DETAILED ACTION
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-8 and 16-20, drawn to product, classified in H01G9/06.
II. Claims 9-15, drawn to method, classified in C23C16/52.
The inventions are distinct, each from the other because of the following reasons:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product (i.e. indium tin oxide film) can be made by a materially different process such as chemical vapor deposition.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
- the inventions have acquired a separate status in the art in view of their different classification,
- the inventions have acquired a separate status in the art due to their recognized divergent subject matter, and
- the inventions require a different field of search (e.g. different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Mr. Matthew Hall on February 10, 2026 a provisional election was made without traverse to prosecute the invention of Group II, claims 9-15. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-8 and 16-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
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 9-11 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Usui (2011/0088772) in view of Perkins (2022/0102639).
Usui teaches a method of forming a useful transparent conductor – the conductor is made, for example, of a combination of fluorine doped tin oxide, FTO, and indium tin oxide, ITO, see [0051]. Such a teaching includes forming a FTO layer and then forming an ITO layer on the FTO layer (i.e. teaching the claimed FTO substrate for forming the ITO layer). The teachings include depositing the transparent conductor (ITO) by methods including spray pyrolysis [0078], but do not provide details of the process.
Perkins teaches that ITO (and other transparent oxide) films are formed using a solution applied on a substrate by methods including spray coating [0035-38]. The method further including heating the substrate comprising the solution at first to a temperature to cure the solution [0041] (i.e. to evaporate solvent is understood as a cure) and then includes annealing the substrate [0042].
It would have been obvious at the effective date of the invention to form the ITO layer of Usui using the spray coating method of Perkins as Usui teaches forming such layers by spray pyrolysis but does not provide further details such as curing and etching. The general “spray coating” process of Perkins is considered to include the spray pyrolysis process noted by Usui, or, alternatively, the method of Perkins would be applied as an alternative spray process that is taught as useful for forming an ITO layer. In combining the art, one would apply the ITO layer to the FTO film as directed by Usui, using the method of Perkins to form the ITO layer, the method including the claimed precursor solution, curing and annealing steps as noted.
Regarding claim 10, Perkins teaches all of the claimed methods [0038].
Regarding claim 11, Perkins teaches annealing in a hydrogen environment [0044] which is understood as reducing.
Regarding claims 13 - 15, Perkins teaches indium nitrate and tin chloride [0006]] and also forming such films including a cadmium dopant using Cd nitrate [0033, 34].
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Usui (2011/0088772) and Perkins (2022/0102639) in view of Hayashi (2012/0015472).
Regarding claim 12, Perkins teaches annealing the film in a number of environments, but is silent on the precise atmosphere of the cure. Hayashi teaches that in forming a transparent conductive film by solution, it is operable to cure the film in an air environment [0139]. It would have been obvious at the effective date of the invention to cure the film of Perkins in an air environment as the teachings include a cure but do not state what the background is and Hayashi teaches the same step in (hot) air.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yamada (2011/0111215) teaches forming a film comprising ITO and FTO.
Peter (2012/0094075) teaches forming various TCO layers including mixed oxides of indium and tin and FTO [0044].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A MILLER, JR whose number is (571)270-5825 and fax is (571)270-6825. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael Cleveland, can be reached on 571-272-1418. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH A MILLER, JR/ Primary Examiner, Art Unit 1712