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 .
Response to Amendment
The reply filed on January 27, 2026 has been entered into the prosecution for the application. Currently, claims 1-9 and 24 are pending. Claims 10-23 are withdrawn. Claims 19 and 24 have been amended.
All prior art grounds of rejection are maintained.
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 (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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 5-9, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. 2011/0207593 to Duran et al. (hereinafter “Duran”) in view of U.S. Pat. Pub. 2009/0104454 to Sayce (hereinafter “Sayce”).
Regarding claim 1, Duran discloses a silica-titania glass (¶ 0042) comprising a composition comprising 5 weight percent to 10 weight percent TiO2 (¶ 0042, lines 8-9, and claim 3, teaching 6.5 weight percent to 9 weight percent TiO2) and a concentration of OH groups of 600 ppm or greater (¶ 0042, lines 3-4, teaching a concentration of OH groups of 600-2500 ppm). Duran teaches that the silica-titania glass has a coefficient of thermal expansion (CTE) at 20°C in the range of –15 ppb/K to 5 ppb/K (¶ 0036); this range falls within the recited range of –45 ppb/K to 20 ppb/K in claim 1. Duran teaches that the silica-titania glass has a slope of CTE (i.e., δCTE/dT) at 20°C that is less than 1.6 ppb/K2 (¶ 0008); this range substantially overlaps the recited range of 1.20 ppb/K2 to 1.75 ppb/K2 in claim 1. Duran teaches that a silica-titania glass with 7.4 weight percent TiO2 and a concentration of OH groups of 800 ppm has a crossover temperature (Tzc) (i.e., the temperature at which expansivity, expressed in ppb/K, is zero, and the curve crosses over from negative to positive) that is approximately 20°C (¶ 0040 and Fig. 8), within the recited range of claim 1. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Duran does not explicitly teach wherein the silica-titania glass comprises a refractive index variation of 140 ppm or less.
Sayce, in the same filed of endeavor, teaches a hot isostatic pressing process for producing a silica-based glass with “dramatically reduced” or eliminated refractive index variation (¶¶ 0012-0013; Abstract). Sayce teaches a hot isostatic pressing process carried out at a pressure preferably in a range of 50 to 120 MPa (493 to 1184 atm) and at a temperature of 1250°C to 1500°C, followed by a second heat treatment at a slightly higher temperature (see ¶ 0013).
It would have been obvious to one of ordinary skill in the art to modify Duran by using a hot isostatic pressing process as outlined by Sayce during production of the silica-titania glass. Motivation to do so would come from a desire to reduce or eliminate refractive index variation within the silica-titania glass, as taught by Sayce (¶¶ 0012-0013).
Given the substantially identical composition of the claimed invention and the silica-titania glass taught by Duran as modified by Sayce, and given the substantially identical processes for producing the claimed invention and the silica-titania glass of Duran as modified by Sayce (including hot isostatic pressing at very high pressure and high temperature), one of ordinary skill in the art reasonably would expect that the silica-titania glass taught by Duran as modified by Sayce would necessarily possess a refractive index variation of 140 ppm or less, since products of identical composition are presumed not to have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established (see MPEP 2112.01(I), first paragraph).
Thus, in view of Duran as modified by Sayce, a silica-titania glass reading on all of the limitations of claim 1 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claim 5, Duran as modified by Sayce teaches a silica-titania glass of substantially identical composition as the claimed invention and produced by a substantially identical process, as set forth above with respect to claim 1. Given the substantially identical composition of the claimed invention and the silica-titania glass taught by Duran as modified by Sayce, and given the substantially identical processes for producing the claimed invention and the silica-titania glass of Duran as modified by Sayce (including hot isostatic pressing at very high pressure and high temperature), one of ordinary skill in the art reasonably would expect that the silica-titania glass taught by Duran as modified by Sayce would necessarily possess a hardness in a range from 4.60 GPa to 4.75 GPa, since products of identical composition are presumed not to have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established (see MPEP 2112.01(I), first paragraph).
Regarding claim 6, Duran as modified by Sayce teaches a silica-titania glass with 7.4 weight percent TiO2 and a concentration of OH groups of 800 ppm has a crossover temperature (Tzc) that is approximately 20°C (see Duran at ¶ 0040 and Fig. 8), within the recited range of claim 6. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 7, Duran as modified by Sayce teaches a silica-titania glass wherein the slope of CTE at 20°C is less than 1.6 ppb/K2 (Duran, ¶ 0008), a range that substantially overlaps the recited range of 1.30 ppb/K2 to 1.65 ppb/K2 in claim 7. Duran as modified by Sayce also teaches embodiments of the silica-titania glass wherein the slope of CTE is less than 1.5 ppb/K2 or less than 1.4 ppb/K2 (Duran, ¶ 0042, lines 15-17). In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 8, Duran as modified by Sayce teaches a silica-titania glass of substantially identical composition as the claimed invention and produced by a substantially identical process, as set forth above with respect to claim 1. Given the substantially identical composition of the claimed invention and the silica-titania glass taught by Duran as modified by Sayce, and given the substantially identical processes for producing the claimed invention and the silica-titania glass of Duran as modified by Sayce (including hot isostatic pressing at very high pressure and high temperature), one of ordinary skill in the art reasonably would expect that the silica-titania glass taught by Duran as modified by Sayce would necessarily possess a refractive index variation of 60 ppm or less, since products of identical composition are presumed not to have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established (see MPEP 2112.01(I), first paragraph).
Regarding claim 9, Duran as modified by Sayce teaches a silica-titania glass wherein the concentration of OH groups is in a range of 880 ppm to 940 ppm (Duran, ¶ 0041, line 5), within the recited range of claim 9. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 24, Duran as modified by Sayce teaches wherein the glass is the product of a process including a hot isostatic pressing step (see Sayce, Abstract).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Duran in view of Sayce as applied to claim 1 above, and further in view of U.S. Pat. Pub. 2017/0217811 to Boughton et al. (hereinafter “Boughton”), with evidence from Shelby, “Density of TiO2-doped vitreous silica,” Phys. Chem. Glasses 46 (2005), 494-499 (hereinafter “Shelby”).
Regarding claims 2 and 3, Duran as modified by Sayce teaches the silica-titania glass of claim 1, as set forth above (see pp. 3-4). Further, Duran as modified by Sayce teaches that it is advantageous to invert a glass preform at a certain stage in the glass-making process “in order to allow gases within the preform to exit and thus to avoid the formation of inclusions” (see Duran, ¶ 0031).
However, Duran as modified by Sayce does not expressly teach that the silica-titania glass comprises less than 0.05 gas inclusions per cubic inch.
Boughton, in the same field of endeavor, teaches methods for applying thermal plasma to a glass melt (Abstract, claim 12). Boughton teaches that these methods may be employed in the production of silica-titania glasses comprising about 5 weight percent to about 15 weight percent TiO2, or to silica-titania glasses comprising less than 10 weight percent TiO2 (¶ 0045). Boughton discloses that, through application of thermal plasma to a glass melt as taught therein, it is possible to produce glass structures having a concentration of bubbles (i.e., gas inclusions) of less than 0.001 bubbles per pound (¶ 0052). Using a density of 2.20 g/cm3 for silica glass doped with up to 10 weight % TiO2 (Shelby provides evidence that the density of TiO2-doped silica glass is consistent below 10 weight % TiO2 concentration, see p. 495, Results section, first paragraph, and Fig. 2), it is possible to express Boughton’s 0.001 bubbles (gas inclusions) per pound as follows:
0.001 gas inclusions
x
(
1 lb.
)
(
2.20 g
)
(
16.3871 cm3
)
1 lb.
453.592 g
1 cm3
1 cubic inch
= 0.0000795 gas inclusions per cubic inch
Thus, Boughton teaches silica-titania glass with less than 0.05 gas inclusions per cubic inch.
One of ordinary skill in the art would have found it obvious to modify Duran as modified by Sayce by incorporating into the production process of the silica-titania glass the thermal plasma process taught by Boughton, thereby producing a silica-titania glass comprising less than 0.05 gas inclusions per cubic inch. Motivation to do so would come from a desire to minimize the occurrence of gas inclusions in the silica-titania glass, the minimization of the occurrence of gas inclusions being a goal of both Duran and Boughton (see Duran at ¶ 0031; Boughton at ¶ 0052).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Duran as modified by Sayce by incorporating the process taught by Boughton into the production process of the silica-titania glass, thereby producing a silica-titania glass comprising less than 0.05 gas inclusions per cubic inch.
With regard to the limitation in claim 2 that the silica-titania glass comprises a mass of 1 kg or greater and the limitation in claim 3 that the silica-titania glass comprises a mass in a range of 100 grams to 1 kg, these are normal variations of masses for silica-titania glasses that would be obvious to one of ordinary skill in the art. Limitations relating to obvious variations in the mass of the glass are not sufficient to patentably distinguish over the prior art. See MPEP 2144.04(IV)(A).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Duran in view of Sayce as applied to claim 1 above, and further in view of WO 2019/232402 to Gu et al. (hereinafter “Gu”).
Regarding claim 4, Duran as modified by Sayce teaches the silica-titania glass of claim 1, as set forth above. However, Duran as modified by Sayce does not teach wherein the composition further comprises 0.001 to 0.01 weight percent carbon.
Gu, in a closely related field of endeavor, teaches carbon-doped silica glass (¶ 0002). Gu teaches glass having a carbon concentration of less than 0.01 weight percent (¶ 0011; claim 7). This range overlaps the recited range of claim 4. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
One of ordinary skill in the art would have found it obvious to modify Duran as modified by Sayce by including 0.01 weight percent carbon in the silica-titania glass as taught by Gu. One of ordinary skill in the art would have been motivated to do so by a desire to improve the chemical stability of the glass (see Gu at ¶ 0003). Design incentives and market forces—namely, desire for a glass with enhanced chemical stability—would have led one of ordinary skill in the art to look to the teachings of Gu. One of ordinary skill in the art would have been able to add 0.01 weight percent carbon to the silica-titania glass, as taught by Gu, with predictable results and a high probability of success. See MPEP 2143(I)(F).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Duran as modified by Sayce by adding 0.01 weight percent carbon as taught by Gu, thereby producing a silica-titania glass reading on every limitation of claim 4.
Response to Arguments
Applicant’s arguments, filed January 27, 2026, with respect to the rejection of the pending claims have been fully considered but are not persuasive.
On page 9 of the Remarks submitted with the amendment filed January 27, 2026 (hereinafter “Remarks”), Applicant argues that the rejection of claim 1 and its dependent claims relies upon impermissible hindsight to supply the motivation for combining the Duran and Sayce references. Applicant argues that Duran “is entirely silent on refractive index variation,” and in consequence a person of ordinary skill in the art “would not have had an impetus to look to Sayce’s teachings to solve a problem that Duran does not identify” (Remarks at p. 9) (emphasis in original). As a preliminary matter, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Moreover, Applicant’s argument fails for two reasons. Firstly, Duran does recognize and explicitly discuss taking steps to improve the “index homogeneity” of the glass (see ¶ 0028); thus, it is inaccurate to say that Duran is “entirely silent” on this point or that Duran is ignorant of refractive index variation as a factor to be minimized (even if Duran does not use the exact same terms as Applicant’s claims). Secondly, the “rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law.” MPEP 2144(I). It is not necessary that the motivation to modify a primary reference must be based on the primary reference’s identification of a particular problem or of a factor to be improved. Here, Sayce provides evidence that the objective of minimizing refractive index variation (i.e., achieving “good refractive index homogeneity”) in glass used for optical applications is a goal well known to those of ordinary skill in the art (see Sayce at ¶¶ 0001-0003), and the disclosure of Sayce itself also provides motivation for using the teachings of Sayce to improve Duran, as outlined above in the rejection of claim 1 (see pp. 3-4). Thus, Applicant’s argument fails to persuade, both because the primary reference does identify index variation as a problem to be addressed in the glass manufacturing process, and because the motivation to combine references need not come from an explicit statement in the primary reference.
Applicant argues that Sayce “teaches away from using hot isostatic pressing alone on glass made” by the processes described in Duran (Remarks at p. 11). On this basis, Applicant maintains that Sayce teaches away from the type of modification of Duran that forms the foundation for the rejection of claim 1 and its dependent claims (Remarks at p. 10). However, the prima facie argument in the rejection of the pending claims is that Duran, modified by the teachings of Sayce, produces a glass product that reads on the glass product of claim 1. That teaching from Sayce is not confined to hot isostatic pressing alone. As Applicant points out (Remarks at p. 10), Sayce teaches hot isostatic pressing in combination with a second heat treatment when producing glass via direct deposition or soot and sinter processes (see Sayce at ¶¶ 0012-0013). A prior art reference is prior art for all that it teaches (MPEP 2121.01), and one of ordinary skill in the art, in adapting the teachings of Sayce to Duran, would find it straightforward to incorporate both the hot isostatic pressing and the second heat treatment. Therefore Sayce, in requiring a second heat treatment in some circumstances, cannot be said to be teaching away from the type of modification outlined above in the rejection of claim 1 (see pp. 3-4).
Applicant argues that one of ordinary skill in the art would have no reasonable expectation of success from modifying Duran with the hot isostatic pressing and second heat treatment of Sayce (Remarks at p. 11). Applicant asserts that the second heat treatment taught by Sayce involves heating the glass to such a temperature that “the silica-titania glass would soften and flow, potentially altering its composition, structure, and properties” (Remarks at p. 11). Applicant’s whole line of argument is speculative. Applicant states: “There is no evidence that Duran’s silica-titania glass—with its specific OH concentration, CTE, crossover temperature, and slope of CTE—would retain those properties after being subjected to Sayce’s high-temperature reshaping process” (Remarks at p. 11) (emphasis in original). On the other hand, Applicant has produced no evidence that Duran’s silica-titania glass would lose those properties after being subjected to Sayce’s second heat treatment—a second heat treatment which, in some embodiments, involves “minimal flow” (Sayce at ¶ 0014), a fact that Applicant acknowledges (see Remarks at p. 12, last 2 lines). In seeking to rebut a prima facie case of obviousness, argument alone cannot take the place of factually supported objective evidence. See MPEP 2145; see also In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Applicant also argues that Sayce’s second heat treatment “is specifically designed to reshape the glass” (Remarks at p. 12). Firstly, this statement ignores the numerous places in Sayce where it is stated that the second heat treatment is designed to reduce or eliminate refractive index inhomogeneity (see Sayce at ¶ 0012, ¶ 0019, Abstract). Secondly, Sayce explicitly teaches that “acceptable results may also be achieved by secondary heat treatment involving minimal flow” (¶ 0014). Applicant urges that “minimal flow” still involves some flow, and that “any flow would change the dimensions of Duran’s product, rendering it unsatisfactory for its intended EUV lithography applications where precise dimensions are critical” (Remarks at p. 13) (emphasis in original). Implicit in this line of argument is an assumption that the second heat treatment is applied to the end product of Duran (i.e., the solid boules)—an assumption that is nowhere implied by the teachings of Sayce. Applicant also asserts that Sayce discloses that “the minimal flow option produces inferior results,” pointing to the examples described in Sayce (see Remarks at p. 13). However, even if the minimal flow option is not the preferred option in Sayce, it is still an option taught by the prior art. A prior art reference is prior art for all that it teaches (see MPEP 2121.01), and disclosed examples and preferred embodiments “do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (MPEP 2123).
Applicant argues that Duran “provides evidence that OH concentration is atmosphere-dependent,” and that to achieve an OH concentration within the claimed range, the glass must be processed in an atmosphere with water vapor (Remarks at p. 11). Applicant contrasts this with the second heat treatment in Sayce, which takes place under an inert gas atmosphere, such as helium or argon (see Remarks at pp. 11-12, and see Sayce at ¶¶ 0003, 0009, 0015, 0022). According to Applicant, one of ordinary skill in the art “would understand that subjecting Duran’s high OH glass to Sayce’s second heat treatment in an argon atmosphere” would present “an unreasonable risk” of reducing the OH concentration below the claimed range (Remarks at p. 12) (emphasis in original). This line of argument is premised on a too narrow reading of the prior art and a binary choice created by Applicant but not required by the prior art. In Applicant’s telling, there exists a stark choice between using a water vapor atmosphere as taught by Duran or an inert gas atmosphere as taught by Sayce. However, Duran expressly teaches that the glass forming process may be carried out under a helium atmosphere with “a partial pressure of water vapor exceeding about 3% or more” (Duran at ¶ 0026), a fact which Applicant acknowledges later in the reply (see Remarks at p. 15). So, Sayce teaches a second heat treatment under an inert gas atmosphere (such as helium), and Duran teaches processing under an inert gas atmosphere (helium) with at least a bit over 3% partial pressure water vapor. These teachings hardly appear incompatible. One of ordinary skill in the art, presented with the teachings of Duran and Sayce, in the course of routine experimentation and optimization would find it straightforward to adapt Sayce’s second heat treatment to take place under an inert gas atmosphere (helium) with a partial pressure of water vapor exceeding about 3% or more.
With regard specifically to dependent claims 2 and 3, Applicant alleges that “the Office has not explained how Boughton’s thermal plasma fining process could be applied to the product of Duran” (Remarks at p. 13) (emphasis in original). Applicant argues: “To apply Boughton’s fining process to Duran’s product, one would need to melt Duran’s boule, pass it through a fining vessel, and then somehow reform it into a boule” (Remarks at p. 14) (emphasis in original). Again, Applicant’s argument rests on an unstated premise that the plasma fining process is applied to the end product of Duran (i.e., the solid boules)—an assumption that is nowhere implied by the teachings of the prior art or the rejection of claims 2 and 3 presented above. Applicant’s argument assumes that the plasma fining step is tacked on the end of the Duran process rather than inserted into that process by one of ordinary skill in the art guided by the prior art of record and the general state of knowledge in the art. Applicant’s argument is premised on a flawed assumption and therefore is unpersuasive.
With regard specifically to dependent claim 4, Applicant argues that Gu’s carbon-doping process is incompatible with Duran’s process for achieving an OH concentration within the claimed range of claim 1 (from which claim 4 depends) (Remarks at p. 14). Again, Applicant posits an artificial binary choice between a water vapor atmosphere as taught by Duran and an inert atmosphere as taught by Gu (see Remarks at pp. 14-15; and see Gu at ¶ 0068, specifying that the heating step is conducted in helium, argon, or nitrogen). However, as noted above (see p. 14), Duran expressly teaches that the glass forming process may be carried out under a helium atmosphere with “a partial pressure of water vapor exceeding about 3% or more” (Duran at ¶ 0026), as Applicant acknowledges (see Remarks at p. 15). Thus, Gu teaches a heating step under an inert gas atmosphere (such as helium), and Duran teaches processing under an inert gas atmosphere (helium) with at least a bit over 3% partial pressure water vapor. These teachings are hardly incompatible. One of ordinary skill in the art, presented with the teachings of Duran and Gu, in the course of routine experimentation and optimization would find it straightforward to adapt Gu’s heating step to take place under an inert gas atmosphere (helium) with a partial pressure of water vapor exceeding about 3% or more.
With regard specifically to dependent claim 5, Applicant asserts that “the Office has not met the legal standard for inherency” (Remarks at p. 15). Applicant bases this argument on two points: first, that the claimed hardness range is a result of hot isostatic pressing (Remarks at p. 16); and second, that Duran does not teach hot isostatic pressing (Remarks at p. 17).
In response to Applicant’s arguments against Duran individually, it should be noted that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Here, the rejection of claim 1 (and therefore also claim 5, which depends from claim 1) looks to Sayce, not Duran, for the teaching of hot isostatic pressing (see above, p. 3). Applicant’s argument regarding claim 5 ignores this basic fact and does not address the teachings of Sayce, and for this reason the argument is unpersuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure:
U.S. Pat. No. 6,997,015 to Bowden et al. (“Bowden”) discloses a method for forming substantially striae-free glass substrates that are suitable for optical applications, including use in forming optical elements or structures such as mirrors and platen stage structures that can be used, for example, in EUV lithography (Abstract). Bowden teaches that the method includes making an EUV lithography photomask glass substrate by mixing a mixture of a silica soot with a titanium dopant weight percent level within the range from 6 wt. % to 9 wt. % TiO2 (Col. 7, lines 21-24). Bowden teaches that hot isostatic pressing may be used to remove gaseous inclusions or similar defects in the glass (Col. 4, lines 56-58; claim 36).
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/P.A.F./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731
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