DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1,2,6,9 and 11 have been amended.
Claims 1-12 are pending and examined as follows:
Drawings
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 transport means and smart window 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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: connecting members in claim 9
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The specification defines the connection unit as a DC power supply Vdc (Fig. 2).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 1-4 and 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (US20170353996A1) in view of Do et al (KR20200122447A) in view of Gautam et al (X-ray spectroscopy study of ZnxSn1−xO2 nanorods synthesized by hydrothermal technique).
With regards to claim 1, Lee et al discloses a transparent thin film heater (transparent sheet heater, Title) comprising a metal layer (heat-generating layer 300 including a conductive material which can be a metal nanowire, paragraph 0019, lines 1-3); and a transparent conductive oxide layer (zinc tin oxide (ZTO) coating or depositing a solution or material including the metal oxide on the pattern layer 200 on transparent substrate 100, Fig. 1, paragraph 0107, lines 1-4).
Lee et al does not discloses a nitrogen-doped transparent oxide layer and wherein the transparent conductive oxide layer is vapor-deposited as an amorphous phase in the presence of nitrogen at about room temperature.
Do et al teaches a nitrogen-doped transparent oxide layer (a nitrogen-doped SnO2-based lower oxide thin film on the transparent substrate, paragraph 0014, lines 2-4) and wherein the transparent conductive oxide layer is vapor-deposited as an amorphous phase in the presence of nitrogen (the nitrogen-doped SnO2-based lower oxide thin film 121 used a sputtering method, which is a physical vapor deposition method, and to use the sputtering method, the inert gas colliding with the SnO2 target in a vacuum state is argon gas ( Ar), oxygen gas (O2), and nitrogen gas (N2) are preferably mixed in a predetermined ratio, paragraph 0043, lines 1-2) at about room temperature (Do’s step S220 has it that heat treatment occurs after the nitrogen-doped transparent oxide layer is deposited; Do also mentions “room temperature” in its background section, clearly suggesting it applies to its disclosure).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Lee et al and Do et al before him or her, to modify the oxide layer of Lee et al to include the doping of nitrogen as taught by Do et al because the combination allows for excellent surface characteristics and improved electrical conductivity for a thin film heater.
Lee et al and Do et al does not teach wherein the composition of the oxide layer is:
PNG
media_image1.png
181
320
media_image1.png
Greyscale
Gautam et al teaches composition of ZnxSn1−xO2 (0.0 ≤ x ≤ 0.07) (abstract, lines 1-2).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Lee et al, Do et al and Gautam et al before him or her, to modify the oxide layer of Lee et al and Do et al to include the composition as taught by Gautam et al because the combination allows for enhanced electrical conductivity.
With regards to claim 2, Lee et al discloses a multilayer structure of the multilayer structure of metal layer/transparent conductive oxide layer (MO) (heat-generating layer 300 including a conductive material which can be a metal nanowire, paragraph 0019, lines 1-3 and zinc tin oxide (ZTO) coating or depositing a solution or material including the metal oxide on the pattern layer 200 on transparent substrate 100, Fig. 1, paragraph 0107, lines 1-4).
With regards to claim 3, Lee et al discloses wherein the metal layer has a thickness of 5-25 nm (the heat-generating layer may have a thickness of from about 10 nm to about 500 nm, paragraph 0020, lines 1-2).
With regards to claim 4, Lee et al discloses wherein the metal layer has a thickness of 8-15nm (the heat-generating layer may have a thickness of from about 10 nm to about 500 nm, paragraph 0020, lines 1-2).
With regards to claim 6, Do et al teaches wherein the transparent conductive oxide layer is formed through vapor deposition conducted under gas atmosphere of argon (Ar), oxygen (O2) and nitrogen (N2) (the nitrogen-doped SnO .sub.2 -based lower oxide thin film 121 used a sputtering method, which is a physical vapor deposition method, and to use the sputtering method, the inert gas colliding with the SnO .sub.2 target in a vacuum state is argon. It is preferable that gas (Ar), oxygen gas (O .sub.2 ), and nitrogen gas (N .sub.2 ) are mixed in a predetermined ratio, paragraph 0043, lines 1-3).
With regards to claim 7, Do et al teaches wherein the transparent conductive oxide layer is doped with nitrogen under gas atmosphere with a partial pressure of nitrogen of 0.1-2.0% (nitrogen gas (N2) is preferably 1 to 4% depending on the purpose of use, paragraph 0044, lines 1-2).
With regards to claim 8, Do et al teaches which is a flexible transparent thin film heater (the transparent substrate is made of a material having excellent transmittance to visible light and excellent flexibility, paragraph 0074, lines 1-2).
With regards to claim 9, Lee et al discloses a connecting members configured to apply electric voltage to the transparent thin film heater, and has an applied voltage of 1-10 V to raise the temperature of the transparent conductive oxide layer (an applied voltage of 0-12 V in order to evaluate heat generation lifetimes of the heaters, paragraph 0144, lines 1-2).
With regards to claim 10, Lee et al, Do et al and Gautam et al teaches the transparent thin film heater with all of the structural limitations of ZnxSn1−xO2 (0.0 ≤ x ≤ 0.07), therefore would teach the parameters of temperature and voltage when testing.
With regards to claim 11, Lee et al discloses a transport vehicle comprising a window fitted with the transparent thin film heater (transparent thin film heater used in a vehicle, paragraph 0003, lines 4-6).
With regards to claim 12, Lee et al discloses a smart window comprising the transparent thin film heater (application of sheet heaters has been expanded to the fields of windows and mirrors required to have transparency, paragraph 0005, lines 3-4).
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al, Do et al and Gautam et al as applied to claim 1 above, and further in view of Hwang et al (KR101696543B1).
With regards to claim 5, Lee et al, Do et al and Gautam et al does not teach where the transparent conductive oxide layer has a thickness of 20-80 nm.
Hwang et al teaches where the transparent conductive oxide layer has a thickness of 20-80 nm (transparent metal oxide has a thickness of 10-30 nm, paragraph 0040, lines 1-2).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Lee et al, Do et al, Gautam et al and Hwang et al before him or her, to modify the oxide layer of Lee et al, Do et al and Gautam et al to include the thickness of transparent metal oxide as taught by Hwang et al because the combination allows to ensure a film for a transparent film heater that blocks ultraviolet and infrared light.
Response to Arguments
Applicant's arguments filed 2/4/2026 have been fully considered but they are not persuasive.
Applicants arguments: Applicant argues the prior art does not disclose or teach all the limitations of claim 1.
Examiners response: Applicant argues the prior art does not disclose or teach amended limitation “wherein the transparent conductive oxide layer is vapor-deposited as an amorphous phase in the presence of nitrogen at about room temperature”. The applicant is advised that 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, 777 F.2d 695, 698, 227 USPQ 964, 966. Do et al teaches a nitrogen-doped transparent oxide layer (a nitrogen-doped SnO2-based lower oxide thin film on the transparent substrate, paragraph 0014, lines 2-4) and wherein the transparent conductive oxide layer is vapor-deposited as an amorphous phase in the presence of nitrogen at about room temperature (the nitrogen-doped SnO2-based lower oxide thin film 121 used a sputtering method, which is a physical vapor deposition method, and to use the sputtering method, the inert gas colliding with the SnO2 target in a vacuum state is argon gas ( Ar), oxygen gas (O2), and nitrogen gas (N2) are preferably mixed in a predetermined ratio, paragraph 0043, lines 1-2).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS JOHN WARD whose telephone number is (571)270-1786. The examiner can normally be reached Monday - Friday, 7am - 4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEVEN CRABB can be reached at 5712705095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THOMAS J WARD/Examiner, Art Unit 3761
/JOHN J NORTON/Primary Examiner, Art Unit 3761
Prosecution Insights