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 .
Status of the Claims
Claims 4-11 are pending and rejected. Claim 11 is amended. Claims 1-3 and 12 are withdrawn.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Nakada, JP 2011184715 A1 (provided on the IDS of 9/11/2025) in view of Edwards, US 2011/0135848 A1, Park, “Structure and properties of transparent conductive doped ZnO films by pulsed laser deposition”, 2006, Hill, US 2004/0214362 A1, and Shinde, “Effect of Ga doping on micro/structural, electrical and optical properties of pulsed laser deposited ZnO thin films”, 2011.
The following citations for Nakada are in reference to the machine translation provided by Espacenet.
Regarding claims 4 and 11, Nakada teaches a method for manufacturing a thin film of Ga and Cu co-doped with ZnO (method of producing a ZnO-based conductive film that includes gallium and copper, 0001 and 0011), comprising the steps of:
(d) installing a substrate into a pulse laser deposition chamber (placing a glass substrate in a PLD apparatus, 0051);
(e) installing a ZnO ceramic target containing designed Ga and Cu concentrations in the chamber (placing a target in the PLD apparatus, 0051, where the target is formed from ZnO having specific Ga and Cu concentrations, 0011 and 0014);
(f) evacuating the chamber (where the base pressure is 7.2x10-4 Pa, 0051, suggesting that the chamber is evacuated to this pressure);
(g) heating the substrate (where the substrate is heated to 250°C, 0051);
(h) introducing oxygen gas into the chamber (where the gas pressure of oxygen is 0.25 Pa, 0051, suggesting that oxygen is provided to the PLD apparatus to provide such a pressure);
(j) opening the laser and applying the laser beam to ablate the target sufficient to generate a plasma, whereby ionized atoms of the target approach the substrate and are deposited thereon to form the film with the same composition same as the target (where the film is formed using a laser by PLD, 0051, suggesting that the laser will be opened and applied to the target to ablate the target for forming the film, 0051, where when forming the film by PLD the target and the film have the same composition, 0050-0051).
They do not teach evacuating the chamber to the claimed pressure, heating the substrate to the claimed temperature, or the claimed oxygen pressure.
Edwards teaches a transparent conducting film which comprises a compound of formula (I): Zn1-x[M]xO1-y[X]y, where X is a halogen dopant and M is a dopant that can be a combination of two or more transition metals, where y is from 0 to 0.1 (abstract, 0048, 0055, and 0056). They teach providing a target material comprising the elements Zn, O, [M], and optionally [X] in a chamber, providing a substrate in the chamber, focusing a pulsed laser beam on the target material to generate a plasma, and depositing the plasma on the substrate to form the film (0020-0024). They teach that the PLD process is suitable for forming the films (0025 and 0105). They teach that the substrate can be glass, sapphire, quartz, etc. (0105). They teach that before the ablation steps, the chamber is evacuated to less than 1x10-5 Torr (less than 1x10-3 Pa), for instant to about 5x10-6 Torr (~6.7x10-4 Pa) (0106). They teach that after evacuation the chamber is backfilled with a gas which comprises oxygen such that the partial pressure of oxygen in the chamber is from about 2 mTorr to about 5 mTorr (~0.27 to ~0.67 Pa) (0106). They teach that any suitable pulsed laser source maybe used, where more typically a KrF excimer laser is used (0107). They teach that laser ablation occurs when the laser beam is focused on the target surface, where absorption of laser radiation by the target produces, sequentially, melting, vaporization, ejection and plasma (plume) formation (0107). They teach that the wavelength, frequency, and power of the pulsed beam can depend on, for instance, the specific target material and substrate being used, the atmosphere in the chamber and the particular application of the thin film being formed (0108). They teach that typically the laser has an energy per pulse of from 200 mJ to 400 mJ (0110). They teach that typically, the laser repetition frequency of the process if from about 1 Hz to about 100 Hz (0111). They teach that the substrate is usually mounted on a substrate heater which can heat the substrate during the deposition process to a temperature of from 50°C to 800°C (0113).
Park teaches forming high quality transparent conductive ZnO thin film using pulsed laser deposition (abstract). They teach varying the growth conditions such as the substrate temperature and pressure and measuring the electrical properties and transmission of the films (abstract and pg. 1523, section 2). They teach forming GZO films by ablating ZnO targets containing 5 wt.% Ga2O3 and forming AZO film by ablating ZnO targets containing 2 wt.% Al2O3 (pg. 1523, section 2). They teach that the deposition chamber was initially evacuated to 4x10-5 Torr (about 5x10-3 Pa) and then oxygen gas was introduced into the chamber so that the pressure as controlled to be 1-100 mTorr (about 0.133 to 13.3 Pa) (pg. 1523, section 2). They teach that changing the pressure of oxygen in the chamber changes the crystal size, transmittance, band gap, resistivity, carrier concentration, and carrier mobility of the AZO films deposited at 500°C (Table 1). They teach that similarly, the oxygen pressure and substrate temperature affect the resistivity, carrier concentration, and carrier mobility in GZO films (Fig. 7).
From the teachings of Edwards, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have evacuated the chamber to less than 1x10-3 Pa or about 6.7x10-4 Pa, heat the substrate to 50 to 800°C, and introduce oxygen into the chamber because Edwards teaches that such PLD conditions are desirable when forming a transparent conductive metal co-doped ZnO film, such that it will be expected to provide suitable deposition conditions for forming the film. Further, from the teachings of Park, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the temperature and the oxygen pressure to be within the claimed range from the overlapping temperature range suggested by Edwards and the overlapping oxygen pressure range suggested by Park because Park teaches that the resistivity and transmittance of doped ZnO films, including those doped with gallium, depend on the oxygen concentration and the temperature such that by controlling the oxygen pressure and the temperature it will be expected to provide a Cu, Ga-co-doped ZnO film having a desirable resistivity and transmittance range. Therefore, the chamber will be evacuated to a pressure overlapping the claimed range or close enough to expect similar results (~6.7x10-4 Pa vs. 5e-4Pa), the substrate will be heated to a temperature overlapping the claimed range or optimized to be within the claimed range, and oxygen will be introduced to the chamber to a pressure optimized to be within the claimed range. According to MPEP 2144.05, “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Further, according to MPEP 2144.05 II A, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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). According to MPEP 2144.05(I): Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Therefore, in the absence of evidence showing criticality of the claimed temperature and oxygen pressure, the determination of the optimal temperature is considered to be obvious to one having ordinary skill in the art.
They do not teach rotating the substrate at the claimed rate.
Hill teaches a doped semiconductor nanocrystal layer comprising (a) a group IV oxide layer, (b) a semiconductor nanocrystal distributed in the group IV oxide layer, and (c) one or more rare earth element (abstract). They teach depositing the layer by pulsed laser deposition (0044). They teach that a typical set up of a PLD apparatus consists of a large chamber 41, which can be evacuated down to at least 10-7 bars or pressurized with up to 1 atm of gas such as oxygen (0047 and Fig. 3). They teach that the chamber has at least one optical port in which a pulse laser beam can be injected to the chamber and focused down onto a suitable target 44 (0047 and Fig. 3). They teach that the target is usually placed on a carrousel 43 (0047 and Fig. 3). They teach that the substrate is usually held on a substrate holder 48, which can be heated from room temperature up to 1000°C and rotated from 0.1 to 30 RPM depending on the pulse rate of the pulse laser, which in most cases is pulsed between 1-10 Hz (0047 and Fig. 3). They teach that the rotation of the substrate provides a method of generating a uniform film during the deposition process (0047). They teach that during deposition an ablation plume is ejected (0047 and Fig. 3).
From the teachings of Hill, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have rotated the substrate at 0.1 To 30 RPM because Hill teaches that such a rotation of the substrate during PLD generates a uniform film such that it will be expected to improve the quality of the film on the substrate. Therefore, the rotation of the substrate overlaps the claimed range. According to MPEP 2144.05, “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Further, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have placed the substrate on a substrate holder in the chamber of the PLD apparatus because Hill teaches that in PLD the substrate it usually placed on a holder such that it will be expected to hold the substrate for rotation during deposition.
They do not teach rotating the target at the claimed range.
Shinde teaches growing undoped and Ga doped ZnO thin film using pulsed laser deposition (abstract). They teach that in the PLD process, the target was rotated at 10 rpm to avoid texturing/pitting of the surface during deposition (pg. 1213, section 2). They teach that the deposition chamber was evacuated to a base pressure of 1x10-6 Torr (1.3x10-4 Pa). They teach introducing oxygen to the chamber at a pressure of 5x10-4 Torr (0.067 Pa) (pg. 1213, section 2). They teach that the films were grown at a substrate temperature of 600°C (pg. 1213, section 2). They teach that increasing the gallium doping amount reduces resistivity and increases carrier concentration (Fig. 5). They teach that the films have an average transparency of greater than 90-95% in the range of 400 to 700 nm (pg. 1213, section 1, pg. 1216, section 3, and Fig. 7).
From the teachings of Shinde, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have rotated the target at 10 rpm because Shinde teaches that such a rotation rate is suitable for avoiding pitting/texturing of the target in depositing a ZnO or Ga-doped ZnO film by PLD such that it will also be expected to prevent pitting/texturing of the target in the process of Nakada in view of Edwards, Park, and Hill. Therefore, the target will be rotated at a rate meeting the claimed range. According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.”
As to generating a plasma, since the process of Nakada in view of Edwards, Park, Hill, and Shinde deposits the film by PLD, where Hill indicates that during the process an ablation plume is provided, the PLD process is also expected to generate a plasma of ionized atoms of the target that approach the substrate for deposition.
As to the material of the substrate, Nakada teaches depositing the ZnO-based transparent conductive film on a quartz glass substrate (0001, 0038, 0040, and 0051).
Edwards teaches using substrates such as sapphire, glass, quartz, alumina, etc. (0105).
Hill teaches using zinc oxide, quartz, and sapphire substrates (0031).
Shinde teaches using c-Al2O3 substrates (pg. 1213, section 2), understood to be c-plane sapphire substrates.
From this, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used a sapphire substrate for the co-doped ZnO film because Edwards, Hill, and Shinde indicate that sapphire is a desirable alternative to a quart glass substrate, where Edwards indicates that such a substrate is desirable for doped ZnO transparent conducting oxide film and Shinde teaches that it is desirable for a film having good transparency such that it will be expected to provide a suitable substrate for the film.
As to the optical transmission of the film, Nakada teaches that the transmittance of the transparent conductive substrate was an average of 91% in the visible region (0040, 0045, 0048, 0053, 0057). They teach that by co-doping with copper in addition to the conventional gallium doping, it is possible to realize low resistance while maintaining high transmittance in the near-infrared region (0010). They teach that the film is transparent (0001).
Nakada teaches that the film forming material has atomic ratios meetings Cu/(Zn+Cu+Ga)=0.01-0.1, Ga/(Zn+Cu+Ga)=0.01-0.10, and (Cu+Ga)/(Zn+Cu+Ga)=0.02-0.10 (0011 and 0023), such that the composition of copper in the material will be 0.1-10 atomic %, that of gallium will be 0.1-10 atomic %, provided that the total of copper and gallium is 0.2-10 atomic percent. From this, the concentration of copper and gallium in the doped zinc oxide is expected to overlap the ranges of claim 11. For example, a film having an atomic percentage of copper of about 7.56% and an atomic percentage of gallium of about 0.58% based on the amount of metal would provide a film having about (Ga 0.5%, Cu 6%) co-doped ZnO and a film having an atomic percentage of copper of about 5.06% and an atomic percentage of gallium of about 1.16% based on the amount of metal would provide a film having about (Ga 1%, Cu 4%) co-doped ZnO. Therefore, since the film have a concentration of copper and gallium overlapping the range required for claim 11 and Nakada indicate that the films have a transmittance in the visible range within the claimed range, the films are also expected to at least overlap the claimed dielectric constant and optical transmission ranges. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”. According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” According to MPEP 2144.05, “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Regarding claim 8, Nakada in view of Edwards, Park, Hill, and Shinde suggest the process of claim 4. Nakada teaches performing PLD using a laser energy of 80 mJ and a frequency of 5 Hz (0051).
Park teaches using a KrF excimer laser with a wavelength of 248 nm, a 25 ns pulse width, and an energy fluence of 2 J/cm2 (pg. 1523, section 2). They teach using a repetition rate of 10 Hz (pg. 1523, section 2).
Hill teaches that in most cases in PLD, the rate of the pulse laser is between 1-10 Hz, where the flux of the laser is 0.1 to 20 J per square cm (0047).
Shinde teaches using a KrF excimer laser with a wavelength of 248 nm, a pulse duration of 20 ns, and a repetition rate of 5 Hz (pg. 1213, section 2). They teach using a fluence of 2.0 J/cm2 (pg. 1213, section 2).
Edwards teaches that any suitable pulsed laser source may be used, where more typically a KrF excimer laser is used (0107). They teach that laser ablation occurs when the laser beam is focused on the target surface, where absorption of laser radiation by the target produces, sequentially, melting, vaporization, ejection and plasma (plume) formation (0107). They teach that the wavelength, frequency, and power of the pulsed beam can depend on, for instance, the specific target material and substrate being used, the atmosphere in the chamber and the particular application of the thin film being formed (0108). They teach that typically the laser has an energy per pulse of from 200 mJ to 400 mJ (0110). They teach that typically, the laser repetition frequency of the process if from about 1 Hz to about 100 Hz (0111). They teach that the substrate is usually mounted on a substrate heater which can heat the substrate during the deposition process to a temperature of from 50°C to 800°C (0113).
From the teachings of Edwards, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the laser frequency to meet the claimed limitations from a range of from 1 to 100 Hz and a pulse energy from 200 mJ to 400 mJ because Edwards teaches that such PLD ranges are suitable in forming films similar to those of Nakada, where the ranges include those suggested by Nakada, Park, Shinde, and Hill and where they indicate that the frequency and power of the beam can vary depending on the target material, substrate, atmosphere, and application such that it will be expected to provide suitable frequency and power ranges for determining the optimum conditions for forming the film. Therefore, the frequency of the pulses and the energy of the pulses will be optimized from a range overlapping the claimed range, where the power of the laser is understood to be the product of the pulse energy and the frequency such that the power of the laser is also expected to be optimized from a range overlapping the claimed range. Further, as noted above, Edwards indicate that the power of the beam varies depending on the target material, substrate, atmosphere, and application such that it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have also optimized the power of the laser to meet the claim limitations to provide a desirable film. According to MPEP 2144.05 II A, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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). According to MPEP 2144.05, “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Regarding claims 9 and 10, Nakada in view of Edwards, Park, Hill, and Shinde suggest the process of claim 4. Nakada teaches depositing a film having a thickness of 500 nm for 60 minutes (0051). They teach that the film is a transparent conductive film (0001).
Hill teaches that pulse laser deposition can be used for depositing layers of from 1 to 2000 nm in thickness (0047).
Edwards teaches that the thickness of the film is selected to achieve an optimum balance between conductivity and transparency (0045). They teach that films usually have a thickness of from about 10 nm to about 1 mm, more typically from about 100 nm to about 100 microns, or from about 200 nm to about 500 nm, or about 400 nm (0045). As discussed above for claim 8, Edwards provides the suggestion to optimize the laser parameters to meet the requirements of claim 8 from the overlapping ranges of Edwards to provide a desirable film.
From the teachings of Edwards, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have deposited the film to have a thickness in the range of about 200 nm to about 500 nm or about 400 nm because Edwards teaches that such a thickness for a doped ZnO film provides a balance between conductivity and transparency and Nakada desires forming a transparent conductive doped ZnO film such that it will be expected to provide a suitable thickness for the film. Therefore, the film thickness meets or overlaps the range of claim 10. According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp.v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (emphasis in original). According to MPEP 2144.05, “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Further, since Nakada in view of Edwards, Park, Hill, and Shinde suggest forming the film using the process of claim 1 with parameters optimized to meet the limitations of claim 8 from the overlapping ranges of Edwards, the deposition rate is also expected to meet the claimed requirements or to at least overlap them. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”. Therefore, the deposition of the film having a 200-500 nm or 400 nm thickness is expected to meet or overlap the ranges of claims 9 and 10.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Nakada in view of Edwards, Park, Hill, and Shinde as applied to claim 4 above, and further in view of He, US 2020/0287067 A1 and alternatively further in view of Cheng, US 2019/0017164 A1.
Regarding claim 5, Nakada in view of Edwards, Park, Hill, and Shinde suggest the process of claim 4. As noted above, Shinde teaches using c-Al2O3 (abstract), understood to be c-plane sapphire.
They do not teach the limitations of claim 5.
He teaches forming a (GaMe)2O3 ternary alloy material by PLD (abstract and 0028). They teach using a sapphire substrate, where the substrate can be of any crystal orientation, such as any one of a c-plane sapphire substrate, an r-plane sapphire substrate, etc. (0020-0021). They teach ultrasonically cleaning the substrate by acetone, ethanol, and deionized water, where the ultrasonic cleaning time of each cleaning solution is preferably 15 min (0027, 0030, and 0076).
From the teachings of Shinde and He, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used a c-plane or r-plane sapphire substrate ultrasonically cleaned in acetone, ethanol, and deionized water for 15 minutes each because He teaches that such sapphire substrates and cleaning methods are desirable for preparing a sapphire substrate for PLD and Shinde teaches that using a c-Al2O3 substrate is desirable for a transparent doped ZnO film formed by PLD such that it will be expected to provide a desirable substrate for the process. Further, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have immersed the substrate in the solutions so as to ensure that the substrates are completely cleaned. Therefore, prior to placing the substrate in the chamber, the c-plane or the r-plane of the sapphire substrate will be prepared as a base substrate, the substrate will be cleaned by immersing in acetone, ethanol, and deionized water, respectively, with ultrasonic cleaning for 15 minutes each, and then the substrate will be placed and fixed to the sample holder. Therefore, the cleaning time meets the claimed requirements. According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp.v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (emphasis in original).
While they do not teach the size of the substrate, according to MPEP 2144.04(IV)(A): In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Therefore, since the film is expected to successfully deposit on substrates having various sizes, the claimed size of the substrate is not considered to patentably distinct from the prior art.
Alternatively, Cheng teaches a method of producing a gallium-doped zinc oxide film with enhanced conductivity (abstract). They teach depositing a gallium-doped ZnO film on a substrate using a pulsed laser (abstract). They teach that examples of suitable substrate include quartz, silicon, and sapphire (0008). They teach that before deposition, a 50.4 mm diameter (0001) orientation sapphire substrate was cleaned by acetone, methanol, and DI water in an ultrasonic cleaner for 5 minutes each, sequentially (0028).
From this, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used substrates having a diameter of 50.4 mm because Cheng teaches that such sized substrate are suitable for PLD. Therefore, the substrate will have a size within the claimed range, where a diameter of 50.4 mm will provide a greater area than one of 10x5mm. According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp.v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (emphasis in original).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Nakada in view of Edwards, Park, Hill, and Shinde as applied to claim 4 above, and further in view of Hu, US 2016/0042829 A1.
Regarding claim 6, Nakada in view of Edwards, Park, Hill, and Shinde suggest the process of claim 4.
They do not teach the features of claim 6.
Hu teaches a transparent conductive film fabrication method of forming a seed film layer on a substrate by PLD (abstract). They teach cleaning the substrate and then depositing the seed film layer on the substrate by PLD (0048 and 0052). They teach that the seed film layer is deposited and formed on the substrate in an oxygen atmosphere, where the chamber is firstly vacuumized to 5x10-8 Pa to 5x10-4 Pa (0052-0053). They teach that the deposition chamber may be firstly vacuumized to be lower than 5 Pa by a mechanical pump and then vacuumized to 5x10-4 Pa or below by a molecular pump (0053). They teach that subsequently, oxygen is filled in the chamber to change the pressure to be 6-10 Pa (0053).
From the teachings of Hu, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have evacuated the chamber by using a mechanic pump until the pressure goes to lower than 5 Pa and then to have opened or used a molecular pump to further evacuate the chamber to less than 8x10-4 Pa or 5x10-4 Pa or below because Hu teaches that such a method is known to be used for evacuating a chamber prior to PLD such that it will be expected to successfully bring the chamber down to the desired base pressure. Therefore, the pressure range of the mechanical pump and the molecular pumps will overlap the claimed ranges. According to MPEP 2144.05, “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nakada in view of Edwards, Park, Hill, and Shinde as applied to claim 4 above, and further in view of Eom, US 2013/0168233 A1 and Iwasaki, US 2011/0305890 A1.
Regarding claim 7, Nakada in view of Edwards, Park, Hill, and Shinde suggest the process of claim 4.
They do not teach the features of claim 7.
Eom teaches an apparatus and method for growth of multilayered structures using an integrated magnetron sputtering and PLD (abstract). They teach using a gas manifold 410 that includes a plurality of gas sources 412 containing gases for use in PLD (0022 and Fig. 4). They teach that the flow of gases from gas sources 412 to the vacuum chamber can be controlled by a series of regulators 414, pneumatic valves 416, and mass flow controllers 418 (0022 and Fig. 4).
From the teachings of Eom, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have supplied the oxygen using a valve and a mass flow controller because Nom teaches that oxygen can be supplied to a PLD apparatus using such a configuration such that it will be expected to supply the oxygen by opening the oxygen valve and to control the flow using the mass flow controller.
They do not teach controlling the pressure using the oxygen gas flowmeter and a molecular pump valve.
Iwasaki teaches forming a film by pulsed laser deposition (0066). They teach a PLD device for forming the film that is configured so that a substrate 2 and a target 3 are arranged in a chamber 1 so that they face each other (0072-0073 and Fig. 1). They teach that the device includes an adjustment valve 9 for adjusting a flow rate of an oxygen gas to the chamber (0073 and Fig. 1). They teach that to realize the formation of a film under a reduced pressure, a turbo molecular mump 10 and a pressure valve 11 are connected to the chamber (0073 and Fig. 1). They teach that the pressure in the chamber is controlled using the oxygen gas flow rate adjustment valve 9 and the pressure valve 11 (0073 and Fig. 1).
From the teachings of Iwasaki, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have controlled the oxygen using the mass flow controller and a pressure valve to a molecular pump because Iwasaki teaches that in PLD the pressure in the chamber can be controlled by controlling an oxygen flow rate adjustment valve (where a mass flow controller will control the flow rate) and a valve to a molecular pump such that it will be expected to provide the desired and predictable result of supplying oxygen while maintaining the desired pressure. Therefore, in the process of Nakada in view of Edwards, Park, Hill, Shinde, Nom, and Iwasaki, the oxygen will be supplied by opening an oxygen gas inlet valve to introduce the oxygen gas to the chamber and controlling the oxygen MFC and molecular pump valve to adjust the pressure to overlap the range of claim 7.
Response to Arguments
Applicant's arguments filed 7/30/2026 have been fully considered.
In light of the amendment to claim 11, the previous 112 rejections have been withdrawn.
Regarding Applicant’s argument over the sapphire substrate, as discussed above, Edwards, Hill, and Shinde all suggest using a sapphire substrate, which is indicated as being an alternative to quartz by Edwards and Hill.
Regarding Applicant’s argument over the sintered target of Nakada, since the target is sintered from copper and gallium doped ZnO, the resulting target is also expected to be ceramic as in formed from ceramic material. As discussed above, Nakada teaches forming the target from the material in amounts that overlap the ranges of claim 11, such that it is also expected to be a ceramic since it is predominantly ZnO, i.e., a ceramic material. Claim 4 requires that the ZnO ceramic target includes Ga and Cu, where the film is deposited to have the same composition as the target and since Nakada provides a target that results in films having concentrations overlapping the ranges of claim 11, the resulting target is expected to be formed of the same material as claimed so as to provide a ceramic target. It is noted that Applicant cites [0050] of Nakada indicating that the target is composed of ZnO and copper aluminate powder resulting in a mixture of crystalline phases of ZnO and a copper aluminate, this is in reference to a different target material that what was cited for forming the Cu, Ga-doped ZnO. Further, the claims do not require that the target is amorphous, only ceramic, which does not have to be amorphous. Further, ZnO is understood to be a ceramic so as to provide a ceramic ZnO target containing the specific amounts of Ga and Cu.
Regarding Applicant’s argument that the film of Nakada may not have any Ga such that the film would not have the disclosed dielectric constant, as discussed above, the target of Nakata includes gallium and copper in the ranges overlapping the ranges of claim 11, such that the dielectric constant is also expected to overlap the claimed range. While Nakada provides an embodiment where M is Al, they also provide an embodiment where M is Ga, such that the target containing Ga and Cu is what is relied upon for the rejection above.
Regarding Applicant’s arguments over the process of Edwards, they provide a process for depositing a doped-ZnO film by PLD where they provide desirable processing ranges. While they teach that the films can include a halogen, y can also be 0 so as to provide a transition metal-doped ZnO film which is similar to the films of Nakada and of the claimed invention. Specifically, while the films of Nakada include Ga as a dopant, they also include Cu, which is included in the film of Edwards, suggesting that similar PLD conditions will be suitable in the process of Nakada. Additionally, Park provides the suggestion of optimizing the oxygen concentration and temperature, where Park indicates that a GZO film can be formed using an oxygen concentration overlapping that suggested by Edwards. As to the dielectric constant, since they provide the overlapping concentrations, the dielectric constant is also expected to overlap the claimed range. If the conditions are critical to the dielectric constant, it is suggested to provide a showing of criticality.
Regarding Applicant’s arguments over Park, they suggest optimizing the deposition conditions for providing desirable resistivity, carrier concentration, and carrier mobility in GZO films, where they provide an oxygen concentration overlapping the range of Edwards and a temperature within the range of Edwards, suggesting that similar deposition conditions can be used. As to a sapphire substrate, that is suggested by Edwards, Hill, and Shinde.
Regarding Applicant’s arguments over Hill, the reference is considered to suggest general PLD conditions such as substrate rotation rate used for depositing oxides such that the range is considered to be applicable to the claimed process. As to the dielectric constant, this is considered to be an inherent feature resulting from the process of Nakada in view of Edwards, Park, Hill, and Shinde. If the rotation rate is considered to be critical to the dielectric constant, it is suggested to provide a showing of such criticality.
Regarding Applicant’s arguments over Shinde, the reference teaches rotating the target to prevent pitting, providing the suggestion to rotate the target. While the films do not include copper, the issue of target pitting would also be expected in the process of Nakata, where rotating at the speed of Shinde would be expected to help the problem due to the similarity of the materials.
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). In the current case, the references relied upon are in the field of PLD of ZnO and include Cu or Ga-doped ZnO materials such that the PLD conditions are expected to be similar to the process of Nakada.
Regarding Applicant’s argument over the criticality of the dielectric constant and the transmittance, while the data in Table 1 indicate a sharp increase in the dielectric constant of the doped film compared to the undoped ZnO, it is not clear what makes the specific claimed range critical. Specifically, why a dielectric constant of 87 is critical compared to, for example, the dielectric constant of 72. Therefore, since the criticality of the claimed dielectric constant is not clear, the overlapping concentration of Nakada is considered to render the claimed range obvious. It is noted that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Further, according to MPEP 2112(I): "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer."
Regarding Applicant’s argument of He, while they do not specifically relate to Ga:Cu doped ZnO, the reference is in the field of depositing gallium and metal-containing oxides by PLD, where they suggest suitable substrate cleaning methods, such that the cleaning methods are also expected to be suitable for the PLD process of Nakada in view of Edwards, Park, Hill, and Shinde.
Regarding Applicant’s arguments over Cheng, the reference is in the field of depositing gallium doped ZnO such that the suggestion of substrate size is expected to be applicable to the PLD process of Nakada in view of Edwards, Park, Hill, and Shinde.
Regarding Applicant’s argument over the combination with Hu, the reference was relied upon for a suitable method of pumping down the chamber prior to PLD such that it is expected to also be applicable to the process of Nakada. As noted above, the dielectric constant is expected to be inherent due to the overlapping concentration range of Nakada in view of Edwards, Park, Hill, and Shinde.
Regarding Applicant’s arguments over Eom, while sputtering is different from PLD, the reference provides integrated sputtering and PLD where they indicate that gases are supplied using valves and flow controllers suggesting that such flow controllers can be desirable and useful in the PLD process of Nakada in view of Edwards, Park, Hill, and Shinde.
Regarding Applicant’s argument over Iwasaki, the reference is directed to forming a film by PLD and they indicate that the flow of oxygen gas can be adjusted to the chamber using an oxygen gas flow rate adjustment valve and a pressure valve, where a molecule pump provides reduced pressure. Therefore, they provide methods of controlling oxygen flow and pressure in PLD processes such that the reference is expected to be applicable and analogous art to the claimed process. Further, since the reference is in the same field of PLD, the process of controlling oxygen gas using a MFC and pressure valve to a molecular pump is considered to be relevant and applicable to the process of Nakada in view of Edwards, Park, Hill, and Shinde.
It is also suggested to specify in claim 4 that the deposited film has the claimed dielectric and transmittance properties.
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.
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/CHRISTINA D MCCLURE/Examiner, Art Unit 1718 /GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718
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