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 .
DETAILED ACTION
Claim Objections
Claim(s) is/are objected to because of the following informalities:
(1) The “wherein, of crystal grains constituting the second member, contact grains of the second member, which are grains in contact with the first member, comprise a first curved surface part that is convex toward the first member” of Claim 1 would have a better and clear form, if amended to be:
“wherein crystal grains of the second member comprises contact grains in contact with the first member, and the contact grains comprise a first curved surface part that is convex toward the first member”.
(2) The “wherein at least some of the contact grains comprise a concave second curved surface part in the first curved surface part that is convex” of Claim 2 would have a better form, if amended, by removing redundant portion, to be:
“wherein at least some of the contact grains comprise a concave second curved surface part in the first curved surface part”.
(3) The “wherein the second member comprises a substrate in contact with the second surface, and a frame body located in a periphery of the first member and comprising a recessed portion housing the first member; and the second member comprises a second cover part from an inner peripheral surface of the frame body to a main surface of the substrate located on the frame body side” of Claim 9 would have a better and clear form if amended to be:
“wherein the second member further comprises:
a substrate in contact with the second surface;
a frame body located in a periphery of the first member and comprising a recessed portion housing the first member; and
a second cover part from an inner peripheral surface of the frame body to a main surface of the substrate located on the frame body side”.
(4) The “wherein an average diameter of closed pores of at least one of the first cover part and the second cover part is not less than 0.8 times and not greater than 1.5 times an average diameter of closed pores of the second member” of Claim 10 would have a better and clear form if amended to be:
“wherein closed pores of at least one of the first and second cover parts has a first average diameter and closed pores of the second member has a second average diameter, the first average diameter is greater than 0.8 times the second average diameter and less than 1.5 times the second average diameter”.
(5) similarly, the “wherein an average diameter of closed pores of at least one of the first cover part and the second cover part is smaller than that of closed pores of the second member” of Claim 11 would have a better and clear form if amended to be:
“wherein closed pores of at least one of the first and second cover parts has a first average diameter and closed pores of the second member has a second average diameter, the first average diameter is smaller than the second average diameter”.
Appropriate correction is required.
Claim interpretation
(1) The “sapphire” of Claim 1 will be examined inclusive of aluminum oxide (Al2O3).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
(1) Claim 5 firstly recites “in the thickness direction” and then secondly recites “in a thickness direction”. It is not clear what difference between the two thickness directions. Does it mean “in a thickness direction” then “in the thickness direction”?
(2) The “comprising a first cover part in the annular space part from an outer peripheral surface of the first member to at least one of a third surface of the second member in contact with the first surface, and a fourth surface of the second member in contact with the second surface” of Claim 8 is not clear.
First, it is not clear what the “a first cover part in the annular space part from… to …” means. Does it mean “the cover part is existed or extended within the space part from… to…”, or “the cover part covers the space part from… to…?
Second, it is not clear what the “at least one of a third surface of the second member in contact with the first surface, and a fourth surface of the second member in contact with the second surface” means. Does it mean “at least one of A and B” or “at least one of a third surface”? due to the quotation mark (,), the claim is indefinite.
Third, it is not clear what the “an outer peripheral surface of the first member” means. Is it different from the “an outer peripheral part of the first member” of Claim 5? The “part” intrinsically has a surface, thus it is not clear what difference is required between the two features.
Fourth, it is respectfully requested to amend claim 5 by adding “the second member comprises a third surface contacting the first surface and a fourth surface contacting the second surface”, then the claim 8 will be simple by merely reciting “the third surface” and “the fourth surface”.
(3) The “wherein the second member comprises a substrate in contact with the second surface, and a frame body located in a periphery of the first member and comprising a recessed portion housing the first member; and the second member comprises a second cover part from an inner peripheral surface of the frame body to a main surface of the substrate located on the frame body side” of Claim 9 is not clear.
First, it is not clear what the “a periphery of the first member” means. Does it mean “outer peripheral part of the first member” of Claim 5? the “outer peripheral part” is also a part of the “periphery”, thus what difference is required between the two features?
Second, the “second cover part from… to…” raise the same issue as the “first” of the item (2) above.
Third, the “the frame body side” is not clear, because the claim never presents “a frame body side”.
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 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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakata et al. (US 20090166667, hereafter ‘667).
Regarding to Claim 1, ‘667 teaches:
The upper side is the Al2O3 single crystal substrate and the lower side is the ceramic composite substrate. It is seen that these substrates are closely contacted (Fig. 4, [0026]) and ceramic composite material, comprises a solidified body formed such that metal oxides are continuously and three-dimensionally entangled with each other… Examples of the single metal oxide include aluminum oxide (Al2O3)… Y3Al5O12 ([0027-0028]), see also the “a solidified body comprising a garnet crystal Y3Al5O12:Ce” of [0048], the claimed “A ceramic structure comprising: a first member made of a single crystal of sapphire or an yttrium aluminum composite oxide; and a second member in contact with the first member, the second member being made of ceramic containing an aluminum oxide or an yttrium aluminum composite oxide as a principal component”);
The white portion is the Y3Al5O12:Ce crystal ([0049], note Fig. 4 shows the garnet crystal grain has a curved surface part that is convex toward the upper member, the claimed “wherein, of crystal grains constituting the second member, contact grains of the second member, which are grains in contact with the first member, comprise a first curved surface part that is convex toward the first member”).
Regarding to Claim 2,
Fig. 4 of ‘667 shows the garnet crystal grain has a different curved surface part (the claimed “wherein at least some of the contact grains comprise a concave second curved surface part in the first curved surface part that is convex”).
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over ‘667.
Regarding to Claims 3-4,
Based on Fig. 4 of ‘667, each grain would have a grain size and further a height difference would have been intrinsically existed, in other words, ‘667 teaches all the limitation of Claims 3-4 (the claimed “wherein the contact grains have an average crystal grain size of” of Claim 3 and “wherein a height difference between an apex and a bottom of a plurality of the contact grains is” of Claim 4) and merely silent about the number value ranges, as recited (“15 µm or less” of Claim 3 and “5 µm or greater and 10 µm or less” of Claim 4).
Further, Fig. 4 shows a scale bar having 100 µm.
Consequently, before the effective filling date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have obtained the number value ranges, as recited, and/or since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIDEN Y LEE whose telephone number is (571)270-1440. The examiner can normally be reached on M-F: 9am-5pm PT.
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/AIDEN LEE/ Primary Examiner, Art Unit 1718