Prosecution Insights
Last updated: April 19, 2026
Application No. 18/451,370

LIQUIDS FOR TUNABLE OPTICAL DEVICES

Non-Final OA §102§112
Filed
Aug 17, 2023
Examiner
EASHOO, MARK
Art Unit
1767
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Optotune Switzerland AG
OA Round
1 (Non-Final)
39%
Grant Probability
At Risk
1-2
OA Rounds
3y 6m
To Grant
71%
With Interview

Examiner Intelligence

Grants only 39% of cases
39%
Career Allow Rate
54 granted / 139 resolved
-26.2% vs TC avg
Strong +32% interview lift
Without
With
+31.8%
Interview Lift
resolved cases with interview
Typical timeline
3y 6m
Avg Prosecution
10 currently pending
Career history
149
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
48.7%
+8.7% vs TC avg
§102
19.1%
-20.9% vs TC avg
§112
19.6%
-20.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 139 resolved cases

Office Action

§102 §112
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. Priority Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Information Disclosure Statement The information disclosure statements (IDS) submitted on 17-AUG-2023 and 11-FEB-2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Claim Objections Claims 1-20 are objected to because of the following informalities: In claim 1 there are multiple instances of double commas which appear to be typos ( ie . after “ C x -alkyl-A”, “CF 3 ” in line 7, “–(CH 2 )-phenyl” in both lines 10 and 14, and “between 1 and 17” . Claim 7 recites “ (2,2,6,6-Tetramethylpiperidin-1- yl ) oxyl ”. Since this does not appear to be a formal name, the “T” should not be capitalized. Claim 9 recites “ 2-(2H-Benzotriazol-2-yl)-4,6-bis(2-phenyl-2- propanyl)phenol ” and 2- “ (2H- Benzotriazol-2-yl)-4,6-di-tert-butylphenol ”. Since this does not appear to be a formal name, the “ B ” should not be capitalized in each . Appropriate correction is required. 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. Claims 1-20 are rejected under 35 U.S.C. 112(b), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention. Regarding claim 1 : Formula 1 recites a repeating unit of “n” length contain R 1 and R 2 . However, the phrases “each R 1 is independently selected from any other R 1 ” and “each R 2 is independently selected from any other R 2 ” when taken with “n” being greater than 1, render the Formula 1 indefinite. When each R 1 and R 2 is independent of each other, then the repeating unit “n” does not allow for an “n” greater than 1 as shown by the formula structure since the repeating molecular structure, n, shown would not be repeating as a single structure but rather as numerous possibilities and variations that are not accurately described by the formula which according to convention indicates the repetition of a single structure within the repeating brackets. Regarding claim 2 : Claim 2 recites the phrase “smaller than 50%”. Because there are no units associated with the percentage it is unclear and indefinite what the amount means ( eg. mass, volume, mol, etc.). Regarding claim 19 : Claim 19 recites the phrase “smaller than 20%”. Because there are no units associated with the percentage it is unclear and indefinite what the amount means ( eg. mass, volume, mol, etc.). Regarding claim 20 : Claim 20 recites the phrase “smaller than 5%”. Because there are no units associated with the percentage it is unclear and indefinite what the amount means ( eg. mass, volume, mol, etc.). 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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claim s 1 - 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Burger et al. (WO 2019/183335 A1) . Regarding claim s 1 - 4, 11, 14 and 19-20 : Burger et al. teaches liquid s for use in a liquid lens (para. 2-3 and 6- 7) . Both conductive and non-conductive liquid comprise a trisiloxane of having Formula (I): where R 1 is an alkyl (para. 6-8) . Burger et al. specifically teaches that the conductive liquid may include 3-n-octylheptamethyltrisiloxane (shown below), which meets instant formula (1). Burger further teaches that the conductive liquid may include an additive such as an anti-freezing agents such as alcohols, diols, and glycols ( ie . oxygenated hydrocarbons) in amounts less than 5% by weight (para. 48). It is submitted that instant claims 1-20 are directed to a liquid composition and that the phrases “for an optical tunable device” , “and the optical tunable device comprises… is filled with” , “ the membrane is…” are directed an intended use of the liquid and have little patentable weight beyond the recited components of the claimed liquid. Accordingly, the liquid taught by Burger et al. is capable of being used in the instant optical device as Burger et al. teaches liquids for liquid lens. It is submitted that instant claims 3 is directed to a liquid composition and that the phrase “are chosen in a such a way to adjust the optical properties of the liquid” has little patentable weight beyond the recited components of the claimed liquid. Accordingly, the liquid taught by Burger et al. is capable of being used in the instant optical device as Burger et al. teaches liquids for liquid lens. Regarding claims 5-10,12-13, and 15-18 : Claims 5-10,12-13, and 15-18 depend from claim 4. Claim 4 depends form claim 1, which requires “at least one additive”. None of the dependent claims positively state that more than one additive is required. As such, since Burger et al. teaches the above anti-freezing agent, claims 5-10,12-13, and 15-18 are implicitly met since the selection of their recited limitations would be optional and not necessarily required. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT MARK EASHOO whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1197 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F, 7am - 4pm . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Mallari can be reached at 571-272-1200 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. FILLIN "Examiner Stamp" \* MERGEFORMAT MARK EASHOO, Ph.D. Supervisory Patent Examiner Art Unit 1767 /MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767
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Prosecution Timeline

Aug 17, 2023
Application Filed
Mar 13, 2026
Non-Final Rejection — §102, §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

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2y 5m to grant Granted Jun 28, 2022
Patent 10907107
AMPHIPHILIC ASPHALTENE IONIC LIQUIDS AS DEMULSIFIERS FOR HEAVY PETROLEUM CRUDE OIL-WATER EMULSIONS
2y 5m to grant Granted Feb 02, 2021
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2y 5m to grant Granted Jan 05, 2021
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
39%
Grant Probability
71%
With Interview (+31.8%)
3y 6m
Median Time to Grant
Low
PTA Risk
Based on 139 resolved cases by this examiner. Grant probability derived from career allow rate.

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