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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on November 19, 2025 and November 26, 2025 comply with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 3 and 11 (dependents of 1) are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement and as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention and which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Regarding claim 3, claim 1 clearly recites “wherein the transparent electrode layer is IZO”, establishing the scope of material used in the transparent electrode (Wands factor A). Claim 3 recites “wherein the electrode layer is a transparent electrode layer containing a conductive polymer material.” A person of ordinary skill in the art could not predictably combine an IZO electrode to contain a conductive polymer material (Wands factors D & E) and there is no direction or working examples in the specification (Wands factors F & G). Considering all the evidence, as a whole, the examiner concludes that one of ordinary skill in the art would need to engage in undue experimentation to make or use the invention based on the content of the disclosure (Wands factor H), see MPEP 2164.01(a). While the specification clearly discloses a transparent electrode made of IZO or made of a conductive polymer it does not support a transparent electrode made of IZO containing a conductive polymer. Applicant appears to be mixing two embodiments without support in the specification, as originally filed, support for such a mixing is not expressly, implicitly, or inherently supported in the originally filed disclosure, nor has applicant has not pointed out where the amended claim is supported, see MPEP 2163. It has been held that “it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation” Hyatt v. Boone, 146 F.3d 1348, 1353, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998) and "examiner was explicit that while each element may be individually described in the specification, the deficiency was lack of adequate description of their combination" Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007). In an effort to maintain compact prosecution any IZO electrode associated with a conductive polymer will be interpreted as reading on this claim.
Claim 11 is rejected under 35 U.S.C. 112(a) as failing to comply with the enablement and written description requirements, since it depends on claim 3 and therefore has the same deficiencies.
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 1-3, 7-8 and 10-11 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 “wherein a resistance change rate DR/R0 of the transparent electrode layer is 0.03% or less within 30,000 times of bending, and wherein R0 is resistance value when a number of times of bending is zero, and DR is a resistance change amount relative to R0 when the number of times of bending is within 30,000” raises clarity issues. It is unclear what amount of change in the radius of curvature qualifies as bending. Assuming starting from a flat/planar surface (i.e. radius of curvature of ∞) would a bend of 695,700km (approximate radius of curvature of the sun) qualify or would it need to be 6,371km (approximate radius of curvature of Earth) or 1m or 1cm or 1mm or 1mm or 15nm (approximate radius of curvature of ivagination’s membrane). The specification offers no guidance on the amount of bending that would qualify as satisfying bending a transparent IZO electrode. Further “within 30,000 times of bending” and “the number of times of bending is within 30,000” also raises clarity issues. The construct indicates the transparent IZO electrode is bent less than 30,000 times. Thus, being bent 1 time clearly qualifies for the “the number of times of bending is within 30,000”, however, it is unclear if the “within” is inclusive of zero times of being bent. Since bending zero times would not further distinguish the invention the examiner will interpret the limitation essentially requires that a transparent IZO electrode bent 1 time from a radius of ∞ to a noninfinite radius is required to have DR/R0≤0.03%.
Claims 2-3, 7-8 and 10-11 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Regarding claim 8 – “A lens in spectacles including the electrochromic element according to claim 7” – has clarity issues. Applicant has not used one of the transitional phrases "comprising", "consisting essentially of" and "consisting of" thus the scope of the claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim is unclear. In accordance with the MPEP 2111.03 the determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case. In the current case the examiner will consider “including" as the transitional term and that it is synonymous with "comprising", which is inclusive or open-ended and does not exclude additional, un-recited elements or method steps. Further, in the remarks of January 27, 2026, has argued that the invention is distinguished from claim 7 by relying on the preamble. Therefore, the preamble is now considered a limitation since a clear reliance on the preamble during prosecution to distinguish the claimed invention transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention, see MPEP 2111.02. As such, since applicant is claiming “[a] lens in a spectacle” this limitation is a “use” in a claim. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. It has been held that a single claim which claims both a system (i.e. a lens) and the use the system (i.e. in a spectacle) is indefinite because it is unclear whether infringement would occur when the user actually uses the system in a particular way (in this case it is unclear if the lens were used in a different device, such as a camera or a telescope if said lens used in a spectacle was claimed or not). Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990), see MPEP 2173.05. For purposes of examination the examiner will assume that as long as the lens can being used in a spectacle the examiner will assume the limitation is inherently met. To overcome this rejection the examiner respectfully suggest returning to the previous language and adding an addition element supported by the specification, such as a substrate, to distinguish the device from claim 7, e.g. “A lens [[in]] for spectacles comprising the electrochromic element according to claim 7, and a substrate.”
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 6 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 2 (dependent of 1) the sole limitation of “wherein the electrode layer is a transparent electrode layer containing IZO” repeats or possibly broadens (i.e. fails to further limit) the requirement in claim 1 of “wherein the transparent electrode layer is IZO”.
Regarding claim 6 (dependent of 4) the sole limitation of “wherein the electrode layer is a transparent electrode layer that contains the conductive fibers” is already required by claim 4 (i.e. fails to further limit) “wherein the electrode layer that contains the conductive fibers is a transparent electrode layer, and wherein a part of the conductive fibers is mixed in the transparent electrode layer.”
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8 and 10-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Biver et al. US Patent Application Publication 2024/0045298, of record.
Regarding claim 1 Biver discloses an electrochromic element (title e.g. figure 2B EC cell 3) having an electrode layer (e.g. electrically conductive coating 9) and an electrochromic layer (e.g. electrochromic composition 7), wherein the electrode layer is a transparent electrode layer (inter alia paragraph [0128-34] “transparent conductive coating”) made of an amorphous material (inter alia paragraph [0129] list amorphous material examples), wherein the electrode layer is a transparent electrode layer is IZO (inter alia paragraph [0129] list IZO as an exemplar material), wherein a specific resistance of the transparent electrode layer is 0.5 mW∙cm or less (intrinsic physical property of IZO that necessarily occurs1), wherein a resistance change rate DR/R0 of the transparent electrode layer is 0.03% or less within 30,000 times of bending, and wherein R0 is resistance value when a number of times of bending is zero, and DR is a resistance change amount relative to R0 when the number of times of bending is within 30,000 (physical property inherent for an IZO electrode2).
Regarding claim 2 Biver discloses the electrochromic element according to claim 1, as set forth above. As noted in the art rejection of claim 1, Biver discloses wherein the electrode layer is a transparent electrode layer containing IZO (inter alia paragraph [0129] list IZO as an exemplar material).
Regarding claim 3 Biver discloses the electrochromic element according to claim 1, as set forth above. Biver further discloses wherein the electrode layer is a transparent electrode layer containing a conductive polymer material (inter alia paragraph [0134] list a polymer conductive coating as an exemplar material, since the polymer conductive coating is on/included in the transparent electrode this limitation is interpreted as being read on, see 112 rejection above).
Regarding claims 7 and 10-11 Biver discloses the electrochromic element according to claims 1-3, as set forth above. Biver further discloses wherein the electrochromic element (e.g. 3) is formed into the curved shape (e.g. see figure 2B).
Regarding claim 8 Biver further discloses a lens (title e.g. 3) in spectacles (e.g. figure 1 ophthalmic device 1) including the electrochromic element according to claim 7 (as set forth above).
Regarding claims 4-6 Biver discloses an electrochromic element (title e.g. figure 2B EC cell 3) having an electrode layer (e.g. 9 inter alia paragraph [0128-34]) and an electrochromic layer (e.g. 7), wherein the electrode layer contains conductive fibers (inter alia paragraph [0130] “electrically conductive nanostructure based on a metal (e.g. silver), selected from nanomeshes, nanowires and nanogrids”), and wherein the electrode layer (e.g. 9) that contains the conductive fibers is a transparent electrode layer (inter alia paragraph [0128-34] “transparent conductive coating”), and wherein a part of the conductive fibers is mixed in the transparent electrode layer (axiomatic that a transparent nanomesh/nanowire/nanogrid electrode contains conductive fibers, further see at least paragraph [0046-47 & 0140]), as required by claim 4; and wherein the conductive fibers are carbon nanotubes or metal nanowires (inter alia paragraph [0130] “electrically conductive nanostructure based on a metal (e.g. silver), selected from nanomeshes, nanowires and nanogrids”), as required by claim 5; and wherein the electrode layer is a transparent electrode layer (inter alia paragraph [0128-34] “transparent conductive coating”) that contains the conductive fibers (inter alia paragraph [0130 & 0140]), as required by claim 6.
Regarding claim 12 Biver discloses the electrochromic element according to claim 4, as set forth above. Biver further discloses wherein the electrochromic element (e.g. 3) is formed into the curved shape (e.g. see figure 2B).
Response to Arguments
Applicant’s arguments, see remarks, filed January 27, 2026, with respect to claim rejections under 112 have been fully considered and in combination with the amendments are persuasive. The claim rejections under 112 have been withdrawn.
Applicant's arguments filed January 27, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s arguments centered on Biver failing to disclose “wherein a specific resistance of the transparent electrode layer is 0.5 m∙cm or less, wherein a resistance change rate R/R0 of the transparent electrode layer is 0.03% or less within 30,000 times of bending, and wherein R0 is resistance value when a number of times of bending is zero, and R is a resistance change amount relative to R0 when the number of times of bending is within 30,000” as recited in claim 1, the examiner is unpersuaded. Specific resistance is an intrinsic physical property of the IZO material. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003), see MPEP 2112. Regarding transparent IZO having DR/R0≤0.03% - given the interpretation above the examiner contends that any electrode bent 1 time from a radius of ∞ to a noninfinite radius would inherently meet this condition. Further, IZO is inherently a flexible material, as evidenced by Neto et al. “Transparent and Flexible Electrocorticography Electrode Arrays Based on Silver Nanowire Networks for Neural Recordings” ACS Appl. Nano Mater. 2021, 4, 5737−5747; e.g. see figure 3 showing an electrode with IZO being flexible.
Regarding applicant’s arguments centered on Biver failing to disclose “wherein the electrode layer that contains the conductive fibers is a transparent electrode layer, and wherein a part of the conductive fibers is mixed in the transparent electrode layer” as recited in claim 4, the examiner is unpersuaded. One embodiment of Biver’s transparent electrode layer is disclosed to be a nanomesh/nanowire/nanogrid electrode, as set forth above. Nanomesh/nanowires/nanogrid electrodes, by definition, contain conductive fibers, i.e. the conductive fibers are in, i.e. mixed in, the transparent electrode layer, as set forth above. Applicant further discusses a lamination process and states “Biver is completely silent regarding such.” The claim does not contain any process of manufacturing limitation3. Further, process/steps of manufacturing limitations in a device claim would not have any patentable weight4. Further, in arguendo, Biver discloses these argued, unclaimed processes. For example, paragraph [0140] discusses processes for applying nanowires/nanomeshes including spray coating, bar coating, inkjet coating, spin coating, screen printing and photolithography that may either be mixed with conductive polymers or have a conductive polymer passivation layer applied.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Neto et al. “Transparent and Flexible Electrocorticography Electrode Arrays Based on Silver Nanowire Networks for Neural Recordings” ACS Appl. Nano Mater. 2021, 4, 5737−5747; in regards to a flexible hybrid material electrode comprising metal nanowire and IZO, see abstract.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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.
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, 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 February 6, 2026
1 This would be an inherent physical property of the material used and it has been held "[T]he 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.
2 Ibid.
3 Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
4 It has been held that the presence of process limitations in a product claim, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to the product. In re Stephens 135 USPQ 656 (CCPA 1965). Furthermore, the patentability of a product does not depend upon its method of production. If the product in a product by process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed Cir 1985). See MPEP 2113.