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
Claims 25-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to methods, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 14, 2025.
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.
1. Claim(s) 16-17, 21-24 is/are rejected under 35 U.S.C. 103 as obvious over Polcik (USPub2016217984) in view of Delrue (USPub20110100809) and/or Giangaspro (WO2020099438, rejection using corresponding English document US20210395878)
Regarding claim 16 and 21: Polcik teaches a target comprising a target material layer (abstract, entire document) mainly comprising C (Group 14 element)- doped Li3PO4 (x=3, y=4) (0014-0018, 0053, Examples).
The C represents 3-20at% of the target material (0053, Examples) such as 5at% and even 10at% (see Examples), wherein the rest (i.e. 80-97at%, 95at% and even 90at%) can be that of the lithium phosphate (again see Examples). When converting the at% to wt%, the C will be at contents falling within the range of claim 1 and the Li3PO4 will be at contents falling within the range of claim 21.
Note that the limitation that the M being selected for providing electrical conductivity to the target material layer such that the electrical resistivity of the layer is at most 1000 Ω.cm at room temperature is intended use and it has been held by the courts that as long as the prior art is capable of such use, the limitation is met. In the instant case, given that Polcik’s material meets that claimed wherein Polcik’s C meets that of Applicants’ claimed M, is present in an amount as claimed, and is combined with Li3PO4 in the same manner as that claimed, one skilled in the art would conclude the C to be providing the same capabilities of providing electrical conductivity to the target material layer such that the electrical resistivity of the layer is at most 1000 Ω.cm at room temperature to be present and result (MPEP 2112).
While Polcik’s target material layer is taught as a thin layer (see Example 6), Polcik does not explicitly discuss it having a lamellar structure consisting of microscopic splats of material. However, Polcik does not exclude such a structure and instead, is only generally teaching an oxide conductive target material for forming a conductive layer via sputtering.
As Delrue and Giangaspro, who each similarly teach oxide conductive target material for forming a conductive layer via sputtering, not only suggest it being desirable in the art to form target material layers having a lamellar structure consisting of microscopic splats of material (see Figures in Delrue and 0014, 0061-0065) but that such a structure improves sputtering of such particles (see 0063 for instance in Giangaspro), it would have been obvious to one having ordinary skill at the time of invention to modify Polcik to include their layer having a lamellar structure consisting of microscopic splats of material for improved sputtering.
The Examiner notes for the record that while it is acknowledged that the oxide targets in Delrue and Giangaspro may differ in composition to that of Polcik, as each of the references are still from the field of endeavor of conductive oxide targets one skilled in the art would have reasonably expected that the layer of Polcik could have a lamellar structure consisting of microscopic splats of material for improved sputtering. See, e.g., KSR Int’l Co. v. Teleflex, Inc., 550 US 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”); In re Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) (express suggestion to interchange methods which achieve the same or similar results is not necessary to establish obviousness); see also In re Kahn, 441 F. 3d 977, 985-88 (Fed. Cir. 2006); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under 103, all that is required is a reasonable expectation of success.”; In re Keller, 642 F. 2d 413, 425 (CCPA 1981) (“The test for obviousness is what the combined teachings of the reference would have suggested to those of ordinary skill in the art.”); In re Sovish 769 F. 2d 738, 743 (Fed. Cir 1985) (skill is presumed on the part of one of ordinary skill in the art).
Additionally note that although the proposed combinations may or may not require some modification due to differing oxide composition, what matters in the context of obviousness is “whether a person of ordinary skill in the art, having all the teachings of the references before him, is able to produce the structure defined by the claim. “Orthopedic Equip. Co., Inv. V. U.S. 702 F. 2d 1005, 1013 (Fed. Cir. 1983).
As there is nothing in any of the references to indicate that the modification cannot or should not be done, the combination and rejection is proper.
Regarding claim 17: The C represents 3-20at% of the target material (0053, Examples) such as 5at% and even 10at% (see Examples), wherein the rest (i.e. 80-97at%, 95at% and even 90at%) can be that of the lithium phosphate (again see Examples). When converting the at% to wt%, the C will be at contents overlapping that claimed (MPEP 2144.05).
Regarding claim 22: The target can be disk shaped (i.e. cylindrical) (see Example 2).
Regarding claim 23: Polcik teaches the desire for first regions of C and second regions of their Li3O4 (see Figure 1).
Regarding claim 24: Given that Polcik does not disclose porosity, one skilled in the art can reasonably conclude no porosity (0%).
Alternatively, as Giangaspro, who each similarly teaches oxide conductive target material for forming a conductive layer via sputtering, suggest it being desirable in the art to form target material layers with a porosity below 20% to reduce thermal stress during deposition (0064), it would have been obvious to one having ordinary skill at the time of invention to modify Polcik to a porosity below 20% to reduce thermal stress during deposition.
2. Claim(s) 16-22 and 24 is/are rejected under 35 U.S.C. 103 as obvious over Gittleman (USPub20170073805) in view of Delrue (USPub20110100809) and/or Giangaspro (WO2020099438, rejection using corresponding English document US20210395878)
Regarding claim 16-20 and 21: Gittleman teaches a target comprising a target material layer (abstract, entire document) which can mainly comprise Al metal (Group 13 element)- doped Li3PO4 (x=3, y=4) (0030).
The Al represents up to 10wt% of the target material (0030) wherein the rest (i.e. at least 90wt%) can be that of the lithium phosphate (again see 0030). Thes ranges meet that of claims 16 and 21 while overlapping that of claim 17 (MPEP 2144.05).
Note that the limitation that the M being selected for providing electrical conductivity to the target material layer such that the electrical resistivity of the layer is at most 1000 Ω.cm at room temperature is intended use and it has been held by the courts that as long as the prior art is capable of such use, the limitation is met. In the instant case, given that Gittleman’s material meets that claimed wherein Gittleman’s C meets that of Applicants’ claimed M, is present in an amount as claimed, and is combined with Li3PO4 in the same manner as that claimed, one skilled in the art would conclude the C to be providing the same capabilities of providing electrical conductivity to the target material layer such that the electrical resistivity of the layer is at most 1000 Ω.cm at room temperature to be present and result (MPEP 2112).
While Gittleman does not explicitly discuss their layer having a lamellar structure consisting of microscopic splats of material, Gittleman does not exclude such a structure and instead, is only generally teaching an oxide conductive target material for forming a conductive layer via sputtering.
As Delrue and Giangaspro, who each similarly teach oxide conductive target material for forming a conductive layer via sputtering, not only suggest it being desirable in the art to form target material layers having a lamellar structure consisting of microscopic splats of material (see Figures in Delrue and 0014, 0061-0065) but that such a structure improves sputtering of such particles (see 0063 for instance in Giangaspro), it would have been obvious to one having ordinary skill at the time of invention to modify Gittleman to include their layer having a lamellar structure consisting of microscopic splats of material for improved sputtering.
The Examiner notes for the record that while it is acknowledged that the oxide targets in Delrue and Giangaspro may differ in composition to that of Gittleman, as each of the references are still from the field of endeavor of conductive oxide targets one skilled in the art would have reasonably expected that the layer of Gittleman could be made to have a lamellar structure consisting of microscopic splats of material for improved sputtering. See, e.g., KSR Int’l Co. v. Teleflex, Inc., 550 US 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”); In re Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) (express suggestion to interchange methods which achieve the same or similar results is not necessary to establish obviousness); see also In re Kahn, 441 F. 3d 977, 985-88 (Fed. Cir. 2006); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under 103, all that is required is a reasonable expectation of success.”; In re Keller, 642 F. 2d 413, 425 (CCPA 1981) (“The test for obviousness is what the combined teachings of the reference would have suggested to those of ordinary skill in the art.”); In re Sovish 769 F. 2d 738, 743 (Fed. Cir 1985) (skill is presumed on the part of one of ordinary skill in the art).
Additionally note that although the proposed combinations may or may not require some modification due to differing oxide composition, what matters in the context of obviousness is “whether a person of ordinary skill in the art, having all the teachings of the references before him, is able to produce the structure defined by the claim. “Orthopedic Equip. Co., Inv. V. U.S. 702 F. 2d 1005, 1013 (Fed. Cir. 1983).
As there is nothing in any of the references to indicate that the modification cannot or should not be done, the combination and rejection is proper.
Regarding claim 22: Note that changes in shape has been held by the courts to be a matter of design choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant (MPEP 2144.04, IV. B). In the instant case, it would have been obvious to one having ordinary skill at the time of invention to choose any shape desired.
Alternatively, Gittleman does not exclude such a shape and instead, is only generally teaching an oxide conductive target material for forming a conductive layer via sputtering.
As Giangaspro, who each similarly teach oxide conductive target material for forming a conductive layer via sputtering, suggest that conductive targest can be made to be a variety of shapes including that of cylindrical (0065), it would have been obvious to one having ordinary skill at the time of invention to modify Gittleman to include their target being cylindrical as desired.
Regarding claim 24: Given that Gittleman does not disclose porosity, one skilled in the art can reasonably conclude no porosity (0%).
Alternatively, as Giangaspro, who each similarly teaches oxide conductive target material for forming a conductive layer via sputtering, suggest it being desirable in the art to form target material layers with a porosity below 20% to reduce thermal stress during deposition (0064), it would have been obvious to one having ordinary skill at the time of invention to modify Gittleman to a porosity below 20% to reduce thermal stress during deposition.
3. Claim(s) 23 is/are rejected under 35 U.S.C. 103 as obvious over Gittleman (USPub20170073805) and Delrue (USPub20110100809) and/or Giangaspro (WO2020099438, rejection using corresponding English document US20210395878) as applied to claim 16 in further view of Polcik (USPub20160217984).
Regarding claim 23: While Gittleman does not explicitly disclose first and second regions as claimed, Gittleman does not exclude this limitation and instead, is only generally teaching a doped Li3O4 conductive target material for forming a conductive layer via sputtering.
As Polcik, who each similarly teaches doped Li3O4 conductive target material for forming a conductive layer via sputtering, suggest it being desirable in the art to form target material layers with two phase regions, one being the dopant and one being the Li3O4 (see 0038-0043, Fig 1),it would have been obvious to one having ordinary skill at the time of invention to modify Gittleman to form target material layers with two phase regions, one being their dopant and one being the Li3O4 as desired.
The Examiner notes for the record that while it is acknowledged that the dopant used in the target in Polcik may differ from that of Gittleman, as each of the references are still from the field of endeavor of conductive doped Li3O4 oxide targets one skilled in the art would have reasonably expected that the layer of Gittleman could be made to have two phase regions, one being dopant and one being Li3O4. See, e.g., KSR Int’l Co. v. Teleflex, Inc., 550 US 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”); In re Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) (express suggestion to interchange methods which achieve the same or similar results is not necessary to establish obviousness); see also In re Kahn, 441 F. 3d 977, 985-88 (Fed. Cir. 2006); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under 103, all that is required is a reasonable expectation of success.”; In re Keller, 642 F. 2d 413, 425 (CCPA 1981) (“The test for obviousness is what the combined teachings of the reference would have suggested to those of ordinary skill in the art.”); In re Sovish 769 F. 2d 738, 743 (Fed. Cir 1985) (skill is presumed on the part of one of ordinary skill in the art).
Additionally note that although the proposed combinations may or may not require some modification due to differing oxide composition, what matters in the context of obviousness is “whether a person of ordinary skill in the art, having all the teachings of the references before him, is able to produce the structure defined by the claim. “Orthopedic Equip. Co., Inv. V. U.S. 702 F. 2d 1005, 1013 (Fed. Cir. 1983).
As there is nothing in either reference to indicate that the modification cannot or should not be done, the combination and rejection is proper.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/ Primary Examiner, Art Unit 1784