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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/17/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Present claim 5 depends from claim 1 and does not further limit claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
The claims are given the broadest reasonable interpretation in view of the specification. Present claim 1 recites, “the dot does not include a crack having a length of 10 µm or more” This is supported in [0031] of the specification which states: the fact that no crack is formed can be checked by microscopic observation… In a case in which a crack is present, a length of the crack is measured. In this measurement, it is determined that a crack is not formed in a case in which there is no crack starting from the dot 104 and having a length of 10 microns or more, and it is determined that a crack is formed in a case in which there is a crack starting from the dot 104 and having a length of 10 microns or more.
This indicates a substrate with dot without cracks does sometimes exist. As long as the prior art does not indicate a crack having a length of 10 microns or more it is considered to meet this limitation.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-3, 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (WO 2018150759) in view of Motoyuki (KR 20030023508) as cited in the machine translation herein and Katayama (WO 2016178344) as cited in the machine translation provided herein.
Regarding claims 1, 5, and 8, Kobayashi discloses a glass substrate in which a dot (140) is formed on a region of a surface (see Fig 2-10) producing a marking,
Kobayashi indicates there is a risk of cracks but does not state a crack of 10 microns or more and no cracks are depicted in Fig 2-10, and in Table 1 Examples 1-4 it was found no cracks occurred,
Kobayashi discloses the marking made up of said dots with a diameter of 5-15 microns and a roughness of about .45nmthus a smaller diameter than present claim 1.
In an analogous art of forming a marking (Fig 3), made up of dots (Page 1; paragraph 5) with a diameter of the dots being.05mm to .2 mm, thus 50-200 microns (Page 3; paragraph 2). It would be obvious to modify the diameter of the dots making up the marking in Kobayashi with those suggested by Katayama as motivated to provide good visibility of the marking (Page 3; paragraph 4)
Kobayashi is silent as to the retardation in the region in which the dot is formed is equal to or smaller than 50 nm.
Kobayashi states a dot 140 can be formed by irradiating the surface of a glass plate with a laser. The laser may be a pulsed laser or a continuous wave laser.
Analogous art Motoyuki of marking glass suggests using an ArF laser with a wavelength less than 360nm to yield a good internal marking with retardation less than 20nm such that there is no impairment to optical accuracy (at least abstract) and
It would be obvious to one of ordinary skill in the art to produce the dot of Kobayashi with a retardation of 20nm or less as motivated to provide good optical quality and visibility.
Regarding claim 2, Kobayashi suggests a depth of the dot is 1-10 μm thus overlapping with the claimed range of claim 2. Overlapping ranges are prima facie obvious
Regarding claim 3, Kobayashi suggests the retardation in the region in which the dot or marking is formed is less than 20nm thus overlapping with claim 3 of equal to or larger than 5 nm and equal to or smaller than 50 nm.
Regarding claim 6, Kobayashi discloses The glass plate prepared in step S110 is cut into a desired shape thus it would be obvious to a skilled artisan to prepare the glass substrate having a circular shape or a rectangular shape as motivated to prepare a desired shape product.
Regarding claim 7, the glass substrate of Kobayashi as disclosed in claim 1 is capable of the intended use for supporting a semiconductor device.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (WO 2018150759) in view of Motoyuki (KR 20030023508) as cited in the machine translation herein herein and Katayama (WO 2016178344) as cited in the machine translation provided herein. as applied above and further in view of Yuan (US 20200131080) .
Regarding claim 4, Kobayashi suggests a silica glass but fails to discuss the bending strength.
Yuan discloses a glass suitable for use as substrate with a four-point bending strength of the glass substrate is equal to or larger than 110 MPa [0050].
It would be obvious to one of ordinary skill in the art to modify Kobayashi with a base glass taught by Motoyuki as motivated to provide increased surface strength [0050].
It would be obvious to one of ordinary skill in the art to place the dots of Kobayashi at any dimension from an end face as motivated to provide the desired marking.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JODI COHEN FRANKLIN whose telephone number is (571)270-3966. The examiner can normally be reached Monday-Friday 8 am-4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Hindelang can be reached at (571) 270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JODI COHEN FRANKLIN
Primary Examiner
Art Unit 1741
/JODI C FRANKLIN/Primary Examiner, Art Unit 1741
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