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 Objections
Claim 5 is objected to because of the following informalities:
In claim 5, the claim includes steps “b” and “c” but no “a”. This should be amended to recite “a” and “b” instead.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
Claim(s) 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Burdis (US 20070097481 A1) in view of Hartig (US 20060105103 A1) and Nolan (US 20060021576 A1).
Regarding claim 5, Burdis (US 20070097481 A1) teaches a method of making an electrochromic device including providing a substrate, forming an electrochromic (EC) layer on the substrate, forming a counter electrode (CE) layer over the substrate, where the counter electrode layer may be tungsten nickel oxide or nickel oxide (anodically coloring electrochromic material), where lithium may be intercalated/doped into the electrochromic layers by deposition of lithium, and where each layer may be formed in the same vacuum processing chamber (deposition system) (para 0019, 0024, 0047, 0069-0070, 0092-0094; Fig. 3B).
Burdis fails to explicitly teach the forming of the electrochromic and counter electrode layers and doping with lithium are performed without breaking vacuum within the deposition system and during the doping of lithium, the substrate is isolated from parts of the deposition system not containing the substrate by manipulating a controlled ambient environment within the deposition system. However, Hartig (US 20060105103 A1), in the analogous art of substrate coating, teaches electrochromic layers may be deposited (para 0003, 0051) on a substrate transferred through a plurality of coating zones (CZ1, CZ2, CZ3…) wherein the first coating material is deposited in the first coating zone, and different materials are deposited in subsequent coating zones (para 0026, 0061-0063; Fig. 1). Burdis teaches depositing an electrochromic layer, metallic lithium, and a counter electrode layer on a substrate (para 0019, 0024, 0093). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to deposit the electrochromic layer, lithium, and counter electrode layers in the EC device of Burdis within a chamber with a plurality of coating zones associated with each material, as described by Hartig, in order to prevent contamination between coating zones and reduce cost of production (Hartig para 0019).
Furthermore, Nolan (US 20060021576 A1), in the analogous art of substrate coating, teaches in-line process apparatuses where deposition stations are separated by buffer/isolation chambers having movable gas shields to control/decrease gas conductance between processing stations and the isolation chambers (substrate is isolated from parts of the deposition system not containing the substrate by manipulating a controlled ambient environment within the deposition system) and where each chamber is separated by gates and below atmospheric pressure (without breaking vacuum) (para 0005-0006, 0057-0058; Fig. 4). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the in-line deposition apparatus of Hartig with the in-line deposition apparatus of Nolan having deposition stations separated by buffer/isolation chambers with movable gas shields and operating without breaking vacuum, as described by Nolan, to prevent contamination within the deposition chambers.
Regarding claim 6, the combination of Burdis, Hartig, and Nolan teaches an ion conductor layer (IC) is formed between the electrochromic layer and counter electrode layer, where the ion conductor layer provides thermal stabilization properties to the electrochromic device, which are desirable for more robust manufacturing (Burdis para 0024, 0038; Fig. 3B).
Regarding claim 7, the combination of Burdis, Hartig, and Nolan teaches the electrochromic layer may be tungsten oxide doped with another metal, such as molybdenum (Burdis para 0072).
Regarding claim 8, the combination of Burdis, Hartig, and Nolan teaches the electrochromic layer may be tungsten oxide doped with another metal, such as titanium (Burdis para 0072).
Regarding claim 9, the combination of Burdis, Hartig, and Nolan teaches the electrochromic layer may be tungsten oxide doped with another metal, such as vanadium (Burdis para 0072).
Regarding claim 10, the combination of Burdis, Hartig, and Nolan teaches the controlled ambient environment within the deposition system comprises applying a gas shield (Nolan para 0057-0058; Fig. 4).
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Burdis (US 20070097481 A1) in view of Hartig (US 20060105103 A1) and Nolan (US 20060021576 A1), as applied to claim 1 above, and further in view of Beydaghyan (NPL – “Enhanced electrochromic properties of heat treated nanostructured tungsten trioxide thin films”).
Regarding claim 11, the combination of Burdis, Hartig, and Nolan teaches heating the electrochromic device after fabrication to improve the switching characteristics and improve the conductivity and transparency of the transparent conductor layers (Burdis para 0096-0097) but fails to explicitly teach subjecting the electrochromic device to a multistep thermo-chemical conditioning process.
However, Beydaghyan (NPL), in the analogous art of electrochromic layers, teaches that tungsten oxide layers deposited by evaporation in vacuum may be heated/annealed in oxygen/air to produce stoichiometric films and crystallize the film to improve coloration (Abstract, pg. 275, 279-280). Burdis teaches that heating of one or both deposited electrodes, which may be tungsten oxide, may be performed (para 0025, 0072). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to anneal the tungsten oxide electrochromic layer of Burdis to improve coloration. As a result, the combination of Burdis, Hartig, Nolan, and Beydaghyan includes annealing the electrochromic layer (part of the electrochromic device) in oxygen/air (first step) as well as heating the overall device after fabrication (second step), resulting in the electrochromic device being subjected to a multistep thermo-chemical conditioning process. Alternatively, the annealing of the aforementioned combination inherently includes a “heating” step and a “cooling” step to bring the device back to room temperature and thus the annealing itself may be considered a “multistep thermo-chemical conditioning process” that the electrochromic device is subjected to.
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 5-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 7-9, and 12-13 of U.S. Patent No. 12242163 in view of Burdis (US 20070097481 A1) and Nolan (US 20060021576 A1).
Regarding claim 5, the reference patent teaches a method of fabricating an electrochromic stack (device) comprising depositing an electrochromic layer, depositing metallic lithium on the electrochromic layer (doping the electrochromic layer), and depositing a counter electrode layer comprising nickel tungsten oxide (anodically coloring electrochromic material), where the steps are performed without breaking vacuum in an integrated deposition system (claim 5, 7-9, 13).
The reference patent fails to explicitly teach providing a substrate that the layers are deposited on and that during doping with lithium, the substrate is isolated from parts of the deposition system not containing the substrate by manipulating a controlled ambient environment within the deposition system. However, Burdis (US 20070097481 A1), in the analogous art of electrochromic devices, teaches that electrochromic and counter electrode layers of an electrochromic stack are applied to a substrate to form an electrochromic device (para 0004, 0019, 0047). Additionally, the reference patent teaches that the layers and lithium are deposited (claim 5, 14). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to deposit the layers of the reference patent on a substrate to form an electrochromic device.
Additionally, Nolan (US 20060021576 A1), in the analogous art of deposition, teaches in-line process apparatuses where deposition stations are separated by buffer/isolation chambers having movable gas shields to control/decrease gas conductance between processing stations and the isolation chambers (substrate is isolated from parts of the deposition system not containing the substrate by manipulating a controlled ambient environment within the deposition system) (para 0057-0058; Fig. 4). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to separate the deposition stations of the reference patent with buffer/isolation chambers with movable gas shields, as described by Nolan, to prevent cross-contamination between deposition chambers.
Regarding claim 6, the reference patent fails to explicitly teach an ion-conducting layer formed between the electrochromic layer and the counter electrode layer. However, Burdis teaches an ion conductor layer (IC) between the electrochromic layer and counter electrode layer, where the ion conductor layer provides thermal stabilization properties to the electrochromic device, which are desirable for more robust manufacturing (para 0024, 0038; Fig. 3B). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include an ion conducting layer between the electrochromic and counter electrode layer to improve the thermal stability of the electrochromic device.
Regarding claim 7, the reference patent fails to explicitly teach doping the electrochromic layer with molybdenum. However, Burdis teaches the electrochromic layer may be tungsten oxide doped with another metal, such as molybdenum (para 0072). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the tungsten oxide electrochromic layer of the reference patent (claim 12) with a tungsten oxide doped with molybdenum, as described by Burdis because this is a substitution of known elements yielding predictable results. See MPEP 2143(I)(B).
Regarding claim 8, the reference patent fails to explicitly teach doping the electrochromic layer with titanium. However, Burdis teaches the electrochromic layer may be tungsten oxide doped with another metal, such as titanium (para 0072). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the tungsten oxide electrochromic layer of the reference patent (claim 12) with a tungsten oxide doped with titanium, as described by Burdis because this is a substitution of known elements yielding predictable results. See MPEP 2143(I)(B).
Regarding claim 9, the reference patent fails to explicitly teach doping the electrochromic layer with vanadium. However, Burdis teaches the electrochromic layer may be tungsten oxide doped with another metal, such as vanadium (para 0072). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the tungsten oxide electrochromic layer of the reference patent (claim 12) with a tungsten oxide doped with vanadium, as described by Burdis because this is a substitution of known elements yielding predictable results. See MPEP 2143(I)(B).
Regarding claim 10, the combination of the reference patent, Burdis, and Nolan teaches manipulating the controlled ambient environment comprises applying a gas shield (Nolan para 0057-0058; Fig. 4).
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 7-9, 12-13, and 19 of U.S. Patent No. 12242163 in view of Burdis (US 20070097481 A1) and Nolan (US 20060021576 A1), as applied to claim 5 above, and further in view of Beydaghyan (NPL – “Enhanced electrochromic properties of heat treated nanostructured tungsten trioxide thin films”).
Regarding claim 11, the reference patent teaches heating the electrochromic stack/device (claim 19) but fails to explicitly teach subjecting the electrochromic device to a multistep thermo-chemical conditioning process. However, Beydaghyan (NPL), in the analogous art of electrochromic layers, teaches that tungsten oxide layers deposited by evaporation in vacuum may be heated/annealed in oxygen/air to produce stoichiometric films and crystallize the film to improve coloration (Abstract, pg. 275, 279-280). Burdis teaches that heating of one or both deposited electrodes may be performed (para 0025). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to anneal the tungsten oxide electrochromic layer of the reference patent in view of Burdis to improve coloration. As a result, the combination of the reference patent, Burdis, Nolan, and Beydaghyan includes annealing the electrochromic layer in oxygen/air (first step) as well as heating the overall device after fabrication (second step), resulting in the electrochromic device being subjected to a multistep thermo-chemical conditioning process. Alternatively, the annealing of the aforementioned combination inherently includes a “heating” step and a “cooling” step and thus the annealing itself may be considered a “multistep thermo-chemical conditioning process” that the electrochromic device is subjected to.
Conclusion
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/PATRICK S OTT/Examiner, Art Unit 1794