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 .
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which were 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 now recites “a conduction layer formed of a transparent conductive material exhibiting a first tensile stress resilience” and “the flexible conductive layer formed of an electrically conductive polymer exhibiting a second tensile stress resilience that is greater than the first tensile stress resilience”, where paragraph 23 of the current application was referenced as support for the amendment. The cited paragraph mentions tensile stress resilience; however it does not specifically disclose a tensile stress resilience of a conduction layer, nor does it disclose a comparison in tensile stress resilience between the materials of the conduction layer and flexible conductive layer. The application, in its entirety, does not disclose said subject matter.
Regarding claim 10, the claim recites “a third adhesion layer located on a surface of the barrier layer opposite the conduction layer”. Paragraph 27 was referenced to support this amendment; however there is no prior mention of a “third adhesion layer” and a “barrier layer” anywhere in the disclosure. For the purpose of continuing examination, it is assumed that the new limitation is meant to convey “the plurality of adhesion layers 42 may include an adhesion layer 42 between the base layer 30 and the substrates 12, 18” of paragraph 27.
In addition, claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 10 recites the limitation "the barrier layer" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Since there is no prior mention in the disclosure, the claimed “barrier layer” is open to being interpreted as the base layer or a substrate of the current invention. For the purpose of continuing examination, it is assumed that the recited “barrier layer” is meant as “the base layer” of the “at least one of the first and second electrode stacks”.
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.
Claims 1, 2, 4-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeuchi (USPG Pub No. 2022/0171230).
Regarding claim 1, Takeuchi discloses an electro-optic assembly (100) (see Fig. 1), comprising: a first substrate (111) having a first surface and a second surface opposite the first surface (see Fig. 1, Paragraph 160); a second substrate (121) having a third surface and a fourth surface opposite the third surface (see Fig. 1, Paragraph 160), the second and third surfaces facing each other to define a gap (see Fig. 1); a first electrode stack (112-114) coupled to the second surface (see Fig. 1, Paragraph 160); a second electrode stack (122-125) coupled to the third surface (see Fig. 1, Paragraph 160); an electro-optic medium (115) located between the first electrode stack and the second electrode stack (see Fig. 1, Paragraph 160); and at least one of the first and second electrode stacks comprising: a base layer (122, 123) (see Fig. 1); a conduction layer (124) formed of a transparent conductive material exhibiting a first tensile stress resilience (Paragraph 46); and a flexible conductive layer (125) spaced from the base layer by the conduction layer, the flexible conductive layer formed of an electrically conductive polymer exhibiting a second tensile stress resilience that is greater than the first tensile stress resilience (Paragraphs 89, 90, 139, 144). Where the material requirements, as recited in the claims, are met, so are the property requirements of said materials.
Regarding claim 2, Takeuchi discloses wherein the flexible conductive layer (125) is formed of a polythiophene (Paragraphs 89, 90, 139).
Regarding claim 4, Takeuchi discloses further including an adhesion layer (124) disposed between the conduction layer (123) and the flexible conductive layer (125) (see Fig. 1, Paragraph 160).
Regarding claim 5, Takeuchi discloses wherein the conduction layer (124) defines a first thickness and the flexible conductive layer (125) defines a second thickness that is greater than the first thickness (Paragraphs 65, 149).
Regarding claim 6, Takeuchi discloses wherein the base layer (122, 123) is conductive (Paragraph 160).
Regarding claim 8, Takeuchi discloses wherein the first and second substrate are non-planar (Paragraphs 37-39).
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 following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi (USPG Pub No. 2022/0171230) in view of Lin et al. (CN 112500557 A), hereinafter “Lin”.
Regarding claim 3, Takeuchi discloses the claimed invention, but does not specify wherein the base layer is formed of a polythiophene. In the same field of endeavor, Lin discloses wherein the base layer is formed of a polythiophene (see claim 8). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the assembly of Takeuchi with wherein the base layer is formed of a polythiophene of Lin for the purpose of constructing a flexible electrochromic device (Abstract). Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 7, 9, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi (USPG Pub No. 2022/0171230) in view of DeNolf et al. (USPG Pub No. 2020/0310211), hereinafter “DeNolf”.
Regarding claim 7, Takeuchi discloses the claimed invention, but does not specify wherein the base layer includes an insulating layer. In the same field of endeavor, DeNolf discloses wherein the base layer includes an insulating layer (Paragraph 132). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the assembly of Takeuchi with wherein the base layer includes an insulating layer of DeNolf for the purpose of providing an electro-optic assembly that produces the desired electrochemical and electro-optical characteristics and suitable for large-scale manufacturing (Paragraph 3). Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 9, Takeuchi discloses the claimed invention, but does not specify wherein the conduction layer is sandwiched between a pair of adhesion layers that adhere and protect the conduction layer. In the same field of endeavor, DeNolf discloses wherein the conduction layer is sandwiched between a pair of adhesion layers that adhere and protect the conduction layer (Paragraph 132). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the assembly of Takeuchi with wherein the conduction layer is sandwiched between a pair of adhesion layers that adhere and protect the conduction layer of DeNolf for the purpose of providing an electro-optic assembly that produces the desired electrochemical and electro-optical characteristics and suitable for large-scale manufacturing (Paragraph 3). Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 18, Takeuchi discloses an electro-optic assembly (100) (see Fig. 1), comprising: a first substrate (111) having a first surface and a second surface opposite the first surface (see Fig. 1, Paragraph 160); a second substrate (121) having a third surface and a fourth surface opposite the third surface (see Fig. 1, Paragraph 160), the second and third surfaces facing each other to define a gap with uniform cell spacing (see Fig. 1); a first electrode stack (112-114) coupled to the second surface (see Fig. 1, Paragraph 160); a second electrode stack (122-125) coupled to the third surface (see Fig. 1, Paragraph 160); an electro-optic medium (115) located between the first electrode stack and the second electrode stack (see Fig. 1, Paragraph 160); and at least one of the first and second electrode stacks comprising: a base layer (122, 123) (see Fig. 1); a conduction layer (124) formed of a transparent conductive material (Paragraph 46); and a flexible conductive layer (125) spaced from the base layer by the conduction layer, the flexible conductive layer formed of an electrically conductive polymer (Paragraphs 89, 90, 139). Takeuchi discloses the claimed invention, but does not specify and wherein the second and third surfaces each extend to an outer perimeter defining an area, respectively, and wherein the first and second substrates are formed into a roll. In the same field of endeavor, DeNolf discloses and wherein the second and third surfaces each extend to an outer perimeter defining an area (see Fig. 1, Paragraph 51), respectively, and wherein the first and second substrates are formed into a roll (see Figs. 7A-7C, Paragraph 63). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the assembly of Takeuchi with and wherein the second and third surfaces each extend to an outer perimeter defining an area, respectively, and wherein the first and second substrates are formed into a roll of DeNolf for the purpose of storage or for further processing (Paragraph 63).
Regarding claim 19, Takeuchi discloses wherein the flexible conductive layer is formed of a polythiophene (Paragraphs 89, 90, 139). Takeuchi discloses the claimed invention, but does not specify wherein the flexible conductive layer and bridges gaps in the conductive layer formed by stretching. In the same field of endeavor, DeNolf discloses wherein the flexible conductive layer (720/720’) and bridges gaps in the conductive layer formed by stretching (see Figs. 9, 10, Paragraphs 83-84). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the assembly of Takeuchi with wherein the flexible conductive layer and bridges gaps in the conductive layer formed by stretching of DeNolf for the purpose of provided an electrical connection between elements (Paragraphs 83-84). The citations of DeNolf disclose the adhesive or tape sealant as being extended within gaps between elements.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi (USPG Pub No. 2022/0171230) in view of DeNolf (USPG Pub No. 2020/0310211) as applied to claim 9 above, and further in view of Cao et al. (CN 115390330 A), hereinafter “Cao”.
Regarding claim 10, Takeuchi and DeNolf disclose the claimed invention, but do not specify further including a third adhesion layer located on a surface of the barrier layer1 opposite the conduction layer. In the same field of endeavor, Cao discloses further including a third adhesion layer (92, 93, 94) located on a surface of the barrier layer opposite the conduction layer (101, 102) (see Fig. 16). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the assembly of Takeuchi and DeNolf with further including a third adhesion layer located on a surface of the barrier layer opposite the conduction layer of Cao for the purpose of providing an ease for mass production (Background). Furthermore, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claims 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi (USPG Pub No. 2022/0171230) in view of Sarrach et al. (USPG Pub No. 2023/0333433), hereinafter “Sarrach”.
Regarding claim 11, Takeuchi discloses an electro-optic assembly (100) (see Fig. 1), comprising: a first substrate (111) of a non-planar shape including a first surface and a second surface opposite the first surface (see Fig. 1, Paragraphs 37-39, 160); a second substrate (121) has the non-planar shape and includes a third surface and a fourth surface opposite the third surface (see Fig. 1, Paragraphs 37-39, 160), the second and third surfaces facing each other to define a gap (see Fig. 1); a first electrode stack (112-114) coupled to the second surface (see Fig. 1, Paragraph 160); a second electrode stack (122-125) coupled to the third surface (see Fig. 1, Paragraph 160); an electro-optic medium (115 with 131) located between the first electrode stack and the second electrode stack (see Fig. 1, Paragraph 160); and the first and second electrode stacks comprising: a base layer (122, 123; 112,113) (see Fig. 1); a conduction layer (124; 114) formed of a transparent conductive material (Paragraph 46); and a flexible conductive layer (125; 115) spaced from the base layer by the conduction layer, the flexible conductive layer formed of a polythiophene (Paragraphs 89, 90, 139). Takeuchi discloses the claimed invention except for a first bus formed of a flexible conductive material coupled to the first electrode stack and a second bus formed of the same or a different flexible conductive material coupled to the second electrode stack. In the same field of endeavor, Sarrach discloses a first bus formed of a flexible conductive material coupled to the first electrode stack and a second bus formed of the same or a different flexible conductive material coupled to the second electrode stack (Paragraphs 19, 87). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the assembly of Takeuchi with a first bus formed of a flexible conductive material coupled to the first electrode stack and a second bus formed of the same or a different flexible conductive material coupled to the second electrode stack of Sarrach for the purpose of establishing an electrical connection (Paragraph 3).
Regarding claim 12, Takeuchi further discloses wherein the second and third surfaces are each defined by the non-planar shape (Paragraphs 37-39).
Regarding claim 13, Takeuchi further discloses wherein the gap has uniform cell spacing (see Fig. 1).
Regarding claim 14, Takeuchi further discloses wherein the first and fourth surfaces are each defined by the non-planar shape (Paragraphs 37-39).
Regarding claim 15, Takeuchi further discloses wherein the first and second substrates each define a uniform thickness (see Fig. 1).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi (USPG Pub No. 2022/0171230) in view of Sarrach (USPG Pub No. 2023/0333433) as applied to claim 13 above, and further in view of Agrawal et al. (USPG Pub No. 2019/0145161), hereinafter “Agrawal”.
Regarding claim 16, Takeuchi and Sarrach disclose the claimed invention, but do not specify wherein the second and third surfaces each extend to an outer perimeter defining an area, respectively, and the non-planar shape defines at least 20% of the area. In the same field of endeavor, Agrawal discloses wherein the second and third surfaces each extend to an outer perimeter defining an area, respectively (see Figs. 5, 6), and the non-planar shape defines at least 20% of the area (see Fig. 10, Paragraph 126). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the assembly of Takeuchi and Sarrach with wherein the second and third surfaces each extend to an outer perimeter defining an area, respectively, and the non-planar shape defines at least 20% of the area of Agrawal for the purpose of providing an assembly with cost efficient production and low power consumption when used in the desired application (Paragraphs 7, 126).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi (USPG Pub No. 2022/0171230) in view of Sarrach (USPG Pub No. 2023/0333433) as applied to claim 11 above, and further in view of DeNolf (USPG Pub No. 2020/0310211).
Regarding claim 17, Takeuchi and Sarrach disclose the claimed invention, but do not specify wherein the flexible conductive layer formed of poly(3,4-ethylenedioxythiophene ("PEDOT"). In the same field of endeavor, DeNolf discloses wherein the flexible conductive layer formed of poly(3,4-ethylenedioxythiophene ("PEDOT") (Paragraph 132). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the assembly of Takeuchi and Sarrach with wherein the flexible conductive layer formed of poly(3,4-ethylenedioxythiophene ("PEDOT") of DeNolf for the purpose of providing an electro-optic assembly that produces the desired electrochemical and electro-optical characteristics and suitable for large-scale manufacturing (Paragraph 3). Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi (USPG Pub No. 2022/0171230) in view of DeNolf (USPG Pub No. 2020/0310211) as applied to claim 19 above, and further in view of Lin (CN 112500557 A).
Regarding claim 20, Takeuchi and DeNolf disclose the claimed invention, but do not specify wherein the base layer is formed of a polythiophene. In the same field of endeavor, Lin discloses wherein the base layer is formed of a polythiophene (see claim 8). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the assembly of Takeuchi and DeNolf with wherein the base layer is formed of a polythiophene of Lin for the purpose of constructing a flexible electrochromic device (Abstract). Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments filed 05/15/2026 have been fully considered but they are not persuasive.
Applicant argued that Takeuchi does not disclose or teach the claims as presented.
Fig. 1, along with the corresponding disclosure, of Takeuchi discloses an electro-optic assembly (100) with a first substrate (111), a second substrate (121), a first electrode stack (112-114), a second electrode stack (122-125), an electro-optic medium (115) located between the first electrode stack and the second electrode stack, wherein at least one of the first and second electrode stacks comprising: a base layer (122, 123), a conduction layer (124), and a flexible conductive layer (125). Applicant argued that Takeuchi does not teach, suggest or disclose the relative tensile stress resilience of the transparent conductive material of the conduction layer (124) and of the conductive polymer of the flexible conductive layer (125). With respect to the materials, Paragraphs 89 and 90 list the material options of the conduction layer (124) and the flexible conductive layer (125), respectively. The claim language does not limit the tensile stress resilience numerically, just that the second tensile stress resilience is greater than the first. Due to the difference in material, it is inherent that there is a difference in tensile stress resilience. In addition, the claims and specification of the current application presented polythiophene as the preferred material of the flexible conductive layer. Paragraphs 139 and 144 teach that the “deterioration preventing layer”, interpreted as the flexible conductive layer (125), is preferred to be made of the same material as the “electrochromic material” taught to be polythiophene or a derivative. Where the material requirement, as recited in the claim, is met, so is the property requirement of said material; thus, the second tensile stress resilience is greater than the first.
Applicant’s arguments with respect to claims 10-20 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. Sarrach and DeNolf cure the deficiencies of Takeuchi and address the subject matter challenged by Applicant.
For these reasons, the claims remain rejected.
Conclusion
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 MAHIDERE S SAHLE whose telephone number is (571)270-3329. The examiner can normally be reached Monday-Thursday 8:00 AM to 5:00 PM.
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/MAHIDERE S SAHLE/Primary Examiner, Art Unit 2872 7/29/2026
1 See claim interpretation in 35 USC § 112 rejection above
Prosecution Insights