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 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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sugino et al. (WO 2019/065080) in view of Liu (2018/0277660).
Sugino et al. discloses a transparent electrode laminate (20) comprising a first metal oxide layer (21), a metal layer (22), and a second metal oxide layer (23) sequentially laminated, wherein the first metal oxide layer and the second metal oxide layer each comprise 20% to 40% by weight of metal oxide and 60% to 80% by weight of Indium oxide (page 5 of the machine translation, 0.5% to 35% by weight (wt%) of Tin oxide and the balance of Indium oxide), and wherein the metal layer comprises Ag/Pd/Cu alloy (page 7 of the machine translation) (re-claim 1). Sugino et al. also discloses that the metal layer comprises silver or a silver alloy (re-claim 2); the first metal oxide layer and the second metal oxide layer each independently have a thickness in a range of 10 to 60 nm (re-claim 3); the metal layer has a thickness of 3 to 20 nm (re-claim 4); when a pattern is formed, both ends of an etched transparent electrode laminate are substantially straight (re-claim 5); and a length A from an end of one side of the metal layer to an end of one side of the first metal oxide layer is in a range of 0 µm (re-claim 6). It has been held that the patentability of a product claim is determined by the novelty and nonobviouness of the claimed product itself without consideration of the process for making it, etching, which is recited in the claim. In re Thorpe, 111 F. 2d 695, 698, 227 USPQ 964, 966; see also In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018).
Sugino et al. does not disclose the metal oxide being ZnO (re-claim 1).
Liu discloses a laminate (Fig. 3a) comprising a metal oxide layer which comprises 20 wt%-40 wt% of ZnO and 60 wt%-80 wt% of InO ([0011]).
It would have been obvious to one skilled in the art to use IZO as taught by Liu for the first and second metal oxide layers of Sugino et al. to meet the specific use of the resulting laminate, such as a protective layer, see Liu [0065]. It is noted that in the modified laminate of Sugino et al., each of the first metal oxide layer and the second metal oxide layer does not comprise tin oxide (SnO2). In other words, Liu teaches the IZO layer does not comprise tin oxide (re-claim 1).
It has been held that within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot in view of new ground of rejection.
Applicant argues that Sugino teaches indium tin oxide (ITO) as the most preferred material; the indium tin oxide composition containing 12 wt% tin oxide and 88wt% indium oxide; and the composition falling outside the scope of the present invention.
Examiner would disagree. Sugino discloses ITO as the most preferred material. However, Sugino does suggest other compositions can be used, such as IZO (see page 5 of the translation, indium oxide as a conductive oxide which can be doped with other metals including Zn). Applicant’s argument regarding the contents of tin oxide and indium oxide in Sugino’s ITO composition is not relevant to the claimed invention since the claimed invention calls for no tin oxide in the metal oxide layer.
Applicant argues that Sugino provides no disclosure or suggestion of the specific combination of an Ag/Pd/Cu alloy metal layer with ZnO (20-40 wt%)/In2O3 (60-80 wt%) oxide layers for the purpose of resolving etch-rate non-uniformity. Examiner would agree with the applicant that Sugino does not disclose a combination of an Ag/Pd/Cu alloy metal layer with ZnO (20-40 wt%)/In2O3 (60-80 wt%) oxide layer. However, Sugino and Lui do teach such combination, see the rejection above. It has been held that the examiner's burden of establishing prima facie obviousness is satisfied by a showing of structural similarity between the claims and prior art; it does not require a showing of some suggestion or expectation in the prior art that the structurally similar subject matter will have the same or a similar utility as that discovered by the applicant. In re Dillon, 16 USPQ F. 2d 1897.
Applicant argues that Liu discloses a structure including a metal layer and an IZO layer covering the metal layer. However, this structure is concerned with preventing excessive etching when the photovoltaic semiconductor layer is relatively thick. Examiner would disagree. It has been held that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues that Lui demonstrates no recognition or appreciation of the critical range defined in the present disclosure. Examiner would disagree. MPEP 2144.05 (I) states that “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N NGUYEN whose telephone number is (571)272-1980. The examiner can normally be reached M-Th, 7am to 5:30pm.
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/CHAU N NGUYEN/Primary Examiner, Art Unit 2841