UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`15/030,507
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`04/19/2016
`
`Michio SUZUKA
`
`OKUDP1045WOUS
`
`6433
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19mm
`CLEVELAND, OHIO 44115
`UNITED STATES OF AMERICA
`
`HORTON DUJUAN A
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`MW
`
`1721
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`06/06/2018
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`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
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`following e—mail address(es):
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`ipdoeket@rennerotto.eom
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`PTOL-90A (Rev. 04/07)
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`

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`Off/09 A0170” Summary
`
`Application No.
`15/030,507
`Examiner
`DUJUAN A HORTON
`
`Applicant(s)
`SUZUKA, Michio
`Art Unit
`AIA Status
`1721
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`|f 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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`Status
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`1). Responsive to communication(s) filed on 09 February 2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—12 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. 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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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 19 April 2016 is/are: a). accepted or b)[:j 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).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)D Some”
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`C)D None of the:
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`1.[:]
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`Certified copies of the priority documents have been received.
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`2.[:]
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`Certified copies of the priority documents have been received in Application No.
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`3.. Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** 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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`1) C] Notice of References Cited (PTO-892)
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`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20180529
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`

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`Application/Control Number: 15/030,507
`Art Unit: 1721
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`Page 2
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`DETAILED ACTION
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`REMARKS
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`The amendment of claim 1 in the reply filed on 02/09/2018 are acknowledged. New grounds of
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`rejection are set forth below No new 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 of those sections of Title 35, U.S. Code not included in this action can be found in a
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`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 Lee et al.
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`(US 20050067009, cited in IDS) in view of Takuya et al. (JP 2008192441A, cited in IDS), hereinafter
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`referred to as Lee and Takuya, respectively. Furthermore, Takuya will be referenced in view of the
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`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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`-
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`-
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`-
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`-
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`a first substrate [11];
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`a second substrate [21] arranged and spaced apart from the first substrate in a thickness
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`direction so that a gap is formed between the first substrate [11] and the second substrate
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`[21] in the thickness direction;
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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 substrate
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`[21] in the thickness direction for sealing the electrolytic medium in the gap; and
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`

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`Application/Control Number: 15/030,507
`Art Unit: 1721
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`Page 3
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`-
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`a first electrode [12, 30, 40], and a second electrode [22, 23] each being in contact with the
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`electrolytic medium [60] and having an electrochemically different function (110060),
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`wherein
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`0
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`at least a portion of each of the first electrode [12, 30, 40] and second electrode [22,
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`23] is formed on the first substrate [11] or on the second substrate [21], and
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`0
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`at least a part of the portion of each of the first electrode [12, 30, 40] and second
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`electrode [22, 23] is provided outside of the sealing portion [80b] (both electrode
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`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 least a
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`part of the portion of the third electrode is provided outside of the sealing portion. Takuya discloses on
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`figure 8 an electrochemical device analogous to the device of Lee. The reference teaches that the device
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`comprises:
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`-
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`-
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`-
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`-
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`-
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`a first substrate [13];
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`a second substrate [25] arranged and spaced apart from the first substrate |13| in a
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`thickness direction so that a gap is formed between the first substrate [13] and the second
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`substrate [25] in the thickness direction;
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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 substrate [25]
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`in the thickness direction for sealing the electrolytic medium [33] in the gap; and
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`a first electrode [15] (semiconductor electrode), a second electrode [23] (catalyst electrode)
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`and a third electrode [23] (both catalyst electrodes are separated by output recover
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`electrode [41], Fig 9) each being in contact with the electrolytic medium [33] having an
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`electrochemically different function, wherein
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`

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`Application/Control Number: 15/030,507
`Art Unit: 1721
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`Page 4
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`0
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`at least a portion of each of the first electrode [15], the second electrode [23] and
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`the third electrode [23] is formed on the first substrate [13] or on the second
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`substrate [25].
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`Takuya teaches that the electrodes increase the operating efficiency of the electrochemical
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`device (110012). Thusly, it would have been obvious to one having ordinary skill in the art at the time the
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`invention was filed to substitute the electrodes of Takuya with the electrodes of the device of Lee to
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`increase the operating efficiency of the device of Lee (Takuya, 110012). Moreover the combination of
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`the references teach that at least a part of the portion of each of the first electrode |10|I the second
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`electrode 22 23 and the third electrode 22 23 is sandwiched between the sealin
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`ortion 80b and
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`the first substrate 11 in the thickness direction or between the sealin
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`ortion and the second
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`substrate |21| in the thickness direction since the electrodes of Lee are formed between the sealing
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`portion |80b| and the first and second substrate layers (LeeI Fig 1].
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`Regarding claim 2, modified Lee discloses all of the limitations as set forth above. Moreover, the
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`references teach that at least a portion of each of two of the first [12, 30, 40], second [22, 23] and third
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`[22, 23] electrodes is formed on the first substrate [11], while at least a portion of the remaining one of
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`the first [12, 30, 40], second [22, 23] and third [22, 23] electrodes is formed on the second substrate [21]
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`(the recovery electrode can be formed on either substrate, thereby splitting the electrode of the first
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`substrate or the electrode of the second substrate, Takuya, 110042).
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`Regarding claim 3, modified Lee discloses all of the limitations as set forth above. Furthermore,
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`the Lee teaches that the first electrode [12, 30, 40] includes a first conductive layer [12] (110033) and a
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`semiconductor layer [40] (110034-0035) formed on the first conductive layer [12], and the semiconductor
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`layer [40] is formed so that the first conductive layer [12] is not in direct contact with the electrolytic
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`medium [60] (Fig 1).
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`

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`Application/Control Number: 15/030,507
`Art Unit: 1721
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`Page 5
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`Regarding claim 4, modified Lee discloses all of the limitations as set forth above. Furthermore,
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`Lee teaches that the first electrode [12, 30, 40] is formed on the first substrate [11], and there is an area
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`on the first substrate [11] where the first conductive layer [30] is absent and only the semiconductor
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`layer [12] is present, as seen from a direction normal to the first substrate since the semiconductor layer
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`may also include layer [12] (layer [12] includes TCO semiconductor material, 110033) and first conductive
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`layer may also include layer [30] (layer [30] comprises TCO conductive material, 110049)
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`Regarding claim 5, modified Lee discloses all of the limitations as set forth above. Moreover, the
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`references teach that the first electrode [12, 30, 40] is a photoanode (Lee, 110032), the second electrode
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`[22, 23] is a counter electrode (Lee, 110032), and the third electrode [22, 23] is a charge storage
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`electrode (electrode [22, 23] formed of conductive material capable of storing an electrical charge,
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`Takuya, 110034).
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`Regarding claim 6, modified Lee discloses all of the limitations as set forth above. Furthermore,
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`the references teach that the first electrode [12, 30, 40] is formed on the first substrate [11], and the
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`second electrode [22, 23], and the third electrode [22, 23] are formed on the second substrate [21] (Lee,
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`Fig 1; Takuya, Fig 8).
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`Regarding claim 7, modified Lee discloses all of the limitations as set forth above. Moreover, the
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`references teach the first electrode [12, 30, 40] and at least a portion of the second electrode [22, 23]
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`are formed on the first substrate [11], and the third electrode [22, 23] is formed on the second substrate
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`[21] (first and second electrodes are all indirectly formed on first and second substrates, Lee, Fig 1;
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`recovery electrode [41] splitting the catalytic electrode formed on either substrate Takuya, 110042).
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`Regarding claim 10, modified Lee discloses all of the limitations as set forth above. Moreover,
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`the references teach that the semiconductor layer includes a non-porous semiconductor layer [30]
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`(layer [30] denser than the porous layer, Lee, 110052) formed on a side of the conductive layer [12] and a
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`Application/Control Number: 15/030,507
`Art Unit: 1721
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`Page 6
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`porous semiconductor layer [40] formed on the non-porous semiconductor layer [30] (110034-0035), and
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`the porous semiconductor layer [40] includes a sensitizing dye [50] (110032).
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`Regarding claim 11, modified Lee discloses all of the limitations as set forth above. Furthermore,
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`Lee teaches that the photoanode includes a perovskite compound, since the porous layer [40] may
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`comprise SrTi oxide (110035). Furthermore, SrTi oxide is disclosed as a perovskite on 110050 of Applicant's
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`specification.
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`Regarding claim 12, modified Lee discloses all of the limitations as set forth above. Moreover,
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`modified Lee teaches that the second electrode [22, 23] and third electrode [22, 23] are separated from
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`one another (output recovery electrode [41] separates the catalytic electrode, Takuya, Figs 8 and 9).
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`Claim 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee and Takuya
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`as applied to claim 5 above, and further in view of Kuroda et al. (US 20060021649, cited in IDS),
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`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. The
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`references fails to disclose a solid compound layer and a separator as required by the instant claims.
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`Kuroda discloses on figure 4 DSSC analogous to the electrochemical device of modified Lee, wherein the
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`DSSC comprises:
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`-
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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 [21]
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`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 the
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`second substrate [26] for sealing the electrolytic medium [24] in the gap; and
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`a first [22] and a second [25] electrode being in contact with the electrolytic medium [24]
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`and each having an electrochemically different function (second electrode [25] correspond
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`

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`Application/Control Number: 15/030,507
`Art Unit: 1721
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`Page 7
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`to the second and third electrode of modified Lee), wherein at least a portion of each of the
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`first [22] and second [25] electrodes is formed on the first substrate [21] and second
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`substrate [26] (110039).
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`Moreover, Kuroda teaches that the device further includes a composite element [43] comprising
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`a solid compound layer [232] arranged between the first electrode [22] and the second electrode [25],
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`and a separator [432] between the solid compound layer [232] and the second electrode [25] (which
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`correspond to the second and third electrodes of modified Lee), wherein the solid compound layer [232]
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`includes the electrolytic medium [24] since the electrolytic medium can penetrate the pores of the solid
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`compound layer [232] and separator [432] (110024, 110081-0082). The composite element [43] including
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`the solid compound layer [232] and separator [432] increasing the operating efficiency the device since
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`the element [43] prevents the device from shorting. Thusly, it would have been obvious to one having
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`ordinary skill in the art at the time the invention was filed to modify the device of Lee to include the
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`solid 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 02/09/2018 have been fully considered but they are not persuasive.
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`Applicant argues that the prior art fails to disclose the newly added limitation to of amended claim 1,
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`wherein ”at least a portion of each of the first electrode, the second electrode and the third electrode is
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`sandwiched between the sealing portion and the first substrate in the thickness direction or between
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`the sealing portion and the second substrate in the thickness direction.” The Examiner respectfully
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`disagrees. Although the current rejection employs the same references of the previous rejection, new
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`grounds of rejection are set forth in view of the new interpretation of the same references. The recovery
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`electrode [41] is not interpreted as a third electrode. The two catalyst electrodes [23] divided by the
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`recovery electrode are currently interpreted as second and third electrodes. Thusly, the combination of
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`

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`Application/Control Number: 15/030,507
`Art Unit: 1721
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`Page 8
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`the references discloses the limitation since the primary reference Lee teaches that the photoanode
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`(which corresponds to the photoanode of Takuya) and the catalyst electrode (which corresponds to the
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`second and third catalyst electrodes of Takuya) are formed between their respective sealing portion and
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`substrate the thickness direction of the DSSC.
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
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`In the event a first reply is filed within TWO MONTHS of the mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
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`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the date of this final action.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to DUJUAN A HORTON whose telephone number is (571)270-7585. The examiner
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`can normally be reached on 8-4:30 EST M-F.
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`Jennifer Michener can be reached on 571-272-1424. The fax phone number for the organization where
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`this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 15/030,507
`Art Unit: 1721
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`Page 9
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`
`/DUJUAN A HORTON/
`Examiner, Art Unit 1721
`
`/MA'I'I'HEW T MARTIN/
`
`Primary Examiner, Art Unit 1721
`
`