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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 7, 2026 has been entered.
Response to Arguments
Applicant’s arguments, see remarks, filed May 7, 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 The claim rejections under 112 have been withdrawn.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 with respect to prior art rejections based on Biver have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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)(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.
(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.
Claims 4, 8 and 12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jamali et al. US Patent Application Publication 2023/0066173.
Regarding claim 4 Jamali discloses an electrochromic element (e.g. figures 5A-5B dimming device 500) having an electrode layer (e.g. electrode layer 209-2) and an electrochromic layer (e.g. electrochromic layer 509), wherein the electrode layer (e.g. 209-2) contains conductive fibers (inter alia paragraphs [0057, 0105 & 0107] “209-2 may include … carbon nanotubes, or silver nanowires, or a combination thereof”), wherein the electrode layer (e.g. 209-2) that contains the conductive fibers is a transparent electrode layer (inherent since the invention is lens and would need to be transparent in order to function properly), and wherein a part of the conductive fibers is mixed in the transparent electrode layer wherein the transparent electrode layer is made of ITO (inter alia paragraphs [0057, 0105 & 0107] “209-2 may include a conductive material of indium tin oxide (“ITO”) … carbon nanotubes, or silver nanowires, or a combination thereof”)), wherein the conductive fibers comprise carbon nanotubes and silver in combination (inter alia paragraphs [0057, 0105 & 0107] “209-2 may include … carbon nanotubes, or silver nanowires, or a combination thereof”), and wherein the conductive fibers form a mesh-like matrix (inherent that carbon nanotubes and silver nanowires combined into ITO would necessarily form a mesh).
Regarding claim 8 Jamali further discloses a lens (e.g. figures 2C ophthalmic lens 270) for spectacles (e.g. see figure 1A) comprising the electrochromic element (e.g. dimming material 207 paragraph [0094-95] discloses 500 electrochromic stack of 505, 507 & 509 between 209-1 & 209-2 is specific electrochromic example generic dimming layer 207) according to claim 4 (as set forth above), and a substrate (e.g. lens 251 or 253).
Regarding claim 12 Jamali discloses the electrochromic element according to claim 4, as set forth above. Jamali further discloses wherein the electrochromic element is formed into a curved shape (e.g. see figure 2C).
Claims 4, 8 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. US Patent Application Publication 2018/0231857.
Regarding claim 4 Kim discloses an electrochromic element (title e.g. figures 1-3 electrochromic apparatus 10 or 20) having an electrode layer (e.g. electrode layer 12) and an electrochromic layer (e.g. electrochromic layer 13), wherein the electrode layer contains conductive fibers, 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 wherein the transparent electrode layer is made of ITO, wherein the conductive fibers comprise carbon nanotubes and silver in combination, and wherein the conductive fibers form a mesh-like matrix (paragraphs [0032-33] “12 … is made of any material that is transparent and conductive … InSnO … Further a network electrode made of silver, gold, carbon nanotube, metal oxide, or the like that has transparency and a composite layer of those materials may be used”).
Regarding claim 8 Kim further discloses a lens for spectacles (e.g. figure 3 optical lens 22) comprising the electrochromic element (e.g. 10) according to claim 4 (as set forth above), and a substrate (e.g. substrate 11).
Regarding claim 12 Kim discloses the electrochromic element according to claim 4, as set forth above. Kim further discloses wherein the electrochromic element is formed into a curved shape (inter alia paragraph [0081] “having a curved face” e.g. see figure 3).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Naijo et al. US Patent Application Publication 2016/0005375; in regards to an electrochromic with a similar electrode, see paragraph [0119].
Lee et al. US Patent Application Publication 2016/0178982; in regards to an electrochromic with a similar electrode, see paragraph [0052] “The first transparent electrode 310 is such as indium tin oxide (ITO), silver nanowire, carbon nanotube, graphene, conductive polymer, or any combinations thereof.”
Wang et al. US Patent Application Publication 2018/0100056; in regards to an electrochromic with a similar electrode, see paragraph [0035] “Suitable material for the first and second electrically conductive films 114, 116 may include, but is not limited to, tin doped indium oxide (ITO) … silver nanowires, carbon nanotube films, patterned metals on glass or plastic substrates, combinations thereof, and/or other such transparent material exhibiting sufficient electrical conductance.”
He et al. US Patent Application Publication 2020/0363692; in regards to an electrochromic with a similar electrode, see paragraph [0008] “electrode include indium-tin oxide (ITO) … silver nanowires … carbon nanotube, metal mesh based transparent conductive electrodes”.
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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/George G. King/Primary Examiner, Art Unit 2872 May 10, 2026
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