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 .
Specification
The objection to the title is withdrawn in view of applicants’ submission of a replacement title.
Claim Rejections - 35 USC § 112
The 35 U.S.C. 112(b) rejection of claim 7 is withdrawn in view of applicants’ claim amendment.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 4,444,615 to Matsuzawa, et al. (hereinafter “Matsuzawa”) in view of U.S. Patent Appl. Publ. No. 2017/012843 to Plummer, et al. (“Plummer”) and further in view of Japanese Patent No. JP 05-009090 A to Kenji Yamagata (“Yamagata”).
Regarding claim 5, Matsuzawa teaches a method for manufacturing a single-crystal metal film by solid-state crystal growth of seed crystals (see the Abstract, Figs. 1-7, and entire reference which teach a method of manufacturing a single crystal (S) by solid state recrystallization of polycrystalline material (PC) from a seed crystal (M); see specifically col. 4, ll. 46-60 which teach forming a single crystal from a thin film and col. 5, ll. 8-15 which teach that the method may be used to form a single crystal of a metal), comprising:
(a) preparing a polycrystalline metal precursor having various crystal plane orientations (see Fig. 2 and col. 2, l. 25 to col. 3, l. 54 which teach preparing a polycrystalline precursor material (PC2) or (P2) which necessarily has a plurality of crystal plane orientations; see specifically col. 5, ll. 8-15 which teach that the method may be used to form a single crystal of a metal which would entail the use of a polycrystalline metal precursor), and
(b) bringing seed crystals comprising oriented seeds or single-crystalline seed crystals into contact with a surface of the metal precursor of the step (a) and performing heat treatment (see Fig. 2 and col. 2, l. 25 to col. 3, l. 54 which teach that a seed crystal (M2) is brought into contact with a surface of the polycrystalline material (PC2) or (P2) and the body is then heated to transform the polycrystalline material into a single crystal (S2)).
Matsuzawa does not teach that the seeds are (111) oriented or (111) single-crystalline seed crystals or that the seed crystals comprise at least one selected from a group consisting of copper (Cu), nickel (Ni), cobalt (Co), iron (Fe), ruthenium (Ru), platinum (Pt), palladium (Pd), gold (Au), silver (Ag), aluminum (Al), chrome (Cr), magnesium (Mg), manganese (Mn), molybdenum (Mo), rhodium (Rh), silicon (Si), tantalum (Ta), titanium (Ti), tungsten (W), uranium (U), vanadium (V), iridium (Ir) and zirconium (Zr). However, in Figs. 4-5 and ¶¶[0070]-[0090] as well as elsewhere throughout the entire reference Plummer teaches an analogous method of forming a single crystal metal film having a predetermined crystallographic orientation by recrystallization of a polycrystalline thin film from a single crystal seed. In ¶¶[0086]-[0088] Plummer specifically teaches that different geometries of the seed and their atomic structure can be used to generate single crystal metals with a predetermined crystal orientation and morphology. In one embodiment the seed has a [111] orientation in order to produce growth along (111) surface planes such that a metal having the desired crystal structure and orientation is produced. In ¶[0081] and ¶¶[0087]-[0088] Plummer specifically teaches that the [111]-oriented seed crystal may be comprised of a metal such as platinum while ¶[0066] teaches that seeds comprised of tungsten, nickel, or a silicide may be used. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Plummer and would be motivated to utilize a [111]-oriented single crystal seed comprised of a metal such as platinum, tungsten, or nickel in the solid state recrystallization method of Matsuzawa in order to produce a single crystal metal having the desired crystal orientation, such as (111), which is required for a particular application.
Matsuzawa and Plummer do not explicitly teach that there are a plurality of seed crystals. However, absent a showing of unexpected results, the use of a plurality of seeds instead of a single seed in order to initiate single crystal growth from multiple locations and thereby speed up the crystal growth process may be considered as a mere duplication of parts which does not produce an unexpected result. The mere duplication of parts is not sufficient to produce a patentable distinction unless a new and unexpected result is produced. See, e.g., In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); see also MPEP 2144.04(VI)(B). Alternatively, in Figs. 1(A)-(F) and the first Embodiment at ¶[0019] as well as elsewhere throughout the entire reference Yamagata teaches an analogous method of growing a [111]-oriented thin film using not one, but a plurality of [111]-oriented seed crystals (104) and (104’). As shown specifically in Figs. 1(F)-(E), crystal growth (105) and (105’) propagates simultaneously from each seed crystal (104) and (104’), respectively, until the entire substrate (101) is covered and a boundary (107) is formed therebetween. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Yamagata and would recognize that a plurality of seed crystals (M2) may be brought into contact with the polycrystalline material (PC2) or (P2) of Matsuzawa prior to thermal annealing in order to, for example, initiate single crystal growth at multiple locations to speed up the crystal growth process. The combination of prior art elements according to known methods to yield predictable results has been held to support a prima facie determination of obviousness. All the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, with the combination yielding nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S. 398, __, 82 USPQ2d 1385, 1395 (2007). See also, MPEP 2143(A).
Regarding claim 6, Matsuzawa teaches that the seed crystals are brought into contact with one or two surfaces of the polycrystalline metal precursor and then pressed against a substrate (see Fig. 2 and col. 2, l. 25 to col. 3, l. 54 which teach that a seed crystal (M2) is brought into contact with surfaces within the polycrystalline material (PC2) or (P2) which itself necessarily is not suspended in midair, but instead is supported by what may be considered as a substrate such that the weight of the polycrystalline material (PC2) or (P2) and seed crystal (M2) causes it to be pressed into the supporting substrate; alternatively, see specifically col. 4, ll. 56-60 which teaches that a seed crystal is brought into contact with a surface of the polycrystalline material which also necessarily is supported by what may be considered as a substrate).
Regarding claim 7, Matsuzawa and Plummer do not explicitly teach that two or more seed crystals comprising oriented seeds or two or more single-crystalline seed crystals are brought into contact with one or two surfaces of the polycrystalline metal precursor. However, as noted supra with respect to the rejection of claim 5, absent a showing of unexpected results, the use of a plurality of seeds instead of a single seed in contact with one or more surfaces of the polycrystalline metal precursor in order to initiate single crystal growth from multiple locations and thereby speed up the crystal growth process may be considered as a mere duplication of parts which does not produce an unexpected result. The mere duplication of parts is not sufficient to produce a patentable distinction unless a new and unexpected result is produced. See, e.g., In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); see also MPEP 2144.04(VI)(B). Alternatively, in Figs. 1(A)-(F) and the first Embodiment at ¶[0019] as well as elsewhere throughout the entire reference Yamagata teaches an analogous method of growing a [111]-oriented thin film using not one, but a plurality of [111]-oriented seed crystals (104) and (104’). As shown specifically in Figs. 1(F)-(E), crystal growth (105) and (105’) propagates simultaneously from each seed crystal (104) and (104’), respectively, until the entire substrate (101) is covered and a boundary (107) is formed therebetween. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Yamagata and would recognize that a plurality of seed crystals (M2) may be brought into contact with one or more surfaces of the polycrystalline material (PC2) or (P2) of Matsuzawa prior to thermal annealing in order to, for example, initiate single crystal growth at multiple locations to speed up the crystal growth process.
Matsuzawa does not teach that the seeds are (111) oriented or (111) single-crystalline seed crystals. However, as noted supra with respect to the rejection of claim 5, in Figs. 4-5 and ¶¶[0070]-[0090] as well as elsewhere throughout the entire reference Plummer teaches an analogous method of forming a single crystal metal film having a predetermined crystallographic orientation by recrystallization of a polycrystalline thin film from a single crystal seed. In ¶¶[0086]-[0088] Plummer specifically teaches that different geometries of the seed and their atomic structure can be used to generate single crystal metals with a predetermined crystal orientation and morphology. In one embodiment the seed has a [111] orientation in order to produce growth along (111) surface planes such that a metal having the desired crystal structure and orientation is produced. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Plummer and would be motivated to utilize a [111]-oriented single crystal seed in the solid state recrystallization method of Matsuzawa in order to produce a single crystal metal having the desired crystal orientation such as (111) which is required for a particular application.
Regarding claim 8, Matsuzawa teaches that the heat treatment of the step (b) is performed at 800 to 1500 °C (see col. 5, ll. 8-31 which teach that the heat treatment temperature may be in the 1,250 to 1,550 °C range).
Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuzawa in view of Plummer and further in view of Yamagata and still further in view of U.S. Patent Appl. Publ. No. 2016/0068397 to Su, et al. (“Su”).
Regarding claim 9, Matsuzawa teaches a method for manufacturing a single-crystal metal film by solid-state crystal growth of seed crystals (see the Abstract, Figs. 1-7, and entire reference which teach a method of manufacturing a single crystal (S) by solid state recrystallization of polycrystalline material (PC) from a seed crystal (M); see specifically col. 4, ll. 46-60 which teach forming a single crystal from a thin film and col. 5, ll. 8-15 which teach that the method may be used to form a single crystal of a metal), comprising:
(A) attaching seed crystals comprising oriented seeds or single-crystalline seed crystals to a surface of a polycrystalline metal film (see Fig. 2 and col. 2, l. 25 to col. 3, l. 54 which teach preparing a polycrystalline precursor material (PC2) or (P2), along with col. 4, ll. 46-60 which teach bringing a single crystal seed into contact with such that it is attached to a polycrystalline film, and col. 5, ll. 8-15 which further teach that the method may be used to form a single crystal of a metal); and
(B) heat-treating the polycrystalline metal film having undergone the step (A), wherein the polycrystalline metal film of the step (A) has various crystal plane orientations (see Fig. 2 and col. 2, l. 25 to col. 3, l. 54 which teach that a seed crystal (M2) is brought into contact with a surface of the polycrystalline material (PC2) or (P2) which necessarily has a plurality of crystal plane orientations and the body is then heated to transform the polycrystalline material into a single crystal (S2)).
Matsuzawa does not teach that the seeds are (111) oriented or (111) single-crystalline seed crystals or that the seed crystals comprise at least one selected from a group consisting of copper (Cu), nickel (Ni), cobalt (Co), iron (Fe), ruthenium (Ru), platinum (Pt), palladium (Pd), gold (Au), silver (Ag), aluminum (Al), chrome (Cr), magnesium (Mg), manganese (Mn), molybdenum (Mo), rhodium (Rh), silicon (Si), tantalum (Ta), titanium (Ti), tungsten (W), uranium (U), vanadium (V), iridium (Ir) and zirconium (Zr). However, in Figs. 4-5 and ¶¶[0070]-[0090] as well as elsewhere throughout the entire reference Plummer teaches an analogous method of forming a single crystal metal film having a predetermined crystallographic orientation by recrystallization of a polycrystalline thin film from a single crystal seed. In ¶¶[0086]-[0088] Plummer specifically teaches that different geometries of the seed and their atomic structure can be used to generate single crystal metals with a predetermined crystal orientation and morphology. In one embodiment the seed has a [111] orientation in order to produce growth along (111) surface planes such that a metal having the desired crystal structure and orientation is produced. In ¶[0081] and ¶¶[0087]-[0088] Plummer specifically teaches that the [111]-oriented seed crystal may be comprised of a metal such as platinum while ¶[0066] teaches that seeds comprised of tungsten, nickel, or a silicide may be used. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Plummer and would be motivated to utilize a [111]-oriented single crystal seed comprised of a metal such as platinum, tungsten, or nickel in the solid state recrystallization method of Matsuzawa in order to produce a single crystal metal having the desired crystal orientation, such as (111), which is required for a particular application.
Matsuzawa and Plummer do not explicitly teach that there are a plurality of seed crystals. However, absent a showing of unexpected results, the use of a plurality of seeds instead of a single seed in order to initiate single crystal growth from multiple locations and thereby speed up the crystal growth process may be considered as a mere duplication of parts which does not produce an unexpected result. The mere duplication of parts is not sufficient to produce a patentable distinction unless a new and unexpected result is produced. See, e.g., In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); see also MPEP 2144.04(VI)(B). Alternatively, in Figs. 1(A)-(F) and the first Embodiment at ¶[0019] as well as elsewhere throughout the entire reference Yamagata teaches an analogous method of growing a [111]-oriented thin film using not one, but a plurality of [111]-oriented seed crystals (104) and (104’). As shown specifically in Figs. 1(F)-(E), crystal growth (105) and (105’) propagates simultaneously from each seed crystal (104) and (104’), respectively, until the entire substrate (101) is covered and a boundary (107) is formed therebetween. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Yamagata and would recognize that a plurality of seed crystals (M2) may be brought into contact with the polycrystalline material (PC2) or (P2) of Matsuzawa prior to thermal annealing in order to, for example, initiate single crystal growth at multiple locations to speed up the crystal growth process.
Matsuzawa, Plummer, and Yamagata do not teach that the polycrystalline metal film is moving in a roll-to-roll continuous process. However, in Fig. 2 and ¶¶[0022]-[0035] as well as elsewhere throughout the entire reference Su teaches a roll-to-roll method of processing a metal foil (28d) which is unrolled from a rolling-out member (28a), passed through a plurality of processing chambers (14), (16), and (18) which are equipped with a temperature controller (24) and gas source controllers (30a), (30b), and(30c) before being rolled up via a rolling-in member (28b). In this manner it is possible to continually perform the desired processing operation on the metal foil (28d) and thereby improve the throughput and reduce processing costs. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Su and would be motivated to utilize the method of Matsuzawa, Plummer, and Yamagata as a roll-to-roll continuous process in order to reduce the cost of producing a single crystal metal sheet/film and to increase the overall speed at which it is produced. The combination of prior art elements according to known methods to yield predictable results has been held to support a prima facie determination of obviousness. All the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, with the combination yielding nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S. 398, __, 82 USPQ2d 1385, 1395 (2007). See also, MPEP 2143(A).
Response to Arguments
Applicants’ arguments filed October 1, 2025, have been considered, but are not persuasive and are moot in view of the new grounds of rejection set forth in this Office Action.
Applicants argue that the claimed invention requires bringing seed crystals into contact with a surface of an already-formed polycrystalline metal precursor followed directly by heat treatment without any sintering step and that this is a completely different technical approach that is neither disclosed or suggested by Matsuzawa. See applicants’ 10/1/2025 reply, pp. 7-8. Applicants’ argument is noted, but is unpersuasive since it is based upon features which are not claimed. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case claims 5 and 9 merely require the steps of bringing a polycrystalline metal precursor into contact with single crystal (111)-oriented seeds and then performing a heat treatment. As detailed supra with respect to the rejection of claims 5 and 9, each and every one of these steps are clearly taught by the combination of Matsuzawa, Plummer, and Yamagata.
Applicants further argue that the cited prior art of record does not teach or suggest that the seed crystals are selected from the group of elements recited in amended claims 5 and 9. See applicants’ 10/1/2025 reply, pp. 8-9. Applicants’ argument is noted, but is moot in view of the new grounds of rejection set forth in this Office Action which were necessitated by applicants’ claim amendments. In this case Plummer is relied upon to teach the use of a metal seed comprised of, for example, platinum, tungsten, or nickel.
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.
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/KENNETH A BRATLAND JR/Primary Examiner, Art Unit 1714