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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/22/2026 has been entered.
Claim Rejections - 35 USC § 112
Applicants’ amendments to the claims have overcome the previously presented rejections under 35 U.S.C. 112(a) and thus the rejections have been withdrawn.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 11-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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.
In claim 11, the limitation “a powder containing Sn” is not fully supported by the original specification, rather only SnO is supported. The limitation “a powder containing Sn” includes a broader range of powders, such as SnO2 or Sn powders, which are not disclosed in the specification and therefore the specification does not support the entire scope of the claimed invention. If the applicant wishes to avoid claiming “SnO powder”, a claim may recite that Zn is introduced through ZnO powder and Ga is introduced through Ga2O3 powder without reciting SnO powder.
Claims 12 is rejected by virtue of depending on a claim that lacks written description support. Claim 13 is NOT rejected because SnO powder is supported.
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.
Claim(s) 1 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue (JP 2010018457 A – see translation included with IDS filed 11/18/2023) in view of Tao (US 20190177230 A1).
Regarding claim 1, Inoue (JP 2010018457 A) teaches an oxide sintered body comprising Zn, Ga, Sn, and O to be used as a sputtering target, wherein the target has a bulk resistance (volume resistivity) of less than 100 ohm-cm and preferably less than 5 ohm-cm, wherein the relative density of the target is preferably 95% or more and less than 100%, and wherein the target may contain gallium (Ga) in an amount of 0.2 to 0.6 in terms of a Ga/(Zn+Ga+Sn) ratio and tin (Sn) in an amount of 0.1 to 0.4 in terms of a Sn/(Zn+Ga+Sn) ratio as well as Zn in an amount of 0.3-0.7 in terms of a Zn/(Zn+Ga+Sn) ratio (para 0009-0010, 0020-0021, 0024, 0054).
Inoue fails to explicitly teach Ga in an amount of 0.15 or more and 0.25 or less in terms of a Ga/(Zn+Ga+Sn) ratio and Sn in an amount of 0.30 or more and 0.60 or less in terms of a Sn/(Zn+Sn) ratio. However, one would have expected the use of any value within the Inoue range to have yielded similar results. Absent any showing of criticality, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used any values within 0.2 to 0.6 for the ratio of Ga/(Zn+Ga+Sn) and any values within 0.1 and 0.4 for the ratio of Sn/(Zn+Ga+Sn), including values resulting in ratios within the claimed ranges, with a reasonable expectation of success and with predictable results. Please see MPEP 2144.05 (I) for further details. For example, a target having a composition of Zn/(Zn+Ga+Sn) = 0.5, Ga/(Zn+Ga+Sn) = 0.2 (0.15 or more and 0.25 or less), and Sn/(Zn+Ga+Sn) = 0.3 would result in a ratio of Sn/(Zn+Sn) equal to 0.375 (0.30 or more and 0.60 or less) because (Zn+Ga+Sn) is equal to 1 and therefore Zn=0.5 and Sn=0.3 (Sn/(Zn+Sn) = 0.3/(0.5+0.3) = 0.375).
Inoue also teaches the bulk resistance (volume resistivity) is preferably less than 100 ohm-cm (para 0019) but fails to explicitly teach a volume resistivity of 50 ohm-cm or less. However, one would have expected the use of any value within the Inoue range to have yielded similar results. Absent any showing of criticality, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have formed a target having less than 100 ohm-cm volume resistivity, including values within the claimed range, with a reasonable expectation of success and with predictable results. Please see MPEP 2144.05 (I) for further details.
Inoue also teaches the relative density is 95% to 100% (para 0020) but fails to explicitly teach a relative density of 97% or higher. However, one would have expected the use of any value within the Inoue range to have yielded similar results. Absent any showing of criticality, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have formed a target having a relative density of 95% to 100%, including values within the claimed range, with a reasonable expectation of success and with predictable results. Please see MPEP 2144.05 (I) for further details.
Inoue fails to explicitly teach the average crystal grain size in the target is 5 micrometers or less. However, Tao (US 20190177230 A1), in the analogous art of oxide sputtering targets, teaches a sputtering target including Zn, Ga, Sn, and O preferably has an average crystal grain size of 5 micrometers or less and relative density of preferably 97% or more in order to prevent cracking of the target, which can occur due to abnormal discharge, wherein the grain size can be controlled by hot pressing and controlling sintering temperature and duration (para 0004, 0020-0021, 0037-0041, 0076, 0087-0091, 0126, 0131-0134). Inoue teaches increasing density so that abnormal discharge does not occur, where sintering may be at normal pressure or by hot isostatic pressing (para 0020, 0042, 0050). Additionally, Tao teaches that the sintering method may include hot press sintering or pressureless sintering as alternative methods (para 0037-0041, 0127-0146). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the sintering method of Inoue with the sintering method of Tao including controlling sintering temperature and duration of Inoue to control the average crystal grain size of the target to be 5 micrometers or less while achieving a high relative density of above 97% to prevent cracking and abnormal discharge of the target. See MPEP 2143(I)(B).
Regarding claim 11, the combination of Inoue and Tao teaches the sputtering target is formed by weighing and mixing a zinc oxide (ZnO) powder, tin oxide (containing Sn) powder, and gallium oxide (Ga2O3) powder followed by hot press sintering (Inoue para 0015, 0030, 0041-0042, 0054; Tao para 0127-0138).
Alternatively, or in addition, Tao teaches that the gallium powder may be Ga2O3 and the zinc powder may be ZnO (para 0151). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the zinc oxide and gallium oxide powders of Inoue with the ZnO and Ga2O3 powders of Tao because this is a substitution of known elements yielding predictable results. See MPEP 2143(I)(B).
Regarding claim 12, the combination of Inoue and Tao teaches the powder mixture is calcined at a temperature of 500 to 1200 °C before hot pressing (Inoue para 0030, 0038, 0042) but fails to explicitly teach a calcining temperature of 1000 to 1300 °C. However, one would have expected the use of any value within the Inoue range to have yielded similar results. Absent any showing of criticality, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used any temperature from 500 to 1200 °C, including values within the claimed range, with a reasonable expectation of success and with predictable results. Please see MPEP 2144.05 (I) for further details.
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Inoue (JP 2010018457 A – see translation included with IDS filed 11/18/2023) in view of Tao (US 20190177230 A1), as applied to claim 11 above, and further in view of Abe (US 20070215456 A1).
Regarding claim 13, the combination of Inoue and Tao teaches tin oxide powder (Inoue para 0030, 0054) but fails to explicitly teach SnO powder. However, Abe (US 20070215456 A1), in the analogous art of sputtering targets, teaches forming a sputtering target containing gallium oxide, zinc oxide, and tin oxide, where the powders may include Ga2O3 powder, ZnO powder, and SnO powder (para 0019, 0151). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the tin oxide powder of Inoue with the SnO powder of Abe because this is a substitution of known elements yielding predictable results. See MPEP 2143(I)(B).
Response to Arguments
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive.
Applicant argues that the present invention is pre-sintered at 1000 to 1300°C to obtain a composite oxide before press-sintering at 950 to 1100°C to produce a sintered body, whereas Inoue press-forms the mixed powder in a mold and then is sintered at 1200 to 1500°C. Applicant states that the pre-sintering obtains composite oxide phases whereas, in Inoue, pre-sintering is an optional step for the purpose of increasing the density of the sputtering target and is performed at a lower temperature. Additionally, the present invention performs pressure sintering under vacuum or an inert gas atmosphere while Inoue performs atmospheric or oxygen atmosphere sintering under normal pressure and therefore the method of making the sputtering target of the present invention differs as compared to Inoue. This argument is not persuasive because claim 1 is directed to a sputtering target and does not explicitly include limitations that result from the differences in method, such as composite oxides, and the methods do not recite these different method steps, such as sintering atmosphere, sintering temperature, or a particular sintering pressure. It should also be noted that Inoue teaches that the calcining/pre-sintering step forms compound oxides like ZnGa2O4 and Zn2SnO4 and may be performed at a temperature from 500 to 1200°C, which overlaps with the claimed range of 1000 to 1300°C, and the sintering may be performed by hot isostatic pressing, which indicates a higher than normal pressure (see paragraph 0038, 0042).
Applicant argues that while sintering at high temperatures may improve density, it also causes coarsening of the crystallite size and therefore the sintering method of Inoue cannot achieve both the claimed high density and refinement of crystallite size simultaneously. This argument is not persuasive because, though Inoue does not disclose the claimed crystal grain size, Tao teaches reducing the crystal grain size while maintaining high density during hot-press sintering (or pressureless sintering) in order to reduce cracking and abnormal discharge. Therefore, it would have been obvious to one skilled in the art to substitute the sintering method of Inoue with the sintering method of Tao to produce a target with crystal grain size of 5 micrometers or less to prevent cracking and abnormal discharge. Additionally, applicant has not shown any evidence that the coarsening of the crystallite size from the sintering of Inoue would necessarily prevent the target of Inoue from having the claimed density and crystal size simultaneously.
Additionally, applicant points to the densities provided in the examples of Inoue as below the required level of 97%; however, this argument is not persuasive because Inoue teaches the density may be 95% to 100% and the examples and preferred embodiments do not constitute a teaching away from the broader disclosure or non-preferred embodiments (See MPEP 2123).
Conclusion
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/PATRICK S OTT/Examiner, Art Unit 1794