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 .
Election/Restrictions
Applicant's election with traverse of Group I: claims 1-6 in the reply filed on 3/6/2026 is acknowledged. The traversal is on the ground(s) that there is no serious burden for the examiner to examine both groups. This is not found persuasive because the two groups fall into two different classifications, as set forth in the Requirement for Restriction/Election mailed 1/6/2026, which necessitates different searches and search strategies for each individual invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/6/2026.
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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (CN 110562936), hereinafter “Wu,” wherein an English machine translation is used and cited herein.
Regarding claim 1, Wu teaches a target material for preparing a scandium aluminum nitride film, the target material (i.e., target body) including Sc, Al, and N (Abstract, [0002], [0012]). Wu further discloses that its target material (i.e., target body) has a maximum grain size of 20-200 µm, wherein the grain size of the target material is less than or equal to the maximum value (e.g., ≤ 20µm) (Abstract, [0010]), which overlaps with the instantly claimed range of smaller than 10 microns. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05.
Note that the limitation “for forming a scandium aluminum nitride film in a pulsed laser deposition process” is an intended use limitation.“If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” See MPEP §2111.02 (II). Wu teaches a target material for preparing a scandium aluminum nitride film, the target composed of the same chemical elements and having an overlapping grain size, and thus, the target material of Wu is considered capable of the same intended use as claimed.
Regarding claims 2 and 3, Wu teaches wherein the target material has a relative density of 70.0-99.2% (Abstract, [0008]), which overlaps with the ranges recited. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05.
As to claims 4 and 5, Wu teaches wherein the target material comprises 2-50 at% Sc (Abstract, [0007]), which overlaps with the instantly claimed Sc content ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05.
With respect to claim 6, Wu discloses that its target material (i.e., target body) has a maximum grain size of 20-200 µm, wherein the grain size of the target material is less than or equal to the maximum value (e.g., ≤ 20µm) (Abstract, [0010]), which overlaps with the instantly claimed range of smaller than 1 micron. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734