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 .
In view of the Appeal Brief filed on 04/07/2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743
Response to Arguments
Applicant's arguments filed 04/07/2026 have been fully considered but they are partially persuasive.
The argument regarding traversing the Rule 105 Request is not persuasive. The originally filed specification and IDS’s pertained to coating glass. The Examiner had already graciously accepted the amendment to the specification pertaining to a related application/pre-grant publication for consideration such that no new matter is added. The instant application is missing pertinent prior art relating the strengthening of a glass sheet.
The argument regarding the 112b rejection is not persuasive. Though, the claims are interpreted in light of the specification; “small” remains a relative term. “Small” must be defined within the claims for the term’s metes and bounds. As such, claim 1 must be co-examined with claim 10 which properly defines “small” as less than 200 microns.
The miscalculation of the conversion of the Aratani reference is found persuasive. As such, a new reference is used in place of the Aratani reference.
Regarding the remainder of the arguments, Applicant has yet to explain the differences of the instant application to the “New Way Air Bearings” reference wherein the NPL is clearly used for the same application (thermal tempering) with the same structural limitations. While the claims are not being rejected under 35 U.S.C. 101 because the instantly claimed formula pertains to practical application, the scope of the formula and its search is also limited. The Office does not have infinite resources to search and calculate every recorded thermal tempering scenario to see if the recorded situation fits within the instantly claimed formula. For example, heat transfer coefficient is dependent on the specific heat capacity of the glass sheet and the specific heat capacity of the air of the gas bearing, the temperature/thickness of the glass sheet, the temperature/flow rate of the gas. In junction with the convection/conduction argument, the examiner has set forth a prima facie case of obviousness with substantially identical process and structural limitations are read on by the prior art (In re Best). The burden shifts to the patentee to provide evidence, in the prior art or beyond it, or argument sufficient to rebut the examiner's evidence. The Examiner read the argued 00205] excerpt; however, there is no discussion regarding how conduction and/or convection differs with the “New Way Air Bearings” reference. Structurally, there is gas blowing in a small gap wherein conduction is occurring removing heat from the heated source (the glass). Just because the reference does not state conduction is occurring, does not mean the conduction is not inherently occurring.
Claim Interpretation
Claim 1 recites “a compressive stress”, “a non-dimensional surface fictive temperature”, and “fictive temperature…at a surface”. These limitations are considered as product properties stemming from the product-by-process, wherein the instant invention is the method/process. While the Examiner understands that there is a desired property range achieved by the method, the active method steps are being examined and a prima facie case of obviousness can be made if a substantially same process would yield the desired properties.
Claim 4 recites ion-exchanging the glass sheet after thermally-tempering. The instant specification has limited support for this step [00101, 114], but the Examiner is giving full patentable weight to the instant active method step.
Information Disclosure Statement
Rule 105 Request
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
The scope of 37 CFR 1.105 is extended to any assignee because the information required may be known to some members of the assignee even if not known by the inventors.
The authority for the Office to make such requirements arises from the statutory requirements of examination pursuant to 35 U.S.C. 131 and 132. An examiner or other Office employee may make a requirement for information reasonably necessary to the examination or treatment of a matter in accordance with the policies and practices set forth by the Director(s) of the Technology Center or other administrative unit to which that examiner or other Office employee reports.
Due to the amendments to the instant specification and the relevance of the previously filed Information Disclosure Statements, the Examiner is requesting any written descriptions or analyses, prepared by any of the inventors or assignees, of goods or services in competition with or related to the goods or services in which the claimed subject matter has been embodied. Specifically, Examiner notes that applicant has provided evidence of a similar product known or available prior to this filing (see prosecution of 14/814,232). Therefore, Examiner requests any documentation assignee has concerning instruction or installation manuals, advertisements, brochures, catalogues, magazine or journal articles or reviews, presentations at trade or professional shows, etc.
This requirement is an attachment of the enclosed Office action. A complete reply to the enclosed Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action.
Specification
The specification submitted 06/30/2025 is entered with the amendments set forth in the 12/17/2025 submission.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-9 and 11 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a small-gap bearing”. “Small” is a relative term rendering the claim indefinite. Incorporation of claim 10 to claim 1 remedies this deficiency. Dependent claims 2-9 and 11 are rejected because they depend from and thus include all the limitations of claim 1 and do not solve the deficiencies thereof. For the purpose of compact prosecution, claim 10 will be examined with claim 1.
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.
Claim(s) 1-3 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greenhalgh (US-4198463-A) and further in view of Aratani (GB-2232978-A), “New Way Air Bearings” (28th Annual Workshop on Mathematical Problems in Industry for University of Delaware, June 2012).
Regarding claims 1-3 and 10, Greenhalgh teaches a method of strengthening a glass sheet (Col. 5 Line 67) comprising thermally-tempering glass of the glass sheet between opposing gas bearing surfaces of a gap gas bearing supporting the glass sheet at least in part by gas thereof (Fig. 6) to impart a compressive stress (Col. 4 Line 59-66). The thickness of the glass sheet can be less than 3 mm (Col. 3 Line 36). Regarding claim 3, Greenhalgh teaches the glass comprises soda lime silicate (Col. 8 Line 45-50).
Regarding the heat transfer coefficient “greater than or equal to 0.020 cal/s∙cm2∙°C” (claim 1) and “0.0625 cal/s∙cm2∙°C” (claim 2), Greenhalgh does not teach the heat transfer coefficient for their gas bearing. In related thermal tempering art, Aratani teaches of tempering glass in a range of 300 to 1000 kcal/m2h°C (p. 9 Line 14-18, 1000 converts to 0.0278 cal/sec∙cm2°C). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum working ranges of heat transfer for the thermal tempering process taught by Greenhalgh by using known workable range for glass sheets.
Greenhalgh does not expressly teach the gap distance between the gas bearing surface and the major surface of the glass sheet. In related thermal tempering gas art, New Way Air Bearings teaches of introducing a glass sheet between agas bearings with a gap distance of 25 μm (Slide 2, 12, 14). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the improved air bearing with the gap distance that falls within the instant claimed range to thermally temper glass of thinner thicknesses (Slide 2, 13).
Regarding claim 2, depending from claim 1, modified Greenhalgh uses the 0.0278 cal/sec∙cm2°C heat transfer coefficient of Aratani. Aratani is limited to this heat transfer coefficient due to their own apparatus capability (p. 9 Line 22-26). Modified Greenhalgh does not expressly teach the heat transfer coefficient is 0.0625 cal/sec∙cm2°C. New Way Air Bearings teaches a gas bearing with a small gap within the instantly claimed range and a glass substrate with thickness in the instantly claimed range (slide 14). New Way Air Bearings is aware of the heat transfer coefficient (slide 15, question 1) but did not nominally report the value capable by their apparatus. Wherein 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the apparatus of New Way Air Bearings is capable of achieving the heat transfer coefficient of instantly claimed because the apparatus of New Way Air Bearings has the same structure and application of the instant application. Furthermore, New Way Air Bearings is motivated to rapidly cool the glass surface during quenching of glass (slide 2) which would maximize the heat transfer coefficient (slide 15, question 1). It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art one would have been motivated to achieve a higher heat transfer coefficient for the purpose of tempering thinner glass substrate. The burden falls on the Applicant to prove that the apparatus taught by New Way Air Bearings does not operate in the instantly claimed heat transfer coefficient.
Greenhalgh does not expressly teach the mathematical expression of the compressive stress of the non-dimensional surface fictive temperature. The low temperature linear CTE, high temperature linear CTE, elastic modulus, Tsoft, Tstrain, and Tanneal are all material properties of the glass which is specified to be soda lime silicate (reading on claim 3) which Greenhalgh teaches is compatible with their method (Col. 8 Line 45-50). The fictive temperature and the non-dimensional surface fictive temperature are product properties derived from the product-by-process. Wherein 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). A prima facie case of obviousness has been established because soda lime silicate is used in a thermal tempering method of the same structure (small-gap gas bearing) to impart a compressive stress.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greenhalgh (US-4198463-A), Aratani (GB-2232978-A), “New Way Air Bearings” (28th Annual Workshop on Mathematical Problems in Industry for University of Delaware, June 2012) as applied to claim 1 above, and further in view of Isono et al (US-20140050912-A1).
Regarding claim 4-5, depending from claim 1, Greenhalgh does not teach of further ion-exchange the glass sheet. In related strengthening glass art, Isono teaches of thermally tempering glass to impart a compressive stress [0067] and further ion-exchanging the glass sheet after the thermal tempering [0014, 132-136] wherein after the ion-exchanging, 10-50 kg/mm2 of compressive stress is generated [0135] (100 MPa ≈ 10 kg/mm2). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that a skilled artisan understands that ion-exchanging the glass sheet after the thermal tempering is a known method to further increase the strength of the glass sheet.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greenhalgh (US-4198463-A), Aratani (GB-2232978-A), “New Way Air Bearings” (28th Annual Workshop on Mathematical Problems in Industry for University of Delaware, June 2012) as applied to claim 1 above, and further in view of Luo et al (US-20140335322-A1).
Regarding claim 6-7, depending from claim 1, Greenhalgh does not expressly teach of the flatness or roughness of the glass sheet that was thermally-tempered. In related glass processed by air bearing art, Luo teaches of using a gas bearing to shape the glass sheet [0052-53] to yield a glass that has the flatness [0058] and roughness [0061] that corresponds to the instantly claimed range. It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the gas bearing of modified Greenhalgh to achieve the desired flatness and roughness of the instantly claimed range. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05(I).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greenhalgh (US-4198463-A), Aratani (GB-2232978-A), “New Way Air Bearings” (28th Annual Workshop on Mathematical Problems in Industry for University of Delaware, June 2012) as applied to claim 1 above, and further in view of Devitt (US-20060219605-A1).
Regarding claim 8-9, depending from claim 1, New Way Air Bearings teaches of forced convection for the cooling gas bearing (Slide 15). New Way Air Bearings does not expressly teach the gas bearing in terms of conduction and convection. In related gas bearing for glass art, Devitt teaches that the gas bearing moves the radiation through the glass away [0040], reading on conduction. It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the forced convection of modified Greenhalgh is conducting heat away.
Regarding claim 9, the forced convection cooling of the combination relies on physical contact of the gas against the surface of the glass. Convection would be not forced, as in relying on natural hot to cold currents to dissipate the thermal energy. Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that forced convection cooling is conducting more heat away from the glass sheet than by unforced convection.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greenhalgh (US-4198463-A), Aratani (GB-2232978-A), “New Way Air Bearings” (28th Annual Workshop on Mathematical Problems in Industry for University of Delaware, June 2012) as applied to claim 1 above, and further in view of Wright et al (US-4194898-A).
Regarding claim 11, depending from claim 1, modified Greenhalgh does not expressly teach what gas is used for their gas bearing. In related fluid bearing thermal tempering of glass art, Wright teaches that helium has a higher thermal conductivity than air and produces a more rapid cooling for more toughening of a glass sheet (Col. 7 Line 3-19). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use helium for the gas bearing for the reasons taught by Wright.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-20130019639-A1 teaches fictive temperature calculation of thermally tempered glass, also teaches overlapping heat transfer coefficient
US-20140290310-A1 teaches a similar structure to the instant figure with different heat transfer coefficient units
US-20160031753-A1, WO-2017020041-A1, WO-2017019837-A1 is applicant own prior art that teach the mathematical expressions being argued
The New Way/Glaston Problem substantially teaches the New Way Air Bearings reference
US-20090291209-A1 teaches a similar apparatus for the coating embodiment
US-20060016220-A1 teaches helium for cooling
US-3677729-A, US-5562750-A, US-5672191-A, US-20060150683-A1 teach of similar gap gas bearing systems to strengthen glass sheet
JP-2004107201-A teaches heat transfer coefficient of 1.4 kW/m2K which converts to 0.0334 cal/sec∙cm2°C
US-4113458-A teaches 0.02 cal/sec∙cm2°C
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN S LEE whose telephone number is (571)272-2645. The examiner can normally be reached 9am - 5pm Mon-Thurs.
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/STEVEN S LEE/Examiner, Art Unit 1741
/JODI C FRANKLIN/Primary Examiner, Art Unit 1741
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