DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 27, 2025 has been entered.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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, 4-6, 11, 14-16, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Shorey et al. (2014/0147623) in view of Ortner et al. (WO 2022/148681, as represented by Ortner et al. US PgPub 2023/0348323) and Jin et al. (2017/0103249). Regarding claim 1, Shorey discloses a method for manufacturing a glass plate having holes, the method comprising irradiating a first surface of a glass base material with a laser to form initial holes, each having a first initial opening on the first surface, the initial holes can be initial through holes or initial non-through holes (figures 1A and 4, [0104]-[0105]) and the first initial opening has a maximum dimension of greater than 5 µm, i.e. 10 µm to 20 µm ([0045]).
Regarding the aspect ratio d1/φ1S, Shorey further teaches the glass base material has a thickness in the range of 150 µm to 600 µm ([0089]) and the holes are through holes (extending the whole thickness of the glass base material, [0105], [0119]). Thus, with an initial opening in the range of 10 µm to 20 µm and a thickness in the range of 150 µm to 600 µm, it would have been obvious to one of ordinary skill in the art at the time of the invention to expect through holes to have an aspect ratio of the depth (d1) of the initial hole to maximum diameter (φ1S) of the initial hole of at least 15, as taking even smallest dimensions of a diameter of 10 µm and a depth of 150 µm would provide for an aspect ratio (d1/φ1S) of 15, and the range of depth is significantly greater than the range of diameters such that even with the largest diameter value of 20 µm, depth values of 300 to 600 µm would provide for ratios of 15 or greater.
Regarding the ratio P1/φ1, Shorey also teaches applying an etching process to the glass base material with an alkaline solution to form processed holes from the initial holes, wherein the process hole has a first opening on the first surface ([0124]). Shorey provides an example wherein the first opening has a diameter φ1 of 45 µm and a roundness P1 of 1.5 µm ([0136], figure 7). Although Shorey doesn’t define the diameter as an average of the diameter of a circumscribed circle and a diameter of an inscribed circle of the first opening, it would have been obvious to expect the average of a circumscribed circle and inscribed circle of the holes to be approximate the diameter value discloses (i.e. 45 µm) as a roundness P1 of 1.5 µm would still mathematically provide for an average of about 45 µm. This example provides for a ratio P1/φ1 of (1.5/45) about 3.3% for each of the processed holes, is a greater than 2%. However, Shorey also teaches the average roundness of the holes formed should be as small as possible, such as less than about 1 µm, even less than 0.25µm, or about 0 µm ([0137]). Accordingly, with the suggested roundness of less than 1 µm, or less than 0.25 µm, or about 0 µm, the P1/φ1 ratios can be expected to be equal to or less than 2%.
Regarding etching, Shorey teaches the etching can be performed with an alkaline solution, such as KOH or an acid solution, such as HF. Shorey appears to suggest etching rates for an embodiment comprising acid solutions, but doesn’t specify etching rates or temperatures for an alkaline solution ([0124]). Ortner teaches a similar method of irradiating a glass base material with a laser to form initial holes ([0036]) and etching the initial holes to form processed holes ([0038]). Similar to Shorey, Ortner teaches the etching can be performed with an acid solution or an alkaline solution ([0040]). Ortner teaches acidic etching medium provides for faster etching rates, while alkaline etching medium provides for slower etching rates ([0042]). Ortner teaches it is preferable to utilize an alkaline etching medium, such as KOH ([0100]), for better controllability of the etching ([0043]), wherein the alkaline etching medium can provide for etching rates such as 7 µm/h (0.117µm/min), or 5 µm/h (0.083 µm/min). Ortner teaches an etching rate this slow advantageously leaves enough time to influence the etching medium or the etching process during the etching procedure. Ortner further suggests performing the etching at a temperature in the preferred range of 60°C to 100°C, which significantly overlaps with the claimed range of 50-95°C ([0045]). Although Ortner doesn’t specify the alkaline solution is aqueous, it is well known in the art that etching solutions are generally water based. This is further supported by the fact that the preferred temperature for etching using the alkaline solution is around 100°C or below, the boiling point of water. Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to have employed an aqueous alkaline solution, such as KOH at an etching temperature of 60-100°C, as Ortner teaches it advantageously provides for better control of the etching process and the etching medium during etching, wherein etching rates such as 0.117 µm/min can be expected.
Regarding the φN/φ1 ratio, as mentioned, Shorey teaches an aspect ratio for the initial hole of at least 15. However, Shorey doesn’t disclose details regarding the shape of the processed hole, such as having a minimum dimension between the first surface and a second surface of the glass based material that is opposite the first surface, wherein a ratio of the minimum dimension to the first opening is at least 0.5. In a similar method, Jin teaches a method of manufacturing a glass plate having a plurality of holes, comprising applying a laser to a first surface of a glass base material such that a plurality of initial through holes each having a first initial opening is formed on the first surface of the glass based material ([0028]), and etching the glass material with an aqueous alkaline solution at a temperature in the range of 60°C -120°C, such that a plurality of processed through holes, each having a first opening on the first surface, is formed from the plurality of initial holes ([0020], [0022], [0034], [0051]). Jin teaches the initial through holes extend through an entirety of the substrate ([0028]), which would naturally comprise of a first initial opening and second initial opening on a respective first surface and a second surface of the glass plate that is opposite the first surface. Jin also teaches etching is performed by immersing the glass plate in an etching bath ([0049]), to produce processed through holes having a shape as shown in figure 5. Although not discussed, immersion of the glass plate into a bath would result in etchant entering the first and second initial openings simultaneously, and as the etching progress toward the inside center of the glass plate, through holes having a shape as shown in figure 5 would be expected, wherein the shape comprises a minimum dimension of a narrow segment in a cross section of a processed hole to be located between the first surface and the second surface of the glass base material. Furthermore, Jin teaches etching with an aqueous alkaline solution provides for highly uniform holes having highly consistent diameter along the length of the hole ([0020]). Jin teaches the processed holes can expect to have a ratio, φN/φ1 (D2/D1), of at least 0.5, or even 0.8, wherein φN is a minimum dimension (µm) of a narrow segment in a cross section of a processed hole and the minimum dimension is located between the first surface of the glass base material and a second surface of the glass base material that is opposite the first surface ([0040], figure 5). Jin teaches minimizing the narrowing of the processed holes, to allow filling the holes with electrically conductive material, thereby providing a conductive path between the first surface and the second surface of the glass base material ([0004]), making the glass based material suitable for use as a fingerprint sensor. Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to have expected the etching process of Shorey and Ortner to have similarly provide for highly uniform holes with a highly consistent diameter having a φN/φ1 ratio of at least 0.5, or even 0.8, especially since Jin teaches this can be expected when etching with an alkaline solution. Furthermore, it would have been obvious to provide for processed holes in the glass based material having a ratio of the diameter of the narrow section to the diameter of the first opening (φN/φ1) of at least 0.5, so as to provide for holes that can be filled with electrically conductive materials, especially in when utilizing the glass based substrate as a fingerprint sensor, as taught by Jin.
Regarding claim 4, Shorey discloses the laser is a UV laser ([0103]).
Regarding claim 5 , Shorey teaches the etching can be performed with an alkaline solution, such as KOH ([0124]). Ortner also teaches the alkaline solution comprises KOH ([0100]).
Regarding claim 6, Shorey discloses the glass base material has a thickness of greater than 0.1mm, such as a range of 150µm to 600µm ([0089]).
Regarding claim 11, Shorey teaches the laser is a nanosecond pulse laser ([0013]).
Regarding claim 14, as mentioned above, Ortner teaches an etching rate of 5 µm/h (0.083 µm/min) ([0043]).
Regarding claims 15-16, as mentioned above, Jin teaches a φN/φ1 (D2/D1) ratio of at least 0.8 ([0040]).
Regarding claim 18, Ortner and Jin teaches the alkaline solution comprises NaOH ([0040], [0050], respectively).
Regarding claim 20, as mentioned above, Shorey teaches the glass base material has a thickness in the range of 150 µm to 600 µm ([0089]) and an initial opening in the range of 10 µm to 20 µm ([0045]). A thickness of 600 µm would provide a through holes with an aspect ratio of the depth (d1) of the initial hole to maximum diameter (φ1S) of the initial hole of at least 30. Jin also teaches an aspect ratio of greater than 30, with an initial opening diameter of 0.3µm ([0029]) and a thickness of 0.3mm ([0019]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Shorey et al. (2014/0147623), Ortner et al. (WO 2022/148681, as represented by Ortner et al. US PgPub 2023/0348323) and Jin et al. (2017/0103249) as applied to claim 1 above, and further in view of Levy et al. (WO 2022/231967). Shorey teaches a short laser pulse, such as nanosecond. Levy teaches a method for manufacturing a glass substrate having holes, comprising irradiating the glass substrate with a laser to form initial holes, and etching the glass substrates to form processed holes from the initial holes (page 1 lines 5-26). Levy further teaches forming the initial holes using short laser pulses, i.e. nanosecond or femtosecond, as it can provide for initial holes while minimizing cracks around the holes, especially for glass substrates (page 10 lines 8-19). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to have alternatively employed a femtosecond pulse laser for producing the initial holes, as Levy teaches it is a known alternative to a nanosecond pulse laser, that predictably provides for initial holes in a glass substrate without producing cracks, with a reasonable expectation of success, as taught by Levy.
Claims 12-13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Shorey et al. (2014/0147623), Ortner et al. (WO 2022/148681, as represented by Ortner et al. US PgPub 2023/0348323) and Jin et al. (2017/0103249) as applied to claim 1 above, and further in view of Hiranuma (TW201722881 machine translation provide). Ortner and Jin teaches the alkaline solution comprises NaOH ([0040],[0050], respectively). However, Ortner and Jin do not specify a chelating agent in the etching solution. Hiranuma teaches a similar method for producing a glass plate with hole, comprising irradiating the glass plate with a laser to form initial holes, and etching the plate with an etching solution to form processed holes from the initial holes (page 1 2nd paragraph). Hiranuma further teaches employing a chelating agent in the etching solution, as it serves to prevent reattachment of metal ions to the surface of the substrate during etching, wherein the chelating agent includes ethylenediaminetetra-acetic acid (4th paragraph on page 12). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to have provided for a chelating agent, such as ethylenediaminetetraacetic acid, in the NaOH etchant of Ortner/Jin as it can assist in preventing metal ions from reattaching to the surface of the glass based material during etching, as taught by Hiranuma.
Response to Arguments
Applicant's arguments filed June 27, 2025 have been fully considered but they are not persuasive. Applicant notes the response filed June 9, 2025 are incorporated into the response of June 27, 2025. It is recommended to reproduce previous arguments in the latest response, if additional attention is required, especially since the June 9, 2025 remarks were addressed in the advisory action dated June 20, 2025. Nonetheless, it will be further addressed below.
Regarding the initial opening having a diameter of at least 5 µm, applicant has argued Jin teaches damage tracks having diameters significantly smaller, by at least a factor of 5X (top of page 8 in 6/9/2025 response). 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). As discussed in the rejection, Shorey teaches initial openings of at least 5 µm. While Jin teaches different sized initial openings, Jin is relevant art as it is in the same field of endeavor as the claimed invention and shares a similar concern for producing highly uniform through holes with a highly consistent diameter through the length of the through hole in a glass substrate, by etching with an alkaline solution. Thus, one skilled in the art would look to Jin all of its teachings, including a φN/φ1 ratio of at least 0.5.
On page 8 of the June 9, 2025 response, applicant assumes the maximum diameter D1 occurs inside the substrate in the thickness direction, according to fig. 5 of Jin. It is commonly known etching by immersion into an etchant bath results in maximum diameters on the surface and narrowest diameter toward the center in the thickness direction. Jin further supports this by suggesting the holes have a tapering or constriction toward its center ((0020]). Thus, it is more probable the maximum diameter is at the opening at the surface of the glass.
On page 9 of the June 9, 2025 response, applicant argues “Shorey, Ortner, and Jin describe different processes to create through holes, none having the combination of properties discussed above”. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant fails to provide evidence how the processes are so different or how the references do not teach the combination of properties discussed above. The arguments presented on June 9, 2025 argues modification with Jin because of the small initial openings and the assumption that the maximum diameter occurs inside the through hole. No discussion was provided to substantiate the different processes of Shorey, Ortner, and Jin.
Regarding the response filed June 27, 2025, applicant further argues one would combine disparate elements from Shorey, Ortner and Jin to arrive at the claimed invention and notes Shorey’s initial opening of at least 5 µm, Ortner’s etching rate, Jin’s φN/φ1 ratio. The examiner disagrees. All three references are in the same field of endeavor as the claimed invention, making through holes in a glass substrate by etching. All three references similarly employ a laser to make initial holes, and an alkaline solution for etching the through holes. Thus, one skilled in the art would look to Ortner, who teaches etching rates for alkaline etching solutions and Jin who teaches etching by immersing in an alkaline etching solution would result in producing through holes having the claimed φN/φ1 ratio, for modifying Shorey.
At the bottom of page 7, applicant argues Shorey teaches blind holes (which are not through holes). While Shorey does teach blind holes, Shorey clearly teaches through holes as well, at the bottom of [0105] and [0119], reproduced below.
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Applicant argues on page 8 Ortner teaches both alkali and alkaline etching rates and does not distinguish etching rate between acidic versus alkaline etchants. Applicant further argues Ortner does not provide any reason to use the claimed etchant rates other than to beyond better control the removal. As mentioned in the rejection, Ortner teaches etching with an alkaline solution provides for slower etching rates compared to acidic solutions. It is inferred that slower etching rates allows for better control. Nonetheless, Ortner further teaches an etching rate this slow advantageously leaves enough time to influence the etching medium or the etching process during the etching procedure ([0043]). Applicant argues not motivation to use etching rates of Ortner in the method of Shorey, since Shorey only exemplifies only acid etchants. While the examples do not specify an alkaline solution, it does not take away from Shorey’s teaching that alkaline solutions could alternatively be used for etching the through holes.
At the bottom of page 8, applicant argues Ortner defines at [0129] roundness as the radial separation between inscribing and circumscribing circles around the hole center. Applicant argues this is different from the ratio P1/φ1 claimed, as the claimed ratio P1/φ1 is a unitless (expressed as a percent). Thus, the roundness of Ortner at [0137] cannot correspond to the ratio because it is missing the parameter of the hole diameter. It is believe applicant meant to reference Shorey, and not Ortner in this argument. The rejection did not equate the roundness of Shorey to the ratio P1/φ1. Instead the ratio P1/φ1 was calculated based on the exemplified hole diameter of 45 µm. Provided a roundness of 0.25 µm, a ratio P1/φ1 of less than 2% is achieved.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 QUEENIE S DEHGHAN whose telephone number is (571)272-8209. The examiner can normally be reached Monday-Friday 8:00-4:30.
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/QUEENIE S DEHGHAN/Primary Examiner, Art Unit 1741