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 .
Status of the Claims
Claims 1-10 and 21 are under examination.
Claims 11, 12, 14-20 are withdrawn from consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 is indefinite because the film “consists of …. 80 68.2 wt% indium” is unclear.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claim(s) 1-7, 9, 21 and are rejected under 35 U.S.C. 103 as being unpatentable over Hochido et al. (JPH04-272612) in view of Mitsui (U.S. Pat. 6,042,752).
INDEPENDENT CLAIM 1:
Regarding claim 1, Hochido et al. teach a method of manufacturing a composite article comprising positioning a substrate and a target consisting of indium oxide, tin oxide, and gallium oxide target material in a chamber and applying sputter power to sputter target material from the target to form a transparent layer. Oxygen is flowed during sputtering. The composition of the transparent layer is from about about 5 wt% to about 20 wt% gallium (Ga), from about 40 wt% to about 80 wt% indium (In), from about 3.5 wt% to about 10 wt% tin (Sn), and from about 10 wt% to about 30 wt% oxygen (O). (See Abstract; Machine Translation Specification Claims.)
From Claim 1 when for example tin oxide is 10 wt%, gallium oxide is 10 wt% and indium oxide is 80 wt% the film has a composition of: In 66.19 wt %, Ga 7.44 wt %, Sn 7.88 wt %, O 18.49 wt%.
From Claim 1 when for example tin oxide is 13 wt%, gallium oxide is 6 wt% and indium oxide is 81 wt% the film has a composition of: In 67.02 wt %, Ga 9.67 wt %, Sn 4.73 wt %, O 18.58 wt%.
The difference between Hochido et al. and claim 1 is that RF power as the sputtering power source is not discussed (Claim 1), the layer being amorphous is not discussed (Claim 1), heating the chamber to a sputtering temperature in a range of 300 degrees C to 600 degrees C is not discussed (Claim 1), flowing a gas comprising a fraction of oxygen in a range of from 1% to 7% into the chamber is not discussed (Claim 1).
Regarding RF power as the sputtering power source (Claim 1), Mitsui teaches that for forming films containing gallium, indium, tin and oxygen that any sputtering method can be used such as DC sputtering or RF sputtering. (Column 6 lines 60-62)
Regarding the layer being amorphous (Claim 1), Hochido et al. teach that the layer is transparent. Transparent by definition is amorphous. (See Hochido et al. discussed above) Furthermore, Mitsui teaches that the layer is amorphous if deposited at 300 degrees C or lower. (Column 7 line 19)
Regarding heating the chamber to a sputtering temperature in a range of 300 degrees C to 600 degrees C (Claim 1), Mitsui teaches heating the chamber via the substrate to a temperature of 300 degrees C or lower. (Column 7 line 19) 300 degrees overlaps Applicant’s claimed range. Overlapping ranges have been held to be prima facie obvious. (See MPEP 2144.05 – I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS - In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range)
Regarding flowing a gas comprising a fraction of oxygen in a range of from 1% to 7% into the chamber (Claim 1), Mitsui teaches utilizing 5-25% oxygen in argon. (Column 6 lines 43-49) 1-7 overlaps Applicant’s claimed range. Overlapping ranges have been held to be prima facie obvious. (See MPEP 2144.05 – I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS - In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range)
DEPENDENT CLAIM 2:
The difference not yet discussed is thermal annealing the composite article.
Regarding claim 2, Hochido et al. teach thermal annealing at 300 degrees for 2 hours in air. (See Machine Translation)
DEPENDENT CLAIM 3:
The difference not yet discussed is thermal annealing at about 300 degrees C for at least 10 minutes.
Regarding claim 3, Hochido et al. teach thermal annealing at 300 degrees for 2 hours in air. (See Machine Translation)
DEPENDENT CLAIM 4:
The difference not yet discussed is wherein the gas comprises at least one of helium, nitrogen, neon, or argon.
Regarding claim 4, Mitsui teaches utilizing argon. (Column 6 lines 43-49)
DEPENDENT CLAIM 5:
The difference not yet discussed is wherein the gas comprise argon.
Regarding claim 4, Mitsui teaches utilizing argon. (Column 5 lines 43-49)
DEPENDENT CLAIM 6:
The difference not yet discussed is wherein the method comprises evacuating gaseous fluid out of the chamber such that an absolute pressure inside the chamber is less than about 25 mTorr during the sputtering.
Regarding claim 6, Mitsui et al. teach pressure of less than about 25 mTorr. (Column 9 line 33)
DEPENDENT CLAIM 7:
The difference not yet discussed is wherein the substrate comprises at least one of silicon, fused silica, glass, a glass ceramic, or a compound semiconductor material.
Regarding claim 7, Hochido et al. teach depositing on glass. (See Example 1)
DEPENDENT CLAIM 9:
The difference not yet discussed is wherein the amorphous layer consists of from 9.2 wt% to 20 wt% gallium (Ga), from 50.9 wt% to about 68.2 wt% indium (In), from 3.5 wt% to 10 wt% tin (Sn), and from 10 wt% to 19.1 wt% oxygen (O).
Regarding claim 9, Hochido et al. teach from Claim 1 when for example tin oxide is 13 wt%, gallium oxide is 6 wt% and indium oxide is 81 wt% the film has a composition of: In 67.02 wt %, Ga 9.67 wt %, Sn 4.73 wt %, O 18.58 wt%.
DEPENDENT CLAIM 21:
The difference not yet discussed is wherein the amorphous layer of target material has refractive index (n) at 1550 nanometers of less than about 1.5.
Regarding claim 21, Since the amorphous layer of target material of Hochido et al. has an identical or substantially identical composition it is believed that the refractive index is the same. (See MPEP 2112.01- Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, 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) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.).
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hochido et al. in view of Mitsui as applied to claims 1-7, 9 and 21 above, and further in view of Yamazaki (U.S. PGPUB. 2014/0042018).
DEPENDENT CLAIM 8:
The difference not yet discussed is wherein the target comprises polycrystalline In2O3-SnO2-Ga2O3.
Yamazaki teach utilizing a target comprising polycrystalline In2O3-SnO2-Ga2O3. (Paragraphs 0013, 0014, 0042-049)
The motivation for utilizing the features of Yamazaki is that it allows for ensuring reliability in films formed. (Paragraph 0007)
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have utilized Yamazaki because it allows for ensuring reliability in films formed.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hochido et al. in view of Mitsui as applied to claims 1-7, 9 and 21 above, and further in view of Oh et al. “Influence of oxygen partial pressure in In-Sn-Ga-O thin-film transistors at a low temperature”, Journal of Alloys and Compounds 805 (2019) 211-217.
The difference not yet discussed is wherein, during the sputtering of ions of target material from the target onto the substrate, a deposition rate of target material onto the substrate ranges from about 0.1 nanometers to about 10 nanometers per minute.
Regarding claim 10, Oh et al. teach depositing at the rate of from about 0.1 nanometers to about 10 nanometers per minute by controlling oxygen amounts in the deposition atmosphere. (See Table 1) The motivation for utilizing the features of Oh et al. is that it allows controlling the electrical characteristics of the film. (See Table 1)
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have utilized the features of Oh et al. because it allows for controlling the electrical characteristics of the film.
Response to Arguments
Applicant's arguments filed September 17, 2025 have been fully considered but they are not persuasive.
In response to the argument that the prior art does not teach a target consisting of an indium oxide, tin oxide, and gallium oxide target material and a film consisting of from about 5 wt% to about 20 wt% gallium (Ga), from about 40 wt% to about 80 wt% indium (In), from about 3.5 wt% to about 10 wt% tin (Sn), and from about 10 wt% to about 30 wt% oxygen (O), it is argued that the newly cited reference to Hochido et al. (JPH04-272612) teach the newly amended claim subject matter of a target consisting of an indium oxide, tin oxide, and gallium oxide target material and a film consisting of from about 5 wt% to about 20 wt% gallium (Ga), from about 40 wt% to about 80 wt% indium (In), from about 3.5 wt% to about 10 wt% tin (Sn), and from about 10 wt% to about 30 wt% oxygen (O).
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 RODNEY GLENN MCDONALD whose telephone number is (571)272-1340. The examiner can normally be reached Hoteling: M-Th every Fri off..
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/RODNEY G MCDONALD/Primary Examiner, Art Unit 1794
RM
October 8, 2025