DETAILED ACTION
This action is pursuant to the claims filed on 06/13/2024 Claims 1-8 are pending. A first action on the merits of claims 1-8 is as follows.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/12/2025, 07/02/2025, 12/30/2024, 06/13/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 7 is/are objected to because of the following informalities:
Claim 7 line 1; “a insulating substrate” should be “an insulating substrate”.
Appropriate correction is required.
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.
Claims 7-8 are 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 7 recites the limitation " a transparent electrode disposed on the insulating substrate … the transparent electrode comprising: a conductive layer on an insulating substrate". It is unclear if the second recitation “an insulating substrate” is intended to recite antecedent basis to the first recitation of the insulating substrate or if this term is intended to be “a second insulating substrate”. Review of applicant’s specification does not appear to show any embodiments with two distinct insulating substrates, as such this term will be interpreted to claim antecedent basis to the insulating substrate. Claim 8 inherits this deficiency.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Do Young (KR 20200122447).
Regarding claim 1, Do Young teaches A transparent electrode disposed on an insulating substrate (Fig 1 substrate 110) and electrically connectable to an object in contact with the object (see Fig 1), the transparent electrode comprising: a conductive layer disposed on the insulating substrate, the conductive layer comprising a metal oxide layer having at least one of a metal layer or a conductivity (Fig 1 lower oxide film 121 is metal oxide layer on substrate 110); a transparent electrode layer comprising SnO2 as a main component (Fig 1 upper oxide film 124 comprising SnO2); and a current collector disposed on at least a portion of a side surface of the transparent electrode layer (Fig 1 Ag thin film 123), the current collector being electrically connected to the transparent electrode layer and the conductive layer (Fig 1, Ag thin film 123 is electrically connected to oxide films 121 and 124).
Regarding claims 7-8, Do Young teaches A measuring device comprising a insulating substrate and a transparent electrode disposed on the insulating substrate and electrically connectable to an object in contact with the object (Fig 1 substrate 110 with electrode disposed thereon), the transparent electrode comprising: a conductive layer on an insulating substrate, the conductive layer comprising at least one of a metal layer or a metal oxide layer (Fig 1 lower oxide film 121 is metal oxide layer on substrate 110); a transparent electrode layer comprising SnO2 as a main component (Fig 1 upper oxide film 124 comprising SnO2); and a current collector on at least a portion of a side surface of the transparent electrode layer (Fig 1 Ag thin film 123), the current collector being electrically connected to the transparent electrode layer and the conductive layer (Fig 1, Ag thin film 123 is electrically connected to oxide films 121 and 124); wherein the measuring device is a wearable device (Pg 1 of translation discloses invention is a transparent electrode for a wearable device; device of Fig 1 is capable of being worn).
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.
Claim(s) 2-3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Do Young in view of Shingai (U.S. PGPub No. 2018/0024388).
Regarding claim 2, Do Young teaches wherein, when the conductive layer comprises the metal layer and the metal layer of the conductive layer has a film thickness of more than 5 nm (Fig 1 lower oxide film 121 has thickness of 30 to 50 nm as disclosed on pg 3 of the translation).
Do Young fails to teach a projected area with respect to the insulating substrate when looking down at the metal layer is 30% or less of the area of the insulating substrate.
In related prior art, Shingai teaches a similar transparent electrode on an insulating substrate (Fig 4 electrode 15a on insulating substrate 10) with a similar metal layer (Fig 2 metal oxide layer 12); and a projected area with respect to the insulating substrate when looking down at the metal layer is 30% or less of the area of the insulating substrate (Fig 4, sensor electrodes 15a each include first metal oxide layer 12 and layers disclosed in Fig 2; such that a first metal oxide layer 12 of an individual sensor 15a appears to occupy 30% or less of the area of substrate 10 in a plan view of Fig 4). Do Young/Shingai discloses substantially all the limitations of the claim(s) except an explicit teaching of a 30% or less of the metal layer occupying the insulating substrate in a plan view. It would have been an obvious matter of design choice to one having ordinary skill in the art at before the effective filing date of the claimed invention to have modified Do Young in view of Shingai to incorporate the metal layer occupying 30% or less of the area of the insulating substrate, since applicant has not disclosed that the 30% or less solves any stated problem or is for any particular purpose and it appears that the invention would perform equally as well with any other coverage percentage.
Regarding claim 3, Do Young teaches wherein the transparent electrode layer comprises at least one of In, Ga, Nb, Ta, W, Zn, Sn, Zr, Si, or F (upper oxide film 124 comprises Sn).
Do Young fails to teach the metal layer comprises one of Ag, Al, Cr, Cu, Au, Pt, Ti, Mo, Nb, or Nd.
In related prior art, Shingai teaches a similar transparent electrode wherein a similar metal layer of a conductive layer of a transparent electrode comprises one of Ag, Al, Cr, Cu, Au, Pt, Ti, Mo, Nb, or Nd ([0014] first metal oxide layer 12 comprises Titanium). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the metal layer of the metal oxide layer of Do Young in view of Shingai to incorporate a metal layer with Titanium to arrive at claim 3. Doing so would be a simple substitution of one well-known metal oxide layer (Do Young, lower oxide film 121) for another well-known metal oxide layer (Shingai [0014] first metal oxide layer 12 with Ti) to yield the predictable result of a functional metal oxide layer of a transparent electrode.
Regarding claim 5, Do Young teaches wherein the first metal of the current collector is configured to cover at least a portion of a side surface of the transparent electrode layer and an outermost surface of the conductive layer (Fig 1, metal layer 123 covers portion of a side surface of transparent electrode layer 124 and covers an outermost surface of conductive layer 121).
Do Young fails to teach wherein the current collector comprises a first metal selected from Au, Pt, Ti, Mo, and Nd.
In related prior art, Shingai teaches a similar current collector that comprises a first metal selected from Au, Pt, Ti, Mo, and Nd (Fig 2 [0042], metal layer 16 comprises Nd). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the current collector of Do Young in view of Shingai to incorporate a current collector comprising Nd to arrive at claim 5. Doing so would be a simple substitution of one well-known metal oxide layer (Do Young, Ag film 123) for another well-known metal layer (Shingai [0042] metal layer with Nd) to yield the predictable result of a functional metal layer of a transparent electrode.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Do Young in view of Shingai and in further view of Yoshida (U.S. PGPub No. 2015/0207080).
Regarding claim 4, Do Young teaches the device of claim 1 as stated above.
Do Young fails to teach wherein the metal layer comprises a first metal portion formed of a first metal selected from Au, Pt, Ti, Mo, and Nd, and a second metal portion formed of a second metal selected from Ag, Al, Cr, Cu, and Nb, and wherein the first metal portion is configured to cover the second metal part so that the second metal portion is not exposed to an outside of the transparent electrode.
Shingai teaches a similar metal layer comprising a first metal portion formed of a first metal selected from Au, Pt, Ti, Mo, and Nd ([0014] first metal oxide layer comprising Titanium Oxide and other metals).
In related prior art, Yoshida teaches a similar transparent electrode wherein a similar metal layer comprising a first metal portion formed of a first metal selected from Au, Pt, Ti, Mo, and Nd ([0156] disclosing many multilayer metal layers comprising these materials); and a second metal portion formed of a second metal selected from Ag, Al, Cr, Cu, and Nb, and wherein the first metal portion is configured to cover the second metal part so that the second metal portion is not exposed to an outside of the transparent electrode ([0156] discloses a list of non-limiting multilayer film including a film with Ag central layer sandwhiched between metal oxide layers that would be not exposed to an outside). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the metal layer of Do Young in view of Shingai and Yoshida to incorporate a first metal selected from Au, Pt, Ti, Mo, and Nd and a second metal selected from Ag, Al, Cr, Cu, and Nb with the first metal covering the second metal to arrive at claim 4. Doing so would be obvious to one of ordinary skill in the art as the use of multilayer films is well-known in the art to yield predictable results therein ([0156] equating single and two-layer films). Specifically selecting a first metal portion selected from Au, Pt, Ti, Mo, and Nd and a second metal portion selected from Ag, Al, Cr, Cu, and Nb would have been obvious to one of ordinary skill in the art to try as there is a known finite number of identified solutions for the material selection of a metal layer (i.e., finite number of metal elements), such that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success as Yoshida discloses a variety of non-limiting two layer films comprising the claimed first and second metals ([0156]).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Do Young
Regarding claim 6, Do Young teaches wherein the transparent electrode layer is configured to have a film thickness of 50nm or more and 200nm or less (Fig 1 upper oxide film 124 has thickness of 30 to 50 nm as disclosed on page 4 of the translation). Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the transparent electrode layer of Do Young to use a thickness of 50 nm or more and 200 nm or less as applicant appears to have placed no criticality on the claimed range and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
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/ADAM Z MINCHELLA/Primary Examiner, Art Unit 3794