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 .
Introduction
Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
Claims 1-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ortner et al. (US 2018/0215647 A1)(Ortner).
Ortner discloses a plate-like glass (i.e., panel). See the title. Glass is inherently a “vitreous material.” Ortner discloses employing a glass having a coefficient of thermal expansion of 3.3 x 10-6K-1. See paragraph [0080]. The plate has opposing surfaces, a thickness between the surfaces and a channel (i.e., recess) which joins the surfaces. See the abstract and Figure 12. The wall of the channel between the surfaces has a plurality of hemispherical depressions (i.e., dome-shaped hollows). See the abstract. Hemispherical depressions have ridges that enclose them as shown in Figure 7.
Ortner fails to disclose:
The mean roughness of the wall of the channel is least 50 nm and less than 5 µm (claim 1);
The mean roughness value is at least 50 nm and less than 1 µm (claim 5) and
The anisotropy limitations of instant claims 12 and 13.
However, these features are presumed to be inherent to the article of Ortner for two reasons. See MPEP 2112. First, the SEM micrograph of Figure 7 of Ortner is identical to instant Figure 5. Instant Figure 5 shows the surface of the channel and is formed in accordance with the instant invention. See paragraph [0079] of the instant specification as published as US 2023/0311248 A1. If the surface of Ortner is microscopically identical to the surface of the present invention, the mean roughness and anisotropy must also be the same.
Second, the method taught by Ortner and the method of the instant invention are nearly identical:
Step/parameter
Ortner disclosure
Location in Ortner
Instant invention
Location in Pre Grant publication of the instant invention
Laser
YAG; 1064 nm
[0053]
Nd:YAG 1064 nm
[0039]
Laser dia.
12 mm
[0053]
12 mm
[0039]
Laser pulse duration
10 ps
[0053]
< 15 ps
[0044]
Number of pulses
4 or more
[0053]
3 to less than 10
[0041]
Burst frequency
20 ns
[0053]
20 ns
[0070]
Pulse energy
At least 400 microjoule
[0053]
At least 400 microjoule
[0070]
Etchant
KOH
[0054]
KOH
[0073]
Etchant concentration
6-30mol/L
[0054]
6-30 mol/L
[0073]
Etching pH
> 12
[0054]
> 12
[0073]
Etching temperature
> 90°C
[0054]
60-100°C
[0051]
Etching time
8 hours
[0081]
Several hours
[0052]
If the surface of the channel is formed in an identical manner, then the wall mean surface roughness and anisotropy must be the same.
As to claims 2 and 3, Ortner teaches the channel runs transverse, in particular perpendicular, to the side face. See paragraph [0072].
As to claim 6, Ortner teaches the hemispherical depressions (i.e., domes) have a transverse dimension (i.e., diameter) of 5 to 20 µm. See paragraph [0074].
As to claims 7 and 8, Ortner discloses forming multiple channels in which each is formed by the same method and will therefore have the claimed mean roughness. See Figures 3-6.
The transmission recited in claims 9 and 10 is presumed to be inherent to the product of Ortner because it is formed in an identical manner with a glass that is identical to the glass recited in instant claim 14.
As to claim 14, Ortner discloses using a glass containing 63-83wt% SiO2. See paragraph [0080]
As to claim 15, Ortner teaches the glass may be used as a fuel pressure sensor. See paragraph [0091].
Response to Arguments
Applicant's arguments filed 18 June 2026 have been fully considered but they are not persuasive.
The main issue in this case is that the instant application uses the same figure as employed by the anticipatory reference, Ortner. The examiner bases the inherency of the microstructural features upon the identity of the figures. There is an overlap in inventorship and assignee between Ortner and the instant invention. As between the Patent Office, and applicants, applicants are in a much better position to resolve this issue.
Applicants argue the rejection has not met the burden of establishing the mean roughness or anisotropy are necessarily present in Ortner. Applicants comment visual similarity is insufficient to establish inherency. The argument is not deemed persuasive because the micrographs in Ortner and the instant invention are identical; it appears applicants used the same micrograph in both instant Figure 5 and Figure 7 of Ortner.
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Instant Figure 5 Figure 7 of Ortner
Instant Figure 5 Ortner Figure 7
The identical nature of the figure (which shows the microstructural features of the recess and depressions) and almost identical processes are believed to be a scientific rationale for establishing the missing characteristics are necessarily present in Ortner. Once an appropriate rejection is made, the burden shifts to applicants to prove the characteristic is not present. See MPEP 2112 V. Applicants are welcome to submit an experimental or opinion declaration under 37 CFR 1.132 to rebut the assertion that Figure 7 of Ortner does not have the claimed mean roughness or anisotropy.
Applicants separately argue each of etch rate, laser pitch and laser parameters impact the resultant microstructural features. This argument is noted, however, the method taught by Ortner and the method of the instant invention are nearly identical as shown in the table above. The etching conditions closely overlap which will result in similar etch rates.
Applicants argue that Ortner does not teach or suggest any of the correlations between the processing conditions and the resultant roughness and anisotropy. These arguments seem more relevant to obviousness rejection, and the rejection over Ortner is an anticipation rejection. Regardless, Figure 7 of Ortner is identical to instant Figure 5.
Applicants argue:
The Office Action also asserts that FIG. 7 of Ortner is "identical" to FIG. 5 of the present application and then uses this allegation of visual similarity to infer the quantitative and structural limitations (e.g., mean roughness and anisotropy) that are disclosed and claimed in the present application. That inference is unsupported.
The instant specification (as filed) shows features of the present invention in paragraph [0079] and relate how these features result in the claimed roughness and anisotropy in paragraph [0080]-[0084].
Applicants argue:
MPEP § 2125 explains that drawings not disclosed as being to scale cannot be relied upon for precise proportions or dimensions.
Instant Figure 5 and Ortner Figure 7b each have a 2 µm bar in the figure showing scale. The examiner reiterates that the micrographs are identical down to the pattern formed by the contrasting specks and the shape of the lines identifying features.
Applicants argue:
Ortner describes FIGS. 6 and 7 as electron micrographs of an edge of a glass element. See paragraph [0037]. By contrast, FIG. 5 of the present application, by contrast, is described as an electron microscopy image of a recess wall, specifically a channel section 31 of the recess wall 11. See paragraphs [0058] and [0079].
The examiner reads these disclosures as agreeing with each other. Each description discusses an edge having a semi-cylindrical recess in an edge of a glass.
Conclusion
THIS ACTION IS MADE FINAL. 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 David Sample whose telephone number is (571)272-1376. The examiner can normally be reached Monday to Friday 7AM to 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/David Sample/Primary Examiner, Art Unit 1784
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