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 .
Response to Arguments
Applicant’s arguments, filed 05/22/2026, with respect to claims 1/8/15 have been fully considered and are persuasive. The 103 rejection of claims 1/8/15 has been withdrawn.
Examiner would like to highlight that the majority of 112b rejections made in the previous Office Action remain unresolved. As such, the 112b rejections have been elaborated.
Claim Objections
Claim 6, 13, and 19 is objected to because of the following informalities:
Claim 6 line 2 recites “using water based or water containing material” which should be “using the water-based or water-containing material”. Similarly for claims 13/19.
Appropriate correction is required.
Claim Interpretation
Claim 1 recites “self-healing glass” and “for fabrication of self-healing glass”. The “self-healing” is a property of the product-by-process. While the specification highlights the “self-healing” property to be that of healing from ionizing radiation damage as defined in [0008] of the instant specification, the method steps are being examined. The Examiner would like to remind Applicant of MPEP 2112(I) SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY: “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
Claim 3 recite “performing water monitoring”, “re-evaluating the water content and water distribution”, “evaluating… hydration level/water content”, “evaluating the water-based or water-containing material” etc. While the artisan is welcome to do these measurements between each method step, none of these measurements actively change the “material” to be produced by the instantly claimed method. As such, these are interpreted as mental steps, see MPEP 2106.04(a)(2). Only additional active method steps that are directly derived from these generic measuring steps (practical application of mental steps) are given patentable weight, see MPEP 2106.04(d).
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, 3-8 and 10-20 are 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 1/8/15 recites “to move rapidly”. The term “rapidly” in claim 1/8/15 is a relative term which renders the claim indefinite. The term “rapidly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Dependent claims 3-7, 10-14, and 16-20 are rejected because they depend from and thus include all the limitations of claim 1/8/15 and do not solve the deficiencies thereof.
Claim 1 recites “zin-…oxide”. There is no “zin-oxide”. Correct the limitation to “zinc-oxide”.
Claim 7/14/20 recites “thin film”. “Thin” is a relative term wherein the claim does not define the metes or bounds of “thin”. The instant specification has support for <1 um thick thin film.
Claim 6/19 recites “wherein thin film”. Limitation should be “wherein the thin film” or “wherein the precursor thin film”.
Claim 13/19 recite “thin films”. There is no antecedent basis for plural thin films.
Claim 7, 14, and 20 introduces an intermediate hydrated oxide thin film from a deposited hydrated thin film which lacks nexus to the material of their parent claims. Claim 7, 14, 17, and 20 have no antecedent basis for a deposited hydrated thin film. Where does this deposited hydrated thin film originate from? There is no nexus between the intermediate hydrated oxide thin film and deposited hydrated thin film from the water-based or water-containing oxide material from the parent claim.
Claim 7 recites “the water content of an oxide in the intermediate hydrated oxide thin film”. What is the “an oxide” referring to? Is the “an oxide” referring to the oxide in the parent claim?
Allowable Subject Matter
Claim 1, 3-8, 10-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Regarding claims 1/8/15, a primary reason why it is deemed novel and non-obvious over the prior art of record to Sorescu et al (2004, “Nanocrystalline rhombohedral In2O3 synthesized by hydrothermal and postannealing pathways”) as instantly claimed is that while Sorescu teaches of Indium-oxide and water/hydrogen hydrothermal processing and subsequent annealing it does not show the desired water content range and the protons incorporated by the water to move throughout the material. Nicholas et al (2011, “The mechanism for hydrothermal growth of zinc oxide”) teaches of hydrothermal synthesis of zinc oxide for desired water content of 5-13% without the need to anneal; also silent on the water/proton transport properties. Diehl et al (EP-3564188-A1) teaches of hydrothermal synthesis of tin-titanium oxide to below 5 wt% water and subsequent annealing of the material. Lockwood (2012, “Reactions between water and vitreous silica during irradiation”) teaches of the protons incorporated by the water moving throughout the material to provide the self-healing property as defined by the instant specification; however, Lockwood is specific to silicon oxide based material.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
See Office Action mailed 03/06/2026 for additional prior art made of record but not relied upon
Relied for previous rejections: Cooper et al (US-20160289114-A1) and further in view of Fukuoka (JP-H09221326-A, English translation provided by Espacenet), Lockwood (2012, “Reactions between water and vitreous silica during irradiation”), Park (US-20020026809-A1), Mishima et al (US-4397666-A)
Laudise, CN-108329023-A teaches hydrothermal synthesis of zinc oxide
Aciksari teaches of hydrothermal synthesis of tin oxide
US-5071800-A teaches hydrothermal processing of indium-tin oxide
JP-2003286028-A teaches of hydrothermal processing of zinc-oxide to be below 10% water
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 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
/ERIN SNELTING/Primary Examiner, Art Unit 1741
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