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 .
DETAILED ACTION
Claims 39-58 are pending in this application, which is a 371 of PCT/GB2023/051165.
Election/Restrictions
Applicant’s election of claims 39-57 in the reply filed on 05/15/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 58 is withdrawn from consideration as being directed to a nonelected invention.
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 47-48, 54, 56 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.
In claim 47 line 2-3, the phrase “a thickness in a range … about 1625 angstroms” is deemed confusing as to which range is required. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The same issue applies to claims 48, 54, 56.
Claim Rejections - 35 USC § 102-103
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)(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.
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 39-40, 42-43, 45, 48, 57 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gordon (4,146,657).
Gordon teaches a method of depositing a stannic oxide (title) on a glass substrate by chemical vapor deposition (col.5 lines 4-45) where an organo-tin vapor such as tetramethyltin vapor and oxygen are used as a gas mixture (col.4 lines 1-26). In one embodiment, sulfur chloride pentafluoride is used as an effective fluorine donor gas (col.6 lines 15-19). It is specifically noted that glass substrate and silicon substrates are utilized (Examples 2-3) and that the claimed invention is directed to tin oxide coated glass (col.2 lines 1-35), which anticipates the claim. Regardless, to utilize a glass substrate to form the stannic oxide would have been obvious given the glass substrates are specifically taught (Example 3).
Regarding claim 40, Gordon teaches tetramethyl tin (col.4 lines 5-8).
Regarding claim 42, Gordon teaches less than 400oC (col.5 lines 10-12).
Regarding claim 43, Gordon teaches soda lime glass (col.1 lines 38-41).
Regarding claim 45, Gordon teaches rotating the substrate (col.4 lines 44-57).
Regarding claim 48, Gordon teaches .2 microns (col.6 lines 42-51), which is within the claimed range.
In independent claim 57, the applicant requires an accelerant. Gordon teaches a sulfur compound (col.6 lines 15-19), which inherently acts as an accelerant.
Claims 44, 46-47, 49, 53, 55-56 are rejected under 35 U.S.C. 103 as being unpatentable over Gordon (4,146,657). The reference fails to teach the appropriate flow rate for the claimed gas.
It is noted that Gordon teaches a flow rate of about 400 cc/min for the gas stream (Example 1). To utilize the flow rate for the sulfur containing compound would have been obvious in the absence of a showing of unexpected results.
Regarding claim 46, Gordon teaches a first silica coating in an early method (col.1 lines 28-46).
Regarding claim 47, the applicant requires a specific thickness. Gordon teaches .2 microns (col.6 lines 42-51), which is similar to the claimed thickness. To utilize the claimed thickness would have been obvious in the absence of a showing of criticality.
Regarding claim 49, Gordon teaches 100 ohms per square (col.8 lines 65-68), which is similar to the claimed resistance. To utilize the claimed resistance would have been obvious in the absence of a showing of criticality.
Regarding claim 53, Gordon teaches a fluorine (col.3 lines 5-37).
Regarding claim 55, Gordon teaches 15 ohms per square (col.2 lines 26-35).
Regarding claim 56, the applicant requires a specific percentage. The references teach the appropriate gases. To vary the percentage would have been obvious in the absence of a showing of unexpected results.
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Gordon (4,146,657) in view of Kazuhiko (JP 2011151291) (see English Translation). Gordon fails to teach dimethyl sulfoxide.
Kazuhiko teaches a method of forming a transparent conductive film (title) in which tin oxide is formed on a glass substrate by plasma CVD (p.16 paragraph 4) using dimethyl sulfoxide (p.5 paragraph 3). It would have been obvious to use diemthyl sulfoxide in Gordon with the expectation of success because Kazuhiko teaches of using same to form tin oxide.
Claim 50 is rejected under 35 U.S.C. 103 as being unpatentable over Gordon (4,146,657) in view of Varanasi et al. (WO 2016/132131). Gordon fails to teach a second oxygen containing molecule.
Varanasi teaches a CVD process for depositing an iron doped tin oxide coating (title) on a glass substrate using a gaseous mixture of a tin containing compound, water, oxygen, and an organic iron containing compound (abstract). To utilize water and oxygen in Gordon would have been obvious with the expectation of success because Varanasi teaches of using oxygen and water to form tin oxide.
Regarding claim 56,
Claims 51-52, 54 are rejected under 35 U.S.C. 103 as being unpatentable over Gordon (4,146,657) in view of Varanasi et al. (WO 2016/132131) and further in view of Kazuhiko (JP 2011151291) (see English Translation). The combination of Gordon/Varanasi fails to teach dimethyl sulfoxide.
Kazuhiko teaches a method of forming a transparent conductive film (title) in which tin oxide is formed on a glass substrate by plasma CVD (p.16 paragraph 4) using dimethyl sulfoxide (p.5 paragraph 3). It would have been obvious to use diemthyl sulfoxide in the combination with the expectation of success because Kazuhiko teaches of using same to form tin oxide.
Regarding claim 52, Varanasi teaches water and oxygen (abstract), Gordon teaches dimethyl tin dichloride (col.4 lines 5-22), and Kazuhiko teaches dimethyl sulfoxide (p.5 paragraph 3).
Regarding claim 54, Varanasi teaches water and oxygen (abstract), Gordon teaches dimethyl tin dichloride (col.4 lines 5-22), and Kazuhiko teaches dimethyl sulfoxide (p.5 paragraph 3). With respect to the claimed thickness, Gordon teaches .2 microns (col.6 lines 42-51), which is similar to the claimed thickness. To utilize the claimed thickness would have been obvious in the absence of a showing of criticality.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRET CHEN whose telephone number is (571)272-1417. The examiner can normally be reached M-F 8:30-8:30 MT.
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, Gordon Baldwin can be reached at (571) 272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRET P CHEN/Primary Examiner, Art Unit 1718 06/12/2026
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