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 .
Examiner’s Note
The Examiner acknowledges the amendment of claim 1. Claims 1 – 5 are examined herein.
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.
Claim(s) 1, 3, & 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ajiki et al. (US 2017/0271613 A1).
**Hill Engineering: Compressive Residual Stress (Feb 2020)
With regard to claim 1, Ajiki et al. teach a substrate (100) and a translucent (“light transmitting”) electrically-conductive film (109). The substrate is formed of plastic (thermoplastic or thermosetting resin), such as polycarbonate and PET (paragraphs [0076] – [0077]), but do not explicitly teach the plastic substrate is transparent. However, polycarbonate and PET substrates are the same materials used by Applicant for the transparent resin substrates (see specification, paragraph [0017]). Therefore, the plastic substrate taught by Ajiki et al. must inherently be transparent.1
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
The translucent (“light-transmitting) electrically-conductive film is composed of electroconductive oxides, such as indium tin oxide (ITO) or indium zinc oxide (IZO) (paragraphs [0058] – [0059]). It has a first residual stress in an X-direction (“first in-plane direction”) orthogonal to the thickness direction, and has a second residual stress in a Y-direction (“a second in-plane direction orthogonal to the first in-plane direction”) and orthogonal to the thickness direction.
Tables 1 – 2 suggest Ajiki’s preferred range for the residual stress in the Y-direction and the X-direction are negative numbers (paragraphs [0134] – [0146]), such that + values indicate extension direction and – values indicate shrinkage direction.
As evidenced by **Hill Engineering, “compressive residual stress” refers to a negative residual stress condition. Therefore, the negative values indicating shrinkage in Tables 1 – 2 taught by Ajiki et al. are equivalent to Applicant’s “compressive residual stress” values expressed as an absolute (positive) value.
Ajiki et al. disclose working examples 3 – 11 (Tables 1 – 2) comprising a translucent electrically-conductive film comprising negative (compressive) residual stress values, such that the Y-direction (second in-plane direction) residual stress is less than the X-direction (first in-plane direction) and the ratio of Y-direction (second in-plane direction) residual stress to X-direction (first in-plane direction) residual stress is in the range of 0.71 – 0.79. These examples are considered to be preferred compressive stress values.
Furthermore, Ajiki et al. teach the absolute value of the residual stress becomes larger as the total pressure relating to the film deposition is decreased to 2.0 Pa, 1.0, Pa, and 0.6 Pa. The preferred range of the residual stress values are achieved when the when total pressure relating to the sputtering deposition and the O2 flow rate are adjusted (paragraphs [0157] – [0159]).
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Therefore, based on the teachings of Ajiki et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the deposition conditions, such as O2 flow rate and pressure through routine experimentation in order to achieve the desired residual stress values in both the X- and Y- directions (i.e., “first in-plane direction orthogonal to the thickness direction” and “second in-plane direction orthogonal to each of the thickness direction and the first in-plane direction”). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Ajiki et al. teach when ITO is used, a similar effect can be obtained by setting the optimum film deposition condition to 2.0 Pa (paragraph [0161]). This is not a teaching against a deposition pressure of 1.0 Pa when ITO is used. As explained for the case of a translucence electrically-conductive film composed of IZO, the optimum deposition pressure for manufacturing the translucent electrically-conductive film may be adjusted based on other deposition conditions, such as O2 flow rate, in order to achieve the optimum residual stress values in the X- and Y-directions.
Therefore, absent a showing of criticality with respect to forming the ITO layer at a sputtering pressure of 1 Pa (a result effective variable), it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the deposition conditions, such as O2 flow rate and pressure through routine experimentation in order to achieve an optimum film. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 3, as shown in Fig. 3 above, Ajiki et al. teach the transparent resin substrate (100) is only adjacent to a thin film transistor layer (101) (paragraph [0069]), which is not a glass substrate.
With regard to claim 5, Ajiki et al. teach the thickness of the translucent electrically-conductive film preferably has a thickness equal to or larger than 100 nm (paragraph [0041]).
Claim(s) 2 & 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ajiki et al., as applied to claim 1 above, and further in view of *Toshiyuki et al. (JP H07-262829 A) (1995).
*Toshiyuki reference was submitted by Applicant on 11/17/2022
With regard to claim 2, Ajiki et al. teach the translucent-conductive film may be formed by using a sputtering method (paragraph [0152]). Ajiki et al. do not teach the light-transmitting electroconductive layer contains krypton or the use of krypton gas for the sputtering method.
Toshiyuki et al. teach a method of forming a transparent conductive film sputtering using krypton gas or xenon gas mixed with oxygen, instead of argon gas, to in order to form a film with a low specific resistance (paragraph [0006]).
Therefore, based on the teachings of Toshiyuki et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to mix krypton gas with the oxygen gas during the sputtering deposition of the translucent-conductive film in order to form a film with low specific resistance.
With regard to claim 4, Ajiki et al. teach the translucent electrically-conductive film 109 is composed of a material mainly composed of ITO or IZO or zinc oxide and obtained by causing an additive (also referred to as a “zinc oxide-based material”) to be contained therein (paragraph [0107]). The translucent electrically-conductive film 109 of the examples was composed of IZO (paragraphs [0145] & [0154]). Translucent electrically-conductive films formed of ITO and IZO have a resistivity of 5 x 10-4 [Ω-cm] (paragraph [0112]) and is greater than Applicant’s claimed range of less than 2.2 x 10-4 Ω-cm.
However, as discussed above for claim 2, Toshiyuki et al. teach a transparent conductive film, such as ZnO or Sn doped with indium oxide (IZO or ITO) film (paragraph [0003]), with a specific resistance 1 x 10-4 Ω-cm or less, which is within Applicant’s claimed range of less than 2.2 x 10-4 Ω-cm, achieved by the method of manufacturing via sputtering using krypton or xenon gas mixed with oxygen instead of argon gas (paragraph [0006]).
Therefore, based on the teachings of Toshiyuki et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to mix krypton gas with the oxygen gas during the sputtering deposition of the translucent-conductive film in order to form a film with a specific resistance of less than 2.2 x 10-4 Ω-cm.
Response to Arguments
Applicant argues, “…in order to facilitate prosecution only, claim 1 has been amended in part to recite ‘a ratio of the second compressive residual stress to the first compressive residual stress is 0.62 or less…’ Since Ajiki is alleged to teach 0.71 to 0.79, the presently claimed invention is out of the scope of the reference” (Remarks, Pg. 4).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The Examiner noted in the previous office action that the residual stress values in the range of 0.71 – 0.79 reported in Ajiki’s disclosed working examples 3 – 11 (Tables 1 – 2) were preferred embodiments of compressive (residual) stress values, and as such, the reference does not limit the compressive residual stress of the film to these values.
MPEP 2123 [R-6]. II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
Furthermore, based on the teachings of Ajiki et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the deposition conditions, such as O2 flow rate and pressure through routine experimentation in order to achieve the desired residual stress values in both the X- and Y- directions (i.e., “first in-plane direction orthogonal to the thickness direction” and “second in-plane direction orthogonal to each of the thickness direction and the first in-plane direction”). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Applicant argues, “Ajiki provides not reason why one skilled in the art would go beyond what is taught therein to arrive at the presently claimed invention. Any such allegation would clearly be improper hindsight” (Remarks, Pg. 6).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues, “Moreover, Ajiki describes at paragraph [0161] that ‘[f]or example, in the case of employing the translucent electrically-conductive film composed of ITO, a similar effect can be obtained by setting the total pressure in the film deposition to 2.0 [Pa].’ Ajiki does not disclose nor suggest that a film formation atmospheric pressure is set to 1 Pa or less to form a translucent electrically-conductive film containing an electroconductive oxide containing In and Sn” (Remarks, Pgs. 6 – 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. A prior art reference must be considered in its entirety, i.e., as a whole. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (see MPEP 2141.02). The Examiner respectfully disagrees with their interpretation of Ajiki et al. that requires a film formation atmospheric pressure of 2.0 Pa to limit the residual stress of the ITO film to a predetermined range. Ajiki suggests an atmospheric pressure of 2.0 Pa when using ITO as an example, not a requirement.
Furthermore, Ajiki et al. teach when ITO is used, a similar effect can be obtained by setting the optimum film deposition condition to 2.0 Pa (paragraph [0161]). Ajiki’s reference to “similar effect” was not simply with regard to the residual stress values, but also how the effect of adjusting multiple sputtering conditions can be done for achieving the optimum stress values.
As Ajiki et al. explained in paragraphs [0157] – [0159] for the case of a translucence electrically-conductive film composed of IZO, the optimum residual stress values in the X- and Y-directions can be achieved when the atmospheric pressure during sputtering is 2.0 Pa, 1.0 Pa, or 0.6 Pa when other depositions conditions, such as O2 flow rate, are adjusted accordingly. Therefore, when considering the paragraphs that precede paragraph [0161], one of ordinary skill in the art would conclude paragraph [0161] of Ajiki et al. also suggests the optimum residual values would be achievable when ITO is sputtered at 2.0 Pa, 1.0 Pa, or 0.6 if the O2 flow rate is also adjusted accordingly.
Therefore, absent a showing of criticality with respect to forming the ITO layer at a sputtering pressure of 1 Pa (a result effective variable), it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the deposition conditions, such as O2 flow rate and pressure through routine experimentation in order to achieve an optimum film. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Applicant argues, “In terms of the above, the Examiner asserts that one having ordinary skill in the art can optimize the film formation atmospheric pressure. However, Ajiki does not disclose nor suggest the idea to adjust the film formation atmospheric pressure, and also adjust ‘the ratio of the second compressive residual stress to the first compressive residual stress’ to 0.62 or less” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Paragraphs [0157] – [0151] of Ajiki et al. teach achieving the desired compressive stress at any one of the selected atmospheric pressures of 2.0 Pa, 1.0 Pa, or 0.6 Pa by adjusting the oxygen flow rate. Therefore, Ajiki et al. teach the oxygen and atmospheric pressure are optimizable result effective variables.
Conclusion
THIS ACTION IS MADE FINAL. 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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
1 Applicant provides no definition of transparent, therefore the term is being construed broadly as including any amount of light transmittance over 0%.