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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 31, 2026 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application JP2014-241601 under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. JP2014-241601 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, there does not appear to be clear support for the entirety of the ranges claimed in combination. As such, the present Application is based on the filing date of November 27, 2015. If Applicants attempt to assert that there is sufficient support, the Office requests the filing of an English translation for close review.
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.
Claim(s) 1-6, 8-11, 13-15, 17-18 and 21 is/are rejected under 35 U.S.C. 103 as
being unpatentable over Tokunaga (WO2013161902, rejection using corresponding English document USPub20150045203).
Regarding claims 1 and 21: Tokunaga teaches substrates comprising non-alkali glass compositions, in mol%, as shown below having ranges falling within or overlapping Applicants (MPEP 2144.05).
Claim 1 and 21
Tokunaga
SiO2
66-74
66-70 (0034)
Al2O3
10-13
12-14 (0035), preferably 13.5 or less (0053)
B2O3
0.1- less than 3 or 0.1 to less than 1.5
>0-1.5 (0036), preferably at least 0.2 (0054)
MgO
10-12
>9.5-13 (0037), preferably 12 or less (0056)
CaO
5-11
4-7 (0038), preferably 5 or more (0059)
SrO
0-1.7
0.5-4.5(0039)
BaO
0-0.5
0-0.5 (0040)
ZrO2
0-2
0-2 (0041)
MgO+CaO+SrO+BaO
16-20
17-21 (0041), preferably 20 or less (0064)
MgO/(MgO+CaO+SrO+BaO)
0.25-0.53
0.4 or more (0041)
MgO/(MgO+CaO)
0.3-0.73
0.4 or more (0041)
MgO/(MgO+SrO)
0.43-1
0.6 or more (0041)
Tokunaga’s glass has the following properties (abstract, 0033, 0084 0090) falling within or overlapping that claimed (MPEP 2144.05).
Claim 1
Tokunaga
YM (E)
70-95GPa
84GPa or more
CTE (x10^7) (50-350oC) (α)
32-45
30-43, preferably 35 or more
Tokunaga’s above YM and CTE used in the claimed formula allows for values overlapping that claimed (MPEP 2144.05).
Additionally note for the record that given that Tokunaga’s Examples clearly illustrate the desire for glasses according to their invention to have a combination of YM and CTE properties satisfying the claimed formula (for instance but not limited to, see Example 2 which provides for 20α+7E=1394), arriving at a YM and CTE satisfying the claimed formula would have been particularly obvious.
Regarding claims 2-3 and 8: Note that Tokunaga’s above ranges allow for compositions providing formula relationships overlapping that claimed (MPEP 2144.05).
Additionally note for the record that given that Tokunaga’s Examples clearly illustrate the desire for glasses according to their invention to meet the claimed formulas (for instance but not limited to, see Example 2 which provides for formula of claim 2 being 85.94 and that of claims 3 and 8 being 6.63), arriving at a composition while satisfying the claimed formulas would have been particularly obvious.
Even further regarding claims 3 and 8, note that as Tokunaga explicitly teaches that a relationship of Al2O3x(MgO/(MgO+CaO+SrO+BaO) to be 5.5 or more is desirable for increased Young’s modulus (0074), it would have been obvious to include such a relationship for increasing Young’s modulus.
Regarding claims 4-5, 9-10, 13-14 and 17: Tokunaga teaches T2 being 1710oC or lower (abstract, 0086), preferably 1690oC or lower (0086), and T4 being 1320oC or lower (abstract, 0087).
Regarding claims 6, 11, 15, and 18: Tokunaga does teach throughout that their glass can be used as a non-alkali glass substrate in a-Si or p-Si type TFT LCDs (see 0010, 0078 for instance) which the Examiner takes official notice that TFT LCDs are also known as/called active-matrix thereby meeting the claims.
2. Claim(s) 7, 12, 16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga (WO2013161902, rejection using corresponding English document USPub20150045203) as applied to claims 6, 11, 15, and 18 above, in further view of Shang (US Pub 20040203181).
As discussed above, Tokunaga teaches the invention of claims 6, 11, 15 and 18.
Regarding claims 7, 12, 16 and 19: It is initially noted that the limitation underlined below are all process limitations and it has been held by the courts that while a product may be defined by a process, patentability is based on the product itself and not its method of production (MPEP 2113). More specifically, if the prior art teaches a product as claimed, the claim will be considered to be met even if the prior art teaches a different method.
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426
632
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It is noted that the only structure the claim requires is
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620
848
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In the instant case, although Tokunaga fails to teach the specifics of the structure above, as mentioned previously, Tokunaga’s substrate is a glass substrate used for an AMLCD.
As Shang, who similarly teaches glass substrates used for AMLCD, discloses the desire to place a wiring film comprising a Cu metal on the glass substrate and an insulating film of an inorganic substance on the wiring film (see 0065), wherein the wiring metal film has a thickness meeting that claimed (0065) and the insulating film has a thickness meeting that claimed (0065), for the formation of a transistor in such a panel (abstract), it would have been obvious to one having ordinary skill at the time of invention to modify Tokunaga to include a wiring film comprising a Cu metal on their glass substrate and an insulating film of an inorganic substance on the wiring film, wherein the wiring metal film has a thickness meeting that claimed and the insulating film has a thickness meeting that claimed, according to Shang for the formation of a transistor in their panel.
Although it may not be explicitly disclosed that the metal has a product as claimed, given that the metal wiring film is Cu which is the same material as Applicants’, one having ordinary skill would reasonably conclude it to have a product of a Young’s modulus and a CTE as claimed, absent an evidentiary showing to the contrary (MPEP 2112).
Although it is not explicitly disclosed that insulating film has an average CTE at the claimed temperature range smaller than that of the glass, given that the insulating film is silicon oxide (see Shang) which is the same as Applicants and Tokunaga’s non-alkali glass is the same as Applicants’, one having ordinary skill would reasonably conclude the same relationship of properties to be present absent an evidentiary showing to the contrary (MPEP 2112).
Although Tokunaga fails to teach the long side, short side and thickness of their glass substrate, it is initially noted that differences in relative dimensions will not render the claimed glass patentable when the claimed relative dimensions would not perform differently than the prior art glass (MPEP 2144.04). In the instant case, as there is nothing of record that would indicate the claimed dimensions to result in the claimed glass to function differently.
Alternatively, it is additionally noted that Tokunaga does not place limits on their dimensions. Instead, as mentioned above, Tokunaga only generally teaches their glass substrate which will be used in an AMLCD. As Kato clearly suggest the desire for a glass substrate of a AMLCD to have dimensions falling within the ranges claimed (see Kato Col. 1, Col. 4 and Col 10), one having ordinary skill would have found it obvious to make Tokunaga’s glass with the dimensions as claimed to obtain a desirable AMLCD substrate.
Claim(s) 1-6, 8-11, 13-15, 17-18 is/are rejected under 35 U.S.C. 103 as being
unpatentable over Nishizawa (WO2013183626, rejection using corresponding English document USPub2015087495).
Regarding claim 1: Nishizawa teaches substrates comprising non-alkali glass compositions, in mol%, such as that shown below (0028-0035, 0037-0044) wherein the individual ranges fall within or overlap that claimed (MPEP 2144.05).
Claims 1
Nishizawa
SiO2
66-74
63-74
Al2O3
10-13
11.5-16, preferably 13.5 or less (0047)
B2O3
0.1- less than 3
>1.5-5, preferably 4 or less (0048)
MgO
10-12
5.5-13, preferably 5.5 or more (0049)
CaO
5-11
1.5-12, preferably 4 or more (0050)
SrO
0-1.7
1.5-9, preferably 5 or less (0051)
BaO
0-0.5
0-1, preferably 0.5 or less (0052)
ZrO2
0-2
0-2
MgO+CaO+SrO+BaO
16-20
15.5-21, preferably 16 or more and 20 or less (0054)
MgO/(MgO+CaO+SrO+BaO)
0.25-0.53
0.35 or more
Regarding the MgO/(MgO+CaO) and MgO/(MgO+SrO) relationships, note that the above ranges allow for compositions providing formula relationships overlapping that claimed (MPEP 2144.05).
Additionally note for the record that given that Nishizawa’s Examples clearly illustrate the desire for glasses according to their invention to meet the claimed formulas (for instance but not limited to, see Example 1 which provides for MgO/(MgO+CaO) being 0.63 and that of MgO/(MgO+SrO) being 0.66), arriving at a composition while satisfying the claimed formulas would have been particularly obvious.
Nishizawa’s glass has the following properties (abstract, 0027, 0070, 0076) falling within or overlapping that claimed (MPEP 2144.05).
Claim 1
Nishizawa
YM (E)
70-95GPa
78GPa or more and even 82GPa or more
CTE (x10^7) (50-350oC) (α)
32-45
30-43, preferably 35 or more
Nishizawa’s above YM and CTE used in the claimed formula allows for values overlapping that claimed (MPEP 2144.05).
Additionally note for the record that given that Nishizawa’s Examples clearly illustrate the desire for glasses according to their invention to have a combination of YM and CTE properties satisfying the claimed formula (for instance but not limited to, see Example 1 which provides for 20α+7E=1404), arriving at a YM and CTE satisfying the claimed formula would have been particularly obvious.
Regarding claims 2-3 and 8: Note that Nishizawa’s above ranges allow for compositions providing formula relationships overlapping that claimed (MPEP 2144.05).
Additionally note for the record that given that Nishizawa’s Examples clearly illustrate the desire for glasses according to their invention to have the claimed formulas (for instance but not limited to, see Example 1 which provides for formula of claim 2 being 77.7 and that of claims 3 and 8 being 6.24), arriving at a composition while satisfying the claimed formulas would have been particularly obvious.
Even further regarding claims 3 and 8, Nishizawa does explicitly teach that a relationship of Al2O3x(MgO/(MgO+CaO+SrO+BaO) should be 5 or more (0059) overlapping the ranges claimed (MPEP 2144.05).
Regarding claims 4-5, 9-10, 13-14 and 17: Nishizawa does teach that their glass can have a T2 of 1,710oC or lower (MPEP 2144.05), preferably 1690 or lower (abstract, 0072) and a T4 of 1,310oC or lower (see abstract, 0073).
Regarding claims 6, 11, 15, and 18: Nishizawa does teach throughout that their glass can be used as a non-alkali glass substrate in a-Si or p-Si type TFT LCDs (see 0010, 0019, 0064 for instance) which the Examiner takes official notice that TFT LCDs are also known as/called active-matrix thereby meeting the claims.
4. Claim(s) 7, 12, 16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishizawa (WO2013183626, rejection using corresponding English document USPub20150087495) as applied to claims 6, 11, 15, and 18 above, in further view of Shang (US Pub 20040203181).
As discussed above, Nishizawa teaches the invention of claims 6, 11, 15 and 18.
Regarding claims 7, 12, 16 and 19: It is initially noted that the limitation underlined below are all process limitations and it has been held by the courts that while a product may be defined by a process, patentability is based on the product itself and not its method of production (MPEP 2113). More specifically, if the prior art teaches a product as claimed, the claim will be considered to be met even if the prior art teaches a different method.
PNG
media_image1.png
426
632
media_image1.png
Greyscale
It is noted that the only structure the claim requires is
PNG
media_image2.png
620
848
media_image2.png
Greyscale
In the instant case, although Nishizawa fails to teach the specifics of the structure above, as mentioned previously, Nishizawa’s substrate is a glass substrate used for an AMLCD.
As Shang, who similarly teaches glass substrates used for AMLCD, discloses the desire to place a wiring film comprising a Cu metal on the glass substrate and an insulating film of an inorganic substance on the wiring film (see 0065), wherein the wiring metal film has a thickness meeting that claimed (0065) and the insulating film has a thickness meeting that claimed (0065), for the formation of a transistor in such a panel (abstract), it would have been obvious to one having ordinary skill at the time of invention to modify Nishizawa to include a wiring film comprising a Cu metal on their glass substrate and an insulating film of an inorganic substance on the wiring film, wherein the wiring metal film has a thickness meeting that claimed and the insulating film has a thickness meeting that claimed, according to Shang for the formation of a transistor in their panel.
Although it may not be explicitly disclosed that the metal has a product as claimed, given that the metal wiring film is Cu which is the same material as Applicants’, one having ordinary skill would reasonably conclude it to have a product of a Young’s modulus and a CTE as claimed, absent an evidentiary showing to the contrary (MPEP 2112).
Although it is not explicitly disclosed that insulating film has an average CTE at the claimed temperature range smaller than that of the glass, given that the insulating film is silicon oxide (see Shang) which is the same as Applicants and Nishizawa’s non-alkali glass is the same as Applicants’, one having ordinary skill would reasonably conclude the same relationship of properties to be present absent an evidentiary showing to the contrary (MPEP 2112).
Although Nishizawa fails to teach the long side, short side and thickness of their glass substrate, it is initially noted that differences in relative dimensions will not render the claimed glass patentable when the claimed relative dimensions would not perform differently than the prior art glass (MPEP 2144.04). In the instant case, as there is nothing of record that would indicate the claimed dimensions to result in the claimed glass to function differently.
Alternatively, it is additionally noted that Nishizawa does not place limits on their dimensions. Instead, as mentioned above, Nishizawa only generally teaches their glass substrate which will be used in an AMLCD. As Kato clearly suggest the desire for a glass substrate of a AMLCD to have dimensions falling within the ranges claimed (see Kato Col. 1, Col. 4 and Col 10), one having ordinary skill would have found it obvious to make Nishizawa’s glass with the dimensions as claimed to obtain a desirable AMLCD substrate.
Response to Arguments
Applicant’s arguments filed August 31, 2026 have been considered but are moot in view of new grounds of rejection.
Conclusion
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.
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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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
