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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Trap (US4156250A, hereinafter referred to as Trap).
Regarding claim 1, Trap discloses a glass for semiconductor element coating (see Trap at the Abstract, disclosing a glass for semiconductor devices), comprising, as a glass composition, in terms of mol%, 55% to 85% of SiO2 (See Trap at claim 1, claiming SiO2 50-75 mol%, which overlaps with the claimed range.) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05), 12% to 40% of PbO (See Trap at claim 1, claiming PbO 7.5-40 mol%, which overlaps with the claimed range.), 0.1% to 10% of Al2O3 (See Trap at claim 1, claiming 3.5-20 mol% Al2O3, which overlaps with the claimed range.), 0 to 7% of B2O3 (See Trap at claim 1, claiming no B2O3, which corresponds with 0% B2O3), and 0.1% to 6% of GeO2 + Ta2O5 + Nb2O5 + Bi2O3 (See Trap at claim 1, claiming no Ta2O5, no Nb2O5, and no Bi2O3, yet claiming 3-20 mol% GeO2, which provides a sum total of 3-20 mol% which overlaps with the claimed range.)
Regarding claim 2, Trap discloses the glass has a content of GeO2 of from 0.1% to 6% (See Trap at claim 1, claiming 3-20 mol% GeO2, which provides a sum total of 3-20 mol% which overlaps with the claimed range.).
Regarding claim 3, Trap discloses 75 mass% to 100 mass% of glass powder formed of the glass for semiconductor element coating of claim 1 (See Trap at claim 1, claiming a composition comprising 100% glass) and 0 mass% to 25 mass% of ceramic powder (See Trap at claim 1, claiming no ceramic).
Regarding claim 4, while Trap does not explicitly disclose the material for semiconductor element coating has a thermal expansion coefficient within a temperature range of from 30°C to 300°C of from 20x10-7/°C to 55x10-7/°C, the thermal expansion coefficient of a glass is a function of the composition of the glass as detailed by the instant specification at [0017] of the PGPub which states when the content of PbO is too large, a thermal expansion coefficient becomes too high. Because the glass of Trap has a composition substantially identical to the instantly claimed composition as detailed in the rejections above, the glass of Trap would inherently possess the claimed thermal expansion coefficient. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Response to Arguments
Applicant’s arguments, see page 3 of the Remarks, filed 01/26/2026, with respect to the rejection(s) of claim(s) 1 under 102 in view of Higashicho have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Trap as detailed above.
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 CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
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