DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 05/12/2026.
3. Claims 1-8, 10-14 are pending. Claims 1-8 are under examination on the merits. Claims 1, 3, 5,10,12,14 are amended. Claims 9, 15 are previously cancelled. Claims 10-14 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 05/12/2026 have been fully considered but they are not persuasive, thus claims 1-8 stand rejected as set forth in Office action dated 02/27/2026 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (2020/0299825 A1, hereinafter “’825”).
Regarding claim 1: ‘825 teaches a near-infrared shielding film comprising a continuous film of a cesium tungsten composite oxide represented by a general formula CsXWyOz (Page 2, [0038]). ‘825 teaches a cesium tungsten oxide film comprising cesium, tungsten, and oxygen as the main components, wherein the atomic ratio Cs/W of cesium to tungsten is 0.1-0.5 (Page 3, [0039]), the cesium tungsten oxide film has a hexagonal crystal structure (Page 3, [0040]), the
ratio of the infrared transmittance at the wavelength of 1400 nm to the visible light transmittance
at wavelength 550 nm is 0.3 or less (Page 3, [0043]), and the sheet resistance exceeds 1.0 x
1010 Ω/sq (Page 3, [0047]) . ‘825 teaches the production method thereof comprising a sputtering film formation step for forming a film using a cesium tungsten oxide target and a heat treatment step, and either of the film formation step or the heat treatment step is performed under an atmosphere containing oxygen (Page 10, Claims 1 &10). Specifically, ‘825 indicates that cesium tungsten oxide powder with a Cs/W atomic ratio of 0.33 (model number YM-01, manufactured by Ohkuchi Electronics Co., Ltd.) is fed into a hot press device, and sintered under the condition of a vacuum atmosphere, a temperature of 950°C, and a pressing force of 250 kgf/cm2, thereby producing a cesium tungsten oxide sintered body that this oxide sintered body is ground by machine processing into a piece with a diameter of 153 mm and a thickness of 5 mm, the piece is bonded to a stainless steel packing plate using a metal indium brazing material, thereby producing a cesium tungsten oxide target (Page 5, [0057], Example 1). The target is attached to a sputtering device, and cesium tungsten oxide film with a film thickness of 400 nm is formed on a glass substrate under the condition of an ultimate vacuum of 5 x10-3 Pa or less using a sputtering gas of 5% oxygen/ 95% argon-mixed gas at a sputtering gas pressure of 0.6 Pa, and an input electric power of 600 W DC (film formation step S1) (Page 5, [0058]). The film is fed into a lamp heating furnace (manufactured by Yonekura Mfg. Co., Ltd., model number: HP-2-9) and heated at a temperature of 500°C under a nitrogen atmosphere for 10 minutes (heat treatment step S2) (Page 5, [0059]) and that a film of a hexagonal crystal structure with a Cs/ W atomic ratio of 0.31 is obtained (Page 5, [0059], Example 1). ‘825 does not expressly teach the composition of the obtained continuous film includes an orthorhombic crystal, and a rhombohedral crystal.
However, the method for producing a film disclosed by ‘825 has similar film formation
and heat treatment steps to those in the method disclosed in the examples of the present
application and that the obtained film has a hexagonal crystal structure, as well as the
transmittance and sheet resistance of the film, etc. Since ‘825 discloses the identical or substantially identical method of producing as near-infrared shielding film comprising a continuous film of a cesium tungsten composite oxide as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made, would have expected that the composition properties such as a lattice constant be the same as claimed (i.e., a lattice constant of the cesium tungsten composite oxide that is converted to a hexagonal conversion value is 7.61 Å ≤ c ≤7.73 Å and 7.38 Å ≤ c ≤7.53 Å). If there is any difference between the product of ‘825 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 2: The disclosure of ‘825 is adequately set forth in paragraph above and is incorporated herein by reference. ‘825 does not expressly teach the orthorhombic crystal and the hexagonal crystal are linked by a lattice correspondence of (001)H/(001)R, (110)H /(100)R, and (-110)H/(010)R, where H and R represent the hexagonal crystal and the orthorhombic crystal respectively, and a planar or linear lattice defect is included in at least part of a (010)R plane of the orthorhombic crystal, or one or more planes selected from a prism plane [(100)H, (010)H, (110)H] and a basal plane (00I)H of the hexagonal crystal.
However, the method for producing a film disclosed by ‘825 has similar film formation
and heat treatment steps to those in the method disclosed in the examples of the present
application and that the obtained film has a hexagonal crystal structure, as well as the
transmittance and sheet resistance of the film, etc. Since ‘825 discloses the identical or substantially identical method of producing as near-infrared shielding film comprising a continuous film of a cesium tungsten composite oxide as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made, would have expected that the composition properties such as a lattice correspondence be the same as claimed (i.e., the orthorhombic crystal and the hexagonal crystal are linked by a lattice correspondence of (001)H/(001)R, (110)H /(100)R, and (-110)H/(010)R, where H and R represent the hexagonal crystal and the orthorhombic crystal respectively, and a planar or linear lattice defect is included in at least part of a (010)R plane of the orthorhombic crystal, or one or more planes selected from a prism plane [(100)H, (010)H, (110)H] and a basal plane (00I)H of the hexagonal crystal). If there is any difference between the product of ‘825 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 3: The disclosure of ‘825 is adequately set forth in paragraph above and is incorporated herein by reference. ‘825 does not expressly teach the lattice defect includes at least one of a tungsten deficiency or a cesium deficiency.
However, the method for producing a film disclosed by ‘825 has similar film formation
and heat treatment steps to those in the method disclosed in the examples of the present
application and that the obtained film has a hexagonal crystal structure, as well as the
transmittance and sheet resistance of the film, etc. Since ‘825 discloses the identical or substantially identical method of producing as near-infrared shielding film comprising a continuous film of a cesium tungsten composite oxide as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made, would have expected that the composition properties such as a lattice defect be the same as claimed (i.e.,
the lattice defect includes one or more types selected from a tungsten deficiency and a cesium
deficiency). If there is any difference between the product of ‘825 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 4: The disclosure of ‘825 is adequately set forth in paragraph above and is incorporated herein by reference. ‘825 does not expressly teach a portion of oxygen of a W-O octahedron is further randomly deficient, the W-O octahedron constituting the one or more crystals selected from the orthorhombic crystal, the rhombohedral crystal, and the hexagonal crystal, and being formed of tungsten (W) and oxygen (O).
However, the method for producing a film disclosed by ‘825 has similar film formation
and heat treatment steps to those in the method disclosed in the examples of the present
application and that the obtained film has a hexagonal crystal structure, as well as the
transmittance and sheet resistance of the film, etc. Since ‘825 discloses the identical or substantially identical method of producing as near-infrared shielding film comprising a continuous film of a cesium tungsten composite oxide as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made, would have expected that the composition properties such as a portion of oxygen of a W-O octahedron is randomly deficient be the same as claimed (i.e., a portion of oxygen of a W-O octahedron is further randomly deficient, the W-O octahedron constituting the one or more crystals selected from the orthorhombic crystal, the rhombohedral crystal, and the hexagonal crystal, and being formed of tungsten (W) and oxygen (O)). If there is any difference between the product of ‘825 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 5: The disclosure of ‘825 is adequately set forth in paragraph above and is incorporated herein by reference. ‘825 does not expressly teach at least one of excess O2-, OH-, or OH2 are placed in one or more voids selected from hexagonal tunnel voids in the orthorhombic crystal or in the hexagonal crystal and pyrochlore voids in the rhombohedral crystal.
However, the method for producing a film disclosed by ‘825 has similar film formation
and heat treatment steps to those in the method disclosed in the examples of the present
application and that the obtained film has a hexagonal crystal structure, as well as the
transmittance and sheet resistance of the film, etc. Since ‘825 discloses the identical or substantially identical method of producing as near-infrared shielding film comprising a continuous film of a cesium tungsten composite oxide as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made, would have expected that the composition properties such as excess of ions placed in one or more voids of the crystal lattice be the same as claimed (i.e., one or more types selected from excess O2-, OH-, and OH2 are placed in one or more voids selected from hexagonal tunnel voids in the orthorhombic crystal or in the hexagonal crystal and pyrochlore voids in the rhombohedral crystal). If there is any difference between the product of ‘825 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 6: The disclosure of ‘825 is adequately set forth in paragraph above and is incorporated herein by reference. ‘825 does not expressly teach optical characteristics satisfy η ≤ 0.005 VLT + 0.3, where η is a solar heat gain coefficient and VLT is a visible light transmittance.
However, the method for producing a film disclosed by ‘825 has similar film formation
and heat treatment steps to those in the method disclosed in the examples of the present
application and that the obtained film has a hexagonal crystal structure, as well as the
transmittance and sheet resistance of the film, etc. Since ‘825 discloses the identical or substantially identical method of producing as near-infrared shielding film comprising a continuous film of a cesium tungsten composite oxide as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made, would have expected that the composition properties such a solar heat gain coefficient would be the same as claimed (i.e., optical characteristics satisfy η ≤ 0.005 VLT + 0.3, where η is a solar heat gain coefficient and VLT is a visible light transmittance). If there is any difference between the product of ‘825 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 7: The disclosure of ‘825 is adequately set forth in paragraph above and is incorporated herein by reference. The near-infrared shielding film, wherein a surface resistance value is 105 Ω/□ or more (Page 3, [0047]).
Regarding claim 8: The disclosure of ‘825 is adequately set forth in paragraph above and is incorporated herein by reference. The near-infrared shielding film, wherein a film thickness is 30 nm or more and 1,200 nm or less (Page 10, Claim 5).
Response to Arguments
8. Applicant's arguments filed 05/12/2026 have been fully considered but they are not persuasive,
In response to the Applicant's argument that '825 does not disclose or suggest obtaining diffraction peaks of a rhombohedral crystal, and, accordingly, does not provide any teaching regarding a combination of orthorhombic, rhombohedral, and hexagonal crystals. Hence, the feature that "the continuous film includes an orthorhombic crystal, a rhombohedral crystal, and a hexagonal crystal," as recited in claim 1, is not disclosed or suggested in '825.
The examiner respectfully disagrees. Applicant’s argument lacks persuasive merit at least because the claims do not include language that requires “diffraction peaks of orthorhombic, and diffraction peaks of rhombohedral”. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). (“[A]pplicant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”).
Furthermore, ‘825 teaches a near-infrared shielding film comprising a continuous film of a cesium tungsten composite oxide represented by a general formula CsXWyOz (Page 2, [0038]). ‘825 teaches a cesium tungsten oxide film comprising cesium, tungsten, and oxygen as the main components, wherein the atomic ratio Cs/W of cesium to tungsten is 0.1-0.5 (Page 3, [0039]), the cesium tungsten oxide film has a hexagonal crystal structure (Page 3, [0040]), the ratio of the infrared transmittance at the wavelength of 1400 nm to the visible light transmittance at wavelength 550 nm is 0.3 or less (Page 3, [0043]), and the sheet resistance exceeds 1.0 x 1010 Ω/sq (Page 3, [0047]) . ‘825 teaches the production method thereof comprising a sputtering film formation step for forming a film using a cesium tungsten oxide target and a heat treatment step, and either of the film formation step or the heat treatment step is performed under an atmosphere containing oxygen (Page 10, Claims 1 &10). Specifically, ‘825 indicates that cesium tungsten oxide powder with a Cs/W atomic ratio of 0.33 (model number YM-01, manufactured by Ohkuchi Electronics Co., Ltd.) is fed into a hot press device, and sintered under the condition of a vacuum atmosphere, a temperature of 950°C, and a pressing force of 250 kgf/cm2, thereby producing a cesium tungsten oxide sintered body that this oxide sintered body is ground by machine processing into a piece with a diameter of 153 mm and a thickness of 5 mm, the piece is bonded to a stainless steel packing plate using a metal indium brazing material, thereby producing a cesium tungsten oxide target (Page 5, [0057], Example 1). The target is attached to a sputtering device, and cesium tungsten oxide film with a film thickness of 400 nm is formed on a glass substrate under the condition of an ultimate vacuum of 5 x10-3 Pa or less using a sputtering gas of 5% oxygen/ 95% argon-mixed gas at a sputtering gas pressure of 0.6 Pa, and an input electric power of 600 W DC (film formation step S1) (Page 5, [0058]). The film is fed into a lamp heating furnace (manufactured by Yonekura Mfg. Co., Ltd., model number: HP-2-9) and heated at a temperature of 500°C under a nitrogen atmosphere for 10 minutes (heat treatment step S2) (Page 5, [0059]) and that a film of a hexagonal crystal structure with a Cs/ W atomic ratio of 0.31 is obtained (Page 5, [0059], Example 1). ‘825 does not expressly teach the composition of the obtained continuous film includes an orthorhombic crystal, and a rhombohedral crystal.
However, the method for producing a film disclosed by ‘825 has similar film formation
and heat treatment steps to those in the method disclosed in the examples of the present
application and that the obtained film has a hexagonal crystal structure, as well as the
transmittance and sheet resistance of the film, etc. Since ‘825 discloses the identical or substantially identical method of producing as near-infrared shielding film comprising a continuous film of a cesium tungsten composite oxide as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made, would have expected that the composition properties such as a lattice constant be the same as claimed (i.e., a lattice constant of the cesium tungsten composite oxide that is converted to a hexagonal conversion value is 7.61 Å ≤ c ≤7.73 Å and 7.38 Å ≤ c ≤7.53 Å). If there is any difference between the product of ‘825 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
9. 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 extension fee 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 date of this final action.
Examiner Information
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
05/26/2026
bijan.ahvazi@uspto.gov
Prosecution Insights