Bistable Black Electrochromic Windows Based on the Reversible Metal Electrodeposition of Bi and Cu” ACS Energy Letters 2018 3 (1), 104-111 with the appended Supplementary info in view of Tomantschger (US8062496B2).
Regarding Claim 1, 4-7, 9, 11 and 24, Hernandez teaches a method for forming dynamic windows in two electrodes array (Supplementary pg. 2, para. 2). Below is Fig. 6 of Hernandez demonstrating the dynamic window array. Hernandez teaches that a Pt-modified ITO on a glass working electrode comprises a front face and a back glass piece (thus marking the outsides of the device) and a Cu foil counter electrode is adjacent to both glass pieces, and a Bi-Cu electrolyte is between the glass pieces (Fig. 6; Page 108, Col 1., Para 3). Hernandez teaches that deposition at -0.6V is applied to co-deposit the metal ions onto the ITO for 3s lowers the optical transmittance of the glass, which is followed by switching the voltage to +0.8V for 3s to restore the initial condition of the glass (Fig. 10; Page 109, Col 1., Para 2). Hernandez teaches that the dynamic windows with metal deposit on them are “color-neutral” (Page 107, Col. 2, last sentence of 1st para.).
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However, Hernandez does not teach the use of a first pulsed voltage which includes a plurality of pulses comprising an on phase and an off phase.
Tomantschager teaches a method and apparatus for electroplating (abstract) which operates by DC or pulse electrodeposition (Col. 1, para. 1).
Tomantschger teaches that the pulse electrodeposition has a pulse on and off times range from 0.1 to 10,000 ms with a frequency between 0 to 1000 Hz and a duty cycle between 5 to 100% (Col. 6, Lines 47-67). Tomantschger teaches that variation to the pulse plating schedule impacts the grain size (Col. 20, Lines 59-67 through Col. 21, Lines 1-12), for which one of ordinary skill could further infer that the DC plating schedule also impacts grain size. One of ordinary skill in the art of electrochemistry readily appreciates that grain size control in a depositing layer readily affects the resulting structural quality, texture, and uniformity of the layer.
Prior to the filing of the present invention it would have been obvious to one of ordinary skill in the art that the known method of fabricating dynamic windows according to Hernandez was ready for improvement by the incorporation of the pulse electrodeposition method of Tomantschger, including the duty cycle, frequency, and pulse voltage on and off durations, in order that the resulting deposit would have improved grain structure, thereby producing a more consistent film (see MPEP 2143 I D). Further, as the claimed method requires all the particulars of the instant claim, it is understood that under the principle of inherency, the combination of Hernandez in view of Tomantschger would necessarily result in reduced dendrite growth owing to the pulsed plating schedule, thereby extending the cycle life of the electrochromic device (see MPEP 2112.02 I).
Regarding Claim 8, Hernandez teaches that for the two-electrode dynamic window device, after application of -0.6 V the transmission of the window decreases to 11-19%. Prior to the filing of the present invention it would have been prima facie obvious to one of ordinary skill in the art that through routine experimentation of the method taught by Hernandez in view of Tomantschger, the light transmittance through a dynamic window could be optimized to be between 11-15% (see MPEP 2144.05 II A).
Regarding Claim 10, Hernandez teaches that the dynamic windows generated by the disclosed method are “color-neutral” (Page 107, Col. 2, last sentence of 1st para.).
Regarding Claim 24, Hernandez in view of Tomantschger teaches to Claim 1, as shown above. It was shown that the modified method incorporates that Tomantschger teaches the pulse deposition length may be 0.1 to 10,000 ms (Col. 6, Lines 47-67). Hernandez further teaches that the deposition duration may be between 0 and 30 s (see Fig. 10 Pg. 6). Prior to the filing of the present invention it would have been obvious to one of ordinary skill that the method of forming an electrochromic window as per Hernandez in view of Tomantschger teach a DC plating schedule between 5 and 20 seconds, followed by a pulse deposition up to 120 seconds, as a matter of routine optimization (see MPEP 2144.06 II A).
Claims 23 is rejected under 35 U.S.C. 103 as being unpatentable over Tyler S. Hernandez, Christopher J. Barile, Michael T. Strand, Teresa E. Dayrit, Daniel J. Slotcavage, and Michael D. McGehee. “Bistable Black Electrochromic Windows Based on the Reversible Metal Electrodeposition of Bi and Cu” ACS Energy Letters 2018 3 (1), 104-111 with the appended Supplementary info in view of Tomantschger (US8062496B2) further in view of Kurapova et. al “The microstructure and mechanical properties of twinned copper-bismuth films obtained by DC electrodeposition” J. Alloys and Compounds. 2021, 862, 158007, as applied to Claim 1, further in view of Taylor (US6558231B1).
Regarding Claim 23, Hernandez in view of Tomantschger teaches to Claim 1, as shown above.
However, Hernandez does not teach that a first and second DC bias is followed by a deposition pulsed voltage and electrodissolution pulsed voltage, respectively, comprising multiple on and an off phase.
Kurapova teaches a method for DC electrodeposition to form Bi-Cu films (abstract). Kurapova teaches that a Bi-Cu electrodeposition film occurs by a two-step process, wherein a first Cu buffer/seed layer is first deposited by DC electrodeposition (Col. 2, Page 2, middle para.). Kurapova teaches that the surface of the Cu buffer layer has high roughness, and promotes the epitaxial growth of the subsequent Bi-Cu layer (Col. 2, Page 3, 2nd paragraph). Kurapova teaches that the pure copper films have a high density of twinned grain boundaries, which enables excellent mechanical properties to the buffer layer on which the Bi-Cu film is grown (Col. 1, Page 6, Section 4).
Taylor teaches a method for smoothing metal surfaces using pulsed electrochemical processes [abstract]. Taylor teaches the use of anodic pulses to remove metals from a surface, wherein the pulses may range from 0.1 to 100 ms [Col. 5, Lines 38-59]. Taylor teaches that macroasperities (meaning the unevenness of a surface) can be removed by a first pulsing condition, and that a second pulsing condition may be applied to further control the microprofile structure owing to precise control over the thickness of the Nernst diffusion layer, which allows control over the microasperities to any desired degree [Col. 6, Lines 18-37]. However, Taylor teaches that the use of pulses to strip metal from a surface necessarily contains an off-period, wherein the inclusion of a duty cycle will result in a lower rate of charge transfer such that one of ordinary skill would have to perform experimentation to optimize the desired rate of material removal from the surface [Col. 5, bottom paragraph to Col. 6, top paragraph].
Prior to the filing of the present invention it would have been obvious to one of ordinary skill that the method of using an pulsed electrochemical process to finely remove metal from a surface, as per Taylor, could be incorporated in the modified method for an electrochromic window, as per Hernandez in view of Tomantschger, in order that one would arrive an electrochromic window with finer control over the film thickness and thereby the exact degree of transmission light through the window [see Fig. 10 of Hernandez that control over the stripping process effects the transmission of light through the window]. Furthermore, it would have been obvious to one of ordinary skill that a DC stripping process could precede the pulsed stripping pulse, as per Hernandez, in view of Tomantschger in view of Taylor, and a DC plating process could precede the deposition pulsing, as per Kurapova, in order that one would arrive at a method capable of forming a copper seed layer by DC deposition prior to depositing Bi-Cu bimetallic layer with improved material properties as well as further quickly achieving an approximate desired metal film thickness (and thus transmission) by an initial DC process, followed by a fine-tuned exacting thickness and surface roughness by a final pulsed process.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Tyler S. Hernandez, Christopher J. Barile, Michael T. Strand, Teresa E. Dayrit, Daniel J. Slotcavage, and Michael D. McGehee. “Bistable Black Electrochromic Windows Based on the Reversible Metal Electrodeposition of Bi and Cu” ACS Energy Letters 2018 3 (1), 104-111 with the appended Supplementary info in view of Tomantschger (US8062496B2), according to Claim 1, further in view of Tyler S. Hernandez, Majed Alshurafa, Michael T. Strand, Andrew L. Yeang, Michael G. Danner, Christopher J. Barile, Michael D. McGehee, "Electrolyte for Improved Durability of Dynamic Windows Based on Reversible Metal Electrodeposition" Joule, 2020, 4, 7, 1501-1513.
Regarding Claim 2, Hernandez in view of Tomantschger teaches to Claim 1 as shown above.
However, Hernandez does not teach that the electrolyte comprises Cu(ClO4), BiOClO4, HClO4, or LiClO4.
Hernandez in view of Tomantschger teaches an electrolyte composition to improve the durability of a reversible metal electrodeposition dynamic window (abstract).
Hernandez teaches that dynamic windows are constructed with aqueous, acid-free electrolytes consisting of 10 mM CuClO4 and 1M LiClO4 (Page 1511, Para. 2). In the two-electrode arrangement, the electrolyte also comprised 10 mM BiOClO4 for color neutrality (Page 1511, Para. 3). Hernandez teaches that use of the ClO4- anions is advantageous because it does not etch the ITO surface (Conclusion, Page 1510).
Prior to the filing of the present invention it would have been obvious to one of ordinary skill in the art that the known method of fabricating dynamic windows according to Hernandez, as modified by Tomantschger, was ready for improvement by the incorporation of the LiClO4, CuClO4, BiOClO4 electrolyte of Hernandez, in order to improve the stability of the ITO glass on which the window is deposited (see MPEP 2143 I D).
Claims 22 is rejected under 35 U.S.C. 103 as being unpatentable over Tyler S. Hernandez, Christopher J. Barile, Michael T. Strand, Teresa E. Dayrit, Daniel J. Slotcavage, and Michael D. McGehee. “Bistable Black Electrochromic Windows Based on the Reversible Metal Electrodeposition of Bi and Cu” ACS Energy Letters 2018 3 (1), 104-111 with the appended Supplementary info in view of Tomantschger (US8062496B2) further in view of Kurapova et. al “The microstructure and mechanical properties of twinned copper-bismuth films obtained by DC electrodeposition” J. Alloys and Compounds. 2021, 862, 158007 further in view of Taylor (US6558231B1).
Regarding Claim 22, Hernandez teaches a method for forming dynamic windows in two electrodes array (Supplementary pg. 2, para. 2). Below is Fig. 6 of Hernandez demonstrating the dynamic window array. Hernandez teaches that a Pt-modified ITO on a glass working electrode comprises a front face and a back glass piece (thus marking the outsides of the device) and a Cu foil counter electrode is adjacent to both glass pieces, and a Bi-Cu electrolyte is between the glass pieces (Fig. 6; Page 108, Col 1., Para 3). Hernandez teaches that deposition at -0.6V is applied to co-deposit the metal ions onto the ITO for 3s lowers the optical transmittance of the glass, which is followed by switching the voltage to +0.8V for 3s to restore the initial condition of the glass (Fig. 10; Page 109, Col 1., Para 2). Hernandez teaches that the dynamic windows with metal deposit on them are “color-neutral” (Page 107, Col. 2, last sentence of 1st para.).
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However, Hernandez does not teach the use of a pulsed voltage which includes an on phase and an off phase. Hernandez does not teach that a first and second DC bias is followed by a deposition pulsed voltage and electrodissolution pulsed voltage, respectively, comprising multiple on and an off phase.
Tomantschager teaches a method and apparatus for electroplating (abstract) which operates by DC or pulse electrodeposition (Col. 1, para. 1).
Tomantschger teaches that the pulse electrodeposition has a pulse on and off times range from 0.1 10,000 ms with a frequency between 0 to 1000 Hz and a duty cycle between 5 to 100% (Col. 6, Lines 47-67). Tomantschger teaches that variation to the pulse plating schedule impacts the grain size (Col. 20, Lines 59-67 through Col. 21, Lines 1-12), for which one of ordinary skill could further infer that the DC plating schedule also impacts grain size. One of ordinary skill in the art of electrochemistry readily appreciates that grain size control in a depositing layer readily affects the resulting structural quality, texture, and uniformity of the layer.
Kurapova teaches a method for DC electrodeposition to form Bi-Cu films (abstract). Kurapova teaches that a Bi-Cu electrodeposition film occurs by a two-step process, wherein a first Cu buffer/seed layer is first deposited by DC electrodeposition (Col. 2, Page 2, middle para.). Kurapova teaches that the surface of the Cu buffer layer has high roughness, and promotes the epitaxial growth of the subsequent Bi-Cu layer (Col. 2, Page 3, 2nd paragraph). Kurapova teaches that the pure copper films have a high density of twinned grain boundaries, which enables excellent mechanical properties to the buffer layer on which the Bi-Cu film is grown (Col. 1, Page 6, Section 4).
Taylor teaches a method for smoothing metal surfaces using pulsed electrochemical processes [abstract]. Taylor teaches the use of anodic pulses to remove metals from a surface, wherein the pulses may range from 0.1 to 100 ms [Col. 5, Lines 38-59]. Taylor teaches that macroasperities (meaning the unevenness of a surface) can be removed by a first pulsing condition, and that a second pulsing condition may be applied to further control the microprofile structure owing to precise control over the thickness of the Nernst diffusion layer, which allows control over the microasperities to any desired degree [Col. 6, Lines 18-37]. However, Taylor teaches that the use of pulses to strip metal from a surface necessarily contains an off-period, wherein the inclusion of a duty cycle will result in a lower rate of charge transfer such that one of ordinary skill would have to perform experimentation to optimize the desired rate of material removal from the surface [Col. 5, bottom paragraph to Col. 6, top paragraph].
Prior to the filing of the present invention it would have been obvious to one of ordinary skill in the art that the known method of fabricating dynamic windows according to Hernandez was ready for improvement by the incorporation of the pulse electrodeposition method of Tomantschger, including the duty cycle, frequency, and pulse voltage on and off durations, in order that the resulting deposit would have improved grain structure, thereby producing a more consistent film (see MPEP 2143 I D). Further, it would have been obvious to one of ordinary skill to have that modified Hernandez was ready for improvement by the incorporation of the step of forming a Cu seed layer by DC electrodeposition, as per Kurapova, in order that one would arrive at a method for forming a metallic film with improved mechanical properties (see MPEP 2143 I D). Further it would have been obvious to one of ordinary skill that the method of using an pulsed electrochemical process to finely remove metal from a surface, as per Taylor, could be incorporated in the modified method for an electrochromic window, as per Hernandez in view of Tomantschger in view of Kurapova, in order that one would arrive an electrochromic window with finer control over the film thickness and thereby the exact degree of transmission light through the window [see Fig. 10 of Hernandez that control over the stripping process effects the transmission of light through the window]. Furthermore, it would have been obvious to one of ordinary skill that a DC stripping process could be precede the pulsed stripping pulse, as per Hernandez in view of Tomantschger in view of Kurapova in view of Taylor, in order that one would arrive at a method capable of quickly achieving an approximate desired metal film thickness (and thus transmission) by an initial DC process, followed by a fine-tuned exacting thickness and surface roughness by a final pulsed process.
Conclusion
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NATHANAEL JASON. DOWNES
Examiner
Art Unit 1794
/NATHANAEL JASON DOWNES/Examiner, Art Unit 1794
/BRIAN W COHEN/Primary Examiner, Art Unit 1759
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