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 .
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.
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive.
Applicant argues that the claimed grain size is critical, citing paragraphs [0013] and [0036] of the instant specification, which states that the claimed range results in a target body that can absorb UV laser light with high efficiency and reliability. In response, Examiner notes that the cited paragraphs do not provide sufficient evidence to demonstrate criticality of the claimed grain size. Objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP §716.02. Since Applicant has not provided objective evidence commensurate in scope with the claims (e.g., experimental data), Applicant's argument is not found convincing.
Applicant argues that Wu’s disclosure would discourage one of ordinary skill in the art to reduce the grain size below the lower limit of 20 µm, noting that Wu desires high target densities as high as 99.2% and citing Applicant’s specification paragraph [0008] which states that substantially differences in particle size can reduce target density. In response, Examiner notes that 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 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. Examiner agrees that Wu teaches a density of 70-99.2%. However, it is within the scope of the teachings of Wu for the grain size to be smaller than 10 microns, with no requirement that a smaller grain size results in significant differences in particle size.
In response to Applicant's argument that Wu does not recognize grain size as a variable affecting UV laser absorption, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
THIS ACTION IS MADE FINAL. 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 ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at (571)272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734
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