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 Objections
Claims 4 and 5 are objected to because of the following informalities:
Claim 4 recites “wherein the bubbles at least one of”, which appears as if it contains a potential typographical error which should instead recite “wherein the bubbles contain at least one of”.
Claim 5 recites “comprising openings formed on a glass surface, the opening” which appears as if it contains a potential typographical error which should instead recite “comprising openings formed on a glass surface, the openings”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 8 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 8 recites the limitation “wherein the silica glass comprises no more than 0.5% any one of Li, Na, Mg, Al, K, Ca, Cr, Mn, Fe, Ni, Cu, Ti, Co, and Zn”. Examiner notes claim 8 originally recited “0.5 ppm”, which is fully supported by the original written description. However, “0.5%” does not appear to be supported by the written description as originally filed.
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.
Claim 8 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites “wherein the silica glass comprises no more than 0.5% any more of” which appears to contain a potential typographical error that makes the claim boundaries unclear. It is unclear if this phrase is meant to recite “no more than 0.5% or more of” or if instead the phrase is meant to recite “no more than 0.5% of any one of”. For the purposes of examination, this limitation will be interpreted as meaning “no more than 0.5% of any one of” unless otherwise clarified by Applicant during the course of prosecution.
Additionally, claim 8 recites the limitation “0.5% any one of Li, Na, Mg, Al, K, Ca, Cr, Mn, Fe, Ni, Cu, Ti, Co, and Zn” which is unclear because no units are provided for 0.5%. For example, the % may be vol%, mol%, wt.%, etc. For the purposes of examination, 0.5% will be interpreted as meaning 0.5 wt.% unless otherwise clarified by Applicant during the course of prosecution.
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) 1-10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kudo et al. (JPH10203839 with reference to machine translation, hereinafter referred to as Kudo).
Regarding claim 1, Kudo discloses a silica glass (see Kudo at the Abstract, disclosing a quartz glass. Examiner notes quartz glass is silica glass), comprising bubbles in the number of 1 X107/cm3 to 1 X1015/cm3 (see Kudo at [0005] of the machine translation, disclosing bubbles having a number of closed cells of 2 x 106 to 6 x 107, 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).
Kudo further discloses having a density of 0.5 g/cm3 to 1.95 g/cm3 (see Kudo at the Abstract, disclosing a density of 0.8 to 2.1 g/cm3, which overlaps with the claimed range.).
While Kudo does not explicitly disclose a dielectric loss tangent in a frequency range of 20 GHz to 110 GHz being 1.0 x10-5 to 5.0 x10-4, the dielectric loss tangent is a function of the OH group concentration as detailed by the instant specification at Fig. 11 and [0025]. Because the glass of Kudo has an OH group concentration which is substantially identical to the instantly disclosed glass as detailed in the rejection of claim 7 below, the glass of Kudo would inherently possess the claimed dielectric loss tangent. 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 2, Kudo discloses the density is from 0.7 g/cm3 to 1.8 g/cm3 (see Kudo at the Abstract, disclosing a density of 0.8 to 2.1 g/cm3, which overlaps with the claimed range.).
Regarding claim 3, Kudo discloses from 1 x107/cm3 to 1 x 1013/cm3 of bubbles (see Kudo at [0005] of the machine translation, disclosing bubbles having a number of closed cells of 2 x 106 to 6 x 107, 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).
Regarding claim 4, Kudo discloses the bubbles at least one of He, Ne, Ar, Kr, Xe, and N2 in an amount of 90 mass% or more (see Kudo at the third paragraph of page 3, disclosing the firing atmosphere may be … nitrogen or argon. Examiner notes a firing atmosphere of nitrogen or argon will create bubbles made entirely of nitrogen or argon.).
Regarding claim 5, Kudo discloses openings formed on a glass surface, the opening having an average value of a major axis diameter of 30 µm or less (see Kudo at claim 1 on page 1 of the machine translation, disclosing an average diameter of contained closed cells of 10 to 80 µm. Examiner notes bubbles with a size of 10-80µm will create openings on the surface of the glass of the same size, which overlaps with the claimed range.).
Regarding claim 6, Kudo discloses openings formed on a glass surface, the openings having an average value of a major axis diameter of 10 µm or less (see Kudo at claim 1 on page 1 of the machine translation, disclosing an average diameter of contained closed cells of 10 to 80 µm. Examiner notes bubbles with a size of 10-80µm will create openings on the surface of the glass of the same size, which overlaps with the claimed range.).
Regarding claim 7, while Kudo does not explicitly disclose an OH content of 100 ppm or less, the instant specification at Fig. 7 and [0021] notes the claimed OH group concentration is obtained by a dehydration treatment of the silica glass. Kudo at the last paragraph of page 2 teaches calcining the powder at a high temperature of 800°C or more to remove adsorbed water, hydroxyl groups, and the like. Examiner notes hydroxyl groups are OH groups. Therefore, the glass of Kudo would inherently possess the claimed OH group concentration because the glass of Kudo is subjected to a substantially identical dehydration treatment.
Regarding claim 8, Kudo discloses the silica glass comprises no more than 0.5% any more of Li, Na, Mg, Al, K, Ca, Cr, Mn, Fe, Ni, Cu, Ti, Co, and Zn (see Kudo at the last paragraph of page 2, disclosing high purity … Al, F, contained as impurities, Cu, Na, K, Li, Ca, Mg are preferably 1 ppm or less, which is within the claimed range.).
Regarding claim 9, while Kudo does not explicitly disclose the relative permittivity of the glass at frequencies from 20 GHz to 110 GHz is from 1.3 to 3.5, the relative permittivity of a silica glass is a function of the density of the silica glass as demonstrated by the instant specification at [0007]. Because the density of Kudo is substantially identical to the instantly claimed density as detailed in the rejection of claim 1 above, the silica glass of Kudo would inherently possess the claimed relative permittivity.
Regarding claim 10, while Kudo does not explicitly disclose the relative permittivity of the glass at frequencies from 20 GHz to 110 GHz is from 1.5 to 3.5, the relative permittivity of a silica glass is a function of the density of the silica glass as demonstrated by the instant specification at [0007]. Because the density of Kudo is substantially identical to the instantly claimed density as detailed above, the silica glass of Kudo would inherently possess the claimed relative permittivity.
Regarding claim 12, while Kudo does not explicitly disclose a surface that has a root-mean-square height of 1 µm or less, the root-mean-square height is a function of the major axis diameter as demonstrated by the instant specification at [0094]. Because Kudo discloses a diameter overlapping with the claimed diameter as detailed in the rejection above, Kudo would inherently possess the claimed root-mean-square height property.
Response to Arguments
Applicant's arguments filed 11/06/2025 have been fully considered but they are not persuasive. At the last paragraph of page 5 from the Remarks, Applicant argues that Kudo does not disclose or suggest a dielectric loss tangent within the claimed range because the object of Kudo is to provide a novel opaque quartz glass containing fine bubbles, and therefore claim 1 is novel and not obvious over Kudo. Examiner respectfully disagrees with this conclusion, and notes that while Kudo does not explicitly appreciate the dielectric loss tangent properties of the invention of Kudo, these properties are inherent in the invention of Kudo as detailed by the rejection of claims 1 and 7 above. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (see MPEP 2112(I)).
At the first full paragraph of page 6, Applicant argues the claimed dielectric loss can only be obtained by using specific synthetic raw materials, a specific forming method, a specific dehydration treatment, a specific heating and sintering method, and a specific foaming process, and thus the invention of Kudo does not inherently posses the claimed dielectric loss properties. Examiner respectfully disagrees, and notes the instant specification does not appear to provide evidence to support these arguments. Arguments presented by the applicant cannot take the place of evidence in the record (see MPEP 716.01(c)). Examiner notes per the rejection of claim 1 above that the claimed dielectric loss properties of a silica glass appear to be a function of the -OH content per the instant specification at Fig. 11 and [0025]. As such, these arguments are not convincing.
At the second to last paragraph of page 6, Applicant argues that even if the OH of the prior art of Kudo corresponded to instant Fig. 11, the value of the dielectric loss tangent would remain unknown when the raw materials or treatment methods differ. Examiner respectfully disagrees as above mutatis mutandis, and notes arguments presented by the applicant cannot take the place of evidence in the record (see MPEP 716.01(c)). In the instant case, the instant claims and Kudo are both directed towards silica glasses and both have substantially identical OH values per the rejections of claims 1 and 7 above. As such, the invention of Kudo would inherently possess the claimed dielectric loss properties as noted above, and therefore Applicant’s arguments are not convincing.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731