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 .
Response to Amendment
The amendment filed 05 August 2025 has been entered.
Claims 1, 5-6, and 8-9 remain pending in the application, wherein claims 1, 5-6, and 8-9 have been amended and claims 2-4 and 7 are newly canceled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 5-6, and 8-9 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “combinations of two or more of them” (i.e. of the elements for M and separately of the elements for rare earth oxide). However, the instant specification does not disclose that combinations of two elements may be used because the written description only discloses “one of” and “more than two” (nor do any of the specific examples use a combination of two).
Claims 5-6 and 8-9 stand rejected as they depend on a rejected claim.
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.
Claims 1, 5-6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (US 2004/0164281, previously cited) in view of Xu et al. (US 2020/0027993, previously cited).
Claim 1: Abe teaches a low resistant transparent conductive film (paragraph 0002) that can be used in electrodes for solar batteries, liquid crystal elements and other light-receiving elements, for heat-reflecting film, anti-static film, anti-fog film etc. (paragraph 0004). The film is made from a sputtering target of an oxide sintered body having a bixbyite crystal structure (paragraph 0043) and an atomic ratio Ti/In of 0.003-0.120 (paragraph 0040) (i.e. MO were M is Ti). Abe teaches that when titanium is added to indium oxide (In2O3), the mobility of the carrier electrons is about 70-90 cm2/V sec and the number of carrier electrons can be increased (paragraph 0037). Abe discloses that the bixbyite type structure is a crystal structure of the indium oxide and is also called C-type rare earth oxide (paragraph 0050). However, Abe does not disclose actually doping rare earth oxide.
In a related field of endeavor, Xu teaches an oxide semiconductor thin-film and thin-film transistor (paragraph 0002). The oxide semiconductor thin-film is fabricated from (MO)x(RO)y semiconductor material by doping an amount of rare-earth oxide RO (which corresponds to the instantly claimed ReO) as a light stabilizer to metal oxide semiconductor (paragraph 0010), wherein M (i.e. of MO) is one or more of In etc. (paragraph 0011) and wherein 0.8≤x<1, 0.0001≤y≤0.2, and x+y=1 (paragraph 0024) (i.e. the amount of RO is 0.0001-0.2 and the rest is one or more metal oxides). The RO may be an oxide of Pr, Tb, Dy, Yb, or any combination of two or more of these (paragraph 0026).
As Abe and Xu both teach oxide thin films containing indium, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the transparent conductive film of Abe to include 0.0001-0.2 atomic fraction of rare-earth oxide of Pr, Tb, Dy, and/or Yb as taught by Xu because doping with rare earth oxide is a light stabilizer to metal oxides, which can include indium oxide, and one would have had a reasonable expectation of success. This modification (i.e. the titanium indium oxide of Abe doped with the rare-earth oxide of Xu) would result in a material of (In2O3)x(MO)y(ReO)z where z is 0.0001-0.2 (i.e. based on the value y of RO taught by Xu), x is about 0.65-0.99, and y is about 0.006-0.19 (x and y were calculated from x+y+z=1 and y/2x=0.003-0.120 from the ratio of Ti/In and given z=0.0001-0.2). These ranges for x, y, and z each overlap the instantly claimed ranges, and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented. The references do not directly teach the carrier concentration. However, the carrier concentration is a material property, and the material of Xu-modified Abe is substantially identical to the instantly claimed material, and therefore is considered to have substantially identical properties and functions. See MPEP § 2112.01.
Claims 5-6: Xu teaches that the oxide semiconductor thin-film is fabricated from (MO)x(RO)y semiconductor material by doping an amount of rare-earth oxide RO (which corresponds to the instantly claimed ReO) as a light stabilizer to metal oxide semiconductor (paragraph 0010), wherein M (i.e. of MO) is one or more of In etc. (paragraph 0011) and wherein 0.8≤x<1, 0.0001≤y≤0.2, and x+y=1 (paragraph 0024) (i.e. the amount of RO is 0.0001-0.2 and the rest is one or more metal oxides). As outlined above, the modification (i.e. the titanium indium oxide of Abe doped with the rare-earth oxide of Xu) would result in a material of (In2O3)x(MO)y(ReO)z where z is 0.0001-0.2 (i.e. based on the value y of RO taught by Xu). This range overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 8: The references do not directly teach the carrier concentration. However, the carrier concentration is a material property, and the material of Xu-modified Abe is substantially identical to the instantly claimed material, and therefore is considered to have substantially identical properties and functions. See MPEP § 2112.01.
Claim 9: Abe teaches that the transparent conductive film (i.e. the transparent conductive oxide film as outlined above) can be manufactured (i.e. prepared) on a substrate using direct-current sputtering (i.e. a physical vapor deposition process) (paragraph 0059).
Response to Arguments
Applicant’s arguments, see p. 3, filed 05 August 2025, with respect to the indefiniteness, have been fully considered and are persuasive in view of the amendments. The rejection under 35 U.S.C. 112(b) has been withdrawn.
Applicant’s arguments, see p. 3-4, filed 05 August 2025, regarding the obviousness type double patenting rejections, have been fully considered and are persuasive in view of the amendments. The nonstatutory double patenting rejections have been withdrawn.
Applicant’s arguments, see p. 4-5, filed 05 August 2025, with respect to the prior art rejection, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant’s argument regarding doping rare earth oxide as a photon-generated carrier conversion center is noted but is not commensurate in scope with the instant claims as this feature is not recited in the claims and further is considered a property or function of the recited material and therefore is considered to be present because substantially identical materials have substantially identical properties and functions. See MPEP §§ 2112.01 and 2145(II and VI). Applicant also argues that mobility and carrier concentration are not just a material property but further defines the structure and composition of the metal oxide transparent conductive film such as the specific composition and content of the metal oxide. However, claim 1 recites a specific composition and content (within ranges for x, y, and z). This argument seems to state that the recited composition ranges do not all result in the recited properties, but without providing evidence, and would seemingly require a narrower range being implied but not defined for the recited composition.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784