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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-10 and 16-20) in the reply filed on 7/31/2026 is acknowledged. The traversal is on the ground(s) that searching the subject matter of groups I and II does not place a serious search burden on the Examiner and that any search of claim 1 would require searching the same classifications required for claim 11. This is not found persuasive because the Requirement for Restriction mailed on 5/6/2026 is based on the “requirement for unity of invention” under 37 CFR 1.475 and was determined that the identified groups of inventions are not so linked as to form a single general inventive concept under PCT Rule 13.1 because it lacks “special technical features” that would define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. Therefore, Applicant’s arguments regarding the “two criteria for proper requirement for restriction: (1) the inventions must be independent or distinct as claimed; and (2) there must be a serious burden on the examiner” is moot.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/31/2026.
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.
Claim(s) 1, 6, and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boote (U.S. 2011/0170030).
Regarding claim 1, Boote discloses a method for manufacturing an opacifying device (1, Fig. 4; page 2, para [0055]) for windows or walls that are at least partially transparent (page 3, para [0061]), the manufacturing method comprising the following steps:
providing a polarizable part (2, Fig. 4; page 3, para [0062]) including a central layer (5, Fig. 4; page 2, para [0056]) with a polarizable material able to be opaque or at least partially transparent according to a voltage being subjected thereto (Fig. 4; page 3, para [0062]), two conductive layers (6 and 7, Fig. 4; page 2, para [0056]) surrounding the central layer (5, Fig. 4) able to apply a voltage on either side of the central layer (page 2, para [0056]), and, two insulating layers (8 and 9, Fig. 4; page 2, para [0056]) surrounding the conductive layers (6 and 7, Fig. 4),
removing a portion of the polarizable part so as to create an electrical connection access (18 and 20 of 2 are removed, Figs. 3-4; page 3, para [0057]) to each conductive layer,
providing two cover layers (13 and 12, Fig. 4; page 3, para [0061]) made of an electrically insulating material,
depositing a conductive entity (10 and 11, Fig. 4; page 3, para [0058]) on each cover layer (13 and 12, Fig. 4), the deposit securing the conductive entity to each cover layer so as to create at least one conductive track (conductive track of 10 and 11, Fig. 4) on each cover layer (13 and 12, Fig. 4), (conductive track 10 on cover layer 13 and conductive track 11 on cover layer 12, Fig. 4)
securing the cover layers (13 and 12, Fig. 4) provided with the conductive tracks (10 and 11, Fig. 4) to the polarizable part (2, Fig. 4), the cover layers (13 and 12, Fig. 4) provided with conductive tracks (10 and 11, Fig. 4) surrounding the polarizable part (cover layers 13 and 12 surround the polarizable part 2, Fig. 4), each conductive track being in electrical contact with a corresponding conductive layer of the two conductive layers (10 being in electrical contact with conductive layer 6 and 11 being in electrical contact with conductive layer 7, Fig. 4) at the corresponding electrical connection access and each conductive track (10 and 11, Figs. 3-4) having a free part outside of the electrical connection access able to be electrically connected to an external conductor (free part of 10 and free part of 11, Fig. 3).
Regarding claim 6, Boote discloses a method for manufacturing the opacifying device for windows or walls that are at least partially transparent according to claim 1, wherein the step of removing a portion of the polarizable part (18 and 20 of 2 are removed, Figs. 3-4; page 3, para [0057]) consists of removing on a defined perimeter portion of insulating layer (such as 8 or 9, Fig. 3; page 2, para [0056]), a portion of adjoining conductive layer (such as 6 or 7, Fig. 3), and a portion of central layer (5, Fig. 3).
Regarding claim 10, Boote discloses a method for manufacturing the opacifying device for windows or walls that are at least partially transparent according to claim 1, wherein the polarizable part (2, Fig. 3) has a central extension plane (such as center upper surface of 9, Fig. 3) and a thickness orthogonal to the central extension plane (vertical thickness of 2, Fig. 4), the cover layers (13 and 12, Fig. 4) provided with conductive tracks (10 and 11, Figs. 3-4) each having a portion with a part of conductive track extending outside of an extension area of the polarizable part along the central extension plane (cover layers 13 and 12 have respective conductive tracks 10 and 11 in regions 18 and 20 that are outside of a center upper surface extension area 9 of the polarizable part 2, Fig. 3).
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(s) 2 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boote (U.S. 2011/0170030) in view of Lam et al. (U.S. 2020/0033687).
Regarding claim 2, Boote discloses a method for manufacturing the opacifying device for windows or walls that are at least partially transparent according to claim 1 but does not expressly disclose wherein the depositing of the conductive entity (10 and 11, Fig. 4) is carried out by printing. However, Lam discloses a method for manufacturing an opacifying device (100, Fig. 1; page 7, para [0103]) for windows (page 17, para [0181]) wherein depositing a conductive entity (such as 330, Fig. 3; page 15, para [0166]) can be carried out by printing a silver ink material (page 15, para [0166]) in order to easily form a conductive layer.
Therefore, before the time of the effective filing of the claimed invention, it would have been obvious to one of ordinary skill in the art to configure the depositing of the conductive entity (Boote: 10 and 11, Fig. 4) to be carried out by printing (Lam: 330, Fig. 3; page 15, para [0166]) a conductive silver ink material (Lam: page 15, para [0166]) in order to obtain the benefits of easily forming a conductive layer as taught by Lam (page 15, para [0166]).
Regarding claim 4, Boote as modified by Lam discloses a method for manufacturing the opacifying device for windows or walls that are at least partially transparent according to claim 2, and further discloses wherein the conductive entity (Boote: 10 and 11, Fig. 4; Lam: 330, Fig. 3; page 15, para [0166]) is a metallic ink (Lam: such as a conductive silver ink material; page 15, para [0166]).
Regarding claim 5, Boote as modified by Lam discloses a method for manufacturing the opacifying device for windows or walls that are at least partially transparent according to claim 4, and further discloses wherein the conductive entity (Boote: 10 and 11, Fig. 4; Lam: 330, Fig. 3; page 15, para [0166]) comprises silver (Lam: such as silver ink; page 15, para [0166]).
Claim(s) 3 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boote (U.S. 2011/0170030) in view of Lam et al. (U.S. 2020/0033687) as applied to claim 2 above and further in view of Snider et al. (U.S. 2014/0097636).
Regarding claim 3, Boote as modified by Lam discloses a method for manufacturing the opacifying device for windows or walls that are at least partially transparent according to claim 2 but does not expressly disclose wherein the printing of the conductive entity (Boote: 10 and 11, Fig. 4; Lam: 330, Fig. 3; page 15, para [0166]) is carried out by screen printing. However, Snider discloses a method for manufacturing an opacifying device for windows (Fig. 22a; page 1, para [0004]) wherein depositing of a conductive entity (such as 38a’, 38b’, 40, Fig. 22a; page 7, para [0095]) can be done by a well known suitable means such as screen printing (page 7, para [0095]).
Therefore, before the time of the effective filing of the claimed invention, it would have been obvious to one of ordinary skill in the art to configure the step of printing the conductive entity (Boote: 10 and 11, Fig. 4; Lam: 330, Fig. 3; page 15, para [0166]) of Boote as modified by Lam by screen printing (Snider: page 7, para [0095]) in order to obtain the benefits of a well known suitable means of forming a conductive layer as taught by Snider (Snider: 38a’, 38b’, 40, Fig. 22a; page 7, para [0095]).
Regarding claim 16, Boote as modified by Lam discloses a method for manufacturing the opacifying device for windows or walls that are at least partially transparent according to claim 3, and further discloses wherein the conductive entity (Boote: 10 and 11, Fig. 4; Lam: 330, Fig. 3; page 15, para [0166]) is a metallic ink (Lam: such as a conductive silver ink material; page 15, para [0166]).
Regarding claim 17, Boote as modified by Lam discloses a method for manufacturing the opacifying device for windows or walls that are at least partially transparent according to claim 16, and further discloses wherein the conductive entity (Boote: 10 and 11, Fig. 4; Lam: 330, Fig. 3; page 15, para [0166]) comprises silver (Lam: such as silver ink; page 15, para [0166]).
Regarding claim 18, Boote discloses a method for manufacturing the opacifying device for windows or walls that are at least partially transparent according to claim 17, wherein the step of removing a portion of the polarizable part (18 and 20 of 2 are removed, Figs. 3-4; page 3, para [0057]) consists of removing on a defined perimeter portion of insulating layer (such as 8 or 9, Fig. 3; page 2, para [0056]), a portion of adjoining conductive layer (such as 6 or 7, Fig. 3), and a portion of central layer (5, Fig. 3).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boote (U.S. 2011/0170030) in view of Lam et al. (U.S. 2020/0033687).
Regarding claim 9, Boote discloses a method for manufacturing the opacifying device for windows or walls that are at least partially transparent according to claim 1, but does not expressly disclose wherein a functional accessory of the opacifying device is inserted between an insulating layer (Boote: 8, Fig. 4) and a cover layer (Boote: 12, Fig. 4) of Boote before the securing step so as to be in electrical contact with at least one conductive track (Boote: such as 10, Fig. 4). However, Lam discloses a method for manufacturing an opacifying device (100, Fig. 1; page 7, para [0103]) for windows (page 17, para [0181]) wherein a functional accessory such as a lead wire (180, Fig. 1; page 7, para [0103]) is provided to a conductive layer (150, Fig. 1; page 7, para [0103]) in order to provide a way to apply voltage to the conductive layer (150, Fig. 1) using the lead wire (180, Fig. 1; page 5, para [0091]).
Therefore, before the time of the effective filing of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide the opacifying device (Boote: 1, Fig. 4) of Boote with the lead wire (Lam: 180, Fig. 1) of Lam as a functional accessory of the opacifying device (Boote: 1, Fig. 4) such that the functional accessory (Lam: 180, Fig. 1) is inserted between an insulating layer (Boote: 8, Fig. 4) and a cover layer (Boote: 12, Fig. 4) before the securing step so as to electrically contact with at least one conductive track (Boote: such as 10, Fig. 4) in order to obtain the benefits of providing a way to apply voltage to the conductive track (Boote: 10, Fig. 4; Lam: 150, Fig. 1) using the lead wire as taught by Lam (Lam: 180, Fig. 1; page 5, para [0091]).
Allowable Subject Matter
Claims 7-8 and 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not disclose the method for manufacturing the opacifying device for windows or walls that are at least partially transparent according to claim 7 (having all the combination of features including wherein the securing of the cover layers provided with conductive tracks to the polarizable part is carried out by baking according to a baking temperature lower than a limit value so as to obtain a partial molecular entanglement of the material constituting the cover layers to allow a subsequent additional baking for securing to windows or walls that are at least partially transparent) and does not disclose the method for manufacturing the opacifying device for windows or walls that are at least partially transparent according to claim 19 (having all the combination of features including wherein the securing of the cover layers provided with conductive tracks to the polarizable part is carried out by baking according to a baking temperature lower than a limit value so as to obtain a partial molecular entanglement of the material constituting the cover layers to allow a subsequent additional baking for securing to windows or walls that are at least partially transparent). Claim 8 is objected to as being dependent on claim 7, and claim 20 is objected to as being dependent on claim 19.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL CHANG LEE whose telephone number is (571)270-7923. The examiner can normally be reached M-F 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Caley can be reached at 571-272-2286. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL C LEE/Primary Examiner, Art Unit 2871
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