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 .
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
1. Claim(s) 1-6, 8-11, 13-15, 17-18 and 21 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by Tokunaga (WO2013161902, rejection using corresponding English document USPub20150045203).
Regarding claims 1-3, 8 and 21: Tokunaga teaches Examples of substrates comprising non-alkali glass compositions, in mol%, that meet Applicants’ claims 1-3 and 21. For instance, see Example below.
Claims 1-2 and 21
Ex 2
SiO2
66-74
67.1
Al2O3
10-13
13
B2O3
0.1- less than 3 or 0.1 to less than 1.5
0.7
MgO
8-12
9.7
CaO
5-11
7.2
SrO
0-4
2.3
BaO
0-0.5
0
ZrO2
0-2
0
MgO+CaO+SrO+BaO
16-20
19.2
MgO/(MgO+CaO+SrO+BaO)
0.25-0.53
0.51
MgO/(MgO+CaO)
0.3-0.73
0.57
MgO/(MgO+SrO)
0.43-1
0.81
YM (E)
70-95GPa
88
CTE (x10^7) (50-350oC) (α)
32-45
38.9
Formula 20α+7E
≥1310
1394
Formula from present Claim 2
≥0
85.94
Formula from present claim 3 and 8
5.5 or more
6.63
YM (E) of claim 21
84-95
88
Regarding claims 4-5, 9-10, 13-14 and 17: The above Example includes a T2 and T4 as claimed (see Table 1).
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.
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.
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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Greyscale
It is noted that the only structure the claim requires is
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620
848
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Greyscale
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.
3. 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 claims 1-3, 8: Nishizawa teaches Examples of substrates comprising non-alkali glass compositions, in mol%, such as but not limited to that shown below.
Claims 1-2 and 21
Ex 1
SiO2
66-74
66.9
Al2O3
10-13
13
B2O3
0.1- less than 3
1.7
MgO
8-12
8.8
CaO
5-11
5.1
SrO
0-4
4.5
BaO
0-0.5
0
ZrO2
0-2
0
MgO+CaO+SrO+BaO
16-20
18.4
MgO/(MgO+CaO+SrO+BaO)
0.25-0.53
0.48
MgO/(MgO+CaO)
0.3-0.73
0.63
MgO/(MgO+SrO)
0.43-1
0.66
YM (E)
70-95GPa
84
CTE (x10^7) (50-350oC) (α)
32-45
40.8
Formula 20α+7E
≥1310
1404
Formula from present Claim 2
≥0
77.7
Formula from present claim 3 and 8
5.5 or more
6.24
YM (E) of claim 21
84-95
84
The above Example meets that of claims 1-3, 8 and 21 except for content being slightly outside the range claimed. However, initially, note that the Example content of 4.5% SrO is considered so close to the 4% end point of the claimed range to render the claimed range obvious (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) MPEP 2144.05).
Alternatively, it is noted that Nishizawa does teach compositions that allow for overlap with the claimed ranges and compositional formula requirements claimed (MPEP 2144.05). For instance, see Nishizawa’s disclosed composition below which allows for the following.
Claims 1-2 and 21
Nishizawa’s disclosed composition
Allows for the following
SiO2
66-74
63-74
(abstract)
66.4
Al2O3
10-13
11.5-16
(abstract)
13
B2O3
0.1- less than 3
>1.5-5
(abstract)
1.7
MgO
8-12
5.5-13
(abstract)
8.8
CaO
5-11
1.5-12
(abstract)
5.1
SrO
0-4
1.5-9
(abstract)
4
BaO
0-0.5
0-1
(abstract)
0
ZrO2
0-2
0-2
(abstract)
0
MgO+CaO+SrO+BaO
16-20
15.5-21 (abstract)
17.9
MgO/(MgO+CaO+SrO+BaO)
0.25-0.53
0.35 or more (abstract)
0.49
MgO/(MgO+CaO)
0.3-0.73
0.63
MgO/(MgO+SrO)
0.43-1
0.68
Formula from present Claim 2
≥0
70.65
Formula from present claim 3 and 8
5.5 or more
6.37
Regarding the properties claimed, it is initially noted that given that the above allowed for composition meets that claimed, it would be expected to have the same modulus, CTE and would be expected to satisfy formula (I) of claim 1 (MPEP 2112).
Alternatively, the reference does teach the following modulus and CTE which overlap the property ranges claimed and using the values therein, allows for overlap with the formula (I) of claim 1 (MPEP 2144.05).
YM (E)
70-95GPa
78GPa or more or 82GPa or more (0076)
CTE (x10^7) (50-350oC) (α)
32-45
30-43
(abstract)
Regarding claims 4-5, 9-10, 13-14 and 17: Given that the above allowed for composition meets that claimed, it would be expected to have the same properties (MPEP 2112).
Alternatively, the reference does teach can have a T2 of 1,710oC or lower (MPEP 2144.05) and a T4 of 1,310oC or lower (see abstract 0027 and Tables).
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 March 5, 2026 have been considered but are moot in view of new grounds of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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
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