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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/18/2025 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1/8/15 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.
Regarding Applicant’s arguments regarding the Kinoshita reference that all water is removed is unsupported. Kinoshita teaches that the resulting gel is “sufficiently dried” (Line 148); however, that is no evidence that the “water can be vaporized once heated” or “eliminate all water from the dried gel” as argued.
In the current Office Action, Kinoshita is no longer used as the primary reference; however, the Examiner would like to point out that chemically bound water in an amorphous matrix requires temperatures higher than 100°C to vaporize the water (see Cooper [0019]). In the argument’s logic, would the annealing process not also vaporize the water content and render the self-healing property obsolete? The Cooper reference is used as the new primary reference with NPL reference Lockwood to read on the water content and the desired self-healing property limitation.
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 1, 2, 4, 6, 8, 13, 15, 19 is objected to because of the following informalities:
Claim 1/8/15 recites “to achieve oxide”. The Examiner believes there is missing grammar to this excerpt.
Claim 2 line 3 recites “exposing oxide material” which should be “exposing the oxide material”.
Claim 4 Line 6-7 recites “to lower the water content of oxide” which should be “to lower the water content of the oxide”.
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 1/8/15 recites broad method steps of “processing” and “manufacturing” without specifically directing a skilled artisan how to do such an action, unlike the specific/narrow “performing a thermal annealing process”. As such, these steps are given broadest reasonable interpretation.
Claim 2-7, 9-20 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 1-20 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 “during synthesis”. The claim has no explicit “synthesis” or “synthesizing” step. Though the specification has support for synthesis/synthesized, there is no clear antecedent basis in the instant claims. Appropriate correction is required.
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.
Claim 1/8/15 recite evaluating step. Dependent claims 2/3/4/5/7/10/11/12/14/16/17/18/20 also recite evaluating step(s). Are the dependent claims’ evaluating step(s) referring to the parent claims’ evaluating step or are the dependent claims repeating evaluating?
Claim 3/10 recites “evaluating an amount of water” wherein claim 1 already has this limitation, though written differently. The “an amount of water” already has antecedent basis per the “containing 0.1 to 10 percent water by mass” in claim 1/8.
Claim 3/10 recites “forming a desired oxide or an intermediate oxide”. Claim 4/11, which depends from claim 3/10, refers to “intermediate hydrated glass” which has no antecedent basis/connecting nexus and as such failing to satisfy their antecedent basis.
Claim 5 recites “creating a water-based or water-containing oxide tin film material by exposing the water-based or water-containing oxide thin film to water”. There lacks logical nexus from claim 2 which has “the water-based or water-containing oxide material” to convert to a “water-based or water-containing oxide thin film” required in claim 5. The claim essentially creates the thin film by exposing the thin film with no precursor.
Claim 6/7/13/14/18/19/20 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 6/13/19 recites “performing water monitoring on the precursor”. Please confirm if the water monitoring is for the “precursor” or “precursor thin film”.
Claim 6/13/19 recite “thin films”. There is no antecedent basis for plural thin films.
Claim 7, 14, 17, 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?
Claim 11 recites “an intermediate hydrated glass” which its parent claim has no antecedent basis.
Claim 12/18 recites “the water-based or water-containing oxide thin film material” which lacks antecedent basis. The parent claim has not specified its water-based or water-containing oxide material is a thin film. Nor is there antecedent basis for “the thin film oxide”.
Claim 12/18 lacks antecedent basis for “the water-based or water-containing oxide thin film material”.
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 9 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.
Claim 9 does not further limit claim 8.
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 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.
Claims 1-2, 8-9, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Cooper et al (US-20160289114-A1) and further in view of Fukuoka (JP-H09221326-A, English translation provided by Espacenet) and Lockwood (2012, “Reactions between water and vitreous silica during irradiation”).
Regarding claim 1, Cooper teaches a method for fabricating glass [0011] comprising processing a water-based or water-containing oxide material [0025-26], the water-based or water-containing oxide material comprises silicon oxide (silica) and hydrogen (via the solvent per [0026] clarifying that the quartz sand is dissolve in water or [0027] hydrothermally dissolved in NaOH, [0028] resulting in silicic acid), performing a thermal annealing process on the material [0040], and manufacturing the glass form the thermal annealed material [0040]..
Cooper teaches that the amount of water content during the synthesis is between 0.5-10 wt% water in the water-based or water-containing oxide material [0019]. Cooper teaches of drying in a range of temperatures (that fall within the 0.5-10 wt% water specified in the earlier citation) to remove the solvent to satisfactory levels [0034]. Cooper expressly teaches of conditions to achieve 0.5-10 wt% water [0019]; Cooper does not expressly teach evaluating the water-based or water-containing oxide material during the synthesis. In related sol-gel method art, Fukuoka teaches of evaluating the water-based or water-containing oxide material during processing (Line 118-127). It would be obvious to one of ordinary skill in the art at the time of invention to evaluate the amount of water content during the processing of the water-based or water-containing oxide material to control the rate of drying so cracks do not occur in the material (Line 184-193).
Cooper teaches that the water-based or water-containing oxide material comprises silicon oxide and hydrogen [0025-28]. Cooper does not expressly teach the protons of the water are allowed to move rapidly throughout the water-based or water-containing oxide material. In related water and vitreous silica interaction art, Lockwood teaches that SiOH with excess water in the network of the oxide material readily form protonated non-bridging oxygens that heal damage from irradiation (p. 242-243 “3.2 Water-silica reactions during irradiation”). It would be obvious to one of ordinary skill in the art at the time of invention that the water-based or water-containing silicon oxide and hydrogen material of Cooper be evaluated to a percent water by mass that falls within the instantly claimed range such that the SiOH network has increased proton conductivity to heal its molecular network from ballistic irradiation as evidenced by Lockwood (“Conclusion”, reading on self-healing silica/glass). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Regarding claim 8+9/15, Cooper teaches a method for fabricating glass [0011] comprising processing a water-based or water-containing oxide material [0025-26], the water-based or water-containing oxide material comprises silicon oxide (silica) and hydrogen (via the solvent per [0026] clarifying that the quartz sand is dissolve in water or [0027] hydrothermally dissolved in NaOH, [0028] resulting in silicic acid), performing a thermal annealing process on the material [0040], and manufacturing the glass form the thermal annealed material [0040]. Cooper teaches the processing of the water-based or water-containing oxide material comprises creating the water-based or water-containing oxide material by exposing the oxide material to water in the presence of heat and/or pressure [0025], wherein water vapor is present/evolved from the heating.
Cooper teaches that the amount of water content during the synthesis is between 0.5-10 wt% water in the water-based or water-containing oxide material [0019]. Cooper teaches of drying in a range of temperatures (that fall within the 0.5-10 wt% water specified in the earlier citation) to remove the solvent to satisfactory levels [0034]. Cooper expressly teaches of conditions to achieve 0.5-10 wt% water [0019]; Cooper does not expressly teach evaluating the water-based or water-containing oxide material during the synthesis. In related sol-gel method art, Fukuoka teaches of evaluating the water-based or water-containing oxide material during processing (Line 118-127). It would be obvious to one of ordinary skill in the art at the time of invention to evaluate the amount of water content during the processing of the water-based or water-containing oxide material to control the rate of drying so cracks do not occur in the material (Line 184-193).
Cooper teaches that the water-based or water-containing oxide material comprises silicon oxide and hydrogen [0025-28]. Cooper does not expressly teach the protons of the water are allowed to move rapidly throughout the water-based or water-containing oxide material. In related water and vitreous silica interaction art, Lockwood teaches that SiOH with excess water in the network of the oxide material readily form protonated non-bridging oxygens that heal damage from irradiation (p. 242-243 “3.2 Water-silica reactions during irradiation”). It would be obvious to one of ordinary skill in the art at the time of invention that the water-based or water-containing silicon oxide and hydrogen material of Cooper be evaluated to a percent water by mass that falls within the instantly claimed range such that the SiOH network has increased proton conductivity to heal its molecular network from ballistic irradiation as evidenced by Lockwood (“Conclusion”, reading on self-healing silica/glass). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Regarding claim 2, depending from claim 1, Cooper teaches the processing of the water-based or water-containing oxide material comprises creating the water-based or water-containing oxide material by exposing the oxide material to water in the presence of heat and/or pressure [0025], wherein water vapor is present/evolved from the heating.
Claims 3-4, 10-11, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Cooper et al (US-20160289114-A1), Fukuoka (JP-H09221326-A) and Lockwood (2012, “Reactions between water and vitreous silica during irradiation”) as applied to claim 1 above, and further in view of Park (US-20020026809-A1).
Regarding claim 3/10/16, depending from claim 1/8/15, Cooper teaches of fabricating the water-based or water-containing oxide material from oxide aqueous chemical precursors forming a desired oxide or an intermediate oxide [0027-28]. Modified Cooper includes the water monitoring taught by Fukuoka that uses electric/capacitance means to monitor the amount of water in the oxide material (Line 118-127); Fukuoka is aware that the water content at the surface and the bulk are different (Line 137-140), wherein high frequency irradiation heating heats the bulk of the gel and concurrent measuring of water content in the gel (Line 153-160). Though implied, Fukuoka does not expressly teach evaluating a distribution of the water. In related sol-gel method art, Park teaches of a water-containing oxide material [0018] wherein water monitoring on the water-containing oxide material comprises evaluating a distribution of the water [0022]. It would be obvious to one of ordinary skill in the art at the time of invention to evaluate the distribution of water of the water-containing oxide material to monitor the rate of the drying of the water content through the water-containing oxide material without cracking as motivated by Fukuoka (Line 103-108).
Regarding claim 4/11, depending from claim 3/10, modified Cooper teaches of evaluating the amount of water and the distribution of water in an intermediate hydrated glass (Fukuoka Line 118-127) performing water monitoring on the intermediate hydrated glass using water detection methods for total water content, dehydrating the intermediate hydrated glass to lower the water content of the oxide, and re-evaluating the water content in the intermediate hydrated glass (Line 136-143; 95-107), wherein the heating and measuring means of Fukuoka are recursive until the desired water content is achieved. Modified Cooper also teaches of measuring the spatial water content and water distribution of intermediate hydrated glass [0022].
Claims 5-7, 12-14, 17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cooper et al (US-20160289114-A1), Fukuoka (JP-H09221326-A) and Lockwood (2012, “Reactions between water and vitreous silica during irradiation”) as applied to claim 1/8/15 above, and further in view of Mishima et al (US-4397666-A).
Regarding claim 5, depending from claim 2, Cooper teaches the processing of the water-based or water-containing oxide material comprises creating the water-based or water-containing oxide material by exposing the oxide material to water in the presence of heat and/or pressure [0025]. Cooper does not expressly teach the water-containing oxide material is a water-containing oxide thin film less than 1 μm. In related sol-gel processing art, Mishima teaches of a water-based/containing oxide (Col. 6 Line 9-28) to form a thin film with thickness less than 1 μm (Col. 6 Line 51-56). It would be obvious to one of ordinary skill in the art at the time of invention to repeat the steps of Cooper with a water-based/containing oxide thin film material as a known shape arrangement in the art (Col. 6 Line 65-Col. 7 Line 5).
Regarding claim 6/13/19, depending from claim 1, Cooper teaches of fabricating the water-based or water-containing oxide material from oxide aqueous chemical precursors forming a precursor to oxide formation [0027-28]. Fukuoka of modified Cooper teaches of continuous water monitoring during chemical processing of the intermediate oxide (Line 136-143; 95-107) to a desired hydration level (Line 103-106). Modified Cooper does not expressly teach of depositing the precursor as a thin film on a substrate through film deposition process thereby forming a precursor thin film. In related sol-gel processing art, Mishima teaches of water-based/containing precursor (Col. 6 Line 9-28) deposited as a thin film on a substrate through film deposition process (Col. 6 Line 60-64) and undergoes chemical processing to form a desired intermediate oxide (Col. 6 Line 46-51). It would be obvious to one of ordinary skill in the art at the time of invention to deposit water-based/containing precursor as a thin film on a substrate through film deposition process as a known option for sol-gel processing.
Regarding claim 7/12/14/17/20, depending from claim 1/9, Cooper teaches of fabricating the water-based or water-containing oxide material from oxide aqueous chemical precursors forming a precursor to oxide formation [0027-28]; followed by a dehydration process at an elevating temperature [0034]. Fukuoka of modified Cooper teaches of continuous water monitoring during a dehydration process of the intermediate oxide (Line 136-143; 95-107). Modified Cooper does not expressly teach of an intermediate/deposited hydrated thin film. In related sol-gel processing art, Mishima teaches of water-based/containing material (Col. 6 Line 9-28) deposited as an intermediate hydrated thin film (Col. 6 Line 40-41/59-64) that undergoes a dehydration process by elevating temperature (Col. 6 Line 46-51; Col. 7 Line 28-31). It would be obvious to one of ordinary skill in the art at the time of invention to deposit water-based/containing precursor as an intermediate hydrated oxide thin film as a known option for sol-gel processing.
Claims 18 are rejected under 35 U.S.C. 103 as being unpatentable over Cooper et al (US-20160289114-A1), Fukuoka (JP-H09221326-A) and Lockwood (2012, “Reactions between water and vitreous silica during irradiation”), and Park (US-20020026809-A1) as applied to claim 16 above, and further in view of Mishima et al (US-4397666-A).
Regarding claim 18, depending from claim 16, Cooper teaches of fabricating the water-based or water-containing oxide material from oxide aqueous chemical precursors forming a precursor to oxide formation [0027-28]. Fukuoka of modified Cooper teaches of continuous water monitoring during chemical processing of the intermediate oxide (Line 136-143; 95-107) to a desired hydration level (Line 103-106). Modified Cooper does not expressly teach of depositing the precursor as a thin film on a substrate through film deposition process thereby forming a precursor thin film. In related sol-gel processing art, Mishima teaches of water-based/containing precursor (Col. 6 Line 9-28) deposited as a thin film on a substrate through film deposition process (Col. 6 Line 60-64) and undergoes chemical processing to form a desired intermediate oxide (Col. 6 Line 46-51) to form a thin film with thickness less than 1 μm (Col. 6 Line 51-56). It would be obvious to one of ordinary skill in the art at the time of invention to deposit water-based/containing precursor as a thin film with a thickness that falls within the instantly claimed range as a known process for sol-gel processing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
US-20090123358-A1 and US-20200139433-A1 teach of hydrating thin films derived from sol-gels
Lockwood 2010, “Effect of moisture on the self-healing of vitreous silica under irradiation” teaches of molecular simulation of water-containing oxide material that has structural healing properties after irradiation
US-5326729-A teaches of radiation resistant glass that was processed with water in heat and pressure, and further annealed
US-20130045854-A1 teaches of water-based oxide thin film dehydrating manufacturing method
US-4840653-A teaches sol-gel method for high-silica glass
US-3912481-A, US-4560399-A, US-5049338-A, US-5240488-A, US-6299822-B1 teach of hydrating and dehydrating sol=gel for fabricating silica glass
US-5236483-A teaches of annealing sol-gel derived glass
US-20140037839-A1 teaches of conditions reading on claims 6-7, 13-14, 17, 19, 20
GB-2181727-A, US-20090205370-A1, WO-2014122117-A1 teaches manufacturing and drying a silica wet gel
US-20100207050-A1 teaches an apparatus that dries a sol-gel to desired moisture level
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/STEVEN S LEE/Examiner, Art Unit 1741
/ERIN SNELTING/Primary Examiner, Art Unit 1741