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 § 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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Burrell et al. (US 2008/0266642) in view of Young (KR 2007/0068738).
Regarding claim 1, Burrell discloses, an electro-optic element (Figs. 1a-4), comprising:
a first substrate (12) having a first surface (see surface of 12 parallel to 16) and a second surface (see surface of 12 that abuts 16) substantially opposite the first surface;
a second substrate (14) having a third surface (see surface of 14 abutting 18) and a fourth surface (see surface of 14 parallel to 18) substantially opposite the third surface, the second substrate disposed in a spaced apart manner relative the first substrate such that the second and third surfaces face one another (see Figs. 1a-4);
a plurality of spacer beads (Para. 0211 and 24) disposed between the second surface and the third surface (see Figs. 1a-4);
a first substantially transparent electrode (16) associated with the second surface (Para. 0062);
a second substantially transparent electrode (18) associated with the third surface (Para. 0062); and
an electro-optic medium (26, 30) containing propylene carbonate (Para. 0057, 0083 and 0086) disposed between the first and second substantially transparent electrodes.
Burrell does not explicitly disclose the plurality of spacer beads formed of a material that is soluble in propylene carbonate and does not contain salt or polymers.
Young teaches, from the same field of endeavor that in an electro-optic element that it would have been desirable to make the plurality of spacer beads formed of a material that is soluble in propylene carbonate and does not contain salt or polymers (242 of Figs 1-11 and associated text).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the plurality of spacer beads formed of a material that is soluble in propylene carbonate and does not contain salt or polymers as taught by the electro-optic element of Young in the electro-optic element of Burrell since Young teaches it is known to include this feature in an electro-optic element for the purpose of providing an electro-optic element with improved color purity and contrast ratio.
Regarding claim 2, Burrell in view of Young discloses and teaches the claimed invention as set forth above, but, does not explicitly disclose the material includes N-phenyl phthalimide. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the material includes N-phenyl phthalimide, since 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 3, Burrell in view of Young discloses and teaches the claimed invention as set forth above, but, does not explicitly disclose the material is substantially entirely N-phenyl phthalimide and the material is homogeneous. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the material includes N-phenyl phthalimide, since 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 4, Burrell in view of Young discloses and teaches the claimed invention as set forth above, and Young further teaches, from the same field of endeavor that in an electro-optic element that it would have been desirable to make the material includes anthraquinone (242 of Figs 1-11 and associated text).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the above mentioned limitations as taught by the electro-optic element of Young in the electro-optic element of Burrell since Young teaches it is known to include this feature in an electro-optic element for the purpose of providing an electro-optic element with improved color purity and contrast ratio.
Regarding claim 5, Burrell in view of Young discloses and teaches the claimed invention as set forth above, and Young further teaches, from the same field of endeavor that in an electro-optic element that it would have been desirable to make the material is substantially entirely anthraquinone and the material is homogeneous (242 of Figs 1-11 and associated text).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the above mentioned limitations as taught by the electro-optic element of Young in the electro-optic element of Burrell since Young teaches it is known to include this feature in an electro-optic element for the purpose of providing an electro-optic element with improved color purity and contrast ratio.
Regarding claim 6, Burrell in view of Young discloses and teaches the claimed invention as set forth above, and the second substrate is disposed in a substantially parallel manner relative to the first substrate (see Figs. 1a-4).
Regarding claim 7, Burrell in view of Young discloses and teaches the claimed invention as set forth above, but, does not explicitly disclose the material includes an anthracene. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the material includes N-phenyl phthalimide, since 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 8, Burrell in view of Young discloses and teaches the claimed invention as set forth above, and Young further teaches, from the same field of endeavor that in an electro-optic element that it would have been desirable to the material includes a dye that is color matched to the electro-optic medium (242 of Figs 1-11 and associated text).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the above mentioned limitations as taught by the electro-optic element of Young in the electro-optic element of Burrell since Young teaches it is known to include this feature in an electro-optic element for the purpose of providing an electro-optic element with improved color purity and contrast ratio.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Burrell et al. (US 2008/0266642) in view of Young (KR 2007/0068738) as applied to claim 1 above, and further in view of Agrawal et al. (US 2013/0128333).
Burrell in view of Young remains as applied to claim 1 above.
Burrell in view of Young does not disclose an outer shell is formed over the material.
Agrawal teaches, from the same field of endeavor that in an electro-optic element that it would have been desirable to make an outer shell is formed over the material (Para. 0044 and 41 of Fig. 4a).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an outer shell is formed over the material as taught by the electro-optic element of Agrawal in the combination of Burrell in view of Young since Agrawal teaches it is known to include this feature in an electro-optic element for the purpose of providing an electro-optic element with improved stability and reliability.
Claims 10-13, 15-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Burrell et al. (US 2008/0266642) in view of Young (KR 2007/0068738), and further in view of Agrawal et al. (US 10,571,772).
Regarding claim 10, Burrell discloses, an electro-optic element (Figs. 1a-4), comprising:
a first substrate (12) having a first surface (see surface of 12 parallel to 16) and a second surface (see surface of 12 that abuts 16) substantially opposite the first surface;
a second substrate (14) having a third surface (see surface of 14 abutting 18) and a fourth surface (see surface of 14 parallel to 18) substantially opposite the third surface, the second substrate disposed in a spaced apart manner relative the first substrate such that the second and third surfaces face one another (see Figs. 1a-4);
a first substantially transparent electrode (16) associated with the second surface (Para. 0062);
a second substantially transparent electrode (18) associated with the third surface (Para. 0062); and
an electro-optic medium (26, 30) containing propylene carbonate (Para. 0057, 0083 and 0086) disposed between the first and second substantially transparent electrodes.
Burrell does not explicitly disclose the electro-optic medium containing propylene carbonate and traces of a dissolved material, the traces of dissolved material including at least one of N-phenyl phthalimide and anthraquinone.
Young teaches, from the same field of endeavor that in an electro-optic element that it would have been desirable to make the electro-optic medium containing propylene carbonate and traces of a dissolved material (242 of Figs 1-11 and associated text), the traces of dissolved material including at least one of N-phenyl phthalimide and anthraquinone (242 of Figs 1-11 and associated text).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the electro-optic medium containing propylene carbonate and traces of a dissolved material, the traces of dissolved material including at least one of N-phenyl phthalimide and anthraquinone as taught by the electro-optic element of Young in the electro-optic element of Burrell since Young teaches it is known to include this feature in an electro-optic element for the purpose of providing an electro-optic element with improved color purity and contrast ratio.
Burrell in view of Young does not disclose the electro-optic medium containing traces of dissolved material from spacer beads dissolved within the electro-optic medium.
Agrawal teaches, from the same field of endeavor that in an electro-optic element that it would have been desirable to make the electro-optic medium containing traces of dissolved material from spacer beads dissolved within the electro-optic medium (Col. 7, lines 43-46; note, discloses spacer beads that are soluble (dissolvable) in the electrolyte (electro-optic medium)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the electro-optic medium containing traces of dissolved material from spacer beads dissolved within the electro-optic medium of Agrawal in the combination of Burrell in view of Young since Agrawal teaches it is known to include this feature in an electro-optic medium for the purpose of providing an electro-optic medium with improved reliability and mechanical stability.
Regarding claim 11, Burrell, Young and Agrawal discloses and teaches the claimed invention as set forth above, but, does not explicitly disclose the material includes N-phenyl phthalimide. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the material includes N-phenyl phthalimide, since 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 12, Burrell, Young and Agrawal discloses and teaches the claimed invention as set forth above, and Young further teaches, from the same field of endeavor that in an electro-optic element that it would have been desirable to make the material includes anthraquinone (242 of Figs 1-11 and associated text).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the above mentioned limitations as taught by the electro-optic element of Young in the combination of Burrell in view of Agrawal since Young teaches it is known to include this feature in an electro-optic element for the purpose of providing an electro-optic element with improved color purity and contrast ratio.
Regarding claim 13, Burrell, Young and Agrawal discloses and teaches the claimed invention as set forth above, and Young further teaches, from the same field of endeavor that in an electro-optic element that it would have been desirable to the material includes a dye that is color matched to the electro-optic medium (242 of Figs 1-11 and associated text).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the above mentioned limitations as taught by the electro-optic element of Young in the combination of Burrell in view of Agrawal since Young teaches it is known to include this feature in an electro-optic element for the purpose of providing an electro-optic element with improved color purity and contrast ratio.
Regarding claim 15, Burrell discloses, a spacer bead for an electro-optic element (Figs. 1a-4), comprising:
a homogeneous material (Para. 0211 and 24);
an outer spherical surface and a center defining a radius (Para. 0211 and 24); and
the radius being between 50 and 2000 microns (Para. 0211 and 24).
Burrell does not explicitly disclose the homogeneous material selected from a group including N-phenyl phthalimide, anthraquinone, and anthracene.
Young teaches, from the same field of endeavor that in a spacer bead that it would have been desirable to make the homogeneous material selected from a group including N-phenyl phthalimide, anthraquinone, and anthracene (242 of Figs 1-11 and associated text).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the homogeneous material selected from a group including N-phenyl phthalimide, anthraquinone, and anthracene as taught by the spacer bead of Young in the spacer bead of Burrell since Young teaches it is known to include this feature in a spacer bead for the purpose of providing an electro-optic element with improved color purity and contrast ratio.
Burrell in view of Young does not disclose the spacer bead is configured to be dissolved within an electro-optic material of the electro-optic element.
Agrawal teaches, from the same field of endeavor that in an electro-optic medium that it would have been desirable to make the spacer bead is configured to be dissolved within an electro-optic material of the electro-optic element (Col. 7, lines 43-46; note, discloses spacer beads that are soluble (dissolvable) in the electrolyte (electro-optic medium)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the spacer bead is configured to be dissolved within an electro-optic material of the electro-optic element of Agrawal in the combination of Burrell in view of Young since Agrawal teaches it is known to include this feature in an electro-optic medium for the purpose of providing an electro-optic medium with improved reliability and mechanical stability.
Regarding claim 16, Burrell, Young and Agrawal discloses and teaches the claimed invention as set forth above, but, does not explicitly disclose the material includes N-phenyl phthalimide. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the material includes N-phenyl phthalimide, since 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 17, Burrell, Young and Agrawal discloses and teaches the claimed invention as set forth above, and Young further teaches, from the same field of endeavor that in a spacer bead that it would have been desirable to make the material includes anthraquinone (242 of Figs 1-11 and associated text).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the above mentioned limitations as taught by the spacer bead of Young in the combination of Burrell in view of Agrawal since Young teaches it is known to include this feature in a spacer bead for the purpose of providing an electro-optic element with improved color purity and contrast ratio.
Regarding claim 18, Burrell, Young and Agrawal discloses and teaches the claimed invention as set forth above, and Young further teaches, from the same field of endeavor that in a spacer bead that it would have been desirable to make the homogenous material does not contain salt or polymers (242 of Figs 1-11 and associated text).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the above mentioned limitations as taught by the spacer bead of Young in the combination of Burrell in view of Agrawal since Young teaches it is known to include this feature in a spacer bead for the purpose of providing an electro-optic element with improved color purity and contrast ratio.
Regarding claim 20, Burrell, Young and Agrawal discloses and teaches the claimed invention as set forth above, and Young further teaches, from the same field of endeavor that in an electro-optic element that it would have been desirable to the material includes a dye that is color matched to the electro-optic medium (242 of Figs 1-11 and associated text).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the above mentioned limitations as taught by the electro-optic element of Young in the combination of Burrell in view of Agrawal since Young teaches it is known to include this feature in an electro-optic element for the purpose of providing an electro-optic element with improved color purity and contrast ratio.
Claims 14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Burrell et al. (US 2008/0266642) in view of Young (KR 2007/0068738) in view of Agrawal et al. (US 10,571,772) as applied to claims 13 and 15 above, and further in view of Agrawal et al. (US 2013/0128333).
Burrell, Young and Agrawal remains as applied to claims 13 and 15 above.
Burrell, Young and Agrawal does not disclose a dissolved outer shell that is at least partially polymeric.
Agrawal teaches, from the same field of endeavor that in an electro-optic element that it would have been desirable to include a dissolved outer shell that is at least partially polymeric (Para. 0044 and 41 of Fig. 4a).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a dissolved outer shell that is at least partially polymeric as taught by the electro-optic element of Agrawal in the combination of Burrell in view of Young since Agrawal teaches it is known to include this feature in an electro-optic element for the purpose of providing an electro-optic element with improved stability and reliability.
Regarding claim 19, Burrell, Young, Agrawal and Agrawal discloses and teaches as set forth above, and Agrawal further teaches, from the same field of endeavor that in an electro-optic element that it would have been desirable to include an outer shell defining the outer spherical surface, the outer shell formed of a shell material that is different than the homogenous material (Para. 0044 and 41 of Fig. 4a).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an outer shell defining the outer spherical surface, the outer shell formed of a shell material that is different than the homogenous material as taught by the electro-optic element of Agrawal in the combination of Burrell, Young and Agrawal since Agrawal teaches it is known to include this feature in an electro-optic element for the purpose of providing an electro-optic element with improved stability and reliability.
Response to Arguments
Applicant's arguments filed 07/24/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., spacer beads that are configured to dissolve within an electro-optic medium and/or propylene carbonate) are not recited in the rejected claim(s). 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).
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Varaprasad et al. (US 2010/0110523) and Varaprasad et al. (US 6,245,262) discloses an electro-optic element comprising a first substrate, a second substrate, a plurality of spacer beads, a first and second substantially transparent electrode and an electro-optic medium.
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 DAWAYNE A PINKNEY whose telephone number is (571)270-1305. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached at 571-270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAWAYNE PINKNEY/Primary Examiner, Art Unit 2872 09/29/2026
