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 without traverse of Group I in the reply filed on 7/16/2026 is acknowledged.
Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/16/2026.
Information Disclosure Statement
The information disclosure statements filed on 10/7/2024 and 1/14/2025 have been acknowledged and considered by the examiner. Initialed copies of supplied IDS(s) forms are included in this correspondence.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “930” in Figure 9 has been used to designate both the partition walls and the sealing layer.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the second adhesive layer being disposed next to the first adhesive layer between the barrier layer and the second electrode for type (B) of claim 3 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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.
Claim Rejections - 35 USC § 112
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 1-18 are 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.
Regarding claim 1, claim states structural limitations for an electro-optic device having either structure of type A or structure of type B throughout the entire claim. These varying structural requirements make this claim unclear as there are two distinct inventions being claimed within one claim. Which type is the type the rest of the claims are drawn to? Type A or type B? Depending on the type selected, both the limitations of the independent claim as well as the dependent claims change – rendering this claim unclear to one of ordinary skill in the art. For purposes of compact prosecution, examiner will examine type B. One suggestion to potentially overcome this rejection would be to splice out types A and B into separate claims.
Regarding claim 3, this claim is rejected for similar reasons as outlined for claim 1 above. Due to there being limitations for both type A and type B, where they differ depending on the type used, one of ordinary skill in the art would not be apprised as to the scope of the invention. For purposes of compact prosecution, examiner will examine type B with the associated structure. One suggestion to potentially overcome this rejection would be to splice out types A and B into separate claims.
Also, claims 2 and 4-18 are rejected by virtue of their dependency.
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 1-13, 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Duthaler et. al US 20030214697 (hereinafter “Duthaler”) in view of Honeyman et. al US 20050007653 (hereinafter “Honeyman”).
Regarding claim 1, Duthaler teaches an electro-optic device being type (B) electro-optic device, comprising in order:
a first light transmissive electrode layer (Duthaler fig. 18a – 440, see also para. 0159));
an electro-optic material layer (Duthaler fig. 18a – 400 including 410 and 420, see also para. 0159);
a first adhesive layer (Duthaler fig. 18a - 450, see also para. 0160-0161 – 450 may include an adhesive layer); and
a second electrode layer (Duthaler fig. 18a – 430, see also para. 0160);
the electro-optic material layer (400 comprising 410 and 420) comprising an electrophoretic medium (Duthaler fig. 18a, see also para. 0159), the first adhesive layer (450), and the second electrode layer (430) comprising a plurality of pixel electrodes (Duthaler para. 0174).
Duthaler does not teach a barrier layer in the embodiment of Figure 18a.
In the same field of endeavor and a different embodiment, Duthaler teaches a barrier layer (Duthaler fig. 23 – 830 and 840, see also para. 0196) for the purpose of ensuring light does not refract substantially upon passing through the films (Duthaler para. 0196). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a barrier layer as taught in fig. 23 of Duthaler in the electro-optic display depicted in fig. 18a of Duthaler in order to ensure light does not refract substantially upon passing through the films (Duthaler para. 0196).
Though Duthaler depicts electrophoretic medium 410 and binder 420 in the embodiment of fig. 18a and further states in para. 0159 – electrophoretic material may reside within capsule membranes embedded in the binder 420, Duthaler does not teach including charged pigment particles in a non-polar liquid for this embodiment.
In the same field of endeavor and another embodiment, Duthaler teaches the electro-optic material layer including charged pigment particles in a non-polar liquid (Duthaler fig. 1a-b – capsule 20 includes particles 50 and suspending/dispersing fluid 25 with a low dielectric constant, see also para. 0065-0067) for the purpose of providing a bistable display media (Duthaler para. 0067). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the charged particles and non-polar liquid as taught by Duthaler in fig. 1a-b in the electro-optic device of Duthaler fig. 18a in order to provide a bistable display media (Duthaler para. 0067), as further described in para. 0159, which states that the electrophoretic material may reside within capsule membranes embedded in the binder 420.
Further, Duthaler does not teach an adhesive layer comprising a first dopant having a first concentration, however Duthaler does teach utilizing doped metals and materials in the disclosure for other embodiments (Duthaler para. 0061, 0111, 0190, 0192), and further states that the optical biasing element (450 mapped to the adhesive layer, see also para. 0160-0161) may be coated on top of an electrode and include metallic particles (Duthaler para. 0171).
In the same field of endeavor, Honeyman teaches an adhesive layer comprising a first dopant having a first concentration (Honeyman abstract, see also para. 0053, 0058, 0062) for the purpose of achieving a desired volume resistivity (Honeyman para. 0062). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have an adhesive layer with a first dopant having a first concentration as taught by Honeyman in the electro-optic device of Duthaler in order to achieving a desired volume resistivity (Honeyman para. 0062).
Regarding claim 2, Duthaler and Honeyman teach the electro-optic device of claim 1, and Duthaler further teaches wherein the electrophoretic medium is encapsulated in a plurality of microcapsules (Duthaler fig. 18a – 410, see also para. 0159 – electrophoretic material may reside within capsule membranes embedded in the binder 420; fig. 1a-b - capsule 20 includes particles 50 and suspending/dispersing fluid 25 with a low dielectric constant, see also para. 0065-0067) or in a plurality of microcells, each microcell comprising partition walls, an opening, and a sealing layer, the sealing layer spanning the opening of each microcell.
Regarding claim 3, Duthaler and Honeyman teach the electro-optic device of claim 2, and they further teach wherein the electrophoretic medium is encapsulated in a plurality of microcapsules (Duthaler fig. 18a – 410, see also para. 0159 – electrophoretic material may reside within capsule membranes embedded in the binder 420; fig. 1a-b - capsule 20 includes particles 50 and suspending/dispersing fluid 25 with a low dielectric constant, see also para. 0065-0067), and wherein the electro-optic device further comprises a second adhesive layer (Honeyman para. 0028, 0035-0037), , the second adhesive layer comprising a second dopant having a second concentration (Honeyman para. 0035-0037).
Duthaler and Honeyman do not teach the second adhesive layer being disposed between the barrier layer and the second electrode layer in the electro-optic device of type (B), however Duthaler does teach an adhesive layer (450) disposed between the barrier layer (830, 840) and the second electrode layer (430) in Figure 18a, and Honeyman teaches an electro-optic medium sandwiched between two layers (Honeyman para. 0028).
It would have been obvious to one of ordinary skill in the art before the effective filing date to rearrange the second adhesive layer as taught by Honeyman to also be between the barrier layer and the second electrode layer for the purpose of laminating layers together, since it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950).
Regarding claim 4, Duthaler and Honeyman teach the electro-optic device of claim 3, and Honeyman further teaches wherein the first dopant is the same as, or different from the second dopant (Honeyman para. 0035-0037, provides a variety of additives which each of the adhesive layers may comprise and states at least one of them may have one of the listed additives or a similar combination – therefore they may have the same or different additives).
Regarding claim 5, Duthaler and Honeyman teach the electro-optic device of claim 1, and Honeyman further teaches wherein the first concentration of the first dopant in the first adhesive layer is from 50 ppm to 1000 ppm by weight of the first adhesive layer (Honeyman para. 0080 – teaches a range of 100 to 100,000 ppm of the salt on a weight/weight adhesive solids basis which overlaps the claimed range – which is an overlapping range made prima facie obvious (MPEP §2144.05)) for the purpose of lowering the volume resistivity of an adhesive material (Honeyman para. 0079). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the claimed range of 50 ppm to 1000 ppm in order to lower the volume resistivity of an adhesive material (Honeyman para. 0079).).
Regarding claim 6, Duthaler and Honeyman teach the electro-optic device of claim 3.
Duthaler and Honeyman do not teach wherein the first concentration of the first dopant in the first adhesive layer is lower than the concentration of the second concentration of the second dopant in the second adhesive layer, however Honeyman teaches a wide range for the concentration of the dopants used in the adhesive layers (Honeyman para. 0080).
It would have been obvious to one of ordinary skill in the art before the effective filing date to the concentration of the first dopant is lower than the concentration of the second dopant for the purpose of enabling the volume resistivity of the adhesive layer to be controlled (Honeyman abstract), since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller 220 F.2d 454, 456,105 USPQ 233, 235 (CCPA 1955).
Further, there are only three possibilities as to the comparison of the concentrations of the first and second dopants. These are that the concentration of the first dopant is lower than the concentration of the second dopant, that the concentrations are equal to each other, and that the concentration of the first dopant is higher than the concentration of the second dopant. It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007). Therefore, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to have the concentration of the first dopant is lower than the concentration of the second dopant since there are only three possible solutions. Since it has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp for the purpose of enabling the volume resistivity of the adhesive layer to be controlled (Honeyman abstract).
Regarding claim 7, Duthaler and Honeyman teach the electro-optic device of claim 3, and Honeyman further teaches wherein the second concentration of the second dopant in the second adhesive layer is from 1000 ppm to 5000 ppm by weight of the first adhesive layer (Honeyman para. 0080 – teaches a range of 100 to 100,000 ppm of the salt on a weight/weight adhesive solids basis which overlaps the claimed range – which is an overlapping range made prima facie obvious (MPEP §2144.05)) for the purpose of lowering the volume resistivity of an adhesive material (Honeyman para. 0079). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the claimed range of 1000 ppm to 5000 ppm in order to lower the volume resistivity of an adhesive material (Honeyman para. 0079).).
Regarding claim 8, Duthaler and Honeyman teach the electro-optic device of claim 1, and Honeyman further teaches wherein the first dopant is an ionic liquid (Honeyman para. 0035-0036 – the additive may be a ferrofluid, a non-reactive solvent, a salt, or some combination thereof).
Regarding claim 9, Duthaler and Honeyman teach the electro-optic device of claim 3, and Honeyman further teaches wherein the second dopant is an ionic liquid (Honeyman para. 0035-0036 – the additive may be a ferrofluid, a non-reactive solvent, a salt, or some combination thereof).
Regarding claim 10, Duthaler and Honeyman teach the electro-optic device of claim 1, and Honeyman further teaches wherein the first adhesive layer comprises polyurethane (Honeyman para. 0030).
Regarding claim 11, Duthaler and Honeyman teach the electro-optic device of claim 3, and Honeyman further teaches wherein the second adhesive layer comprises polyurethane (Honeyman para. 0030 and 0035).
Regarding claim 12, Duthaler and Honeyman teach the electro-optic device of claim 1, and Duthaler further teaches the barrier layer (830, 840).
Duthaler and Honeyman do not teach wherein the barrier layer comprises a material selected from the group consisting of silicon dioxide, aluminum oxide, aluminum nitride, titanium nitride, titanium oxide, silicon nitride, indium-tungsten oxide, a metal, and mixtures thereof in the embodiment used for the rejection.
In the same field of endeavor and another embodiment, Duthaler teaches wherein the barrier layer (Duthaler fig. 24 – 830, 840, see also para. 0196) comprises a material selected from the group consisting of silicon dioxide, aluminum oxide, aluminum nitride, titanium nitride, titanium oxide, silicon nitride, indium-tungsten oxide, a metal, and mixtures thereof (Duthaler para. 0196 – 830 may include silicon dioxide, 840 may include indium tin oxide) for the purpose of ensuring the light ray does not refract substantially upon passing through the films (Duthaler para. 0196). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the barrier layer including a material selected from the group as taught by fig. 24 of Duthaler in the embodiment of fig. 18a of Duthaler in order to ensure the light ray does not refract substantially upon passing through the films (Duthaler para. 0196).
Regarding claim 13, Duthaler and Honeyman teach the electro-optic device of claim 12, and Duthaler further teaches wherein the metal is iron, titanium, germanium, vanadium, tungsten, silicon, silver, nickel, niobium, chromium, gold, and mixtures thereof (Duthaler para. 0196 – silicon dioxide, indium tin oxide).
Regarding claim 15, Duthaler and Honeyman teach the electro-optic device of claim 1, and Duthaler further teaches wherein the average thickness of the barrier layer is from 5 nm to 1 micrometer (Duthaler para. 0196 – 830 may have a thickness range of approximately 100 nm to 200 nm).
Regarding claim 16, Duthaler and Honeyman teach the electro-optic device of claim 1, and Duthaler further teaches wherein the average thickness of the barrier layer (830, 840) is from 5 nm to 200 nm (Duthaler para. 0196 – 830 may have a thickness range of approximately 100 nm to 200 nm).
Regarding claim 17, Duthaler and Honeyman teach the electro-optic device of claim 1, and Duthaler further teaches the barrier layer (830, 840).
Duthaler and Honeyman do not teach the barrier layer is formed via sputtering.
Regarding the barrier layer being formed via sputtering, the applicant is advised that, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 227 USPQ 964, (Fed. Cir. 1985). In this case, the cited limitations failed to distinguish the claimed structure from the thin films 830 and 840 of Duthaler. See MPEP § 2113.
Regarding claim 18, Duthaler and Honeyman teach the electro-optic device of claim 1, and Duthaler further teaches the barrier layer (830, 840).
Duthaler and Honeyman do not teach the barrier layer is formed via chemical vapor deposition.
Regarding the barrier layer being formed via chemical vapor deposition, the applicant is advised that, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 227 USPQ 964, (Fed. Cir. 1985). In this case, the cited limitations failed to distinguish the claimed structure from the thin films 830 and 840 of Duthaler. See MPEP § 2113.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Duthaler and Honeyman as applied to claim 13 above, and further in view of Murari et. al US 20210247656 (hereinafter “Murari”).
Regarding claim 14, Duthaler and Honeyman teach the electro-optic device of claim 13.
Duthaler and Honeyman do not teach wherein the average thickness of the barrier layer is from 5 nm to 30 nm.
In the same field of endeavor, Murari teaches wherein the average thickness of the barrier layer (Murari fig. 4a-e – 415, see also para. 0048) is from 5 nm to 30 nm (Murari para. 0041 – may be between 1 nm and 500 nm or between 10 nm and 100 nm) for the purpose of preventing moisture ingress (Murari para. 0018). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a barrier layer with an average thickness from 5 nm to 30 nm as taught by Murari in the electro-optic device of Duthaler and Honeyman in order to prevent moisture ingress (Murari para. 0018).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Murari et. al US 11,892,739, patent of Murari et. al US 20210247656;
Kanbayashi US 20070176309, teaches similar microcapsules and layers to the instant application;
Hsieh et. al US 20110273760, teaches similar microcapsules and microcells to the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH M HALL whose telephone number is (703)756-5795. The examiner can normally be reached Mon-Fri 9-5:30 pm PST.
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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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/ELIZABETH M HALL/Examiner, Art Unit 2872
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872
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