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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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) 1-10, 12-13 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by Mauro (USPub2010242375) or, in the alternative, under 35 U.S.C. 103 as obvious over Mauro (USPub2010242375) in view of USPub20130216775.
Regarding claim 1: Mauro teaches the following laminated glass article wherein the cladding and core are fused (abstract) and the cladding has a porous region at the surface (see Figure 3, 0044 and entire disclosure regarding phase separating the glass cladding into first and second phases and then etching the cladding to remove the second phase making the cladding porous).
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While Mauro may not disclose the transmittance and reflectance properties as required by claims 1-6, the thickness of the porous region required by claims 1, 10 and 12, an average pore size and porosity as required by claims 7-9, or a roughness as recited in claim 13, the Examiner notes the following.
Initially, Applicants disclosed cladding and core are of compositions (see published specification 0078-0086, 0099-0104 and Examples) which are substantially similar to that disclosed by Mauro (see 0028-0037, 0055 and Examples).
Applicants disclose their article being made by first heat treating the article at temperatures of 500-1100C for a duration of 1min to 24hours to phase separate the cladding glass into first and second phases (published specification par 0054-0055, Example, Applicants claims 14-16) and Mauro similarly heat treats their article to phase separate their cladding glass into first and second phases at temperatures and durations falling within Applicants’ disclosed ranges (see 0063-0064 and 0071).
Applicants disclose that their article is then etched in an etchant solution for a duration of 60-120seconds to remove the second phase and create the porous region wherein the etchant solution includes 0.5-10vol% of an acid such as HF, etc. (see published specification 0057-0062, Example, Applicants’ claims 17-18). Mauro similarly discloses their article being then etched in an etchant solution to remove the second phase and create the porous region wherein the etchant solution includes an acid such as HF, etc. (0067), the etchant solution can include a content of acid falling within the range disclosed by Applicants and a duration of etching also falling within the range disclosed by Applicants (see Mauro’s Example).
As shown above, Applicants’ article and method appears to be substantially similar to that of Mauro.
While the Office does acknowledge that Applicants additionally appear to disclose in their specification that after the etching treatment, the “article may, according to embodiments, be submerged in a room temperature water bath for a time period that is greater than or equal to 5 seconds and less than or equal to 300 seconds” (see published par 0062) which is not explicitly disclosed in Mauro, note that the “may, according to embodiments” language does not appear to make it a requirement to arrive at the claimed properties. As such, on its face, even though Mauro may not mention a last water treatment step, given that Mauro teaches the claimed article and their method appears to meet all the required steps of Applicants’ method, one skilled in the art would reasonably conclude the same properties and features to result (MPEP 2112).
Alternatively, in the instance Applicants show that their disclosed water treatment would be required to meet the property and features claimed, the following is noted.
Initially, Mauro does not exclude such a treatment but Mauro is related to phase separation glass wherein the glass is heated to phase separate and then acid etched to remove a phase and create porosity in the glass.
As ‘775, who similarly teaches phase separation glass wherein the glass is heated to phase separate and then acid etched to remove a phase and create porosity in the glass, discloses that it is desirable to water treat after acid etching by submerging in room temperature to 100oC water for a duration of 1-50hours in order to suppress residing components from attaching to the porous glass skeletons, and consequently, a porous glass having a higher porosity can be provided (0100, 0101), it would have been obvious to one having ordinary skill at the time of invention to modify Mauro to include a water treatment step after their acid etching by submerging in room temperature to 100oC water for a duration of 1-50hours in order to suppress residing components from attaching to their porous glass skeletons, and thereby create higher porosity if desired.
As Mauro teaches the claimed article and their method meet all required steps of Applicants’ method, one skilled in the art would reasonably conclude the same properties and features to result (MPEP 2112).
Response to Arguments
Applicant's arguments filed July 17, 2026 have been fully considered but they are not persuasive.
In summary, Applicants argue against the Office’s rejection that the thickness as claimed would be expected to be inherent in Mauro and assert that the Office has failed to provide specific, concrete evidence to show that a laminate glass made through the methods disclosed in Mauro with the compositions disclosed therein would necessarily have a porous region with thickness as claimed and instead, only merely points to disclosures in Mauro without any evidence.
This is not persuasive. While Applicants argue that the Office has provided no concrete evidence to support their assertion of inherency, note that the Office does not have to actually show via concrete evidence the thickness resulting. Instead, the Courts have simply required that in relying upon inherency, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). In the instant case, as discussed in the Office Action, the Examiner did provide clear technical reasoning to reasonably support their determination that the claimed porous region thickness would result.
Specifically, the Office first noted that Mauro teachings the claimed core and glass cladding structure and Applicants disclosed cladding and core are of compositions (see published specification 0078-0086, 0099-0104 and Examples) which are substantially similar to that disclosed by Mauro (see 0028-0037, 0055 and Examples).
The Office then noted that Applicants’ article is made by first heat treating the article at temperatures of 500-1100C for a duration of 1min to 24hours to phase separate the cladding glass into first and second phases (published specification par 0054-0055, Example, Applicants claims 14-16) and Mauro similarly heat treats their article to phase separate their cladding glass into first and second phases at temperatures and durations falling within Applicants’ disclosed ranges (see 0063-0064 and 0071).
Further, the Office noted that Applicants’ article is then etched in an etchant solution for a duration of 60-120seconds to remove the second phase and create the porous region wherein the etchant solution includes 0.5-10vol% of an acid such as HF, etc. (see published specification 0057-0062, Example, Applicants’ claims 17-18) and pointed out that Mauro similarly discloses their article being then etched in an etchant solution to remove the second phase and create the porous region wherein the etchant solution includes an acid such as HF, etc. (0067), the etchant solution can include a content of acid falling within the range disclosed by Applicants and a duration of etching also falling within the range disclosed by Applicants (see Mauro’s Example).
As clearly laid out above, Applicants’ article and method is substantially similar to that of Mauro and given that it is Applicants’ method that is producing the porous region, one skilled in the art would reasonably conclude the same results (i.e. thickness of the resulting region, etc) to be present (MPEP2112).
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents reasoning to show inherency, the burden of production shifts to the Applicant (MPEP 2112 V.) As Applicants have provided no evidence that the claimed features would not result, the rejection is maintained.
While the Office did acknowledge that Applicants additionally appear to disclose in their specification that after the etching treatment, the “article may, according to embodiments, be submerged in a room temperature water bath for a time period that is greater than or equal to 5 seconds and less than or equal to 300 seconds” (see published par 0062) which is not explicitly disclosed in Mauro, note that the “may, according to embodiments” language does not appear to make it a requirement to arrive at the claimed properties. As such, on its face, even though Mauro may not mention a last water treatment step, given that Mauro teaches the claimed article and their method appears to meet all the required steps of Applicants’ method, one skilled in the art would reasonably conclude the same properties and features to result (MPEP 2112).
Alternatively, the Office also indicated that in the instance Applicants show that their disclosed water treatment would be required to meet the property and features claimed, the following is noted.
Initially, Mauro does not exclude such a treatment but Mauro is related to phase separation glass wherein the glass is heated to phase separate and then acid etched to remove a phase and create porosity in the glass.
As ‘775, who similarly teaches phase separation glass wherein the glass is heated to phase separate and then acid etched to remove a phase and create porosity in the glass, discloses that it is desirable to water treat after acid etching by submerging in room temperature to 100oC water for a duration of 1-50hours in order to suppress residing components from attaching to the porous glass skeletons, and consequently, a porous glass having a higher porosity can be provided (0100, 0101), it would have been obvious to one having ordinary skill at the time of invention to modify Mauro to include a water treatment step after their acid etching by submerging in room temperature to 100oC water for a duration of 1-50hours in order to suppress residing components from attaching to their porous glass skeletons, and thereby create higher porosity if desired.
As clearly laid out above, Applicants’ article and method is substantially similar to that of Mauro and given that it is Applicants’ method that is producing the porous region, one skilled in the art would reasonably conclude the same results (i.e. thickness of the resulting region, etc) to be present (MPEP2112).
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents reasoning to show inherency, the burden of production shifts to the Applicant (MPEP 2112 V.) As Applicants have provided no evidence that the claimed features would not result, the rejection is 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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