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 .
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Neumann et al. (US5338771, hereinafter referred to as Neumann) as evidenced by Deubener et al. (Deubener, J., et al. "Updated definition of glass-ceramics." Journal of Non-Crystalline Solids 501 (2018): 3-10, hereinafter referred to as Deubener) and the Wikipedia article titled “Amorphous solid” (https://en.wikipedia.org/wiki/Amorphous_solid hereinafter referred to as Wikipedia).
Regarding claim 1, while Neumann does not explicitly disclose the glass is plasma-resistant, this is a property which depends upon the composition of the glass, and the composition disclosed by Neumann is substantially identical to the instantly claimed composition such that this property would be inherently present. 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 either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph). Additionally, it is noted a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and here the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In claim 1, the intended use of being plasma-resistant is not given patentable weight.
Neumann discloses a glass comprising 32 to 52 mol% of SiO2 (see Neumann at Table 1, Example F, disclosing a glass comprising 44.5 wt.% SiO2, which corresponds to approximately 43.7 mol% SiO2), 5 to 15 mol% of Al2O3 (see Neumann at Table 1, Example F, disclosing a glass comprising 10.0 wt.% Al2O3, which corresponds to approximately 5.8 mol% Al2O3), 30 to 55 mol% of CaO (see Neumann at Table 1, Example F, disclosing a glass comprising 31.9 wt.% CaO, which corresponds to approximately 33.6 mol% CaO.), and 0.1 to 15 mol% of CaF2 as chemical components (see Neumann at Table 1, Example F, disclosing a glass comprising 5.0 wt.% CaF2, which corresponds to approximately 3.8 mol% CaF2).
While Neumann does not explicitly disclose the plasma-resistant glass has an amorphous structure, this is an inherent property of all glass phases as evidenced by Wikipedia at the first paragraph, which states the terms “glass” and “glassy solid” are sometimes used synonymously with amorphous solid. Examiner notes Neumann discloses a glass ceramic (see Neumann at claim 1), which inherently possesses a residual glass phase as evidenced by Deubener at the Abstract. Deubener at the Abstract states glass-ceramics are inorganic, non-metallic materials prepared by controlled crystallization of glasses via different processing methods. They contain at least one type of functional crystalline phase and a residual glass. The volume fraction crystallized may vary from ppm to almost 100%. As such, because the invention of Neumann is a glass ceramic, it would inherently possess a residual glass, which is also known as an amorphous structure. 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 either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Additionally, the glass ceramic of Neumann is first a glass before being crystallized into a glass ceramic. Neumann at Col. 3, lines 44-48, disclosing as far as the invention is concerned, it does not matter which process is used to manufacture the glassy crystallin material, i.e., it does not matter whether a glass ceramic, a ceramic, or a sintered glass ceramic is involved. Glass ceramic technology seems preferably. Examiner notes that glass ceramic technology involves forming a glass article and subsequentially crystallizing it as noted in the second paragraph of page 3 at the Introduction of Deubener. As such, because the invention of Neumann existed for some period of time as a glass before being crystallized, the glass of the invention of Neumann inherently possesses the claimed amorphous phase.
Regarding claim 2, Neumann discloses the CaO and the CaF2 have a molar ratio of 2.5:1 to 50:1 (see Neumann at Table 1, Example F, disclosing a glass comprising 33.6 wt.% CaO, and 3.8 wt.% CaF2, which provides a ratio of CaO/CaF2 of 33.6/3.8= 8.84, which normalized to a CaO to CaF2 ratio of 8.84 to 1, which is within the claimed range.).
Regarding claim 3, while Neumann does not explicitly disclose the glass transition temperature (Tg) of the plasma-resistant glass is lower than 750°C, this is a property which depends upon the composition as detailed by the instant specification at [0095], which shows the effect of substituting CaO of a CaO—Al2O3—SiO2 (CAS) glass with CaF2 on the structure, thermal properties, and plasma resistance properties of the glass was investigated. As CaF2 was added, the glass transition temperature (Tg), crystallization temperature (Tc), and liquidus temperature (Ti) were moved to lower temperatures. In the instant case, the composition of Neumann is substantially identical to the instantly disclosed composition as detailed above, including the CaF2 content, and therefore the glass of Neumann would inherently possess the claimed property. 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 either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 4, while Neumann does not explicitly disclose the crystallization temperature (Tc) of the plasma-resistant glass is lower than 1090°C, this is a property which depends upon the composition as detailed by the instant specification at [0095], which shows the effect of substituting CaO of a CaO—Al2O3—SiO2 (CAS) glass with CaF2 on the structure, thermal properties, and plasma resistance properties of the glass was investigated. As CaF2 was added, the glass transition temperature (Tg), crystallization temperature (Tc), and liquidus temperature (Ti) were moved to lower temperatures. In the instant case, the composition of Neumann is substantially identical to the instantly disclosed composition as detailed above, including the CaF2 content, and therefore the glass of Neumann would inherently possess the claimed property. 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 either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 5, while Neumann does not explicitly disclose the glass stability index KH of the plasma-resistant glass is expressed by the following formula, Kh = Tc-Tg/T1-Tg (wherein Tg is the glass transition temperature, Tc is the crystallization temperature, and T1 is the liquidus temperature), and the plasma-resistant glass exhibits a KH in the range of 2.0 to 3.5, this is a property which depends upon the composition as detailed by the instant specification at [0095], which shows the effect of substituting CaO of a CaO—Al2O3—SiO2 (CAS) glass with CaF2 on the structure, thermal properties, and plasma resistance properties of the glass was investigated. As CaF2 was added, the glass transition temperature (Tg), crystallization temperature (Tc), and liquidus temperature (Ti) were moved to lower temperatures. In the instant case, the composition of Neumann is substantially identical to the instantly disclosed composition as detailed above, including the CaF2 content, and therefore the glass of Neumann would inherently possess the claimed property. 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 either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 6, while Neumann does not explicitly disclose the plasma-resistant glass is a glass used in a mixed plasma environment of fluorine and argon (Ar), the manner of using a glass is not patentable when the claims are directed towards the glass itself. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (see MPEP 2114(II)).
While Neumann does not explicitly disclose the plasma-resistant glass has plasma resistance properties with an etching rate of 10 nm/min or lower for a mixed plasma of fluorine and argon (Ar), this is a property which depends upon the composition of the glass as detailed by the instant specification at [0116], which shows changes in etching rate by a plasma gas in accordance with the addition and content of CaF2 in the glass composition. Because the composition of Neumann is substantially identical to the instantly disclosed composition, the composition of Neumann would inherently possess the claimed property.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner 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 against the later invention.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Neumann as evidenced by Deubener and Wikipedia.
Regarding claim 8, Neumann discloses the plasma-resistant glass further comprises 0.01 to 15 mol% of ZrO2 as a chemical component (see Neumann at Col. 3, lin3s 14-16, disclosing the composition additionally contains 0.5-10% ZrO2. Neumann at Col. 6, lines 25-27 teaches additives of Al2O3, ZrO2, and TiO2 which display especially great hydrolysis stability … does not lead to any wear which could impair function. Therefore, it would have been obvious to a person having ordinary skill in the arts before the effective filing date of the claimed invention when practicing the invention of Example F of Neumann to add via superaddition 0.5-10 wt.% ZrO2. While it is mathematically impossible to directly convert wt.% ranges to mol%, it is possible to demonstrate a wt.% range overlaps with a mol% range by selecting a point within the wt.% range, converting that point to mol%, and demonstrating that point is within the claimed range. For example, adding 5 wt.% ZrO2 to Example F via superaddition provides a composition which is approximately 42.7 mol% SiO2, 5.7 mol% Al2O3, 32.8 mol% CaO, 3.7 mol% CaF2, and 2.3 mol% ZrO2, which is within the claimed range. Therefore, the ZrO2 range made obvious by Neumann overlaps with the claimed range.) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
Claim(s) 1-3 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR20180080429A with reference to machine translation, hereinafter referred to as Kim) in view of Mukherjee et al. (Mukherjee, Debasis Pradip, and Sudip Kumar Das. "SiO2–Al2O3–CaO glass-ceramics: effects of CaF2 on crystallization, microstructure and properties." Ceramics international 39.1 (2013): 571-578, hereinafter referred to as Mukherjee).
Regarding claim 1, Kim discloses a plasma-resistant glass (see Kim at the Title, disclosing a plasma resistant hard coating composition for recycling ceramic member, which Examiner notes corresponds to a plasma-resistant glass) comprising 32 to 52 mol% of SiO2 (see Kim at the Abstract, disclosing 45-60 mol% SiO2, which overlaps with the claimed range.) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05), 5 to 15 mol% of Al2O3 (see Kim at the Abstract, disclosing Al2O3 5 to 20 mol%, which overlaps with the claimed range.), 30 to 55 mol% of CaO (See Kim at the Abstract, disclosing RO 20 to 45 mol% … wherein R is at least one selected from the group consisting of Mg, Ca, Sr, and Ba, which Examiner notes overlaps with the claimed range.),
While Kim discloses CaF2 (see Kim at Table 3), Kim does not disclose how much CaF2 the composition should comprise. Therefore, a person having ordinary skill in the arts would naturally look to the prior art to determine an appropriate amount of CaF2 for the plasma-resistant glass composition.
Mukherjee is directed towards SiO2-Al2O3-CaO glass-ceramics (see Mukherjee at the Title). Mukherjee teaches fluorine promoted initial crystallization of glass and can be used as an effective nucleating agent in the SiO2-Al2O3-CaO system (see Mukherjee at the Abstract). Mukherjee teaches the addition of CaF2 into the glass system showed improvement in the microstructure and crystallization properties (see Mukherjee at the Conclusion paragraph on page 577). Mukherjee discloses three examples comprising 9.9, 7.6, and 5.2 mol% CaF2, all of which are within the claimed range (See Mukherjee at Table 1 on page 572).
Therefore, it would have been obvious to a person having ordinary skill in the arts before the effective filing date of the claimed invention when practicing the invention of Kim to select a CaF2 content within the amount disclosed by Mukherjee with a reasonable expectation of successfully improving the microstructure and crystallization properties of the glass as taught by Mukherjee.
Additionally, Kim in view of Mukherjee discloses a glass. (see Kim at the fifth to last paragraph of page 4 from the machine translation, disclosing melting the inner plasma glass waw material … to obtain a plasma glass powder). Kim teaches a glass is an amorphous structure (See Kim at the fourth paragraph of page 11). As such, because the invention of Kim in view of Mukherjee existed for some period of time as a glass, the glass of the invention of Kim in view of Mukherjee inherently possesses the claimed amorphous phase.
Regarding claim 2, while Kim in view of Mukherjee does not explicitly disclose the CaO and the CaF2 have a molar ratio of 2.5:1 to 50:1, Kim in view of Mukherjee makes obvious a range of CaO and CF2 values. It can be demonstrated that the range of CaO and CF2 values made obvious by Kim in view of Mukherjee overlap with the claimed ratio range by selecting a point within the CaO and CF2 ranges made obvious by Kim in view of Mukherjee, calculating the CaO to CF2 ratio, and demonstrating that ratio is within the claimed range. In the instant case, the point 30 mol% CaO and 9.9 mol% CaF2 is within the range made obvious by Kim in view of Mukherjee, and corresponds to a CaO to CaF2 ratio of approximately 3.01 to 1, which is within the claimed range. Therefore, the CaO and CaF2 ranges made obvious by Kim in view of Mukherjee overlap with the claimed CaO to CaF2 ratio.
Regarding claim 3, Kim discloses the glass transition temperature (Tg) of the plasma-resistant glass is lower than 750°C (see Kim at the third to last paragraph of page 9, disclosing the heat treatment temperature is … higher than the glass transition point of the plasma glass powder … for example, a temperature of 700 to 1,100 °C. Examiner notes this means the glass transition temperature is lower than 700 to 1,100 °C, which overlaps with the claimed range.).
Regarding claim 6, Kim discloses the plasma-resistant glass is a glass used in a mixed plasma environment of fluorine and argon (Ar) (see Kim at the second to last paragraph of page 7, disclosing a mixed plasma environment of fluorine and argon (Ar)),
While Kim does not explicitly disclose an etching rate of 10 nm/min or lower for a mixed plasma of fluorine and argon (Ar), the plasma etching rate is a function of the composition as detailed by Kim at Table 1. At Table 1, Kim discloses CAS to as comprising SiO2, Al2O3, and CaO. Kim at the fourth paragraph of page 16 discloses CAS has the lowest etching rate at 13.24 nm/min, which is close to touching the claimed range. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (see MPEP 2144.05(I), second paragraph). Furthermore, Kim in view of Mukherjee has a composition which is substantially identical to the instantly disclosed composition, and would inherently possess the claimed plasma resistance etching rate. 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 either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 7, Kim discloses the plasma-resistant glass further comprises 0.01 to 15 mol% of Y2O3 as a chemical component (see Kim at the tenth paragraph of page 7, disclosing 0.01 to 10 mol% of Y2O3, which is within the claimed range.).
Response to Arguments
Applicant's arguments filed 12/01/2025 along with the affidavit filed 12/01/2025 have been fully considered but they are not persuasive.
At the last paragraph of page 5 to the first paragraph of page 6 from the Remarks, Applicant argues that the invention of Neumann comprises a glassy crystalline material. Examiner notes a glassy crystalline material is commonly referred to as a glass ceramic. Applicant argues that because the invention of Neumann is directed towards a glassy crystalline material, it fails to meet the limitations of claim 1 as amended, which states “wherein the plasma-resistant glass has an amorphous structure”. Examiner respectfully disagrees with this interpretation of the limitation of claim 1, and notes that a glassy crystalline material, aka a glass ceramic, has a glass phase and thus has an amorphous structure as noted in the rejection of claim 1 above. Examiner notes per the broadest reasonable interpretation, claim 1 merely requires the glass to have an amorphous structure, not for the glass to only have an amorphous structure. Put another way, the limitation of claim 1 requires the inclusion of an amorphous phase, and does not exclude the presence of crystalline phases. Additionally, this argument is not convincing because the invention of Neumann exists as a glass before it is a glass ceramic as noted in the rejection of claim 1 above. For these two reasons, this argument is not convincing.
At the second paragraph of page 6 from the Remarks, Applicant refers to the affidavit filed 12/01/2025 and argues that a glass having an amorphous structure within the claimed composition has unexpectedly superior plasma resistance, improved transparency, surface image, surface roughness, and etching rate as compared to identical crystalline glass compositions, and thus the invention of Neumann with apatite and/or wollastonite crystalline phases does not anticipate the invention of claim 1. Examiner respectfully disagrees because the invention of Neumann exists as a glass before it is a glass ceramic as noted in the rejection of claim 1 above, and thus would also inherently possess these properties.
Additionally, Examiner notes the affidavit filed 12/01/2025 compares “Reference example 1” and “Reference example 2”, however, while both reference examples are within the claimed compositional range of claim 1, it is unclear that “Reference example 2” represents the invention of Neumann. However, this distinction is moot because the argument not convincing because the invention of Neumann exists as a glass before it is a glass ceramic as noted in the rejection of claim 1 above.
At the third paragraph of page 7 from the Remarks, Applicant argues that a PHOSITA would not be motivated to combine the teachings of Kim and Murkherjee because adding CaF2 as disclosed in Murkherjee decreases crystallization peak temperature, and crystalline phases impede uniform etching of a plasma-resistant glass. Examiner respectfully disagrees with this conclusion, and notes that a PHOSITA is not constrained by the motivation of the instant invention when reading the prior art. As such, a PHOSITA would absolutely be motivated by the art of Kim to include the CaF2 of Murkherjee for the reasons detailed in the 103 rejection of claim 1 above; that Applicant alleges crystalline phases impede uniform etching is immaterial to the motivations of a PHOSITA reading Kim in view of Murkherjee. Additionally, Kim in view of Murkherjee forms a glass before any crystalline phase is formed, and the glass of Kim in view of Murkherjee would inherently possess the plasma resistance properties. However, Examiner notes that claim 1 does not actually claim any plasma resistant properties, and thus this argument is unconvincing for this additional reason as well as the reasons stated above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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CAMERON K MILLER
Examiner
Art Unit 1731
/C.K.M./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731