DETAILED ACTION
This is the second Office Action regarding application number 18/599,293, filed on 03/08/2024, which is a continuation of PCT/JP2023/011028, filed on 03/20/2023, and which claims foreign priority to JP 2022-149608, filed on 09/20/2022.
This action is in response to the Applicant’s Response received 12/09/2025.
Status of Claims
Claims 1-17 are currently pending.
Claim 17 is new.
Claims 7-9 and 16 are withdrawn.
Claims 1-6 and 10 are amended.
Claims 1-6, 10-15, and 17 are examined below.
The Office’s objections to claims have been withdrawn in light of the Applicant’s amendments.
The rejection of claims 1-6 and 10-15 under 35 U.S.C. § 112 has been withdrawn in light of the Applicant’s amendments.
No claim is allowed.
Response to Arguments
The Applicant’s arguments received 12/09/2025 have been carefully considered but they are not found persuasive regarding the prior art rejections. The applicant’s affidavit is sufficiently descriptive to conclude that skilled artisans would be enabled to produce the materials specifically recited in claim 1.
The applicant states that RAPHAEL “may disclose” that cerium is doped at both a Ga (I) and (II) site, however, the examiner does not find any support for this position within the prior art reference. Only new claim 17 recites any limitation restricting the dopant to the Ga (II) site and absent at the Ga (I) site.
Claim Objections
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The examiner understands claim 10’s requirement that the one or more lanthanoid series elements whose amount is 10 [atom %] or more and 40 [atom %] or less of Ga contained in the amorphous gallium oxide are doped at Ga (II) site of the amorphous gallium oxide and the applicant’s arguments to mean that the material of RAPHAEL with 8 at% cerium would not produce the material of claim 10. If the applicant concurs, then this feature is not suggested by the prior art references reviewed.
Claim Rejections - 35 USC § 112
Enablement
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.
Claim 17 is rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Wands Analysis: (Note MPEP 2164.01(a))
(A) Breadth of claims:
The limitations of the claims broadly state an amorphous gallium oxide material including a lanthanoid series element doped at Ga (II) sites but absent at Ga (I) sites.
(B) The nature of the invention:
The invention is a beta-type gallium oxide material doped with at least one lanthanoid series element and having an amorphous crystal structure.
(D) The level of one of ordinary skill:
One of ordinary skill in this art is considered to be a scientist or other highly educated and trained practitioner, skilled in the methods of material design and processes, with knowledge of standard semiconductor devices, and familiar with parameters that affect the formation and performance of such devices.
(E) The level of predictability in the art:
The level of predictability in the art is considered to be low, inasmuch as there are numerous variables known to affect semiconductor material manufacturing and performance.
(F) The amount of direction provided by the Applicant:
Applicant does not provide adequate direction as to how to formulate a material which meets the claim limitations. Specifically, Applicant does not disclose how to produce the recited material of claim 17. The applicant only mentions at paragraph 40 that the temperature of a beta-Ga2O3 material is increased from “300 [K] (room temperature) to 4500 [K], a certain MD [molecular dynamics simulation] steps are repeated, and equilibrating is done by rapid cooling to 300 [K].” The terms “certain MD steps are repeated” is entirely undefined and unknowable. The rates of temperature increase and decrease are also undisclosed, yet are well-known to be critical in the control of final material properties. The applicant does not describe any other aspect of how to produce this material in the real-world, such as any apparatus.
(G) The existence of working examples:
There are no working examples. The applicant mentions only of generalized computer simulations. The applicant submitted a Declaration that does not add any useful information or context related to the production of the specifically claimed material.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
Applicant has not enabled one of ordinary skill in the art at the time of the invention to produce and use the invention. Therefore, an undue level of experimentation would be required for one of ordinary skill in the art at the time of the invention to produce the material of the claimed invention.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RAPHAEL (Investigation of photoluminescence emission from β-Ga2O3: Ce thin films deposited by spray pyrolysis technique).
Regarding claim 1, RAPHAEL teaches an n-type semiconductor layer (samples are reported to have bandgaps of 4.7-5 eV, thus semiconducting) comprising:
amorphous gallium oxide as a main component, wherein a conductive type of the n-type semiconductor layer is n-type (n-type gallium oxide semiconductor), and
one or more lanthanoid series elements whose amount is more than 0 [atom %] and 67 [atom %] or less of Ga contained in the amorphous gallium oxide are doped at Ga (II) site of the amorphous gallium oxide (Fig. 1 showing Ga2O3 thin films with lanthanoid-type element cerium doping up to 8 at%). RAPHAEL states that the “graph shows that the films are mostly amorphous” (pg. 2, right col., first para. of sect. 3),
the amorphous gallium oxide has beta type crystal structure in at least one short- distance order portion of the amorphous gallium oxide (“cerium doped β-Ga2O3 thin films”), and
the one or more lanthanoid series elements are doped at the Ga (II) site at the at least one short-distance order portion of the amorphous gallium oxide (“Ce3+ substitution” which means that the cerium atoms are replacing gallium atoms; “Results and discussion” section states that the films are mostly amorphous, but also include beta-phase, thus the examiner concludes this reads on the claimed limitations).
The examiner asserts as fact that the doped gallium oxide material possesses n-type semiconducting properties.
Regarding claim 2, RAPHAEL teaches the n-type semiconductor layer according to claim 1, wherein the one or more lanthanoid series elements is at least one selected from the group consisting comprise Ce (RAPHAEL teaches cerium dopant).
Regarding claim 4, RAPHAEL teaches the n-type semiconductor layer according to claim 1, wherein 90 [wt%] or more and 100[wt%] or less of the n-type semiconductor layer is the amorphous gallium oxide (no other materials are recited other than the doped gallium oxide, thus it is reasonable to assert that it is 100% of the n-type layer).
Regarding claim 5, RAPHAEL teaches the n-type layer according to claim 1, wherein a total of Ga contained in the amorphous gallium oxide contained in the n-type semiconductor layer and the one or more lanthanoid series elements contained in the amorphous gallium oxide as a dopant is 95 [wt%] or more and 100 [wt%] or less of total elements excluding oxygen contained in the amorphous gallium oxide (cerium and gallium are the only elements other than oxygen, thus it is safe to say that these two elements comprise 100% of the total elements excluding oxygen in the gallium oxide material).
Regarding claim 6, RAPHAEL teaches the n-type layer according to claim 1, wherein the one or more lanthanoid series elements doped at the Ga (II) site of the amorphous gallium oxide comprise Ce (RAPHAEL teaches cerium dopant).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over RAPHAEL (Investigation of photoluminescence emission from β-Ga2O3: Ce thin films deposited by spray pyrolysis technique).
Regarding claim 3, RAPHAEL teaches the n-type semiconductor layer according to claim 1, but does not state expressly that 90 [atom %] or more and 100 [atom %] or less of the one or more lanthanoid series elements are doped at the Ga (II) site of the amorphous gallium oxide. However, the examiner determines that sufficient evidence and context within the prior art supports a finding that the cerium is present in the claimed amounts of the Ga (II) sites because RAPHAEL explains the material is semiconductor, and the applicant admits that only materials having the claimed range would be semiconducting rather than insulating.
Claims 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over RAPHAEL (Investigation of photoluminescence emission from β-Ga2O3:Ce thin films deposited by spray pyrolysis technique) in view of MINAMI (High-Efficiency Cu2O-Based Heterojunction Solar Cells Fabricated Using a Ga2O3 Thin Film as N-Type Layer).
Regarding claims 11-15, RAPHAEL teaches the n-type layer according to claim 1, but does not disclose expressly a solar cell comprising: a p-electrode; a n-electrode; a p-type light-absorbing layer on the p-electrode; and an n-type layer provided between the p-type light-absorbing layer.
MINAMI teaches a solar cell having a CuO p-type light-absorbing layer connected to an n-type GaO layer, with associated electrodes corresponding to the respective p- and n-type layers (thus reading on the “p-electrode” and “n-electrode”).
Skilled artisans would have found it obvious to modify RAPHAEL and add its doped n-type GaO layer to the device of MINAMI because gallium oxide was described by MINAMI as have superior efficiency, and also because RAPHAEL teaches that doping influences the observed band gap of the material, which is of well-known importance in solar cell fabrication.
Conclusion
No claim is allowed.
The 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). The Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 extension fee 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELO TRIVISONNO whose telephone number is (571) 272-5201 or by email at <angelo.trivisonno@uspto.gov>. The examiner can normally be reached on MONDAY-FRIDAY, 9:00a-5:00pm EST. The examiner's supervisor, NIKI BAKHTIARI, can be reached at (571) 272-3433.
/ANGELO TRIVISONNO/
Primary Examiner