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
Acknowledgment is made of receipt of Information Disclosure Statements (PTO-1449) filed 10/07/2024, 06/03/2025 and 03/03/2026. An initialed copy is attached to this Office Action.
Drawings
Figures 1A-2 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 107-112, 114 and 116 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5 and 7 of U.S. Patent No. 11,698,566. Although the claims at issue are not identical, they are not patentably distinct from each other because the referenced patent claims a method of manufacturing electrochromic devices that encompass the step claims of the method of manufacturing two or more electrochromic devices in the current application. The method of the current application recites in claim 107 that the manufacturing process is performed between a first facility and second facility, wherein the initial fabrication process of the monolithic electrochromic device at the first facility comprises an electrochromic stack between two transparent electrically conductive layers on a glass substrate with a hermetic top coat applied to the second transparent electrically conductive layer, as is also presented in claim 1 of the referenced patent. The glass substrate is then shipped to a second facility for post-processing; the listed post-processing options of the current application are found in both the claims and specification of the referenced patent. The dependent claims of the current application and the referenced patent recite the same subject matter regarding post-processing steps taken.
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.
Claims 107-114, 116 and 117 are rejected under 35 U.S.C. 103 as being unpatentable over Parker et al. (USPG Pub No. 2012/0327499), hereinafter “Parker”, in view of Karmhag et al. (USPG Pub No. 2016/0085128), hereinafter “Karmhag”.
Regarding claim 107, Parker discloses a method of manufacturing two or more electrochromic devices (see Fig. 2, Paragraph 55), the method of manufacturing comprising: (a) in a first facility: (i) fabricating a monolithic electrochromic device coating comprising an electrochromic stack between a first and a second transparent electrically conductive layer (415, 425) on a glass substrate (405), the first transparent electrically conductive layer being closest to the glass substrate (405) (see Figs. 1A, 4A, Paragraph 42); (ii) providing a hermetic topcoat on second transparent electrically conductive layer (Paragraph 42); wherein post-processing comprises performing two or more processes selected from the group consisting of: i. removing the hermetic topcoat, ii. cutting the glass substrate into two or more electrochromic lites (see Fig. 1A – step 150, Paragraph 67), iii. laser patterning the monolithic electrochromic device coating into two or more daughter electrochromic devices (see Fig. 1A – steps 130, 140, Paragraph 67), iv. applying one or more bus bars to the monolithic electrochromic device coating, to the two or more electrochromic lites or to the daughter electrochromic devices (see Fig. 1A – step 170, Paragraph 67), and v. fabricating one or more insulated glass units using the two or more electrochromic lites or daughter electrochromic devices (see Fig. 1A – step 180, Paragraph 67 – the cited paragraphs and steps satisfy the “two or more processes” requirement of the claim). Parker discloses the claimed invention, but does not specify (b) shipping the substrate from the first facility to a second facility; and (c) performing post-processing in the second facility, wherein the first facility is different from the second facility. In the same field of endeavor, Karmhag discloses (b) shipping the substrate from the first facility to a second facility (see Figs. 8A, 8B, Paragraph 54); and (c) performing post-processing in the second facility (see Figs. 8A, 8B, Paragraph 54), wherein the first facility is different from the second facility (see Figs. 8A, 8B, Paragraph 54). 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 method of Parker with (b) shipping the substrate from the first facility to a second facility; and (c) performing post-processing in the second facility, wherein the first facility is different from the second facility of Karmhag for the purpose of enabling a cost-efficient large-scale production of electrochromic devices that are later cut into a final shape electrochromic device suitable for the desired application (Paragraph 23).
Regarding claim 108, Parker further discloses wherein (c) performing the post-processing comprises performing the laser patterning and applying the one or more bus bars (see Fig. 1A, Paragraph 67).
Regarding claim 109, Parker further discloses wherein (c) performing the post-processing comprises performing the laser patterning, followed by applying the one or more bus bars (see Fig. 1A, Paragraph 67).
Regarding claim 110, Parker further discloses wherein (c) performing the post-processing comprises performing the laser patterning, applying the one or more bus bars, and cutting the glass substrate (see Fig. 1A, Paragraph 67).
Regarding claim 111, Parker further discloses wherein (c) performing the post-processing comprises performing the laser patterning, applying the one or more bus bars, and cutting the glass substrate, wherein the one or more bus bars are applied after the laser patterning is performed and prior to cutting the glass substrate (see Figs. 1A, 1B, Paragraph 38).
Regarding claim 112, Parker further discloses wherein the laser patterning comprises (1) applying the one or more bus bars, (2) locally removing material from the electrochromic device, (3) locally deactivating regions of the monolithic electrochromic device, (4) locally mitigating shorts, or (5) locally activating regions of the monolithic electrochromic device while leaving other regions inactive (see Figs. 1A, 1B, Paragraphs 50, 54).
Regarding claim 113, Parker further discloses wherein the laser patterning comprises locally deactivating regions of the monolithic electrochromic device (see Figs. 1A, 1B, Paragraph 54).
Regarding claim 114, Parker further discloses wherein the one or more bus bars are applied to the first transparent electrically conductive layer or the second transparent electrically conductive layer (see Figs. 1A, 1B, 4A, 4B).
Regarding claim 116, Parker further discloses wherein the electrochromic stack comprises an electrochromic layer and a counter electrode layer (Paragraph 42).
Regarding claim 117, Parker discloses further comprising annealing the glass substrate comprising the electrochromic stack after cutting (see Fig. 1A – step 190, Paragraph 70). Parker and Karmhag teach the method set forth above for claim 107, Karmhag further disclose at the second facility (Paragraph 54). It would have been obvious to one of ordinary skill to provide the method of Parker with the teachings of Karmhag for at least the same reasons as those set forth above with respect to claim 107.
Claim 115 is rejected under 35 U.S.C. 103 as being unpatentable over Parker (USPG Pub No. 2012/0327499) in view of Karmhag (USPG Pub No. 2016/0085128) as applied to claim 107 above, and further in view of Leventis et al. (USP No. 5,189,549).
Regarding claim 115, Parker and Karmhag disclose the claimed invention, but do not specify wherein the one or more bus bars are optically transparent. In the same field of endeavor, Leventis discloses wherein the one or more bus bars are optically transparent (Col. 7, Lines 42-46). 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 method of Parker and Karmhag with wherein the one or more bus bars are optically transparent of Leventis for the purpose of providing an electrochromic element for a transmissive electronic device application (Col. 7, Line 42).
Prior Art Citations
Byker et al. (USP No. 5,805,330) is being cited herein to show a method of manufacturing electrochromic devices relevant to the claimed invention.
Conclusion
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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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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/MAHIDERE S SAHLE/Primary Examiner, Art Unit 2872 6/12/2026
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