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 § 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.
Claims 1, 3, and 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (US 9,902,645).
Regarding claims 1, 3, 6, and 9-13, Ono discloses a glass disk wherein the glass disk has a disk shape (col. 3, line 49), a strain point within the claimed range (Tables 1-2), a temperature at 104 dPa·s is at most 1,300°C (col. 8, lines 58-64), therefore a high viscosity of 104.5 would have to be lower than 1,300°C, a liquidus temperature within the claimed range (col. 8, line 65-col. 9, line 3, Tables 1-2) and a Young’s modulus of 78 GPa or more (col. 9, line 31-34).
Ono further discloses that the glass composition comprises
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Ono and the claims differ in that Ono does not teach the exact same proportions as recited in the instant claims in the examples.
However, one of ordinary skill in the art before the effective filing date of the claimed invention was made would have considered the invention to have been obvious because the compositional proportions taught by Ono overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
With regards to the claimed glass composition comprising 0.001-0.3% of ZrO2, Ono discloses that it is more preferably that ZrO2 are substantially not contained (emphasis added, col. 7, lines 64-65). One of ordinary skill in the art would immediately envisage that the term “substantially” would include trace amounts of ZrO2. Therefore, the examiner contends that the impurities of ZrO2 would encompass the claimed endpoint of 0.001%.
In the alternative, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). In the instant case, the difference between 0% and 0.001% of ZrO2 does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed glass composition.
The recitation in the claims that the glass disk is “for a magnetic recording medium” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Nishizawa disclose glass substrate as presently claimed, it is clear that the glass substrate of Nishizawa would be capable of performing the intended use, i.e. magnetic recording medium presently claimed as required in the above cited portion of the MPEP. Nevertheless, Ono discloses a substrate for a MRM (col. 3, line 49).
Regarding claim 5, Ono does not teach an average linear transmittance in an optical path length of 1 mm and a wavelength range of 350-1500 nm is 70% or more as required the rejected claim. It is the examiner's position that the reference to Ono teaches the same structure and composition as claimed and therefore, would be expected to inherently satisfy the claimed linear transmittance.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claims 7-8, given that Ono discloses a magnetic recording medium (col. 3, lines 47-49), Ono would inherently comprise a nominal feature of magnetic recording layer as well as being used in a magnetic recording and reproducing apparatus. MRL and MRM device are notoriously old and well-known and ubiquitous in the art; such Officially noticed fact being capable of instant and unquestionable demonstration as being well-known.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (US 9,902,645) in view of Mori et al. (JP 2011-253575).
Regarding claim 2, although Ono discloses a disk, Ono fails to disclose a
circular opening is formed in a central portion as presently claimed.
Mori discloses a glass disk with a structure as claimed (Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ono’s disk to have an inner diameter, since Mori
discloses that this is a conventional structure of a disk.
Regarding claim 4, Ono fails to disclose the surface roughness of the glass disk is 1.0 nm or less as presently claimed.
Mori discloses a glass disk with a surfaces roughness of 2.5 nm or less (Abstract) or 0.15 nm or less [0019].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ono’s substrate surface to have a surface roughness as claimed, since Mori discloses that have a smooth surface prevents the magnetic head from being damage [0065-0066].
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (US 9,902,645) in view of Maeda et al. (WO 2017/204143).
Regarding claim 2, although Ono discloses a disk, Ono fails to disclose a
circular opening is formed in a central portion as presently claimed.
Maeda discloses having a circular glass substrate with a hole having a diameter (inner diameter) and an outer diameter [0060].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ono’s disk to have an inner diameter, since Maeda discloses that this is a conventional structure of a disk.
Regarding claim 5, Ono discloses a glass disk for a magnetic recording medium, however, fails to disclose an average linear transmittance in an optical path length of 1 mm and a wavelength range of 350-1500 nm is 70% or more as presently claimed.
Maeda discloses a glass disk magnetic recording disk comprising a transmittance of 80% or more at a wavelength of 450 nm at a thickness of 0.5 mm [0010]. Although Maeda fails to explicitly disclose the optical length of 1 mm as its parameters, Maeda still discloses and achieve the linear transmittance of 80% or more.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ono’s glass disk to have a transmittance of 80% or more, as suggested by Maeda, in order to obtain a glass with high heat resistance and high Young's modulus, high specific elasticity, and low expansibility [0012]. Maeda discloses that this will lead to increase recording density.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that Mori teaches a glass substrate comprising 6-12 mass% of ZrO2, which teaches away from the claimed glass composition. However, note that while Mori do not disclose all the features of the present claimed invention, Mori is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely inner diameter of a glass disk for a magnetic recording medium and Ra of the glass disk, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that Maeda fails to disclose the glass composition as claimed, particularly ZrO2 and B2O3, as well as a liquidus temperature of 1240ºC or lower. In response to applicant’s arguments against the references individually, 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). Additionally, note that while Maeda do not disclose all the features of the present claimed invention, Maeda is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely inner diameter of a glass disk for a magnetic recording medium and average linear transmittance of the glass disk, and in combination with the primary reference, discloses the presently claimed invention.
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 LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785