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 .
This is the initial office action for US Patent Application No. 18/545355, which is a continuation-in-part of US Patent Application No. 18/532911, now US Patent 12,164,209, and a continuation-in-part of US Patent Application No. 18/099850.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,164,209 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending application and the issued patent recite analogous method limitations for forming an electrochromic device.
With regard to pending claims 1-20, the issued patent recites (Claim 19) a method for forming an electrochromic device that comprises coating a first conducting layer on a first substrate, coating a second conductive layer on a second substrate, patterning the respective first and second conductive layers to form areas and electric interconnects between adjacent areas formed from the patterning step, forming electrochromic layers on the patterned first and second conductive layers, forming first and second electrolyte layers on the respective first and second patterned conductive layers and then subsequently laminating the first substrate and second substrates such that the first and second electrolyte layers are aligned with and in contact with the areas of the respective first and second substrates. Therefore, the method for forming an electrochromic device recited in the issued patent is considered to be analogous to the method limitations recited in the claims of the pending application.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claims 1-20 contain allowable subject matter because the prior art does not teach or suggest Applicant’s claimed methods for forming electrochromic devices.
Wang et al. (US 2019/0271893 A1), herein referred to as Wang, is considered to be relevant prior art. Wang teaches (Claim 21) a method of forming an electrochromic device comprising forming a first electrode on a transparent first substrate, dispensing an electrolyte precursor composition to form a precursor layer on the first electrode, selectively curing only portions of the electrolyte precursor composition to form spacers in the precursor layer, laminating the first substrate to a transparent second substrate and curing the precursor layer to form an electrolyte layer.
Wang however does not teach or suggest Applicant’s claimed methods recited in independent claims 1, 18 and 20. Additionally, Wang does not teach or suggest claims 2-17 and 19 which are dependent from claims 1 and 18 respectively. Applicant’s claimed methods are considered to be an improvement over prior art methods for forming electrochromic devices because potential contamination at many critical interfaces in the layers that constitute the electrochromic device can be minimized.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEWART A FRASER whose telephone number is (571)270-5126. The examiner can normally be reached M-F, 7am-4pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at 571-270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEWART A FRASER/Primary Examiner, Art Unit 1724
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