DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 03/31/2026.
3. Claims 1-2, 4-11 are pending. Claims 1-2, 4-8, 11 are under examination on the merits. Claims 1, 5, 8 are amended. Claim 3 is cancelled. Claims 9-10 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 03/31/2026 have been fully considered but they are not persuasive, thus claims 1-2, 4-8, 11 stand rejected as set forth in Office action dated 12/12/2025 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-2, 4-6, 11 are rejected under 35 U.S.C. 103(a) as being unpatentable over Yagmur et al. (Fabricating multicolored electrochromic devices using conducting copolymers, Smart Mater. Struct. 22 (2013) 115022, 9 pp, hereinafter “Yagmur”) in view of Reynolds et al. (US Pat. No. 8,450,449 B2, hereinafter “Reynolds”).
Regarding claims 1,5: Yagmur teaches an electrochromic polymer comprising a formula of pyrrole-based derivative based-trimer as shown below, wherein Tr is a pyrrole-based trimer having the formula defined for Tr, Ar1 is the R8,R9-substituted thiophene, n is an integer greater than zero; a is an integer greater than zero, b is one, c and d are each zero, and a ratio between a and the sum of b, c, d is between 0.1 to 4 inclusive; and wherein R1, R2 and R4 to R7 are each hydrogen and R3 is a C4-alkylaminyl group, R8 and R9 together form a C6-heterocycle (Page 3, Scheme 1).
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Further, Yagmur teaches the electrochromic polymer, wherein Tr is selected from an analog of the second formula, first row of claim 5 as shown below, wherein Ar1 is the first formula with X as O and R58 and R59 as H, R54 and R55 are each H, R51, R52, R54, R55, R56 and R57 are each H, R53 is C4-alkylaminyl (Page 3, Scheme 1).
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Yagmur does not expressly teach R1-R3, and R6-R13 to be non-hydrogen substituents, and the trimer with the element X and the heterocyclic ring containing X on the trimer (i.e., substitute thiophenes), and wherein the electrochromic polymer has an optical contrast of higher than 50% at its maximal absorbance wavelength.
However, Reynolds teaches electrochromic polymers wherein the monomer units can include X-R substituted thiophenes wherein X is O and R51, R52, R56 and R57 are each H or alkyl (Col 6, Iines 53-57; Col 7, Iines 45-57) with benefit a simple design and method to yield saturated neutral state polymers of various colors, including a saturated black, by a readily scalable efficient process with high batch to batch reproducibility of the absorption spectra is desirable (Col. 2, lines 10-14).
In an analogous art of the electrochromic polymer having pyrrole derivative and thiophene, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the electrochromic polymer by Yagmur, so as to include the trimer with the element X and the heterocyclic ring containing X on the trimer (i.e., substitute thiophenes) as taught by Reynolds, and would have been motivated to do so with reasonable expectation that this would result in providing electrochromic polymers that allow for a high display of optical contras, and improves its properties, such as redox stability and switching time as suggested by Yagmur (Page 1, Abstract, lines 10-11), and further a simple design and method to yield saturated neutral state polymers of various colors, including a saturated black, by a readily scalable efficient process with high batch to batch reproducibility of the absorption spectra is desirable as suggested by Reynolds (Col. 2, lines 10-14).
Therefore, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since it is held to be a prima facie case of obviousness since a person of ordinary skill in the art would have recognized the interchangeability of the element (i.e. functional group) shown in the prior art for the corresponding element disclosed in the specification wherein the side chains syntheses merely done by routine experimentation. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000).
Pertaining specifically to claim 1 since the combination of Yagmur in view of Reynolds teaches identical or substantially identical the electrochromic polymer as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. an optical contrast, would be the same as claimed as claimed (i.e., the electrochromic polymer has an optical contrast of higher than 50% at its maximal absorbance wavelength). If there is any difference between the product of Yagmur in view of Reynolds and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I).
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 2: The disclosure of Yagmur in view of Reynolds is adequately set forth in paragraph above and is incorporated herein by reference. Yagmur teaches the electrochromic polymer, wherein the electrochromic polymer has an oxidation onset potential of lower than 0.6 V (Page 3, right Col., 2nd para, lines 1-9, Fig. 1a) with Ag/AgCl as a reference electrode (Page 3, left Col, 1st para, lines 1-10; Page 4, left Col, 2nd para, lines 1-13).
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Regarding claim 4: The disclosure of Yagmur in view of Reynolds is adequately set forth in paragraph above and is incorporated herein by reference. Yagmur teaches the electrochromic polymer, wherein the electrochromic polymer has a maximal absorbance wavelength between 400 to 550 nm inclusive (Page 7, Fig. 7, Abs=0.48 at about 450-500 nm).
Regarding claim 6: The disclosure of Yagmur in view of Reynolds is adequately set forth in paragraph above and is incorporated herein by reference. Yagmur teaches the electrochromic polymer, wherein X is O (Page 3, Scheme 1).
Regarding claim 11: The disclosure of Yagmur in view of Reynolds is adequately set forth in paragraph above and is incorporated herein by reference. Yagmur discloses a device incorporating the electrochromic polymer (Page 2, left Col., 3rd para, lines 20-28; Page 3, right Col., Scheme 2).
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8. Claim 8 is rejected under 35 U.S.C. 103(a) as being unpatentable over Yagmur et al. (Fabricating multicolored electrochromic devices using conducting copolymers, Smart Mater. Struct. 22 (2013) 115022, 9 pp, hereinafter “Yagmur”) in view of Reynolds et al. (US Pat. No. 8,450,449 B2, hereinafter “Reynolds”) as applied to claim 1 above, and further in view of Este’vez et.al. (Multicomponent reactions for the synthesis of pyrroles, Chem. Soc. Rev., 2010, 39, 4402–4421, see IDS dated 08/02/2023, hereinafter “Estevez”) in view of Xiong et al. (Hexafluoro-2-Propanol-Promoted Electro-Oxidative [3+2] Annulation of 1,3-Dicarbonyl Compounds and Alkenes, ChemElectroChem, 2019, 6, 3383-3386, see IDS dated 08/02/2023, hereinafter “Xiong”), and Fawaha et al. (A novel neutral organic electron donor with record half-wave potential, Org. Biomol.Chem.,2013,11,8073–8081, see IDS dated 08/02/2023, hereinafter “Fawaha”).
Regarding claim 8: The disclosure of Yagmur in view of Reynolds is adequately set forth in paragraph 7 above and is incorporated herein by reference. Yagmur teaches a method for forming the electrochromic polymer, the method comprising: preparing pyrrole-based or pyrrole derivative-based thiophene trimer units, preparing the electrochromic polymer by polymerizing the pyrrole-based or pyrrole derivative- based thiophene trimer units with thiophene units (Page 1, right Col., 2nd para, line 1-10; Page 2, right Col, 3rd para, lines 1-26). Yagmur in view of Reynolds does not expressly teach i) preparing pyrrole-based or pyrrole derivative-based thiophene trimer units by contacting a diketone derivative with primary amine in the presence of hexafluoro-2-propanol or propanoic acid, wherein ii) the diketone derivative is prepared by contacting lithiated thiophene derivatives with N1,N4-dimethoxy-N1,N4-dimethylsuccinamide.
Referring to i),however, Esteves teaches a method for forming a pyrrole, the method comprising contacting a diketone with a primary amine (Page 4405, Scheme 3). Esteves does not teach the method occurring in the presence of hexanuoro-2-propanol. Xiong teaches a method of making a furan by reaction with a 1,3-dicarbonyl in the presence of hexanuoro-2-propanol (Abstract). It would have been obvious to one of ordinary skill in the art to combine the teachings of Esteves and Xiong to design a method of making a pyrrole by reaction of a primary amine and a dicarbonyl, in the presence of hexanuoro-2-propanol, because Esteves teaches the method of making a pyrrole by reaction with a dicarbonyl and Xiong teaches the method of making a heterocycle with a dicarbonyl using hexanuoro-2-propanol as a stabilizer in the reaction, that allows for a more efficient cyclization reaction of the dicarbonyl with the nucleophile to make the heterocycle.
Referring to ii), Farwaha teaches a method of forming diketone derivatives, the method comprising contacting a lithiated heterocycle with N1 ,N4-dimethoxy-N1 ,N4-dimethyl succinamide (Page 3, Col 1, Scheme 2, Compound 20 to 21, plus 19, and t-Buli to diketone compound 22). Farwaha does not disclose the heterocycle as a thiophene. Thus, it would have been have obvious to one of ordinary skill in the art to apply the method taught by Farawaha to thiophenes, because the chemistry takes place at the lithiated site on the aromatic heterocycle, and therefore, the heterocycle could be a thiophene, since it is also an aromatic heterocycle.
Allowable Subject Matter
9. Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and overcome the rejection under 35 U.S.C. 112(b).
10. The following is an examiner’s statement of reasons for allowance:
The most pertinent prior art known by the Examiner is in the attached IDS dated including Yagmur et al. (Fabricating multicolored electrochromic devices using conducting copolymers, Smart Mater. Struct. 22 (2013) 115022, 9 pp, hereinafter “Yagmur”); Reynolds et al. (US Pat. No. 8,450,449 B2, hereinafter “Reynolds”); You et al. (US Pub. No. 2020/0102286 A1, hereinafter “You”), and Sotzing et al. (US Pat No. 9,680,102 B2, hereinafter “Sotzing”).
None of the above documents teaches individually or in combination or suggest a substituted ProDOT-Pyrrole-ProDOT trimer derivative, wherein the ProDOTis 3,4-propylenedioxythiophene compound represented by the structure of Formula of instant claim 7 as set forth, nor would have been obvious to a person skilled in the art. Therefore, the instant claims are distinguished over the prior art.
Response to Arguments
11. Applicant's arguments filed 03/31/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that Yagmur does not expressly teach R1-R3, and R6-R13 to be non-hydrogen substituents, and wherein the electrochromic polymer has an optical contrast of higher than 50% at its maximal absorbance wavelength.
The examiner respectfully disagrees. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). It is submitted that that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993). It is submitted that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993). The new rejection is based on Yagmur in view of Reynolds. The disclosure of Yagmur in view of Reynolds is adequately set forth in paragraph 7 above and is incorporated herein by reference. Yagmur does not expressly teach R1-R3, and R6-R13 to be non-hydrogen substituents, and the trimer with the element X and the heterocyclic ring containing X on the trimer (i.e., substitute thiophenes), and wherein the electrochromic polymer has an optical contrast of higher than 50% at its maximal absorbance wavelength.
However, Reynolds teaches electrochromic polymers wherein the monomer units can include X-R substituted thiophenes wherein X is O and R51, R52, R56 and R57 are each H or alkyl (Col 6, Iines 53-57; Col 7, Iines 45-57) with benefit a simple design and method to yield saturated neutral state polymers of various colors, including a saturated black, by a readily scalable efficient process with high batch to batch reproducibility of the absorption spectra is desirable (Col. 2, lines 10-14). In this case, nevertheless, the combination of Yagmur in view of Reynolds is deemed to teach the electrochromic polymer as the recited claimed. In an analogous art of the electrochromic polymer having pyrrole derivative and thiophene, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the electrochromic polymer by Yagmur, so as to include the trimer with the element X and the heterocyclic ring containing X on the trimer (i.e., substitute thiophenes) as taught by Reynolds, and would have been motivated to do so with reasonable expectation that this would result in providing electrochromic polymers that allow for a high display of optical contras, and improves its properties, such as redox stability and switching time as suggested by Yagmur (Page 1, Abstract, lines 10-11), and further a simple design and method to yield saturated neutral state polymers of various colors, including a saturated black, by a readily scalable efficient process with high batch to batch reproducibility of the absorption spectra is desirable as suggested by Reynolds (Col. 2, lines 10-14). Thus, Reynolds cures the deficiency in Yagmur relied upon in rejecting independent claim. Therefore, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since it is held to be a prima facie case of obviousness since a person of ordinary skill in the art would have recognized the interchangeability of the element (i.e. functional group) shown in the prior art for the corresponding element disclosed in the specification wherein the side chains syntheses merely done by routine experimentation. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000).
Pertaining specifically to claim 1 since the combination of Yagmur in view of Reynolds teaches identical or substantially identical the electrochromic polymer as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. an optical contrast, would be the same as claimed as claimed (i.e., the electrochromic polymer has an optical contrast of higher than 50% at its maximal absorbance wavelength). If there is any difference between the product of Yagmur in view of Reynolds and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I).
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare their invention product (i.e., the electrochromic polymer) and show the product is actually different from and unexpectedly better than the teachings of the references. It is noted that the burden is on the applicant to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b). See also Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992), and such a showing also must be commensurate with the scope of the claimed invention, i.e., must bear a reasonable correlation to the scope of the claimed invention.
12. 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 extension fee 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 date of this final action.
Examiner Information
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
05/21/2026
bijan.ahvazi@uspto.gov
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