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 § 112
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 1-9 and 11-19 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.
In claim 1, the limitation “a lateral distance (p) between one of the at least one modification and one of the at least one additional modification is determined as a function of a diameter (d) of the recess based on a formula 10>d/p>1.15” is unclear because the specification indicates that the lateral distance is “S” not “p”, and that “p” is the modification. Also, when talking about the formula, the specification discloses “In order to avoid undesirable interactions when introducing adjacent modifications, so-called shadowing effects, for the laser radiation by preceding modifications, the spacing of the modifications (p) is determined as a function of the diameter of the etched recesses (d) according to the formula 10 > d/p> 1.15.” so it discloses pacing of the modifications, not lateral distance, unless it is referring to the same thing. So what is being claimed? For examination purposes Examiner construes this limitation as “a lateral distance (S) between one of the at least one modification and one of the at least one additional modification is determined as a function of a diameter (d) of the recess”.
In claim 5, line 1, the limitation “a lateral distance” is unclear if it is referring to the same lateral distance recited in claim 1, line 17, or a different lateral distance.
In claim 6, line 1, the limitation “a lateral distance” is unclear if it is referring to the same lateral distance recited in claim 1, line 17, or a different lateral distance.
In claim 8, line 1, the limitation “a lateral distance” is unclear if it is referring to the same lateral distance recited in claim 1, line 17, or a different lateral distance.
Claim 8 recites the limitation "the beam axes" in line 2. There is insufficient antecedent basis for this limitation in the claim.
In claim 12, the limitation “the different position lying on a common plane which is not parallel to the first outer surfaces and the second outer surface” is unclear to what is the common plane common to?
Claim 15 recites the limitation "the other outer surfaces" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 1-9 and 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ortner (US 2019/0329251) in view of Ostholt (WO 2018/210484).
Regarding claim 1, Ortner teaches a method for introducing a recess (5) into a substrate (1, 200) (abstract; para. 0038-0039; 0078; 0081; 0160), the method comprising: spatially beam shaping a focus of a laser beam (27) along a beam axis of the laser beam (abstract; para. 0078-0079; 0160); producing a plurality of defects (flaws 32), by laser radiation of the laser beam, in the substrate along the beam axis, without removing any material of the substrate as a result of the laser radiation (abstract; para. 0078; 0160; as shown in Fig. 1-11C), wherein one or more of the defects forms at least one modification in the substrate (abstract; para. 0078; 0160; as shown in Fig. 1-11C), isotropicly removing the material of the substrate in a respective region of the at least one modification using an etching medium so as to form the recess (abstract; para. 0027-0028; 0078; 0084; 0089; 0160; as shown in Fig. 1-11C); and introducing at least one additional modifications (adjacent flaws 32) into the substrate along at least one additional beam axis that is parallel to and spaced from the beam axis (as shown in Fig. 2 and 4-10B), the at least one additional modification having a depth between a first outer surface (2 or 3) of the substrate and a position within the substrate that is at a distance from a second outer surface (2 or 3 different from the first outer surface) of the substrate opposite the first outer surface (as shown in Fig. 4, 8A, 9A, 10A and 10B), wherein a lateral distance (dx) between one of the at least one modification and one of the at least one additional modification is determined as a function of a diameter of the recess (para. 0112).
Ortner fails to disclose anisotropicly removing the material of the substrate in a respective region of the at least one modification using an etching medium so as to form the recess.
Ostholt teaches a method for introducing at least one recess into a substrate and/or for reducing a material thickness of the substrate (para. 0003; 0020), the method comprising anisotropicly removing the material of the substrate in a respective region of the at least one modification using an etching medium so as to form the recess (para. 0002; 0020).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Ortner, with Ostholt, by producing the recess by anisotropic etching, for the advantages of material removal direction control. POSITA would have known that producing the recess by anisotropic etching would have a reasonable expectation of success and predictable results such as allowing for the removal of material in specific directions leading to a more efficient and controlled etching process.
Regarding claim 2, Ortner and Ostholt combined teach the method according to claim 1, wherein the substrate is immersed in an etching bath so that an etching attack causes the anisotropic material removal in the respective region of the at least one modification and anisotropic material removal in a respective region of the at least one additional modification at the first outer surface (Ortner when viewed in combination with Ostholt; abstract; para. 0027-0028; 0078; 0084; 0089; 0160; as shown in Fig. 4, 8A, 9A, 10A and 10B), and causes isotropic material removal at the second outer surface (Ortner when viewed in combination with Ostholt; abstract; para. 0027-0028; 0078; 0084; 0089; 0160; as shown in Fig. 4, 8A, 9A, 10A and 10B).
Regarding claim 3, Ortner and Ostholt combined teach the method according to claim 1, wherein the plurality of defects within the substrate are generated by a sequence of pulses or by a single pulse (Ortner, abstract; Ostholt, para. 0002; 0020).
Regarding claim 4, Ortner and Ostholt combined teach the method according to claim 1, wherein the at least one modifications is introduced by several pulses of the laser beam with a coinciding beam axis (Ortner, as shown in Fig. 6A-7B, abstract; Ostholt, as shown in Fig. 1).
Regarding claim 5, Ortner and Ostholt combined teach the method according to claim 1, wherein a lateral distance of a spacing between the at least one additional beam axis and the beam axis is set in such a way that the at least one additional modification does not overlap the at least one modification (Ortner, as shown in Fig. 2 and 4-10B, para. 0046, 0093; Ostholt, as shown in Fig. 1, para. 0029).
Regarding claim 6, Ortner and Ostholt combined teach the method according to claim 1, wherein a lateral distance of a spacing between the at least one additional beam axis and the beam axis is set in such a way that the recess formed by the anisotropic removal of material in the respective region of the at least one modification overlaps at least one additional recess formed by anisotropic removal of material in a respective region of the at least one additional modification (Ortner; at least two flaws 32 are connected to form a cavity 5; abstract; para. 0089-0090; also, Fig. 11B shows overlapping cavity 5).
Regarding claim 7, Ortner and Ostholt combined teach the method according to claim 1, wherein the at least one additional modification includes a plurality of additional modifications, and wherein the at least one modifications and the plurality of additional modifications are introduced into the substrate with a regular pattern and/or with a regular structure (Ortner; as shown in Fig. 2 and 4-10B).
Regarding claim 8, Ortner and Ostholt combined teach the method according to claim 1, wherein a lateral distance of the beam axes between the plurality of additional modifications and the beam axis and/or from each other for all of the modifications that are adjacent to each other is selected to be coincident (Ortner; as shown in Fig. 2 and 4-10B).
Regarding claim 9, Ortner and Ostholt combined teach the method according to claim 1, wherein the plurality of additional modifications have different depths from each other and/or the at least one modification (Ortner; as shown in Fig. 8A, 9A, 10A and 10B), and wherein the modifications of the plurality of additional modifications that have a greater depth have a reduced lateral distance to adjacent ones of the modifications (Ortner; as shown in Fig. 8A, 9A, 10A and 10B).
Regarding claim 11, Ortner and Ostholt combined teach the method according to claim 1, wherein the plurality of additional modifications are each introduced into the substrate between the first outer surface and a same position within the substrate so as to have a same depth and/or a same distance to the second outer surface (Ortner; as shown in Fig. 4 and 9B).
Regarding claim 12, Ortner and Ostholt combined teach the method according to claim 1, wherein the plurality of additional modifications are each introduced into the substrate along parallel beam axes such that each of the additional modifications extends to a different positions within the substrate at a different distances from the second outer surface, the different position lying on a common plane which is not parallel to the first outer surface and the second outer surface (Ortner; as shown in Fig. 8A, 9A, 10A and 10B).
Regarding claim 13, Ortner and Ostholt combined teach the method according to claim 1, wherein the substrate is plate-shaped and has a material thickness between 300 μm and 900 μm (Ortner; 300 µm; para. 0163), and wherein the recess is introduced with a residual thickness of the substrate of less than 100 μm (Ortner; flaw 32 extend to 80% of the thickness, then the residual thickness will be 60 µm [300 µm x 0.8 = 240 µm]; para. 0038-0039; 0081).
Regarding claim 14, Ortner and Ostholt combined teach the method according to claim 13, wherein the material thickness is between 300 μm and 600 μm (Ortner; 300 µm; para. 0163), and wherein the residual thickness of the substrate in the respective region of the recess is between 30 μm and 80 μm (Ortner; flaw 32 extend to 80% of the thickness, then the residual thickness will be 60 µm [300 µm x 0.8 = 240 µm]; para. 0038-0039; 0081).
Regarding claim 15, Ortner and Ostholt combined teach the method according to claim 1, wherein the at least one modification extends from one of the first outer surface and/or the second outer surface towards an opposite outer surface of the substrate to the position within the substrate at the distance from the other outer surfaces (Ortner; as shown in Fig. 4, 8A and 9A-10B).
Regarding claim 16, Ortner and Ostholt combined teach the method according to claim 15, wherein the at least one modification extends from the first outer surface towards the second outer surface of the substrate to the position within the substrate at the distance from the second outer surface (Ortner; as shown in Fig. 4, 8A and 9A-10B).
Regarding claim 17, Ortner and Ostholt combined teach the method according to claim 1, further comprising producing an additional recess by the action of the etching medium, or by action of another etching medium, by additional anisotropic material removal in a respective region of the at least one additional modification in the substrate (Ortner when viewed in combination with Ostholt; as shown in Fig. 11C).
Regarding claim 18, Ortner and Ostholt combined teach the method according to claim 17, wherein the at least one modification extends from the first outer surface towards the second outer surface of the substrate to the position within the substrate at a different distance from the second outer surface than the at least one additional modification (Ortner; as shown in Fig. 8A, 9A-10B), and wherein the recess and the additional recess are produced by the action of the etching medium such that the recesses have different depths into the substrate (Ortner; as shown in Fig. 8A, 9A-10B; the extent of the flaw 32 can be varied and therefore the extent of the recess; para. 0038-0039; 0081).
Regarding claim 19, Ortner and Ostholt combined teach the method according to claim 1, further comprising introducing a further modification along the at least one additional beam axis extending from the second outer surface to a second point in the substrate that is at the distance from the point and the first outer surface (Ortner; as shown in Fig. 9A-10B).
Response to Arguments
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive. Regarding claim 1, Applicant argues that “It is respectfully submitted that Ortner and Ostholt, alone or in combination, fail to disclose or suggest the foregoing features of amended claim 1. In contrast, Ortner is silent as to a spacing of their modifications, let alone determining such spacing based on "a lateral distance (p) between one of the at least one modification and one of the at least one additional modification is determined as a function of a diameter (d) of the recess based on a formula 10>d/p>1.15," as required by amended claim 1. For example, Ortner is directed to a method for producing at least one cavity in the volume of a substrate composed of hard brittle material and by a glass or glass ceramic substrate having such a cavity. See Ortner, paragraph [0013]. Ortner further describes determining a shielding effect of an individual filament- shaped flaw, by firstly introducing into the substrate, along a first straight line, a chain of filament-shaped flaws having a radius R, which are spaced apart from one another at the constant distance dx, where it holds true that: d»>R. See Ortner, paragraph [0112]. However, this is silent as to the spacing of the modifications recited in amended claim 1 which clarifies that they are a function of a diameter (d) of the recess based on formula 10>d/p>1.15. This ensures that diameter of a respective recess is at least 1.15 times as large as the spacing of the modifications so that a coherent volume is formed. Yet, Ortner is limited to spacing that merely enforces a constant distance between their filament-shaped flaws, which is not the same as or suggestive of the amended features of claim 1. It is respectfully submitted that Ortner fails to disclose or suggest at least the amended features of claim 1 for at least these reasons. It is further respectfully submitted that Ostholt fails to remedy the deficiencies of Ortner noted above as Ostholt is also silent as to the spacing of the modifications clarified in claim 1, and was only cited as allegedly disclosing anisotropic material removal.” on remarks page 11, lines 1-22.
In response to Applicant’s arguments, in claim 1, the limitation “a lateral distance (p) between one of the at least one modification and one of the at least one additional modification is determined as a function of a diameter (d) of the recess based on a formula 10>d/p>1.15” is unclear because the specification indicates that the lateral distance is “S” not “p”, and that “p” is the modification. Also, when talking about the formula, the specification discloses “In order to avoid undesirable interactions when introducing adjacent modifications, so-called shadowing effects, for the laser radiation by preceding modifications, the spacing of the modifications (p) is determined as a function of the diameter of the etched recesses (d) according to the formula 10 > d/p> 1.15.” so it discloses pacing of the modifications, not lateral distance, unless it is referring to the same thing. So what is being claimed? For examination purposes Examiner construes this limitation as “a lateral distance (S) between one of the at least one modification and one of the at least one additional modification is determined as a function of a diameter (d) of the recess”. Ortner teaches wherein a lateral distance (dx) between one of the at least one modification and one of the at least one additional modification is determined as a function of a diameter of the recess (para. 0112).
For these reasons, the arguments are not persuasive.
Regarding claims 2-9 and 11-19, Applicant relies on the same arguments, therefore, the same response applies.
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 ALBA T ROSARIO-APONTE whose telephone number is (571)272-9325. The examiner can normally be reached M to F; 8am-5pm.
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/ALBA T ROSARIO-APONTE/Examiner, Art Unit 3761 03/17/2026
/STEVEN W CRABB/Supervisory Patent Examiner, Art Unit 3761