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 28-45 in the reply filed on CVD method is acknowledged. The traversal is on the ground(s) that the claims recite a combination of a product, a process specially adapted for manufacturing the product and a use of said product. This is not found persuasive because the process as claimed is not specially adapted for manufacture as claimed as noted in requirement, that is Thoshiro Maruyama discloses a FTO coated glass using nickel acetylacetonate with oxygen and thus the special technical feature is not present as required to establish as unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
Examiner notes the election of carbonyl compounds recited in claim 32. The examiner has withdrawn the election of species requirement as the carbonyl compounds would have a common structure as those of claims 33-35. These are known oxidizing chemicals for vapor deposition as set forth in the prior art rejection that follows and thus are all determined to be obvious variants of each other.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: “Process for forming a nickel oxide coating”
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 28-29, 31, 36-38, 41-42 is/are rejected under 35 U.S.C. 102(a)(1)as being anticipated by US Patent Application 4329379 by Terneu et al.
Claim 28: Terneu discloses a chemical vapor deposition process for forming a nickel oxide coating over a glass substrate, comprising: providing a glass substrate; forming a gaseous mixture comprised of a nickel-containing compound selected from the group consisting of nickel(II) acetylacetonate and derivatives thereof, and an oxygen-containing precursor selected from the group consisting of a carbonyl compound and molecular oxygen (Example 4); directing the gaseous mixture toward and along the glass substrate; and reacting the gaseous mixture over the glass substrate to form a coating of nickel oxide over the glass substrate (Example 4, column 4-5).
Claim 29: Terneu discloses nickel(II) acetylacetonate as claimed (example 4).
Claim 31: Terneu discloses air, which includes molecular oxygen as claimed (Example 4, see Claim 14, see also column 4, lines 35-50).
Claim 36: Terneu discloses mixture further comprises air with molecular oxygen as claimed (Example 4, see Claim 14, see also column 4, lines 35-50).
Claim 37: Terneu discloses the glass substrate is a glass ribbon in a float glass manufacturing process (Example 4, “ribbon of glass”, Example 1, “ribbon of float glass”). Terneu discloses NiO which reads on the claim as drafted (ratio of 1:1), Example 4.
Claim 38: Terneu discloses providing a coating apparatus and feeding the gaseous mixture through the coating apparatus before forming the nickel oxide coating over the glass substrate (Example 4, Figure and accompanying text, see air with nickel mixture flowing to apparatus before contacting glass) and/or wherein the nickel oxide coating is formed on a deposition surface of the glass substrate which is at essentially atmospheric pressure when the gaseous mixture is reacted to form the nickel oxide coating.
Claim 41: Terneu discloses the glass substrate is at a temperature of between 1000° F. (538° C.) and 1400° F. (760° C.) when the nickel oxide coating is formed thereover (See Example 1, Example 4, temperature of ribbon at entry of first coating station was order of 600C and exit was 580C).
Claim 42: Terneu discloses pyrolytic (column 4,lines 38-40 “It is possible for the metal oxide undercoating to form merely by pyrolysis”) and the process comprises a glass substrate with NiO as the outermost coating (as it leaves station 1, NiO is outermost coating).
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.
Claim(s) 28-31, 36-38, 41-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terneu as applied above and further with US 20170018433 A1 by Pore et al.
While the examiner maintains that the disclosure of Terneu reasonably reads on the claimed nickel (II) acetylacetonate, the examiner cites here Pore, also in the art of NiO vapor deposition and discloses known nickel precursors for vapor deposition include Ni(acac)2, Ni(thd)2 (0153), and therefore modifying Terneu to use known and suitable nickel precursors for vapor deposition of NiO onto a substrate would have been obvious as predictable. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Claim 30: Ni(thd)2 reads on the claimed bis(2,2,6,6-tetramethyl-3,5-heptanedionato) nickel(II).
Claim(s) 32-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terneu alone or with Pore as applied above taken collectively with US Patent Application Publication 20190161400 by Sanderson et al.
Terneu alone or with Pore discloses all that is taught above and discloses Nickel oxide via nickel acetylacetonate and oxidizer over a float glass as specifically discussed above; however, fails to disclose the claimed oxidizing gases. However, Sanderson, also in the art of metal oxide deposition over a float glass using a metal acetylacetonate and oxidizing gas (0029, 0057) and discloses the oxidizing compound can be selected from various gases including molecular oxygen and air (such as those taught by Terneu) as well as carbonyl compounds such as ethyl acetate (0059-0060) and therefore taking the references collectively it would have been obvious to have utilized the known oxidizing compounds as Terneu float glass metal oxide deposition using oxidizer, such as air and oxygen, and metal acetylacetonate and Sanderson discloses float glass metal oxide deposition using oxidizer, such as air and oxygen, and disclose a known substitute or alternative oxidizer includes ethyl acetate for metal oxide deposition float glass. Additionally, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d.
Claim 38: Sanderson discloses the float gas metal oxide deposition at atmospheric pressure (0042) and therefore using such would have been obvious to one of ordinary skill in the art as predictable.
Claims 39-44: Sanderson discloses a metal oxide coating onto float glass and discloses the metal oxide is the outermost layer of a coating stack that consists of glass substrate, silica and tin oxide (see 0036-0041) and therefore taking the references collectively depositing the nickel oxide (a metal oxide) in a coating stack that consists of glass, silica and/or FTO followed by the metal oxide layer (i.e. nickel oxide) would have been obvious a known and suitable stack of layers for deposition onto a float glass substrate.
Claim 45: Sanderson discloses the metal source to be 1-5% of the gas mixture (0060) and thus overlaps the claims as drafted makes obvious such.
Claim(s) 39-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terneu alone or with Pore as applied above and further with Toshiro et al.
Terneu alone or with Pore discloses all that is taught above and disclose the glass substrate, nickel oxide and tin oxide and therefore fails to disclose the nickel oxide on the tin oxide as claimed. However, Maruyama, also in the art of forming a coating on glass substrates discloses that a NiO via nickel acetylacetonate and air as the outermost coating onto a FTO (fluoride doped tin oxide) coated glass substrate (Figure 2 and accompanying text, “NiO film deposited . . . on FTO-coated . ... glass substrate”. ). Therefore, taking the references collectively and all that is known to one of ordinary skill in the art, it would have been obvious to have modified Terneu alone or with Pore to deposit the NiO onto the FTO as suggested by Maruyama, to reap the benefits as specifically outlined by Maruyama, that is to reap the benefits of the NiO coating for glass applications.
Claim(s) 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terneu alone or with Pore as applied above.
Examiner notes the prior art fails to explicitly discloses the amount of Ni precursor and/or oxygen precursor; however, the concentration of these vapor materials in the gas mixture would have been readily recognized as a result effective variable directly affecting the deposited film (too little and no NiO will form and too much of either component will result in improper deposition) and therefore it would have been obvious to have determine the optimum amount of each Ni and O source to deposit a NiO layer. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claim(s) 28-45 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 20190161400 by Sanderson et al. with US Patent Application 20180033984 by Luchinger et al. and Terneu and Pore.
Claims 28-29: Sanderson discloses a metal oxide coating onto float glass and discloses the metal oxide is the outermost layer of a coating stack that consists of glass substrate, silica and/or tin oxide (see 0036-0041). Sanderson discloses the metal oxide, such as zinc oxide, tin oxide, etc. (0021) acts as a buffer layer and depositing the metal oxide buffer layer deposition over a float glass using a metal acetylacetonate and oxidizing gas (0029, 0057). Sanderson discloses the oxidizing compound can be selected from various gases including molecular oxygen and air (such as those taught by as well as carbonyl compounds such as ethyl acetate (0059-0060); however, fails to explicitly disclose Nickel oxide. However, Luchinger, also in the art of electronic devices, including PV devices, discloses buffer layers for such devices include zinc oxide, nickel oxides or doped metal oxides and therefore taking the references collectively depositing the nickel oxide (a metal oxide) as a buffer layer in the process of Sanderson would have been obvious as Sanderson discloses using metal oxide of doped metal oxides buffer layers and Luchinger discloses buffer layers of metal oxides can be those as taught by Sanderson or Nickel oxide (0002). As for the process of deposition, the examiner notes Terneu, also in the art of metal oxide deposition onto float glass substrates, discloses NiO deposition via nickel acetylacetonate and oxidizer as noted above and thus using these known precursor for deposition of NiO onto a float glass would have been obvious to one of ordinary skill in the art to deposit nickel oxide.
While the examiner maintains that the disclosure of Terneu reasonably reads on the claimed nickel (II) acetylacetonate, the examiner cites here Pore, also in the art of NiO vapor deposition and discloses known nickel precursors for vapor deposition include Ni(acac)2, Ni(thd)2 (0153), and therefore using known and suitable nickel precursors for vapor deposition of NiO onto a substrate would have been obvious as predictable. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Claim 30: Ni(thd)2 reads on the claimed bis(2,2,6,6-tetramethyl-3,5-heptanedionato) nickel(II).
Claim 31-36: Sanderson, also in the art of metal oxide deposition over a float glass using a metal acetylacetonate and oxidizing gas (0029, 0057) and discloses the oxidizing compound can be selected from various gases including molecular oxygen and air (such as those taught by Terneu) as well as carbonyl compounds such as ethyl acetate (0059-0060) and therefore taking the references collectively it would have been obvious to have utilized the known oxidizing compounds as Terneu float glass metal oxide deposition using oxidizer, such as air and oxygen, and metal acetylacetonate and Sanderson discloses float glass metal oxide deposition using oxidizer, such as air and oxygen, and disclose a known substitute or alternative oxidizer includes ethyl acetate for metal oxide deposition float glass. Additionally, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d.
Claim 37: Sanderson discloses float glass substrate as claimed. Terneu discloses such as noted above.
Claim 38: Sanderson discloses the float gas metal oxide deposition at atmospheric pressure (0042) and therefore using such would have been obvious to one of ordinary skill in the art as predictable.
Claim 39-41, 43-44: As for the sequence of layers, Sanderson discloses a metal oxide coating onto float glass and discloses the metal oxide is the outermost layer of a coating stack that consists of glass substrate, silica and/or tin oxide (see 0036-0041) followed by a metal oxide buffer layer and therefore taking the references collectively depositing the nickel oxide (a metal oxide) in a coating stack that consists of glass, silica and/or FTO followed by the metal oxide layer (i.e. nickel oxide) would have been obvious a known and suitable stack of layers for deposition onto a float glass substrate.
Claim 42: Sanderson discloses the buffer as the outermost layer (see 0036-0041). Additionally Terneu discloses pyrolytic (column 4,lines 38-40 “It is possible for the metal oxide undercoating to form merely by pyrolysis”).
Claim 45: Sanderson discloses the metal source to be 1-5% of the gas mixture (0060) and thus overlaps the claims as drafted makes obvious such. Examiner notes the prior art fails to explicitly discloses the amount of Ni precursor and/or oxygen precursor; however, the concentration of these vapor materials in the gas mixture would have been readily recognized as a result effective variable directly affecting the deposited film (too little and no NiO will form and too much of either component will result in improper deposition) and therefore it would have been obvious to have determine the optimum amount of each Ni and O source to deposit a NiO layer. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718
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