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 .
Response to Amendment
Applicant’s amendment filed 12/10/2025 has entered prosecution.
Claims 21-22 have entered prosecution.
Claims 1-11,13 and 21-22 are pending examination.
Applicant’s amendment prompts the new grounds of rejection presented in this office action.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 22 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claim 21 is 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. Specifically, applicant requires that the two applied bias, DC and pulse, occur for between 5 to 30 seconds and a period up to 120 seconds, respectively, until “a desired final transmittance is achieved”. This is indefinite, as it is unclear what the metes and bounds of “a desired final transmittance is achieved” is. Accordingly, for the sake of compact prosecution, it is understood that Claim 21 merely requires that the two applied bias, DC and pulse, occur for between 5 to 30 seconds and a period up to 120 seconds.
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.
Claims 1, 3-11, 13 and 21 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) 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.
Regarding Claim 1, 3-7, 9, 11 and 13, 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 DC bias is followed by a pulsed voltage which includes an 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).
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 properites (see MPEP 2143 I D).
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 21, modified Hernandez does not teach to Claim 21.
However, Tomanstchger teaches that either a DC electrodeposition or a pulse electrodeposition may occur for durations between 0 to 10,000 ms (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. Prior to the filing of the present invention, it would have been obvious to one of ordinary skill that incorporation of the time domain for a plating schedule for either a DC or pulse deposition method, as per Tomantschger, could have been incorporated into the method of modified Hernandez with a reasonable expectation of success for forming electroplated films.
Furthermore, the courts have held broadly that where the demonstrated prior art broadly discloses the claimed subject matter, it is not inventive to discover optimum or workable ranges by routine optimization (see MPEP 2144.05 II A). That is, barring a demonstration of criticality, it is understood that one of ordinary skill would find it obvious to vary the duration of each deposition step in order to achieve a film of some desired thickness.
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) 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, 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 in view of Kurapova 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.
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 DC bias is followed by a pulsed voltage which includes an 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).
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).
Response to Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive. Applicant does not render any argument, but feints at there being doubt that the combination of Hernandez and Tomantschger is appropriate. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Hernandez and Tomantschger are both in the same field of endeavor (that being, methods of applying electrodeposition to form layers), wherein it would be obvious to one of ordinary skill the teachings of Tomantschger would have application in the method of Hernandez.
Applicant further argues that the amendments overcome the prior art rejection. This is persuasive and has prompted the new grounds of rejection demonstrated above.
Conclusion
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 NATHANAEL J DOWNES whose telephone number is (571)272-1141. The examiner can normally be reached 8am to 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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