DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/05/2025 has been entered.
Information Disclosure Statement
Acknowledgment is made of receipt of Information Disclosure Statement (PTO-1449) filed 02/11/2026. An initialed copy is attached to this Office Action.
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 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 32 is rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Boulanger et al. (FR 2669122 A1), hereinafter “Boulanger”.
Regarding claim 32, Boulanger discloses an electrochromic device (see Fig. 1, Abstract) comprising: a first electrode layer (8) disposed on a substrate (9), wherein the first electrode layer (8) comprises a first transparent electronically conductive material (see Fig. 1, Abstract); an electrochromic stack over the first electrode layer, wherein the electrochromic stack comprises an electrochromic layer (6) of electrochromic material and a counter electrode layer (4) of counter electrode material, and wherein the electrochromic layer comprises lithium (ELECTROCHROME GLAZING: Paragraph 2 – see translation); a second electrode layer (2) over the electrochromic stack (see Fig. 1, Abstract), wherein the second electrode layer comprises a second transparent electronically conductive material (Abstract); and a defect-mitigating insulating layer (3, 7), wherein the defect-mitigating insulating layer comprises a metal oxide, a metal nitride, a metal carbide, a metal oxynitride, or a metal oxycarbide (“tin dioxide” - Pg. 4, Paragraph 3), wherein the metal oxide is selected from the group consisting of aluminum oxide, oxide, tantalum oxide, cerium oxide, zinc oxide, tin oxide, tungsten oxide, oxidized indium tin oxide, and nickel tungsten oxide (“tin dioxide” – Pg. 4, Paragraph 3).
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 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 11-14, 16, 17, 26, 29, 30 and 31 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Boulanger (FR 2669122 A1) in view of Schaepkens (USP No. 6,743,524).
Regarding claim 11, Boulanger discloses an electrochromic device (see Fig. 1, Abstract) comprising: a first transparent conductive layer (8) disposed on a substrate (9); an electrochromic stack on the first transparent conductive layer (8) comprising an electrochromic layer (6) and a counter electrode layer (4) (see Fig. 1, Abstract); a second transparent conductive layer (2) disposed on or over the electrochromic stack (see Fig. 1, Abstract); and a defect-mitigating insulating layer (7) disposed between the first transparent conductive layer (8) and the second transparent conductive layer (2) (see Fig. 1, Abstract). Boulanger discloses the claimed invention, but does not specify wherein the defect-mitigating insulating layer has an electronic resistivity greater than the first transparent conductive layer, the second transparent conductive layer, the electrochromic layer, and the counter electrode layer, and wherein the defect-mitigating insulating layer is selected from the group consisting of cerium oxide, aluminum oxide, zinc oxide, silicon aluminum oxide, nickel tungsten oxide, tantalum oxide, and oxidized indium tin oxide, titanium nitride, aluminum nitride, silicon nitride, tantalum nitride, tungsten nitride, titanium carbide, aluminum carbide, silicon carbide, tantalum carbide, tungsten carbide, and silicon oxynitride. In the same field of endeavor, Schaepkens discloses wherein the defect-mitigating insulating layer has an electronic resistivity greater than the first transparent conductive layer, the second transparent conductive layer, the electrochromic layer, and the counter electrode layer, and wherein the defect-mitigating insulating layer is selected from the group consisting of cerium oxide, aluminum oxide, zinc oxide, silicon aluminum oxide, nickel tungsten oxide, tantalum oxide, and oxidized indium tin oxide, titanium nitride, aluminum nitride, silicon nitride, tantalum nitride, tungsten nitride, titanium carbide, aluminum carbide, silicon carbide, tantalum carbide, tungsten carbide, and silicon oxynitride (Col. 2, Lines 18-23). In addition, since the material requirement of the claim is met by Schaepkens, the properties of said material fulfill the property requirements of the claim. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the electrochromic device of Boulanger with wherein the defect-mitigating insulating layer has an electronic resistivity greater than the first transparent conductive layer, the second transparent conductive layer, the electrochromic layer, and the counter electrode layer, and wherein the defect-mitigating insulating layer is selected from the group consisting of cerium oxide, aluminum oxide, zinc oxide, silicon aluminum oxide, nickel tungsten oxide, tantalum oxide, and oxidized indium tin oxide, titanium nitride, aluminum nitride, silicon nitride, tantalum nitride, tungsten nitride, titanium carbide, aluminum carbide, silicon carbide, tantalum carbide, tungsten carbide, and silicon oxynitride of Schaepkens for the purpose of preventing defects of the device due to external factors (Col. 1, Lines 29-36). Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 12, Boulanger further discloses wherein an electrical sheet resistance of the defect-mitigating insulating layer is between about 40 and 4000 ohm per square (see Claim 2 on Pg. 5). According to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Regarding claim 13, Boulanger further discloses wherein an electrical sheet resistance of the defect-mitigating insulating layer is between about 100 and 1000 ohm per square (see Claim 2 on Pg. 5). According to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Regarding claim 14, Boulanger further discloses wherein the defect-mitigating insulating layer is a metal oxide, a metal nitride, a metal carbide, a metal oxynitride, or a metal oxycarbide (see Pg. 4, Paragraphs 3-4).
Regarding claim 16, Boulanger further discloses wherein the defect-mitigating insulating layer is between about 10 nm and about 100 nm thick (Pg. 4, Paragraph 3). According to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Regarding claim 17, Boulanger and Schaepkens teach the electrochromic device set forth above for claim 16, Schaepkens further discloses wherein the defect-mitigating insulating layer is between about 15 nm and about 50 nm thick (Col. 5, Lines 19-22). It would have been obvious to one of ordinary skill to provide the electrochromic device of Boulanger with the teachings of Schaepkens for at least the same reasons as those set forth above with respect to claim 11. According to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Regarding claim 26, Boulanger further discloses wherein the defect-mitigating insulating layer (7) is between the first transparent conductive layer (8) and the electrochromic layer (6) (see Fig. 1, Abstract).
Regarding claim 29, Boulanger further discloses wherein the defect-mitigating insulating layer (3) is between the second transparent conductive layer (2) and the counter electrode layer (4) (see Fig. 1, Abstract).
Regarding claim 30, Boulanger further discloses wherein the defect-mitigating insulating layer (7) is disposed in contact with the first transparent conductive layer (8), and further comprising: a second defect-mitigating insulating layer (3) disposed in contact with the second transparent conductive layer (2) (see Fig. 1, Abstract).
Regarding claim 31, Boulanger and Schaepkens teach the electrochromic device set forth above for claim 11, Schaepkens further discloses wherein the defect-mitigating insulating layer is titanium oxide (Col. 2, Lines 18-23). It would have been obvious to one of ordinary skill to provide the electrochromic device of Boulanger with the teachings of Schaepkens for at least the same reasons as those set forth above with respect to claim 11. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 19-21, 23-25, 27 and 28 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Boulanger (FR 2669122 A1) in view of Schaepkens (USP No. 6,743,524) as applied to claim 11 above, and further in view of Wang et al. (USPG Pub No. 2011/0266138), hereinafter “Wang”.
Regarding claim 19, Boulanger and Schaepkens disclose the claimed invention, but do not specify wherein an electronic resistivity of the defect-mitigating insulating layer is between about 10-5 ohm-cm and 1012 ohm-cm. In the same field of endeavor, Wang discloses wherein an electronic resistivity of the defect-mitigating insulating layer is between about 10-5 ohm-cm and 1012 ohm-cm (Paragraph 95). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the electrochromic device of Boulanger and Schaepkens with wherein an electronic resistivity of the defect-mitigating insulating layer is between about 10-5 ohm-cm and 1012 ohm-cm of Wang for the purpose of providing a material that can be fabricated with low defectivity, that is substantially conductive to ions and substantially resistive to electrons (Paragraph 95). It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. According to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Regarding claim 20, Boulanger and Schaepkens disclose the claimed invention, but do not specify wherein an electronic resistivity of the defect- mitigating insulating layer is greater than about 10-6 ohm-cm. In the same field of endeavor, Wang discloses wherein an electronic resistivity of the defect- mitigating insulating layer is greater than about 10-6 ohm-cm (Paragraph 95). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the electrochromic device of Boulanger and Schaepkens with wherein an electronic resistivity of the defect- mitigating insulating layer is greater than about 10-6 ohm-cm of Wang for the purpose of providing a material that can be fabricated with low defectivity, that is substantially conductive to ions and substantially resistive to electrons (Paragraph 95). It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. According to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Regarding claim 21, Boulanger and Schaepkens disclose the claimed invention, but do not specify wherein an electronic resistivity of the defect- mitigating insulating layer is greater than about 10-4 ohm-cm. In the same field of endeavor, Wang discloses wherein an electronic resistivity of the defect- mitigating insulating layer is greater than about 10-4 ohm-cm (Paragraph 95). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the electrochromic device of Boulanger and Schaepkens with wherein an electronic resistivity of the defect- mitigating insulating layer is greater than about 10-4 ohm-cm of Wang for the purpose of providing a material that can be fabricated with low defectivity, that is substantially conductive to ions and substantially resistive to electrons (Paragraph 95). It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. According to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Regarding claim 23, Boulanger and Schaepkens disclose the claimed invention, but do not specify wherein an ion conductivity of the defect- mitigating insulating layer is between about 10-7 and 10-12 Siemens/cm. In the same field of endeavor, Wang discloses wherein an ion conductivity of the defect- mitigating insulating layer is between about 10-7 and 10-12 Siemens/cm (Paragraph 95). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the electrochromic device of Boulanger and Schaepkens with wherein an ion conductivity of the defect- mitigating insulating layer is between about 10-7 and 10-12 Siemens/cm of Wang for the purpose of providing a material that can be fabricated with low defectivity, that is substantially conductive to ions and substantially resistive to electrons (Paragraph 95). It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. According to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Regarding claim 24, Boulanger, Schaepkens and Wang teach the electrochromic device set forth above for claim 23, Wang further discloses wherein an ion conductivity of the defect-mitigating insulating layer is between about 10-8 and 10-11 Siemens/cm (Paragraph 95). It would have been obvious to one of ordinary skill to provide the electrochromic device of Boulanger and Schaepkens with the teachings of Wang for at least the same reasons as those set forth above with respect to claim 23. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. According to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Regarding claim 25, Boulanger, Schaepkens and Wang teach the electrochromic device set forth above for claim 24, Wang further discloses wherein an ion conductivity of the defect-mitigating insulating layer is between about 10-9 and 10-10 Siemens/cm (Paragraph 95). It would have been obvious to one of ordinary skill to provide the electrochromic device of Boulanger and Schaepkens with the teachings of Wang for at least the same reasons as those set forth above with respect to claim 23. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. According to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Regarding claim 27, Boulanger and Schaepkens disclose the claimed invention, but do not specify wherein the defect-mitigating insulating layer is at an intermediate position within the electrochromic layer. In the same field of endeavor, Wang discloses wherein the defect-mitigating insulating layer is at an intermediate position within the electrochromic layer (Paragraphs 10, 33). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the electrochromic device of Boulanger and Schaepkens with wherein the defect-mitigating insulating layer is at an intermediate position within the electrochromic layer of Wang for the purpose of providing improvements in performance and reliability (Paragraph 8).
Regarding claim 28, Boulanger and Schaepkens disclose the claimed invention, but do not specify wherein the defect-mitigating insulating layer is at an intermediate position within the counter electrode layer. In the same field of endeavor, Wang discloses wherein the defect-mitigating insulating layer is at an intermediate position within the counter electrode layer (Paragraphs 10, 33). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the electrochromic device of Boulanger and Schaepkens with wherein the defect-mitigating insulating layer is at an intermediate position within the counter electrode layer of Wang for the purpose of providing improvements in performance and reliability (Paragraph 8).
Claim 22 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Boulanger (FR 2669122 A1) in view of Schaepkens (USP No. 6,743,524) as applied to claim 11 above, and further in view of Konkin et al. (USPG Pub No. 2013/0335800), hereinafter “Konkin”.
Regarding claim 22, Boulanger and Schaepkens disclose the claimed invention, but do not specify wherein a charge capacity of the defect- mitigating insulating layer is between about 10 and 100 milliCoulomb/cm2*μm. In the same field of endeavor, Konkin discloses wherein a charge capacity of the defect- mitigating insulating layer is between about 10 and 100 milliCoulomb/cm2*μm (Paragraph 32). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the electrochromic device of Boulanger and Schaepkens with wherein a charge capacity of the defect- mitigating insulating layer is between about 10 and 100 milliCoulomb/cm2*μm of Konkin for the purpose of compensating for a charge shifted in the corresponding conductive layer (Paragraph 32). It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. According to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Prior Art Citations
Tsuchiya et al. (USP No. 4,660,939) is being cited herein to show an electrochromic device relevant to the claimed invention.
Response to Arguments
Applicant’s arguments with respect to claims 11-14, 16, 17 and 19-31 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Schaepkens addresses the subject matter challenged by Applicant.
Conclusion
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/MAHIDERE S SAHLE/Primary Examiner, Art Unit 2872 2/21/2026