`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMlVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`15/030,507
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`04/19/2016
`
`MichiO SUZUKA
`
`OKUDP1045WOUS
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`6433
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`11/17/2017 —MARK D. SARALINO (PAN) m
`7590
`51921
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`HORTON, DUJUAN A
`1621 EUCLID AVENUE
`19TH FLOOR
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`PAPER NUMBER
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`CLEVELAND, OH 44115
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`1754
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`NOTIFICATION DATE
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`DELIVERY MODE
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`11/17/2017
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`ipdocket @rennerott0.c0m
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`PTOL—90A (Rev. 04/07)
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`

`

`
`Application No.
`Applicant(s)
`
` 15/030,507 SUZUKA, MICHIO
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`1754DUJUAN HORTON $233
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`In no event, however, may a reply be timely filed
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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on 10/03/2017.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`3) D Interview Summary (PT0_413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/Osb)
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`Paper No(s)/Mai| Date .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20171113
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`Disposition of Claims*
`5)|XI CIaim(s)1-_12is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s 1-_12 is/are rejected.
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`is/are objected to.
`
`) )
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`_
`
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`are subject to restriction and/or election requirement.
`9)|:l Claim(s
`)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`://www.usoto. ov/ atentS/init events"
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`, or send an inquiry to PRI-Ifeedback{<‘buspto.qov.
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`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 04/19/2016 is/are: a)IXI accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)le All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3le Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`

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`Application/Control Number: 15/030,507
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`Page 2
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`Art Unit: 1754
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`DETAILED ACTION
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`Continued Examination Under 37 CFR 1.114
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`A request for continued examination under 37 CFR 1.114, including the fee set forth in
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`37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible
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`for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been
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`timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR
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`1.114. Applicant's submission filed on 08/23/2017 has been entered.
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`REMARKS
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`The amendment of claim 1 in the reply filed on 08/23/2017 are acknowledged. No new
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`matter is entered.
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`Claims 1-12 are pending in this application.
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`Claim Rejections - 35 USC § 103
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`The text ofthose sections of Title 35, U.S. Code not included in this action can be found
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`in a prior Office action.
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`Claim 1-7 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`Lee et al. (US 20050067009, cited in IDS) in view of Takuya et al. (JP 2008192441A, cited in
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`IDS), hereinafter referred to as Lee and Takuya, respectively. Furthermore, Takuya will be
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`referenced in view of the English machine translation provided by the Examiner.
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`Regarding claim 1, Lee discloses on figure 1 an electrochemical device comprising:
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`Application/Control Number: 15/030,507
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`Page 3
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`Art Unit: 1754
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`a first substrate [11];
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`a second substrate [21] arranged so that a gap is formed between the first substrate
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`[11] and the second substrate [21];
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`an electrolytic medium [60] including an electrolyte solution filling the gap;
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`a sealing portion [80b] formed between the first substrate [11] and the second
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`substrate [21] for sealing the electrolytic medium in the gap; and
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`-
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`a first electrode [12, 30, 40], and a second electrode [22, 23] each being in contact
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`with the electrolytic medium [60] and having an electrochemically different function
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`(110060), wherein
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`0
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`at least a portion of each ofthe first electrode [12, 30, 40] and second
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`electrode [22, 23] is formed on the first substrate [11] or on the second
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`substrate [21], and
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`0
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`at least a part of the portion of each ofthe first electrode [12, 30, 40] and
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`second electrode [22, 23] is provided outside of the sealing portion [80b]
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`(both electrode extend beyond the sealing portions, Fig 1)
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`The reference fails to teach that device further comprises a third electrode, wherein at
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`least a part of the portion of the third electrode is provided outside of the sealing portion.
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`Takuya discloses on figure 8 an electrochemical device analogous to the device of Lee. The
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`reference teaches that the device comprises:
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`a first substrate [13];
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`Page 4
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`Art Unit: 1754
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`a second substrate [25] arranged so that a gap is formed between the first substrate
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`[13] and the second substrate [25];
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`-
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`an electrolytic medium [33] including an electrolyte solution filling the gap;
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`a sealing portion [31] formed between the first substrate [13] and the second
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`substrate [25] for sealing the electrolytic medium [33] in the gap; and
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`-
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`a first electrode [15] (semiconductor electrode), a second electrode [23] (catalyst
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`electrode) and a third electrode [41] (output recover electrode) each being in
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`contact with the electrolytic medium [33] having an electrochemically different
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`function, wherein
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`0
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`at least a portion of each ofthe first electrode [15], the second electrode [23]
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`and the third electrode [41] is formed on the first substrate [13] or on the
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`second substrate [25], and
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`0
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`at least a part of the portion of the third electrode [41] is provided outside of
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`the sealing portion [31] (recovery electrode [41] provided outside ofthe
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`device and sealing portions [31] through via hole [141], 110104).
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`Takuya teaches that the third electrode [41] (or recover electrode [41]) increases the
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`operating efficiency of the electrochemical device (1]0012). Thusly, it would have been obvious
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`to one having ordinary skill in the art at the time the invention was filed to include the third
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`electrode of Takuya in the device of Lee to increase the operating efficiency of the device of Lee
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`(Takuya, 110012). MoreoverI the combination ofthe references teach that at least a part ofthe
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`portion of each of the first electrode |10|I the second electrode |22I 23| and the third electrode
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`Page 5
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`Art Unit: 1754
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`|41| is sandwiched between the sealing portion |80b| and the first substrate |11| or between
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`the sealing portion and the second substrate |21| since each structure is contained within the
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`first or second substrate and the sealin
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`ortion 80b Lee Fi 1' Taku a Fi 8 .
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`Regarding claim 2, modified Lee discloses all ofthe limitations as set forth above.
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`Moreover, the references teach that at least a portion of each of two of the first [12, 30, 40],
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`second [22, 23] and third [41] electrodes is formed on the first substrate [11], while at least a
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`portion ofthe remaining one ofthe first [12, 30, 40], second [22, 23] and third [41] electrodes is
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`formed on the second substrate [21] (the third electrode [41] or recovery electrode can be
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`formed on either electrode, Takuya, 110042).
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`Regarding claim 3, modified Lee discloses all of the limitations as set forth above.
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`Furthermore, the Lee teaches that the first electrode [12, 30, 40] includes a first conductive
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`layer [12] (110033) and a semiconductor layer [40] (110034-0035) formed on the first conductive
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`layer [12], and the semiconductor layer [40] is formed so that the first conductive layer [12] is
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`not in direct contact with the electrolytic medium [60] (Fig 1).
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`Regarding claim 4, modified Lee discloses all of the limitations as set forth above.
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`Furthermore, Lee teaches that the first electrode [12, 30, 40] is formed on the first substrate
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`[11], and there is an area on the first substrate [11] where the first conductive layer [30] is
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`absent and only the semiconductor layer [12] is present, as seen from a direction normal to the
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`first substrate since the semiconductor layer may also include layer [12] (layer [12] includes
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`TCO semiconductor material, 110033) and first conductive layer may also include layer [30]
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`(layer [30] comprises TCO conductive material, 110049)
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`Application/Control Number: 15/030,507
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`Page 6
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`Art Unit: 1754
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`Regarding claim 5, modified Lee discloses all of the limitations as set forth above.
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`Moreover, the references teach that the first electrode [12, 30, 40] is a photoanode (Lee,
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`110032), the second electrode [22, 23] is a counter electrode (Lee, 110032), and the third
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`electrode [41] is a charge storage electrode (recover electrode [41] formed of conductive
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`material capable of storing an electrical charge, Takuya, 110047).
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`Regarding claim 6, modified Lee discloses all of the limitations as set forth above.
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`Furthermore, the references teach that the first electrode [12, 30, 40] is formed on the first
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`substrate [11], and the second electrode [22, 23] and the third electrode [41] are formed on
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`the second substrate [21] (Lee, Fig 1; Takuya, Fig 8).
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`Regarding claim 7, modified Lee discloses all of the limitations as set forth above.
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`Moreover, the references teach the first electrode [12, 30, 40] and at least a portion ofthe
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`second electrode [22, 23] are formed on the first substrate [11], and the third electrode [41] is
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`formed on the second substrate [21] (first and second electrodes are all indirectly formed on
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`first and second substrates, Lee, Fig 1; recovery electrode [41] formed on either substrate
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`Takuya, 110042).
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`Regarding claim 10, modified Lee discloses all of the limitations as set forth above.
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`Moreover, the references teach that the semiconductor layer includes a non-
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`porous semiconductor layer [30] (layer [30] denser than the porous layer, Lee, 110052) formed
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`on a side of the conductive layer [12] and a porous semiconductor layer [40] formed on the
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`non-porous semiconductor layer [30] (110034-0035), and the porous semiconductor layer
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`[40] includes a sensitizing dye [50] (110032).
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`Application/Control Number: 15/030,507
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`Page 7
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`Art Unit: 1754
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`Regarding claim 11, modified Lee discloses all of the limitations as set forth above.
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`Furthermore, Lee teaches that the photoanode includes a perovskite compound, since the
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`porous layer [40] may comprise SrTi oxide (110035). Furthermore, SrTi oxide is disclosed as a
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`perovskite on 110050 of Applicant's specification.
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`Regarding claim 12, modified Lee discloses all of the limitations as set forth above.
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`Moreover, modified Lee teaches that the second electrode [22, 23] and third electrode [41] are
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`separated from one another (output recovery electrode is provided separately from the
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`semiconductor electrode and the catalyst electrode, Takuya, Fig 8; 110012).
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`Claim 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee and
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`Takuya as applied to claim 5 above, and further in view of Kuroda et al. (US 20060021649,
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`cited in IDS), hereinafter referred to as Kuroda.
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`Regarding claim 8 and 9, modified Lee discloses all of the limitations as set forth above.
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`The references fails to disclose a solid compound layer and a separator as required by the
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`instant claims. Kuroda discloses on figure 4 DSSC analogous to the electrochemical device of
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`modified Lee, wherein the DSSC comprises:
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`-
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`-
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`-
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`-
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`a first substrate [21];
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`a second substrate [26] arranged so that a gap is formed between the first substrate
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`[21] and second substrate [26];
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`an electrolytic medium [24] including an electrolyte solution filling the gap;
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`a sealing portion (implicitly included) formed between the first substrate [21] and
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`the second substrate [26] for sealing the electrolytic medium [24] in the gap; and
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`Application/Control Number: 15/030,507
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`Page 8
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`Art Unit: 1754
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`-
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`a first [22] and a second [25] electrode being in contact with the electrolytic medium
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`[24] and each having an electrochemically different function (second electrode [25]
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`correspond to the second and third electrode of modified Lee), wherein at least a
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`portion of each of the first [22] and second [25] electrodes is formed on the first
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`substrate [21] and second substrate [26] (110039).
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`Moreover, Kuroda teaches that the device further includes a composite element [43]
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`comprising a solid compound layer [232] arranged between the first electrode [22] and the
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`second electrode [25], and a separator [432] between the solid compound layer [232] and the
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`second electrode [25] (which correspond to the second and third electrodes of modified Lee),
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`wherein the solid compound layer [232] includes the electrolytic medium [24] since the
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`electrolytic medium can penetrate the pores of the solid compound layer [232] and separator
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`[432] (110024, 110081-0082). The composite element [43] including the solid compound layer
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`[232] and separator [432] increasing the operating efficiency the device since the element [43]
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`prevents the device from shorting. Thusly, it would have been obvious to one having ordinary
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`skill in the art at the time the invention was filed to modify the device of Lee to include the solid
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`compound layer [232] and the separator [432] as disclosed by Kuroda to increase the operating
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`efficiency of the electrochemical device (Kuroda, 110082).
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`Response to Arguments
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`Applicant's arguments filed 08/23/2017 have been fully considered but they are not
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`persuasive. Applicant argues that the prior art fails to disclose the newly added limitation to of
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`amended claim 1. The Examiner respectfully disagrees. As set forth above, said limitation is
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`

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`Application/Control Number: 15/030,507
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`Page 9
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`Art Unit: 1754
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`disclosed by the prior art since combination of Lee and Takuya teach that the first, second and
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`third electrodes are contained and inserted within the substrates and the sealing portions.
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`Furthermore, Applicant states that the electrolyte solution may leak through the through hole
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`[141] of Takuya. However, the device taught by the prior art would not be structured such that
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`the device is inoperable, wherein the electrolyte solution is capable of leaking out the through
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`hole (Takuya, Fig. 12).
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to DUJUAN HORTON whose telephone number is (571)270-7585.
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`

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`Application/Control Number: 15/030,507
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`Page 10
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`Art Unit: 1754
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`/DUJUAN HORTON/
`
`Examiner, Art Unit 1754
`
`/MATTHEW MARTIN/
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`Primary Examiner, Art Unit 1758
`
`