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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
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`15/746,581
`
`01/22/2018
`
`Takaiki NOMURA
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`14434.0675USWO
`
`3578
`
`53148
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`759°
`
`07/20/2020
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`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
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`MINNEAPOLIS, MN 55402-1683
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`CONTRERAS' CIELP
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`ART UNIT
`1794
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`07/20/2020
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`PTOMail@hsml.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
`
`Application No.
`15/746,581
`Examiner
`CIEL P Contreras
`
`Applicant(s)
`NOMURA etal.
`Art Unit
`AIA (FITF) Status
`1794
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from 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, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 6/26/20.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) D This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
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`4):] 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`1 and 3—13 is/are pending in the application.
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`5a) Of the above claim(s) 11—13 is/are withdrawn from consideration.
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`
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`E] Claim(ss)
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`is/are allowed.
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`Claim(ss) 1 and 3— 10 is/are rejected.
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`1:] Claim(ss)_ is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`C] Claim(s
`* If any claims have been determined allowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`httpfiwww.”smogovmatentszinit_events[pph[index.'sp or send an inquiry to PPeredhack©g§ptgggm
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`Application Papers
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`10):] The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 1/22/18 is/are: a). accepted or b)[j 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).
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`Priority under 35 U.S.C. § 119
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`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)C] Some**
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`c)[j None of the:
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`1C] Certified copies of the priority documents have been received.
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`2E] Certified copies of the priority documents have been received in Application No.
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`3.. Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) [3 Notice of References Cited (PTO-892)
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`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20200714
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`

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`Application/Control Number: 15/746,581
`Art Unit: 1794
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA 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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`Response to Amendment
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`2.
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`Acknowledgment is made to Applicant’s claim amendments received 26 June 2020. Claims 1
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`and 3-13 are currently pending of which claim 1 is currently amended and claims 11-13 are withdrawn
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`from consideration. Claim 2 has been cancelled.
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`Claim Rejections - 35 USC § 112
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`3.
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`Acknowledgment is made to Applicant’s claim amendments received 26 June 2020. The
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`rejections to the claims presented under 35 USC 112 in the Office Action of 30 March 2020 have been
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`withdrawn.
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`Claim Rejections - 35 USC § 103
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`4.
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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-AIA 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 of rejection 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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`5.
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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:
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`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
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`

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`Application/Control Number: 15/746,581
`Art Unit: 1794
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`Page 3
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`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
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`6.
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`The factual inquiries set forth in Graham v. John Deere C0,, 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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`1. Determining the scope and contents of the 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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`7.
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`This application currently names joint inventors. In considering patentability of the claims the
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`examiner presumes that the subject matter of the various claims was commonly owned as 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 owned as 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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`8.
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`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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`9.
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`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 Zn is 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 TagN5
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`

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`Application/Control Number: 15/746,581
`Art Unit: 1794
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`Page 4
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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 compared to the total
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`number of zinc and gallium atoms in the substitution.
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`10.
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`However, Fukumoto also 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 ensure effective electrical conductivity and light transmittance.
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`11.
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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 conductive layer 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 conductive film”
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`forming at least one layer comprising a ”ZnO semiconductor film” between the ZnO conductive film and
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`the semiconductor film (10) (Paragraph 0109).
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`12.
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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 and 8).
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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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`13.
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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 Fukumoto as applied to claim 5 above, and further in view of US Patent Application
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`Publication No. 2010/0006836 to Koukitu et al. (Koukitu).
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`14.
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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 conductive film 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 ordinary skill 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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`15.
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`Applicant's arguments filed 26 June 2020 have been fully considered but they are not
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`Response to Arguments
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`persuasive.
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`16.
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`Applicant’s argue that Fukumoto does not render obvious the doping rate of Ga as Fukumoto
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`teaches a range of 1 to 25%, wherein the claims recite a much narrower range of 2 to 6%. The
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`Applicants argue that this range is critical in order to achieve improved quantum efficiency as evidenced
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`by Figures 13, 16 and 19.
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`17.
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`However, the Examiner disagrees. First, it is important to note that improved quantum
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`efficiency is not required by the claims, nor is it the motivation for utilizing the range of Fukumoto in the
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`rejection above. Fukumoto providing the motivation to utilize any value in the range of 1 to 25% in
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`order to ensure effective electrical conductivity and light transmittance. Although the claims are
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`interpreted in light of the specification, limitations from the specification are not read into the claims.
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`See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The fact that applicant has
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`recognized another advantage which would flow naturally from following the suggestion of the prior art
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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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`cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte
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`Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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`18.
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`Second, Applicants argue about the criticality of this range, appearing to perhaps argue
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`unexpected results. However, a mere allegation of unexpected results is not enough to overcome the
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`rejections. The Figures 13, 16 and 19, do show some data; however, not many data points and only for
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`specific examples not commensurate in scope with the claims.
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`19.
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`Therefore, the Examiner maintains the rejection in view of Fukumoto as above.
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`Conclusion
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`20.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth
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`in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
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`In the event a first reply is filed within TWO MONTHS of the mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
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`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the mailing date of this final action.
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`21.
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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
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`normally be reached on M-F 9 AM to 4 PM.
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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`

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`Application/Control Number: 15/746,581
`Art Unit: 1794
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`Page 7
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`James Lin can be reached on 571-272-8902. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained
`
`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`through Private PAIR only. For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact
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`the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information system, call 800-786-
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`9199 (IN USA OR CANADA) or 571-272-1000.
`
`/CIEL P Contreras/
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`Primary Examiner, Art Unit 1794
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`