DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 32 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Boulanger et al. (FR 2669122 A1), hereinafter “Boulanger”, in view of Kwak et al. (USPG Pub No. 2012/0218621), hereinafter “Kwak”.
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, and wherein the defect-mitigating insulating layer is ionically conductive. In the same field of endeavor, Kwak 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, and wherein the defect-mitigating insulating layer is ionically conductive (Paragraphs 22, 32). In addition, since the material requirement of the claim is met by Kwak, 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, and wherein the defect-mitigating insulating layer is ionically conductive of Kwak for the purpose of improving the transition speed of the electrochromic device (Paragraph 22). 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 Kwak teach the electrochromic device set forth above for claim 16, Kwak further discloses wherein the defect-mitigating insulating layer is between about 15 nm and about 50 nm thick (Paragraph 32). It would have been obvious to one of ordinary skill to provide the electrochromic device of Boulanger with the teachings of Kwak 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 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). Boulanger discloses the claimed invention, but does not specify wherein the defect-mitigating insulating layer comprises a metal oxide, a metal nitride, a metal carbide, a metal oxynitride, or a metal oxycarbide, wherein the metal oxide is selected from the group consisting of aluminum oxide, tantalum oxide, cerium oxide, zinc oxide, tungsten oxide, and nickel tungsten oxide, wherein the defect-mitigating insulating layer is ionically conductive. In the same field of endeavor, Kwak discloses wherein the defect-mitigating insulating layer comprises a metal oxide, a metal nitride, a metal carbide, a metal oxynitride, or a metal oxycarbide, wherein the metal oxide is selected from the group consisting of aluminum oxide, tantalum oxide, cerium oxide, zinc oxide, tungsten oxide, and nickel tungsten oxide, wherein the defect-mitigating insulating layer is ionically conductive (Paragraphs 22, 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 with wherein the defect-mitigating insulating layer comprises a metal oxide, a metal nitride, a metal carbide, a metal oxynitride, or a metal oxycarbide, wherein the metal oxide is selected from the group consisting of aluminum oxide, tantalum oxide, cerium oxide, zinc oxide, tungsten oxide, and nickel tungsten oxide, wherein the defect-mitigating insulating layer is ionically conductive of Kwak for the purpose of improving the transition speed of the electrochromic device (Paragraph 22). 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.
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 Kwak (USPG Pub No. 2012/0218621) 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 Kwak 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 Kwak 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 Kwak 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 Kwak 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 Kwak 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 Kwak 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 Kwak 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 Kwak 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, Kwak 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 Kwak 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, Kwak 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 Kwak 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 Kwak 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 Kwak 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 Kwak 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 Kwak 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 Kwak (USPG Pub No. 2012/0218621) 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 Kwak 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 Kwak 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).
Claim 33 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Boulanger (FR 2669122 A1) in view of Kwak (USPG Pub No. 2012/0218621) as applied to claim 11 above, and further in view of Friedman et al. (USPG Pub No. 2012/0033287), hereinafter “Friedman”.
Regarding claim 33, Boulanger and Kwak disclose the claimed invention, but do not specify wherein the defect-mitigating insulating layer comprises electrochromic layer material. In the same field of endeavor, Friedman discloses wherein the defect-mitigating insulating layer comprises electrochromic layer material (Paragraph 113). 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 Kwak with wherein the defect-mitigating insulating layer comprises electrochromic layer material of Friedman for the purpose of providing an electrochromic device having low defectivity and is reliable (Paragraph 113).
Response to Arguments
Applicant’s arguments with respect to claims 11-14, 16, 17, 19-30, 32 and 33 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. Kwak cures the deficiencies of Boulanger and addresses the subject matter challenged by Applicant.
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.
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/MAHIDERE S SAHLE/Primary Examiner, Art Unit 2872 7/10/2026
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