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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/03/2026 has been entered.
Claim Objections
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.
Claims 8 and 15 are 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.
Claim 15 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.
Claims 8 and 15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation “no more than 0.5% of 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 15 recites the limitation “no more than 0.5% of 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, 12, and 15 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 comprise 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.
Regarding claim 15, Kudo discloses the silica glass comprises no more than 0.5% of any one 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 from the machine translation, disclosing a powder having high purity and good moldability is preferably, the purity of Al, F contained as impurities, Cu, Na, K, Li, Ca, and Mg are preferably 1 ppm or less.)
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 glass is a function of the density of the glass as evidenced by the instant PGPub at [0007] stating the relative permittivity of a silica glass are substantially proportional to each other. Because the density of the glass of Kudo is substantially identical to the instantly claimed density as detailed in the rejection of claim 1 above, the glass of Kudo would inherently possess the claimed permittivity.
Response to Arguments
Examiner notes the Remarks dated 12/10/2025 do not appear to be responsive to the objection to claim 5, the 112(a) rejection of claim 8, and the 112(b) rejection of claim 8 from the Final Rejection dated 12/10/2025.
Applicant's arguments filed 06/03/2026 have been fully considered but they are not persuasive. At the first paragraph of page 6 of the Remarks, Applicant argues that Kondo is produced using a slurry, and that water adheres to the particles and is likely to remain nit he glass after sintering. However, Examiner notes this appears to be an argument unsupported by evidence.
At the last two paragraphs of page 6, Applicant notes that Kondo teaches calcining at 800°C to remove adsorbed water, hydroxyl groups, and the like, however, Applicant argues that because Kondo uses a slurry in the raw material step, re-adsorption of water is unavoidable. Examiner notes this argument does not appear to be supported by evidence.
Arguments presented by the applicant cannot take the place of evidence in the record (see MPEP 716.01(c)). As such, Applicant’s arguments are not convincing and the rejections are maintained as detailed above.
At the first paragraph of page 7, Applicant argues that unlike Kondo, the present specification teaches the claimed products are made using processes that control metal impurities to the ppb levels. Examiner notes that controlling impurities to the ppb levels does not appear to be claimed in the instant claims, and is therefore is not given patentable weight. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that metal impurities tend to increase dielectric loss, however, this argument does not appear to be supported by evidence. Arguments presented by the applicant cannot take the place of evidence in the record (see MPEP 716.01(c)).
However, Examiner notes that Kondo does actually disclose a powder having high purity and good moldability is preferably, the purity of Al, F contained as impurities, Cu, Na, K, Li, Ca, and Mg are preferably 1 ppm or less as detailed in the rejections of claims 8 and 15 above. Therefore, even assuming arguendo that Applicant’s arguments concerning metal impurities and dielectric loss, Kondo would still appear to meet this requirement via the explicit high purity disclosures of Kondo.
Conclusion
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
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