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 of Group II, claims 2 and 17-18, in the reply filed on 22 April 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)).
Claims 1 and 3-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 22 April 2026.
Specification
The disclosure is objected to because of the following informalities:
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Table 1, page 13, of the specification as originally filed, shows an ATO film having a Hall mobility (µH) of 25 cm2V-1s-1 for film described by reference iv (Weidner et al., Comparative study of sputter-deposited SnO2 films doped with antimony or tantalum,” Phys. Status Solidi B 253, No. 5, 923–928 (2016)). Reference iv does not describe such an ATO film. The closest description in reference iv appears to have a mobility of 10.3 cm2V-1s-1:
Appropriate correction is required.
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claims 2 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Weidner et al. (Comparative study of sputter-deposited SnO2 films doped with antimony or tantalum,” Phys. Status Solidi B 253, No. 5, 923–928 (2016))(Weidner).1
Weidner discloses various tin oxide thin films that have a resistivity of 1 x 10-3 to 11 x 10-3 Ω·cm and/or a mobility of about 27.5 cm2V-1s-1 (see table 1 of Weidener, which has been captured, edited to remove non-anticipatory coatings, and annotated below):
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In Table 1 of Weidner, ITO is indium doped tin oxide or In:SnO2; TTO is tantalum doped
tin oxide or Ta:SnO2; FTO is fluorine doped tin oxide, or F:SnO2; ATO is antimony doped tin oxide or Sb:SnO2; and TATO is tantalum and antimony doped tin oxide or (Ta,Sb):SnO2.
ITO, TTO, and TATO include elements (In or Ta) that are not present in the claim 2 film description of “SnO2, Sb:SnO2, F:SnO2, or (Sb,F):SnO2.” However, the film is described as “comprising” these oxides. “Comprises” is considered an open transition and allows for other elements such as indium or tantalum. See MPEP 2111.03 I.
The lower limit of the resistivity in claim 2 is reported to a single significant figure, i.e., 1 x 10-3 Ω·cm. Table 1 recites resistivities of 5.4 x 10-4 Ω·cm; 9.1 x 10-4 Ω·cm; and 9.5 x 10-4 Ω·cm; which are reported to two significant figures. These resistivities are 1 x 10-3 when considering a single significant (as employed in the claim 2 lower limit).
The mobilities circled in table 2 above are considered to be “about 27.5 cm2V-1s-1” in view of the latitude provided a number by the word ‘about’ preceding the number as recited in claim 2.
Weidner teaches tin oxide films finds application in devices such as electrodes, solid state gas sensors, oxidation catalysts and low emissivity glass. See the first sentence of the introduction.
Claims 2 and 17-18 are a product by process claim because the claim defines the product in terms of the method by which the product is made. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps do not appear to imply any structure not already recited as express product limitations in claim 2.
“Once a product appearing substantially identical is found and a prior art rejection is made, the burden shifts to applicant to show an [sic] nonobvious difference.” See MPEP 2113.
Claims 2 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Niume et al. (US 6,777,477 B1)(Niume).2
Examples 1, 2, 6 and 7 of Niume are Sb:SnO2 films having a resistance between 1 x 10-3 to 11 x 10-3 Ω·cm. See col’s 8-10 and Table 1. The films are employed in devices such as “electromagnetic shields, infrared-ray-reflectors, solar cells, liquid crystal displays (LCDs), plasma display panels (PDPs), electrodes of electroluminescent devices, and freezer showcases, or for producing anti-fogging electric heater glass panels employed in aircraft carriers.” See col. 1, lines 15-22.
Claims 2 and 17-18 are a product by process claim because the claim defines the product in terms of the method by which the product is made. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps do not appear to imply any structure not already recited as express product limitations in claim 2.
“Once a product appearing substantially identical is found and a prior art rejection is made, the burden shifts to applicant to show an [sic] nonobvious difference.” See MPEP 2113.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chatterjec et al. (US 2010/0129533 A1) teaches a SnO2 based film having a resistivity of 2x10-3 Ω·cm. See paragraph [0048].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Sample whose telephone number is (571)272-1376. The examiner can normally be reached Monday to Friday 7AM to 3:30 PM.
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, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David Sample/Primary Examiner, Art Unit 1784
1 Rejections in the alternative under 35 U.S.C 102 and 103 have been approved by the courts in the context of product-by-process claims. See MPEP 2113 III.
2 Rejections in the alternative under 35 U.S.C 102 and 103 have been approved by the courts in the context of product-by-process claims. See MPEP 2113 III.
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