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 application is a CON of PCT/US2021/055015, filed on 10/14/2021. The preliminary amendment filed on 06/01/2023 is entered and acknowledged by the Examiner.
3. Applicant’s election of Group I, claims 1-8, 11, without traverse in the reply filed on 11/06/2025 is acknowledged
4. Claims 1-11 are pending. Claims 1-8, 11 are under examination on the merits. Claims 9-10 are withdrawn to a non-elected invention from further consideration.
Information Disclosure Statement
5. The information disclosure statement submitted on 08/02/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Drawings
6. The drawings are received on 08/01/2023. These drawings are acceptable.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1-8, 11 are 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 pre-AIA the applicant regards as the invention. Claim 1 recites “selected from, but not limited to, wherein the improper phrasing of the Markush group renders the claim indefinite because it is unclear which members of the group are part of the claimed invention. Markush groups must be stated in the alternative, of which one acceptable form is “…selected from the group consisting of A, B and C.” See MPEP § 2173.05(h). Claims 2-8, 11 being depended on claim 1 are rejected as well.
9. Claims 5-6 are 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 pre-AIA the applicant regards as the invention. Claim 5 recites “selected from, but not limited to, wherein the improper phrasing of the Markush group renders the claim indefinite because it is unclear which members of the group are part of the claimed invention. Markush groups must be stated in the alternative, of which one acceptable form is “…selected from the group consisting of A, B and C.” See MPEP § 2173.05(h). Claim 6 being depended on claim 5 is rejected as well.
Claim Rejections - 35 USC § 102
10. The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
11. Claim 1-4, 8, 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yagmur et al. (Fabricating multicolored electrochromic devices using conducting copolymers, Smart Mater. Struct. 22 (2013) 115022, 9 pp, hereinafter “Yagmur”).
Regarding claim 1: Yagmur discloses 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).
PNG
media_image1.png
328
554
media_image1.png
Greyscale
Regarding claim 2: Yagmur discloses 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).
PNG
media_image2.png
198
270
media_image2.png
Greyscale
Regarding claim 3: Yagmur discloses the electrochromic polymer, wherein the electrochromic polymer has an optical contrast of higher than 50% at its maximal absorbance wavelength (Page 7, Fig. 7, Abs=0.48 at about 450-500 nm).
PNG
media_image3.png
346
774
media_image3.png
Greyscale
Regarding claim 4: Yagmur discloses 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 8: Yagmur discloses 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).
Regarding claim 11: Yagmur discloses a device incorporating the electrochromic polymer (Page 2, left Col., 3rd para, lines 20-28; Page 3, right Col., Scheme 2).
PNG
media_image4.png
182
364
media_image4.png
Greyscale
Claim Rejections - 35 USC § 103
12. 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.
13. Claims 5-6 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”) as applied to claim 1 above, and further in view of Reynolds et al. (US Pat. No. 8,450,449 B2, hereinafter “Reynolds”).
Regarding claim 5: The disclosure of Yagmur is adequately set forth in paragraph 11 above and is incorporated herein by reference. 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).
PNG
media_image5.png
164
264
media_image5.png
Greyscale
PNG
media_image6.png
134
192
media_image6.png
Greyscale
PNG
media_image7.png
114
72
media_image7.png
Greyscale
Yagmur does not expressly teach the trimer with the element X and the heterocyclic ring containing X on the trimer (i.e., substitute thiophenes).
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).
Regarding claim 6: Yagmur teaches the electrochromic polymer, wherein X is O (Page 3, Scheme 1).
Allowable Subject Matter
14. 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).
15. 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.
Examiner Information
16. 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
12/02/2025
bijan.ahvazi@uspto.gov