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
This action is responsive to applicant’s amendment filed 8/28/2025.
Claims 1, 2, 5-17 are pending. Claims 6-15 are withdrawn from further consideration as being drawn to nonelected Groups.
The previous rejection of claims 1-4 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wu et al (Applied Physics A,2020, 126, 98) is maintained in view of applicant’s amendment.
The previous rejection of claims 1-5 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nakayama et al (US2019/0077676) is withdrawn in view of applicant’s amendment.
Claim Rejections - 35 USC § 102/103
Claims 1, 2, and 16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wu et al (Applied Physics A,2020, 126, 98).
Regarding claims 1, 2, and 16, Wu et al discloses a transparent conductive film comprising a hexagonal cesium tungsten bronze Cs0.32WO3. Wu discloses that a XRD analysis result of the film shows the film has a pure hexagonal phase, which appears when the heat treatment temperature is increased to 450 °C and 500 °C (Fig. 5d, e, and discussions on pages4-5), and therefore indicates free of shift to an orthorhombic crystal, a trigonal crystal, and a pyrochlore phase and free of extra peaks attributable to an orthorhombic crystal, a trigonal crystal, and a pyrochlore phase at angles smaller than and angles larger than angles corresponding to peaks of diffraction from (10-12)y and (20-20)n of the hexagonal crystal. Wu is silent with regard to the lattice constant of a c-axis of the hexagonal crystal of the cesium tungsten bronze, the specific resistance and reflectance of near-infrared rays of 780 nm or longer and 2,500nm or shorter of the transparent conductive film. However, the cesium tungsten bronze of Wu has the claimed composition and a pure hexagonal phase, there is a reasonable basis for one skilled in the art to reasonably expect that the lattice constant of a c-axis of the hexagonal crystal of Wu’s cesium tungsten bronze, the specific resistance and reflectance of near-infrared rays of 780 nm or longer and 2,500nm or shorter of the transparent conductive film would be the same as claimed.
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims.
Claim Rejections - 35 USC § 103
Claims 1, 2, 5, 16 and 17 are rejected under 35 U.S.C. 103 as obvious over Takeda et al (US2007/187653).
Regarding claims 1, 2, 5, 16, and 17, Takeda discloses a transparent conductive film comprising a hexagonal composite tungsten bronze, wherein the composite tungsten bronze is represented by general formula MxWyOz, the M is one or more element selected from alkali metals Cs and Rb and other element including Tl, In, Li, Mg, Ca, Sr, Ba, Al, and Ga and wherein W is tungsten, O is oxygen and 0.20≤x/y≤0.37 and 2.2≤z/y≤0.30 (para 0060-62). Takeda discloses the surface resistance of the film is 1.0×1010 Ω/□ or less (para 0057) and thickness of transparent conductive film is 1 nm or more and 5000 nm or less (para 0085). Takeda is silent with regard to a XRD of the composite tungsten bronze, the lattice constant of a c-axis of the hexagonal crystal of the cesium tungsten bronze, the specific resistance and reflectance of near-infrared rays of 780 nm or longer and 2,500nm or shorter of the transparent conductive film. However, according to the present specification, when the lattice constant of the alkali tungsten bronze is in a specified range, e.g. 7.64 Å or less on the c-axis, it is more secure that the alkali tungsten bronze be a hexagonal crystal, which means that it is free of shift to an orthorhombic crystal, a trigonal crystal, and a pyrochlore phase. Therefore, a person of ordinary skill in the art would reasonably expect that a XRD of Takeda’s hexagonal composite tungsten bronze would also show free of shift to an orthorhombic crystal, a trigonal crystal, and a pyrochlore phase and free of extra peaks attributable to an orthorhombic crystal, a trigonal crystal, and a pyrochlore phase at angles smaller than and angles larger than angles corresponding to peaks of diffraction from (10-12)y and (20-20)n of the hexagonal crystal. In addition, the transparent conductive film of Nakayama has the claimed composition and therefore is a reasonable basis for one skilled in the art to reasonably expect that the XRD of the tungsten bronze, and reflectance of near-infrared rays of Nakayama’s film would be the same as claimed.
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims. In addition, the claims are obvious over the teachings of the reference because overlapping ranges would have been obvious. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and MPEP 2144.05, I.
Claim 17 is rejected under 35 U.S.C. 103 as obvious over Wu et al (Applied Physics A,2020, 126, 98).
Wu discloses a transparent conductive film as described above and is incorporated herein by reference. Wu does not disclose the film thickness. However, it is known in the art that the electrical resistivity of a thin film will become smaller (conductivity will become larger) as the thickness of that film increases in size. Therefore, it would have been obvious to one of ordinary skill in the art before the filling date of the invention to modify the thickness of Wu’s transparent conductive film for its intended purpose, with a reasonable expectation of success for infrared shielding performance.
Response to Arguments
Applicant's arguments filed 8/28/2025 have been fully considered but they are not persuasive.
Regarding Wu et al (Applied Physics A,2020, 126, 98) (“Wu”), applicant argues that the film formation method disclosed in Wu is different from that of the present application. The transparent conductive film of the present invention formed by a sputtering method, while Wu’s is deposited via electron beam evaporation. Applicant concludes that due to the difference in the film formation methods between Wu and the present application, one skilled in the art would not expect that, even when the cesium tungsten bronze of Wu has the similar composition to claim 1 and a pure hexagonal phase, the lattice constant of a c-axis of the hexagonal crystal of Wu's cesium tungsten bronze would be the same as amended claim 1. The examiner respectfully disagrees with applicant’s argument. The law held that the patentability of a product does not depend on its method of production. If the product in the claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. The law also held that where the claimed and prior art products are identical or substantially identical in structure or composition, 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2112.01 and 2113. The cesium tungsten bronze film of Wu has the claimed composition and a pure hexagonal phase, there is a reasonable basis for one skilled in the art to reasonably expect that the lattice constant of a c-axis of the hexagonal crystal of Wu’s cesium tungsten bronze and reflectance of near-infrared rays of 780 nm or longer and 2,500nm or shorter of the transparent conductive film would be the same as claimed. The examiner does not consider applicant's argument persuasive with respect to the difference in the film formation methods between Wu and the present application since different properties of the instant invention should be demonstrated with factual evidence data comparing the instant invention with the closest prior art of record. Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984), or otherwise presented during prosecution. See, e.g., MPEP §§ 714 to 716 et seq. However, arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
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 HAIDUNG D NGUYEN whose telephone number is (571)270-5455. The examiner can normally be reached M-Th: 10a-3p.
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/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
9/18/2025