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 .
This Office action is in response to Amendments filed 1/7/2026.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (JP 2007-250430A; using attached translation for reference).
Regarding claim 1, Abe discloses a conductive laminate (Fig. 5) comprising:
a first transparent material layer (layer 1 which is zinc tin oxide);
a metal layer (silver layer 2) mainly composed of silver; and
a second transparent material layer (layer 3 which is zinc tin oxide), the first transparent material layer, the metal layer, and the second transparent material layer, being laminated on a surface of a transparent substrate (“resin film substrate”, Page 3) in this order from the transparent substrate,
wherein the first transparent material layer is composed of a composite metal oxide comprising zinc and tin (“ZSO”, Page 3); and
wherein the second transparent material layer is composed of a metal oxide comprising zinc and tin (“ZSO”, Page 3).
Regarding the amount of tin, Abe discloses that the transparent material layers comprise 10 to 90 atomic percent of tin with respect to the total of tin and zinc (Page 3 of Abe). As the range of 10 to 90 atomic percent of tin with respect to the total of tin and zinc overlaps the claimed range of 10 to 90 atomic% of the composite metal oxide (first transparent material layer) as well as 10 atomic% or less in the metal oxide (second transparent material layer), a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Abe further discloses that the contents between the transparent material layers can differ (Page 2). As such, the general conditions of the claim are disclosed by Abe and it would have been obvious to one having ordinary skill in the art to vary the relative concentrations through routine experimentation (MPEP 2144(II)(A)).
Abe further discloses forming the device to have a high light transmittance (Page 1) but does not explicitly state that it is 90% or more. However, this feature is obvious to one having ordinary skill in the art as "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (see MPEP 2144.05(II)(A)).
Regarding claim 2, Abe further discloses including at least 2 atomic% of gallium in the second transparent material layer (“it is more preferable that Ga is contained in an amount of 50 atomic% or less with respect to the total of Sn, Zn, and Ga”, Page 3).
Regarding claim 3, Abe further discloses wherein the metal layer comprises 90 atomic% or more of silver (Abe discloses that it is silver, i.e., 100%).
Regarding claim 4, Abe further discloses that the thickness of the metal layer is between 3 to 25 nanometers (Page 3). Since the range 3-25 nanometers overlaps the claimed range of 5 nm or more, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 5, Abe further discloses wherein the transparent substrate comprises polyethylene terephthalate (Page 3).
Regarding claim 13, Abe further discloses wherein the first transparent material layer and the metal layer are contacted (See Fig. 5), and the metal layer and the second transparent material layer are contacted (see Fig. 5).
Response to Arguments
Applicant's arguments filed 1/7/2026 have been fully considered but they are not persuasive.
Applicant argues that all of the listed examples of Abe use first and second transparent material layers in which the tin content is equal. This argument is not persuasive as Abe states that the contents of the transparent material layers may differ (Page 2). “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” (MPEP 2123(II).
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 CHRISTOPHER A CULBERT whose telephone number is (571)272-4893. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Benitez can be reached at (571) 270-1435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER A CULBERT/ Examiner, Art Unit 2815