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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 3, 2026 has been entered.
Response to Arguments
Applicant’s arguments, see remarks, filed May 21, 2026, with respect to objection to the drawings and rejections of claims 11-12 and 22-23 have been fully considered and in combination with the amendments are persuasive. The objection to the drawings and rejections of claims 11-12 and 22-23 have been withdrawn.
Applicant's arguments filed May 21, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument centered on the examiner’s application of case law Aller is inappropriately because the result in the examiner’s result-effective variable analysis is different than the unexpected result recognized by applicant, the examiner is unpersuaded. As set forth in the Office Action of February 24, 2026, pages 2-3, that optimizing the molecular weight is a recognized as a result-effective variable, with evidence provided by Yamada and Fukuta. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. In this case the variable of the molecular weight has recognized results of layer formation and avoiding material handling issues, as evidenced Yamada, and results pertaining to prevention of permeation issues and increased bonding strength as evidenced Fukuta, as discussing in said Office Action and set forth below. As discussed in the Interview of April 28, 2026 the reasons to arrive at a particular combination of elements does not need to be the same. It has been held: “The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed that an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). Further, the MPEPE 2145 notes “The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention.”
Regarding applicant’s discussion of the electrochromic element, due to the claimed composition, having the physical property of being capable of maintaining its colored even after voltage is no longer applied to the device, the examiner is unpersuaded. The examiner’s rejection sets forth a substantially identical device and composition. It has been held "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112. Applicant has not provided any proof that said physical property would not necessarily flow, i.e. be inherent, see MPEP 2112 V. The examiner maintains the physical property of being capable of maintaining its colored even after voltage is no longer applied to the device would necessarily flow from the substantially identical device and composition identified in the prior art. Further, Tajima explicitly discloses in paragraph [0005] “an electrochromic element can maintain its optical characteristics in a certain state even when a current or a voltage is not applied”.
Regarding applicant’s argument that “Shinoda does not disclose a triarylamine wherein any of R1 to R21 in the General Formulae 2 and 3 is chemically bound in the electrochromic layer via a polymerizable functional group selected from a vinyl group, a styryl group, a 2-methyl-1,3-butadienyl group, a vinylcarbonyl group, an acryloyloxy group, an acryloylamide group, and a vinyl thioether group” the examiner is unpersuaded. Shinoda (paragraphs [0043-49]) teaches an electrochromic compound including a triarylamine according to the required formula, see formulas 2-4 in paragraph [0044], as set forth below. Shinoda also teaches said electrochromic compound also includes “methacrylate”, see paragraph [0047]. Methacrylate contains a polymerizable vinyl group.
Examiner’s Comments
Regarding claim 1 page 3 line 11 starting from “an optionally …” to page 4 line 2 end of line the examiner notes all of these limitations are optional, i.e. these elements are clearly not required. Thus, there is no clarity issue. However, there is no patentable weight afforded to these optional elements. For readability of the rejection, the this very large section of 27 optional elements with no patentable weight will only be noted in a passing way.
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, 5-10 and 20 are rejected under 35 U.S.C. 112(b) 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 and claims 7-9 each introduce “an electrochromic material” and further limit “the electrochromic material” causing antecedent issues and clarity issues. It is unclear if “an electrochromic material” in claim 7 is referring to the electrochromic material introduced in claim 1 or is a new/different material. Further, it is unclear if “the electrochromic material” in claims 8-9 is referring to the electrochromic material of introduced in claim 1 or the one introduced in claim 7 or if it is a new/different material. Since the electrochromic material in claim 1 is associated with the electrochromic layer and the electrochromic material in claims 7-9 is associated with the electrochemically active layer the examiner is interpreting the electrochromic materials to be different materials. The examiner suggests and for purposes of examination will use “[[an]] a first electrochromic material” and “the first electrochromic material” in claim 1; “[[an]] a second electrochromic material” in claim 7; and “the second electrochromic material” in claims 8-9.
Claims 5-10 and 20 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Claims 8-9 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 7 and therefore have the same deficiencies.
Further regarding claim 1 “General Formula 1: An-Bm, General Formula 1 when n is 2, m is 0, and when n is 1, m is 0 or 1,” in combination with “A is bound to B at a position selected from the group consisting of R1 to R15 and B is bound to A at a position selected from the group consisting of R16 to R21” particularly when “m is 0” raises clarity issues. It is unclear how to interpret A being bound to B when B is not present (i.e. m is 0). It is unclear if the General Formula 1 is further restricted1, i.e. An-Bm when n is 1, m is 1; or if in the case where A and B are both present that the bond is at specific positions (assumed). The examiner suggests and for purposes of examination “in the case where both A and B are present A is bound to B at a position selected from the group consisting of R1 to R15 and B is bound to A at a position selected from the group consisting of R16 to R21”
Claims 5-10 and 20 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tajima et al. US Patent Application Publication 2014/0340729, of record, in view of Shinoda et al. US Patent Application Publication 2017/0168366, of record, with evidence of certain facts provided by Yamada et al. US Patent Application Publication 2012/0135298, of record, and Fukuta et al. US Patent Application Publication 2010/0081029, of record.
Regarding claims 1 and 20 Tajima discloses an electrochromic element (title e.g. figures 1-3 electrochromic element), comprising: a first electrode (e.g. transparent electrode layer 20); an electrochromic layer on the first electrode (e.g. ion storage layer 30); a second electrode (e.g. transparent electrode layer 60) wherein the electrochromic layer includes a first electrochromic material (inter alia paragraph [0103] “[t]he ion storage layer that constitutes the electrochromic element”); and an electrolyte layer between the electrochromic layer and the second electrode (e.g. electrolyte layer 90), wherein the electrolyte layer includes a basic compound (inter alia paragraph [0115] “it is preferable to adjust the non-water-based hydrogen ion conductive electrolyte solution to basicity”), wherein the basic compound is a polymer that is a polyvinylpyridine (paragraph [0115] “polyvinylpyridine”), wherein the electrochromic element retains a colored state even after application of voltage to the electrochromic element is stopped (paragraph [0005] “an electrochromic element can maintain its optical characteristics in a certain state even when a current or a voltage is not applied”).
Regarding the 27 optional elements (see claim 1 page 3 line 11 starting from “an optionally …” to page 4 line 2 end of line) the examiner notes all of these limitations are optional (i.e. not required) and therefore have no patentable weight, see examiner’s comment section above.
Tajima does not disclose the electrochromic material comprises a triarylamine compound represented by General Formula 1: An-Bm, General Formula 1 when n is 2, m is 0, and when n is 1, m is 0 or 1, A is a structure represented by General Formula 2 below and B is a structure represented by General Formula 3 below,
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A is bound to B at a position selected from the group consisting of R1 to R15 and B is bound to A at a position selected from the group consisting of R16 to R21, wherein any of R1 to R21 in the General Formulae 2 and 3 is chemically bound in the electrochromic layer via a polymerizable functional group, the rest of R1 to R21 are all monovalent organic groups and maybe identical to or different from each other, wherein the polymerizable functional group is selected from a vinyl group, a styryl group, a 2-methyl-1,3-butadienyl group, a vinylcarbonyl group, an acryloyloxy group, an acryloylamide group, and a vinyl thioether group, wherein the monovalent organic groups are each independently selected from a hydrogen atom, a halogen atom, a hydroxyl group, a nitro group, a cyano group, a carboxyl group; and said polyvinylpyridine has a weight average molecular weight of from 10,000 through 1,000,000, as recited in claim 1; or wherein the weight average molecular weight of said polymer that is a polyvinylpyridine is from 10,000 through 200,000, as recited in claim 20.
Regarding the average molecular weight – 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 (C.C.P.A. 1955), see MPEP 2144.05. Tajima has an electrochromic element with the required structure, including an electrolyte layer with a basic compound and polyvinylpyridine, fulfilling the general conditions of a claim. One would be motivated to have the average molecular weight in the claimed ranges since when the molecular weight is low, gel formation is difficult and when the molecular weight is high, the viscosity is excessively high and handling is difficult (as evidenced by Yamada paragraph [0056]) and/or to prevent the permeation of opposite polarity polymer into electrolyte membrane and obtain stronger bonding and a uniform solution of the opposite polarity polymer (as evidenced by Fukuta paragraphs [0064-66]). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the polyvinylpyridine in the electrochromic element as disclosed by Tajima to have and average molecular weight range between 10,000 and 1,000,000 or from 10,000 through 200,000 since changing this variable has results recognized in the art as evidenced by Yamada and Fukuta of when the molecular weight is low, gel formation is difficult and when the molecular weight is high, the viscosity is excessively high and handling is difficult and/or to prevent the permeation of opposite polarity polymer into electrolyte membrane and obtain stronger bonding and a uniform solution of the opposite polarity polymer and since discovering the optimum or workable ranges involves only routine skill in the art.
Regarding the first electrochromic material – Shinoda teaches a similar electrochromic element (title e.g. figure 1) including a first electrode (e.g. first electrode 2); an electrochromic layer on the first electrode (e.g. layer 4 paragraph [0084] “4 containing an oxidizable color-developing electrochromic compound”), comprising a first electrochromic material (inter alia paragraphs [0043-44]); a second electrode (e.g. second electrode 3); and an electrolyte layer between the electrochromic layer and the second electrode (e.g. electrolyte 5); and further teaches said first electrochromic material comprises the triarylamine compound (inter alia paragraph [0044]) represented by General Formula 1: An-Bm, General Formula 1 when n is 2, m is 0, and when n is 1, m is 0 or 1, A is a structure represented by General Formula 2 above and B is a structure represented by General Formula 3 above,
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Paragraph [0044] Formula (2) illustrating An-Bm when n is 2, m is 0
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Paragraph [0044] Formula (3) illustrating An-Bm when n is 1, m is 0
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Paragraph [0044] Formula (4) illustrating An-Bm when n is 1, m is 1
in the case where both A and B are present A is bound to B at a position selected from the group consisting of R1 to R15 and B is bound to A at a position selected from the group consisting of R16 to R21, wherein any of R1 to R21 in the General Formulae 2 and 3 is chemically bound in the electrochromic layer via a polymerizable functional group (e.g. see paragraph [0044] formula 2-4), the rest of R1 to R21 are all monovalent organic groups and maybe identical to or different from each other (e.g. see paragraph [0044] formula 2-4), wherein the polymerizable functional group is selected from a vinyl group, a styryl group, a 2-methyl-1,3-butadienyl group, a vinylcarbonyl group, an acryloyloxy group, an acryloylamide group, and a vinyl thioether group (e.g. paragraph [0047] “methacrylate” that contains a polymerizable vinyl group), wherein the monovalent organic groups are each independently selected from a hydrogen atom, a halogen atom, a hydroxyl group, a nitro group, a cyano group, a carboxyl group (e.g. paragraph [0046, 0026-27 & 0036] “a hydrogen atom, a halogen atom … -hydroxyl group, nitro group, carboxyl group … cyano group”) for the purpose of using a known as oxidizable color-developing electrochromic materials that exhibit transparency when in a neutral state and develop color when in a reduced state (paragraph [0006]). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the electrochromic material in the electrochromic element as disclosed by Tajima to be a triarylamine compound as taught by Shinoda for the purpose of using a known as oxidizable color-developing electrochromic materials that exhibit transparency when in a neutral state and develop color when in a reduced state.
Regarding claim 10 the combination of Tajima as modified by Shinoda discloses the electrochromic element according to claim 1, as set forth above. Tajima further discloses wherein the electrochromic element exhibits a decoloring rate of 95% or higher (implicit given change in transmittance graphs in figures 5, 7, 9-18, 20, 22-24 and 27-32).
Claims 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tajima et al. US Patent Application Publication 2014/0340729, of record, in view of Shinoda et al. US Patent Application Publication 2017/0168366, of record, and in further view of Agrawal et al. US Patent Application Publication 2021/0408592, of record.
Regarding claims 5-9 the combination of Tajima as modified by Shinoda discloses the electrochromic element according to claim 1, as set forth above. Tajima further discloses further comprising an electrochemically active layer on the second electrode (e.g. catalyst layer 40 or a reflective dimming layer 50).
Tajima does not disclose wherein the electrochemically active layer includes an inorganic oxide, as required by claim 5; or wherein the inorganic oxide is tin oxide, as required by claim 6; or wherein the electrochemically active layer includes a second electrochromic material, as required by claim 7; or wherein the second electrochromic material is a compound having at least one of a phosphonic acid group and a phosphoric acid group, as required by claim 8; or wherein the second electrochromic material is a viologen derivative, as required by claim 9.
Agrawal teaches a similar electrochromic element (title e.g. figure 2) including a first electrode (e.g. transparent conductive/TC layer 12), an electrochromic layer on the first electrode (e.g. electrochromic/EC layer 13), a second electrode (e.g. transparent conductive/TC layer 19), an electrolyte layer between the electrochromic layer and the second electrode (e.g. electrolyte/ion-conducting layer 14) and an electrochemically active layer on the second electrode (e.g. dye containing layer 22); and further teaches the electrochemically active layer includes an inorganic oxide (conductive particles 16) wherein the inorganic oxide is tin oxide (paragraph [0120] lists ITO and ATO, doped tin oxide as exemplar materials) for the purpose of increasing the electrical conductivity of the layer without producing haze or unwanted coloration (paragraph [0120]); and wherein the electrochemically active layer includes an second electrochromic material (e.g. redox dye 18) wherein the second electrochromic material is a viologen derivative (paragraph [0087] “viologen dyes”) which is a phosphoric acid for the purpose of providing UV protection (paragraph [0087]). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the electrochromic element as disclosed by the combination of Tajima as modified by Shinoda to have wherein the electrochemically active layer includes an inorganic oxide wherein the inorganic oxide is tin oxide, and wherein the electrochemically active layer includes a second electrochromic material wherein the second electrochromic material is a compound having at least one of a phosphonic acid group and a phosphoric and/or wherein the second electrochromic material is a viologen derivative as taught by Agrawal for the purpose of increasing the electrical conductivity of the layer without producing haze or unwanted coloration and for the purpose of providing UV protection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571) 272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George G. King/Primary Examiner, Art Unit 2872 June 5, 2026
1 A broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
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