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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/12/2026 has been entered.
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 et al. (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 2% 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 is close to touching the claimed range.) A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (see MPEP 2144.05(I), second paragraph).
Regarding claim 2, Trap discloses the glass has a content of GeO2 of from 0.1% to 2% (See Trap at claim 1, claiming 3-20 mol% GeO2, which provides a sum total of 3-20 mol% which is close to touching 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 filed 06/12/2026 have been fully considered but they are not persuasive. At the second to last paragraph of page 3, Applicant argues that Trap does not indicate that the objective of its glass are to have any of the above-noted characteristics of the claimed glass. Examiner notes that this argument appears to be directed towards 7th paragraph of page 3, which states the glass exhibits a small change in the amount of negative charge in the glass during a bias test, while maintaining high acid resistance, which trap fails to suggest.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the glass exhibits a small change in the amount of negative charge in the glass during a bias test, while maintaining high acid resistance) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Additionally, even arguing arguendo that this limitation were claimed, this property is inherent upon the composition of the glass as evidenced by the PGPub of the instant application at [0016] which states the SiO2 content is preferably 55% to 85% … when the content of SiO2 is too small, the acid resistance is liable to be reduced. Because the glass of Trap has a SiO2 content within the range of [0016], the glass of Trap would inherently possess the acid resistance property. The instant specification at [0019] states GeO2, Ta2O5, Nb2O5, and Bi2O3 are each a component that stabilizes a skeleton of the glass to suppress a change in negative charge quantity by a bias test. The total amount of those components is preferably from 0.1% to 6%. Because Trap has a GeO2, Ta2O5, Nb2O5, and Bi2O3 sum which overlaps with this range, the glass of Trap would inherently possess the negative charge quantity property. As such, even assuming the unclaimed limitation above were positively recited, the claimed glass would still be obvious in view of the glass of Trap.
Additionally, Applicant argues the glass of Trap has a GeO2 range outside the instant range of claims 1 and 2. While Examiner agrees the GeO2 content of Trap is mathematically outside of the instantly claimed ranges, the instantly claimed glass remains obvious in view of Trap because the ranges of Trap are close to touching the claimed ranges as detailed in the rejections above. Examiner notes per MPEP 2144.05(I), In re Schrel states where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys. In the instant case, Examiner notes no noticeable difference in the qualities of the glass of Trap and the instantly claimed glass. Per MPEP 2144.05(III), such a rejection may be overcome by successfully showing that the claimed range is critical to achieving unexpected results. In the instant case, no such criticality has been established.
Conclusion
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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