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
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.
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (JP No. 2020066558, machine translation cited below) in view of Nakayama et al (US 2019/0081182).
With respect to claims 1 and 2, Sato discloses a method for film formation by sputtering a cesium tungsten oxide film onto a substrate from a sputter target comprising Cesium (Cs) and tungsten (W) (Abstract; para 0001 and 0047), wherein the sputter target is “a cesium tungsten oxide sintered body” (i.e. “a cesium tungsten oxide sintered compact”) formed by powder sintering from a “cesium tungsten oxide powder” (para 0038). Sato further discloses in Example 1 the sputter target and substrate are installed with a distance therebetween in a sputtering apparatus (para 0052 and 0056), wherein the film formation by sputtering is at a pressure of 0.6 Pa (para 0056), and a ratio of Cs atoms to W atoms is between 0.15:1 to 0.50:1 (para 0037), or more specifically (from Example 1) the ratio is 0.32:1 (para 0053).
However Sato is limited in that while a distance exists between the sputter target and substrate, a particular distance is not suggested.
Nakayama teaches a method of sputtering an oxide sintered body as a sputter target to deposit an oxide film onto a substrate (Abstract; para 0054), wherein the method comprises attaching the sputter target to have a target-substrate distance of about 60-110 mm and sputtering at a pressure of 0.2-0.7 Pa (para 0058, 0064, and 0080), similar to the method of Sato at para 0055-0056; a prima facie case of obviousness exists in the case where the claimed ranges (e.g. 66-134 mm) “overlap or lie inside ranges (e.g. 60-110 mm) disclosed by the prior art” (MPEP 2144.05, I).
It would have been obvious to one of ordinary skill in the art to have the distance between the sputter target and substrate of Sato be about 60-110 mm as taught by Nakayama since Sato fails to specify a particular distance between the sputter target and substrate, and one of ordinary skill would have had a reasonable expectation for success in making the modification since Nakayama has shown success in sputtering at a similar pressure an oxide film from an oxide sintered body that is a sputter target of similar diameter using the distance of 60 mm.
In summary, the combination of Sato and Nakayama has Sato teaching sputtering the sputter target having a ratio of Cs atoms to W atoms of 0.15:1 to 0.50:1 (and more specifically 0.32:1) at a pressure of 0.6 Pa (para 0037, 0053, and 0056), and Nakayama teaching the distance between the sputter target and substrate is 60-110 mm for sputtering (col. 11, lines 39-48). Thus the combination of references teaches the pressure of 0.6 Pa and distance of 110 mm or less results in ~0.370 or less ≤ nCs/nW (T) ≤ ~0.534 or less according to the claimed Formula 1 (where the “(T)” is merely designating the sputter target as stated by Applicant on p. 6 Remarks 12/11/2024), which is satisfied by Sato teaching the ratio 0.15:1 to 0.50:1, or more specifically 0.32:1. Since combination of references teaches the method requirements of claim 1 (e.g. sputter target includes Cs, W, and O; the distance and pressure; and satisfies Formula 1), a prima facie case of either anticipation or obviousness has been established that the combination of references also teaches the resulting cesium tungsten oxide film has a property of “nCs/nW(film) expressing a ratio of Cs atoms to W atoms in the cesium tungsten oxide film is set within 0.3 or more to 0.36 or less” (MPEP 2112.01, I).
With respect to claims 4-6, modified Sato further discloses the cesium tungsten oxide powder is made of raw materials of a compound as a cesium source includes “cesium carbonate” and a compound as a tungsten source includes “tungstic acid (H2WO4)” (e.g. the tungsten source includes an oxide) (para 0035).
Response to Arguments
Applicant’s Remarks on p. 5-13 filed 10/6/2025 are addressed below.
103 Rejection
On p. 6-13, Applicant argues that it would not have been obvious to combine Nakayama with Sato, and thus does not teach the new limitation of the ratio of Cs and W atoms in the deposited film as recited by amended claim 1.
The Examiner respectfully disagrees. Sato teaches all requirements of claim 1 with exception of: 1) while a distance (or spacing) between the sputter target and substrate is necessarily present for Sato, a specific distance between sputter target and substrate being 66-134 mm; and 2) atoms of Cs and W in the deposited film. To bridge the gap of 1), Nakayama teaches attaching an oxide sintered body as a sputter target to deposit an oxide film onto a substrate (Abstract; para 0054), similar to Sato; Nakayama further teaches to have a target-substrate distance of about 60-110 mm and sputtering at a pressure of 0.2-0.7 Pa (para 0058, 0064, and 0080), also similar to the pressure of Sato. Thus for 1), one of ordinary skill would have looked to the distance of Nakayama for the specific distance of Sato with a reasonable expectation for success in making the modification.
As such then, the combination of Sato and Nakayama then teaches all method limitations of claim 1. Thus for 2), a prima facie case of either anticipation or obviousness has been established that the combination of references also teaches the resulting cesium tungsten oxide film has a property of “nCs/nW(film) expressing a ratio of Cs atoms to W atoms in the cesium tungsten oxide film is set within 0.3 or more to 0.36 or less” (MPEP 2112.01, I).
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 MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794