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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`15/746,581
`
`01/22/2018
`
`Takaiki NOMURA
`
`14434.0675USWO
`
`3578
`
`HAY
`
`M
`
`TLERS
`
`HAMRE, SCHUMANN, MUELLER & LARSON P.C.
`45 South Seventh Street
`Suite 2700
`MINNEAPOLIS, MN 55402-1683
`
`CONTRERAS, CIEL P
`
`1794
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`03/30/2020
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`PTOMail @hsml.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1.and 3-13 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 11-13 is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s)
`1 and 3-10 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)(] The specification is objected to by the Examiner.
`11)M The drawing(s)filed on 1/22/18 is/are: a) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a)) All
`1... Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.4% Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 1/22/18,3/20/19.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20200321
`
`Application No.
`Applicant(s)
`15/746 ,581
`NOMURAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`CIEL P Contreras
`1794
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on 3/3/20.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)(J This action is FINAL. 2b))This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\(Z Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 15/746,581
`Art Unit: 1794
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Election/Restrictions
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`2.
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`Applicant’s election without traverse of Group I, Claims 1 and 3-10 in the reply filed on 3 March
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`2020 is acknowledged. Applicants did further note that upon allowable subject matter being found
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`rejoinder is requested.
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`3.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`Claim Rejections - 35 USC § 112
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`(a) IN GENERAL.—The specification shall contain a written description of the invention, and
`of the manner and process of making and using it, in suchfull, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to
`makeand use the same,and shall set forth the best mode contemplated by the inventor or joint
`inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AlA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and
`process of making and using it, in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the
`same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
`
`4.
`
`Claims 1 and 3-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph,
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`as failing to comply with the written description requirement. The claim(s) contains subject matter
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`which was not described in the specification in such a way as to reasonably conveyto one skilled in the
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`relevant art that the inventor or a joint inventor, or for pre-AlA the inventor(s), at the time the
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`application was filed, had possession of the claimed invention.
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`

`

`Application/Control Number: 15/746,581
`Art Unit: 1794
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`Page 3
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`5.
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`As to claim 1, the claim recites a photoelectrode comprising “a substrate; a ZnO conductive film
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`whichis provided on the substrate and in which Znis partially substituted by Ga; and a semiconductor
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`film which is provided on an opposite side of the substrate with respect to the ZnO conductivefilm”.
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`Thus reciting a substrate with the ZnO conductivefilm on one side and a semiconductor film on the
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`other side of the substrate; however, this is not supported by the disclosure. All examples and
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`embodimentsgiven in the specification and drawings show the ZnO conductivefilm and the
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`semiconductor film on the same side of the substrate, the semiconductor film provided, rather, on an
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`opposite side of the ZnO conductivefilm with respect to the substrate. For the purposeof prior art
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`Examination it has been interpreted that this feature, as the only embodiment described in the
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`specification and drawings, is the intended interpretation.
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`Claim Rejections - 35 USC § 103
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`6.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102
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`and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
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`basis for the rejection will not be considered a new ground ofrejection if the prior art relied upon, and
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`the rationale supporting the rejection, would be the same under either status.
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`7.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`8.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966),
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`that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are
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`summarized as follows:
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`

`

`Application/Control Number: 15/746,581
`Art Unit: 1794
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`Page 4
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`1. Determining the scope and contents ofthe prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`9.
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`This application currently names joint inventors. In considering patentability of the claims the
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`examiner presumesthat the subject matter of the various claims was commonly ownedas of the
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`effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised
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`of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that
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`was not commonly ownedas of the effective filing date of the later invention in order for the examiner
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`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
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`against the later invention.
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`10.
`
`Claims 1, 3, 5 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent
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`Application Publication No. 2014/0374270 to Minegishi et al. (Minegishi) in view of JP 2006-310252 to
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`Fukumoto et al. (Fukumoto).
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`11.
`
`As to claims 1, 3, 8, 9 and 10, Minegishi teaches a photoelectrode comprises a substrate (50b), a
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`conductive film (20/30) provided on the substrate comprising ZnO, in which Znis partially substituted by
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`Ga, and a semiconductor film (10) provided on an opposite side of the ZnO conductive film with respect
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`to the substrate, the semiconductor film (10) comprises a group 5A nitride or oxynitride, such as Ta3Ns
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`or TaON (Paragraphs 0055, 0056, 0057, 0063, 0064, 0070, 0103, 0104, 0109 and 0139; Figures 1, 2 and
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`8). However, Minegishi fails to specifically teach the ratio of gallium atoms comparedto the total
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`number of zinc and gallium atoms in the substitution.
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`

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`Application/Control Number: 15/746,581
`Art Unit: 1794
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`Page 5
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`12.
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`However, Fukumotoalso discusses electrodes formed of ZnO with gallium substitution and
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`teaches that in order to effectively ensure the ZnO:Ga layer has effective electrical conductivity and light
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`transmittance the ratio of a number of Ga atoms to a total number of Zn atoms and Ga atoms in the film
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`should be 1 to 25 at % (Paragraphs 0001, 0028 and 0029). Therefore, it would have been obvious to
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`one in order skill in the art at the time of invention to form the ZnO layer of Minegishi with a ratio of a
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`number of Ga atoms to a total number of Zn atoms and Ga atoms in the film should be 1 to 25 at %in
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`order to ensureeffective electrical conductivity and light transmittance.
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`13.
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`As to claim 5, the combination of Minegishi and Fukumoto teaches the apparatus of claim 1.
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`Minegishi teaches that the conductivelayer is formed of multiple layers of material deposited together,
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`thus forming additional conductive layers, each for example a conductive layer of a semiconductor
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`comprising ZnO, stacked between the substrate (50b) and the semiconductor film (10), and thus when
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`considering the semiconductor layer closest to the semiconductor to be “the ZnO conductivefilm”
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`forming at least one layer comprising a “ZnO semiconductor film” between the ZnO conductivefilm and
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`the semiconductor film (10) (Paragraph 0109).
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`14.
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`As to claim 7, the combination of Minegishi and Fukumoto teaches the apparatus of claim 1.
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`Minegishi further teaches both that the side external edges of the ZnO conductive film (20/30) are
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`exposed without being covered with the semiconductor film (10) and also that the semiconductor film is
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`formed of aggregate particles, and thus that portions of the ZnO conductive film (20/30) would also be
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`exposed through the voids in the particulate surface of the semiconductor film (10) (Paragraphs 0064 to
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`0066; Figures 2 and8).
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`15.
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`Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of
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`Minegishi and Fukumotoas applied to claim 5 above, and further in view of US Patent Application
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`Publication No. 2010/0006836to Koukitu et al. (Koukitu).
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`

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`Application/Control Number: 15/746,581
`Art Unit: 1794
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`Page 6
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`16.
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`As to claims 4 and 6, the combination of Minegishi and Fukumoto teaches the apparatus of
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`claims 1 and 5. However, Minegishi fails to further teach that the ZnO conductivefilm is epitaxial.
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`However, Koukitu also discusses for formation of ZnO semiconductors and teaches that by forming the
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`layer in an epitaxial fashion defects can be prevented (Paragraph 0022). Therefore, it would have been
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`obvious to one of ordinaryskill in the art at the time of filing to form the ZnO film of Minegishi as an
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`epitaxial film in order to prevent defects as taught by Koukitu.
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`Conclusion
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`17.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to CIEL P Contreras whose telephone number is (571)270-7946. The examiner can
`
`normally be reached on M-F 9 AM to 4 PM.
`
`Examiner interviewsare 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,
`
`James Lin can be reached on 571-272-8902. The fax phone number for the organization wherethis
`
`application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent Application
`
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`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`

`

`Application/Control Number: 15/746,581
`Art Unit: 1794
`
`Page 7
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`USPTO Customer Service Representative or access to the automated information system, call 800-786-
`
`9199 (IN USA OR CANADA)or 571-272-1000.
`
`/CIEL P Contreras/
`Primary Examiner, Art Unit 1794
`
`