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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goto (USPub20080248316) in view of any one of (USPN8,071,493), or (USPub20010056021) and alternatively, in further view of (USPub20190352227).
Regarding claims 1-4: Goto teaches a reinforced crystallized glass which can include alpha cristobalite solid solution as a main crystal phase (see Goto claim 2) and comprise the following in mass% (see Goto claims 9-10).
SiO2
50-90
Li2O
4-15
Al2O3
2-20
ZrO2
0-10
K2O
0-3
P2O5
0-3
Na2O
0-2
MgO
0-3
CaO
0-7
SrO
0-7
BaO
0-7
ZnO
0-10
Sb2O3
0-2
TiO2
0-5
Goto’s crystallized glass can have a compressive stress layer on the surface (see entire document).
While the above composition fails to include B2O3 as required by the claims, ‘316 does not appear to exclude such an oxide but instead, only generally teaches a crystallized glass.
As ‘493, ‘021 and ‘568, who each similarly teach crystallized glass, disclose that B2O3 can be desirably added to such glasses in contents of less than 5mass% for realization of low viscosity and enhanced dissolution and moldability (see ‘493 Col. 8, lines 66-67 bridged to Col. 9, lines 1-8), 0.1-5mass% to act as a former and accelerating crystal deposition and growth while having improved melting characteristics (see 0036 in ‘021) or even 0-2% as desired (Col. 6, lines 3-9 in ‘568), it would have been obvious to one having ordinary skill at the time of invention to modify Goto to include 5mass% or less for realization of low viscosity and enhanced dissolution and moldability, 0.1-5mass% to act as a former and accelerating crystal deposition and growth while having improved melting characteristics or even 0-2% as desired with a reasonable expectation of success.
The above modification will provide Goto with the following,
SiO2
50-90
Li2O
4-15
Al2O3
2-20
B2O3
<5, 0.1-5 or 0-2
ZrO2
0-10
K2O
0-3
P2O5
0-3
Na2O
0-2
MgO
0-3
CaO
0-7
SrO
0-7
BaO
0-7
ZnO
0-10
Sb2O3
0-2
TiO2
0-5
The above composition allows for overlap with that claimed providing a prima facie case of obviousness (MPEP 2144.05).
Regarding the claimed DOLzero to thickness ratio, the Examiner notes the following.
Initially, Goto’s thickness is 0.635nm (0092, 0138) which falls within Applicants’ disclosed thickness range of 0.4mm or more (spec par 0036 as filed).
Additionally, note that DOLzero is a result of both the glass and method of production. In the instant case, as shown above Goto’s composition overlaps with Applicants.
Further, Applicants crystallized article is formed by initially following the below 2-stage method (spec par 0038 as filed)
Temperature (oC)
Duration (min)
1st stage
450-750, 500-720 or even 550-680
30-2000min or even 180-1440min
2nd stage
550-850 or even 600-800
30-600min or even 60-400min
followed by ion exchanging such as with NaNO3 at 350-550C for 1-1440min or even 30-500min (spec par 0042 as filed)
Goto’s crystallized glass is formed by initially following the below 2-stage method (0064, 0126)
Temperature (oC)
Duration (hr)
1st stage
450-620, or even 520-620
1-20hr (i.e. 60-1,200min)
2nd stage
620-800
0.5-10hrs (i.e. 30-600min)
followed by ion exchanging with NaNO3 at 300-600C for 0.5-12hours (30min-720min) (0087, 0136) which is substantially similar to Applicants’.
Given the similarities between Goto and Applicants’, one skilled in the art would reasonably conclude the same DOLzero/thickness ratio to result (MPEP 2112).
Alternatively, it is noted for the record that Goto does not appear to limit their depth DOLzero/thickness ratio and instead, only generally teaches a chemically strengthened glass that can have a thickness of 0.635mm (635micron) and be used for a hard disk substate for information recording media (see abstract, 0003, 0092 for instance).
As ‘227, who similarly teaches chemically strengthened glasses having thickness less than or equal to 0.7mm (see 700micron or less in par0024) and can be used for hard disk substate for information recording media (abstract, 0008, 0021, 0058-0060), discloses that if a crack occurs in use exceeds aDOLzero the glass may break and as such, it is desirable in the art to make DOLzero great and include DOLzero of 0.15t or more (i.e. 15% or more of the thickness) (0021-0024), it would have been obvious to one having ordinary skill at the time of invention to modify Goto to include making their DOLzero great and specifically be 0.15t or more (15% or more the thickness) for obtaining desirable strength.
Note that the above range overlaps that claimed (MPEP 2144.05).
Regarding claim 5: As shown above, Goto’s glass includes 0-5 TiO2 overlapping the claimed range (MPEP 2144.05) and does not disclose the presence of Nb2O5 or Ta2O5 thereby, corresponding to 0% of these oxides.
Regarding claim 6: Given that Goto’s crystallized glass meets that claimed, the transition properties would be expected to be the same (MPEP 2112).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 8, 10-11 of copending Application No. 18/834606 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/994658 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/994649 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 19/144511 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/475428 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/024489 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/024491 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Claims 1-6 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,807,568. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Response to Arguments
Applicant's arguments regarding Goto filed April 23, 2026 have been fully considered but they are not persuasive.
Applicants argue against the Office’s assertion that the DOLzero/thickness ratio would result in Goto because the manufacturing method of the claimed glass is different from that of Goto. In an attempt to support their argument, Applicants assert that all of their examples which DOLzero/t is 15.1% or greater are obtained through a two-step chemical strengthening process which is different from the single-step treatment of Goto and argue that in comparison to Applicants’ comparative Examples which uses a single-step treatment, the two-step treatment achieves a CS layer of substantial depth.
This is not persuasive. Initially, note for clarity of record that the Office Action stated Goto teaches a thickness is 0.635nm (0092, 0138) which falls within Applicants’ disclosed thickness range of 0.4mm or more (spec par 0036 as filed).
It was also asserted by the Office that DOLzero is a result of both the glass and method of production. In the instant case, as discussed in the Office Action, Goto’s composition overlaps with Applicants and Applicants disclosed that their crystallized article can be formed by initially following the below 2-stage method (spec par 0038 as filed)
Temperature (oC)
Duration (min)
1st stage
450-750, 500-720 or even 550-680
30-2000min or even 180-1440min
2nd stage
550-850 or even 600-800
30-600min or even 60-400min
followed by ion exchanging such as with NaNO3 at 350-550C for 1-1440min or even 30-500min (spec par 0042 as filed)
Goto’s crystallized glass is similarly formed by initially following the below 2-stage method (0064, 0126)
Temperature (oC)
Duration (hr)
1st stage
450-620, or even 520-620
1-20hr (i.e. 60-1,200min)
2nd stage
620-800
0.5-10hrs (i.e. 30-600min)
followed by ion exchanging with NaNO3 at 300-600C for 0.5-12hours (30min-720min) (0087, 0136) which is substantially similar to Applicants’.
Given the similarities between Goto and Applicants’, one skilled in the art would reasonably conclude the same DOLzero/thickness ratio to result (MPEP 2112).
While Applicants attempt to be arguing that the manufacturing method of the claimed glass is different from that of Goto because all of Applicants’ examples in which DOLzero/t is 15.1% or greater are obtained through a two-step chemical strengthening process and not a single-step treatment as in Goto, this is not persuasive for a few reasons. Initially, note that Applicants’ Examples are not taken as limiting nor as a showing that the same results could not or would not be achieved with a single step process as in Goto. Specifically, simply because Applicants’ Examples may all be embodiments in which a 2-step process is used, not only is there nothing therein to conclude that the same results would not or could not be achieved with a single step process but additionally note that as mentioned above, given that Applicants clearly disclose in their specification that their article having a thickness overlapping that of Goto’s can be made by a 1-step process of ion exchanging with NaNO3 at 350-550C for 1-1440min or even 30-500min (spec par 0042 as filed) which is substantially similar to Goto, one skilled in the art would reasonably conclude the same results (MPEP 2112). Note that there is absolutely no comparative Example showing that the specific thickness and 1-step process of ion exchanging with NaNO3 at 300-600C for 0.5-12hours (30min-720min) as taught by Goto would not arrive at the same results.
Further, while Applicants may point to their comparative Examples which uses a single-step treatment to assert that the Examples using two-step treatment achieves a CS layer of substantial depth in comparison, note that the comparative Examples are not using the same thickness or even single-step process as taught by Goto. Specifically, the comparative Examples each have greater thickness than Goto and both comparative Examples are using potassium salt and not NaNO3 as used by Goto. As such, regardless of whether or not Applicants’ Examples using two-step treatment may achieve a CS layer of substantial depth in comparison to their comparative Examples that have a specific thickness and 1-step process, this is not enough to prove that the Examples using two-step treatment would achieve a CS layer of substantial depth in comparison to that using a completely different thickness and completely different 1-step process as done in Goto, let alone prove that a completely different thickness and completely different 1-step process as done in Goto would not arrive at the same DOLzero/t ratio claimed. Note again, there is simply no comparative Example nor any evidence for that matter provided by Applicants that shows that the specific thickness and 1-step process of ion exchanging with NaNO3 at 300-600C for 0.5-12hours (30min-720min) as taught by Goto would not arrive at the same results.
Applicants argue against the combination of Goto with ‘227 for the following reasons.
Initially, Applicants argue that ‘227 is related to the premise of surface damage caused by impact (e.g., dropping) while in contrast, Goto relates to a glass for internal components such as hard disk substrates wherein drop-impact conditions are not relevant.
This is not persuasive. While the Office does acknowledge that ‘227 may discuss the benefits of features of their glass being that which provides glass being less likely to break when dropped, collided with, etc., note for the record that ‘227 does clearly suggests that such features can be applied to hard disk substrates (see par 0088 in ‘227). As such, even though Applicants argue that drop-impact conditions would not be relevant to Goto’s hard disk substrates, this is not persuasive as ‘227 clearly suggests motivation for their taught beneficial features to be used in hard disk substrates.
Applicants also argue against the combination that there would be no motivation to combine because as Goto’s glass is crystallized prior to chemical strengthening whereas ‘227’s glass is not crystallized prior to chemical strengthening, applying the teachings of ‘227 to Goto would hinder Goto’s objective for its intended purpose.
This is not persuasive. While the Office does acknowledge that Goto’s glass may be crystallized prior to chemical strengthening whereas ‘227’s glass is uncrystallized prior to chemical strengthening, the rejection was not using the combination to alter Goto’s crystallized glass by making it that of ‘227’s uncrystallized glass that would hinder Goto’s objective. Instead, ‘227 was only used to provide motivation that as ‘227 is clearly suggesting that increasing DOLzero during ion exchange and more specifically, making the ratio of DOLzero/thickness be 15% or more allows for increased strength, it would have been obvious to modify Goto to include making their DOLzero high and specifically be 0.15t or more (15% or more the thickness) during their ion exchange for obtaining desirable strength. As there is nothing in either reference to indicate that the DOLzero, and ratio of DOLzero/t, can not be increased in such a manner in Goto’s crystallized glass, the rejection is still deemed proper and maintained.
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 LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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