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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 16, 2026 has been entered.
Examiner’s Comment
Given that Applicants’ Affidavit indicates the previously applied reference of Ogasawara (WO2020179872), published within one year from Applicants’ effective filing date, is commonly owned, Ogasawara has been withdrawn as prior art and is no longer applied herein.
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 1-6 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.
Applicants’ specification as filed does not appear to provide clear support for the now claimed ratio of DOLzero to thickness being 15.0% or more.
Initially, note that nowhere in the specification as filed is the DOLzero/thickness ratio range claimed explicitly taught.
Additionally, while the Examiner acknowledges that par 0035 of the specification as filed may discuss DOLzero and thickness wherein a ratio can arguably be calculated, note that not only is this paragraph limited to 0.7mm thickness, and not for any thickness as would be allowed by the presently claimed limitation, but the values calculated in the paragraph have specific lower and upper limits. Specifically, the paragraph discusses a thickness of 0.7mm (700micron) with a lower limit DOLzero of 70micron and upper limit of 180micron which provides for a ratio range of 0.1 (70micron /700micron)(10.0%) to 0.257 (180micron/700micron)(25.7%). This range does not support the entirety of the open-ended range claimed (15.0% or more”).
Even further, regarding Examples 2-12 in Applicants’ Table 5, note that the lowest ratio one can ascertain from following the DOLzero and thickness values of these Examples is 15.1% (Example 9) and the highest ratio appears to be 17.6% (see Example 2). This is not enough to support the entirety of the open-ended range claimed (15.0% or more”).
Finally, the Examiner notes for the record that while the now claimed ratio range has a minimum end point of 15.0%, when calculating ratios from Applicants’ Examples as well as any ratios that can be ascertained following Applicants’ disclosure, it is not clear where the exact point of 15.0% is even coming from. Nowhere in the specification has the Examiner been able to locate this exact ratio disclosed either through explicit disclosure or following calculations from the disclosure or Examples. The Office urges Applicants to please clarify where this specific end point is disclosed and clearly supported in the specification as filed.
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.
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 January 16, 2026 have been fully considered but they are not persuasive.
Initially, Applicants argue that as shown in Tables 1-3 of their disclosure, in the reinforced crystallized glass of the present application, the DOLzero/t ratio is at least 15.0% (with respect to a glass thickness of 0.77mm, DOLzero is 115.9micron).
This is not persuasive. Initially for clarity of record, the Examiner points out that Applicants’ relied upon Tables 1-3, while illustrating various compositions, do not actually show any DOLzero/t ratios. Instead, Applicants’ Table 5 is the Table in which ratios can be calculated. Further, note that while Applicants assert a DOLzero/t ratio is at least 15.0% with respect to a glass thickness of 0.77mm, DOLzero is 115.9micron, using a thickness of 0.77mm and DOLzero of 115.9micron actually provides for a ratio of 15.1% when rounded to the required tenth decimal place. Even further, even if Applicants’ Table 5 may have an Example that provides a DOLzero/t ratio of 15.1% with respect to a glass thickness of 0.77mm, DOLzero is 115.9micron, this in no way supports the entirety of the open ended claimed range of 15% or more, let alone for a percentage of 15% or more with respect to any other thickness that is not 0.77mm.
Applicants also argue that Goto fails to disclose a DOLzero/thickness ratio now claimed because Goto only teaches in par 0150 an ion-exchange depth of 5-20micron and thickness of 0.635mm in par 0138 which provides for a ratio of approximately 0.8% to 3.1%.
This is not persuasive. Initially, note that par 0150 of Goto in which Applicants’ rely on as support is referring to Goto’s Examples (see “the ion exchange of the Examples reached a depth from 5 to 20 .mu.m” in par 0150) and a reference is not limited to their Examples but instead what it teaches as a whole. Specifically, even though the paragraph may describe their Examples reach a depth (DOLzero) of 5 to 20micron in a 0.635mm thick glass in no way means that Goto is limiting their depth to this range instead, Goto is only limited to what they teach as a whole.
In the instant case, as pointed out by Applicants and in the Office Action above, Goto does teach a thickness is 0.635nm (0092, 0138) and this 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.
While Applicants further argue that because Goto aims to provide a glass substrate for magnetic recording media capable of suppressing elution of alkali ion, there would not be reasonable motivation for one skilled in the art to chemical strengthen beyond what is necessary as this would hinder Goto’s objective, this is not persuasive.
Initially, for reasons above, given the similarities between Goto and Applicants’, one skilled in the art would reasonably conclude the claimed chemical strengthening features to result. Alternatively, while Goto may discuss suppressing elution of alkali ions, Goto in no way limits what their DOLzero/thickness ratio can be nor do they provide any indication that large ratios cannot be used while achieving their objective. Instead, Goto only generally teaches glass for use as hard disk substrates in information recording media. As it was also provided in the Office Action that ‘227, who similarly teaches glass used for hard disk substate for information recording media, 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.
Conclusion
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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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784