DETAILED ACTION
In the amendment filed on September 10, 2025, claims 15, 17 – 20 are pending. Claim 17 has been amended and claims 1 – 14, 16 have been canceled.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 15, 17, 18, 19, 20 remain rejected under 35 U.S.C. 103 as being unpatentable over Grewal et al. US 4,482,209 (hereafter “Grewal”) in view of Schaefer US 6,921,177 B2 (hereafter “Schaefer”) and Karabin et al. US 2017/0292174 A1 (hereafter “Karabin”).
Regarding claims 15, 17, 19, 20:
Grewal is directed to a mirror structure and method of making the mirror structure (Abstract). Grewal discloses that the mirror structure comprises a set of layers that are deposited by vapor deposition or by sputter deposition (col 1 lines 65 – col 2 line 3). The layers are deposited onto a metallic substrate such as an aluminum alloy substrate (col 2 lines 35 – 46). Grewal discloses that the following layers are successively deposited onto the substrate (col 2 lines 40 – 65; Figure; claims 5 – 7): an adhesive layer 2 [binding layer] of either titanium or chromium, an intermediate layer 3 [finish layer] of aluminum oxide or silicon dioxide [meeting claim 17] in direct contact with the adhesive layer 2, and a reflective layer 4 of either aluminum or silver.
Grewal does not expressly teach a step of polishing a surface of the finish layer opposite a surface of the finish layer that contacts the binding layer; and does not expressly teach that the substrate is formed by additive manufacturing and comprising aluminum and about 2 to about 30% wt silicon.
With regards to the step of polishing a surface of the finish layer opposite the substrate:
Schaefer is directed to high precision mirrors [mirrored apparatus] and methods of making the high precision mirror (Abstract). In an embodiment, Schafer discloses that the method comprises (Fig. 4): fabricating a substrate of primarily aluminum and including silicon, e.g. aluminum 6061-T6 (Fig. 4 block 101; col 3 lines 1 –15, col 5 lines 1 – 10); depositing a finish layer (Fig. 4 block 107; col 5 lines 15 – 30); polishing the outer surface of the finish layer; and depositing a reflective layer of e.g. silver onto the finish layer (col 5 lines 25 –35). Schaefer discloses that the polishing of the finish layer removes peak-to-valley variations that would be present in the finish layer (col 3 lines 25 – 35), which affects reflection scatter (col 2 lines 5 – 20). Schaefer also discloses that polishing the surface of a finish layer also reduces bending effects that can occur due to temperature variation’s effects due to thermal expansion mismatches (col 1 lines 40 – 60, col 5 lines 45 – 65).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Grewal by including a step of polishing the intermediate layer of Grewal because Schaefer teaches that such a polishing helps reduce any peak-to-valley variations that may be present, which in turns affect reflection scatter and because Schaefer teaches that such a polishing reduces a mirror’s susceptibility to bending due to thermal expansion mismatches.
With regards to forming by additive manufacturing and comprising aluminum and about 2 to about 30% wt silicon:
Karabin is directed to new aluminum alloy that may be used in a variety of applications such as elevated temperature applications (Abstract; [0003], [0030]). The alloy may comprise from 0.1 to 3 wt.% Si, and from 1 to 30 vol. % ceramic phase ([0002] – [0003], [0008]). The ceramic phase may comprise of titanium carbide, silicon carbide, aluminum oxide, silicon nitride or combinations thereof [meeting claim 20] ([0012]). The aluminum alloy may be fabricated as an aluminum alloy body by additive manufacturing techniques ([0018]). Additive manufacturing techniques facilitate the ability to form desired bodies with controlled amounts of the constituent elements and microstructures from respective particles ([0018], [0024]); and allow for the formation of aluminum bodies of complex geometries and tailored regions ([0019], [0026]). The alloy
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Grewal in view of Schaefer by using the aluminum alloy disclosed in Karabin because Karabin teaches that their alloy enables articles formed with the alloy to operate at elevated temperatures. With regards to the percentage of silicon by weight, In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05.
Furthermore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Grewal in view of Schaefer and Karabin to have formed the substrate using additive manufacturing techniques because Karabin teaches that such technique allow the fabrication of bodies with controlled amounts of constituent elements and microstructures as well as any desired geometry.
Regarding claim 18:
Grewal in view of Schaefer and Karabin teaches the claimed invention above but fails to teach that the finish layer has the property of being radiation hardened. It is reasonable to presume that the property of being radiation hardened is inherent to Grewal in view of Schaefer and Karabin. Support for said presumption is found in the use of like materials and like processes (i.e. the deposition and use of silicon oxide and aluminum oxide as a finish layer by sputtering or physical vapor deposition shared between Grewal and the instant specification, see [0029], [0030], [0032]; see also Yano et al. “Neutron irradiation damage in aluminum oxide and nitride ceramics up to a fluence of 4.2 x 1026 n/m2 (2000). Journal of Nuclear Materials 283 – 287, page 948 – 949; Fig. 1, Fig. 3 indicating little to no volume change in solid aluminum oxide at neutron fluences below 1 x 1024 n/m2 [1 x 1020 n/cm2], necessarily indicating no cracking, melting, peeling or blistering) which would result in the claimed property. The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the Grewal in view of Schaefer and Karabin product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Response to Arguments
Applicant's arguments filed September 10, 2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
a.) No skilled artisan would have arrived at the claimed resulting layers from the practice of the claimed method from the prior art of record. Present claim 1 requires that a finish layer is provided directly on the recited binding layer and then subsequently polished. To meet present claim 1, Grewal’s layer 3 would have polished, which would never be polished in the case in the teachings of Grewal. Furthermore, the combination of the teachings of Grewal and Schaefer would require the retention of Grewal’s layer 3 to allow for the advantages of layer 4, and thus the omission of layer 3 would not be contemplated by a skilled artisan.
In response to the applicant's arguments, please consider the following comments.
a.) As a preliminary matter, the Examiner notes that the Applicant submitted that present claim 1 requires that a finish layer is provided directly on the recited binding layer and also various arguments that the claims require steps of provision of the recited layers. However, the claim does not require a step of provision, but rather steps of deposition, which have materially narrower scopes compared to steps of provision.
With regards to the contention of layer 3 being “never polished”, the Examiner notes that the step of polishing such a layer is provided by Schaefer, not Grewal. Furthermore, Applicant submits that Grewal teaches that the reflective layer 4 is “provided on top of [amorphous layer 3]” while in a vapor/sputter chamber. However:
1.) Applicant’s quotation is mis-referenced, appearing to reference col 2 lines 65 – 69;
2.) Col 1 at 65 indicates a similar teaching, but indicates that the formation of the layer structures in a vacuum is a preferable method; and
3.) Applicant does not provide the relevance of their submission to the modification of Grewal with the teachings of Schaeffer or where in Grewal or Schaefer would the modification render the prior art unsatisfactory for its intended purpose or change the principle of operation of Grewal.
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
With regards to the contention that layer 3 cannot be polished because it is an amorphous layer, the Applicant has not sufficiently explained why an amorphous layer cannot be polished or otherwise why the modification of Grewal by Schaefer would teach away from layer 3 being polished, especially when amorphicity refers to a material property, not to a surface state. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Finally, Applicant’s argument concerning the omission of layer 3 is misplaced. As discussed in the previous Office Action and the current Office Action, the Examiner indicated that the intermediate layer (i.e. layer 3) maps onto the claimed finish layer.
For these reasons, the Examiner maintains the position that the instant claims are rejection over the prior art of record in the manner discussed above.
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 extension fee 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 JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717