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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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.
Claims 9-10 and 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over Koyama et al. (JP 2017-178711) in view of Adachi et al. (US 2014/0340790).
Regarding claims 9 and 17, Koyama discloses a glass substrate having a thickness less than 0.7 mm ([0032], [0119]). Koyama additionally disclose that the substrate is preferably flat [0078] and that it is of high smoothness [0121]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges, (surface roughness to be 0), disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
The preamble language of the limitation(s) a glass substrate “for a magnetic disk" has been considered to be a recitation of intended use because the body of each of claims 9 and 17 do not depend on the preamble for completeness. Intended use limitations are not further limiting in so far as the structure of the product is concerned. Note that "in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art." In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 938, 136 USPQ 458,459 (CCPA 1963). See MPEP § 2111.02." Nevertheless, Koyama discloses that the glass substrate is used in MRM.
Although Koyama discloses a glass disk, Koyama fails to explicitly disclose that the glass disk diameter is 95-100 mm as presently claimed.
Adachi discloses a nominal glass disk for a magnetic recording disk, wherein the glass disk has a diameter of 96.9-100.4 mm (Abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Koyoma’s glass disk diameter to be within the claimed range, since Adachi discloses that this is a nominal size used in a data storage device (Abstract).
Regarding the limitation “subjected to first heat treatment… subjected to second heat treatment…”, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”, (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
Nevertheless, Koyama discloses that the thermal contraction rate or thermal shrinkage ratio is preferably 45 ppm or less [0064] and the substrate is flat and preferably smooth as set forth above (emphasis added). It therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges to satisfy the claimed highest thermal contraction rate to be less than 130 ppm, difference between the highest and lowest contraction rate to be of less than 10 ppm or amount of 1.0 µm or less, and a completely flat surface (change of degree of flatness is 0) as presently claimed absence of evidence of materially different product, disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claim 10, Koyama fails to explicitly disclose an amount of change in roundness as presently claimed. However, Koyama explicitly disclose that the glass substrate has little to no deformation or thermal shrinkage (Abstract), which relates to the change of roundness. A person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize change of roundness to be less than 0.5 µm, since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivated to optimize change of roundness to be as low as possible, including 0, in order to prevent deformation in order to R/W a medium (Abstract).
Regarding claims 18 and 20, Koyama discloses that the glass substrate has a glass transition temperature Tg of 750°C or higher [0056].
Regarding claims 19-21, Koyama discloses that the expansion coefficient is less than
38x10-7/°C in a temperature range from 100-300°C [0063].
Response to Arguments
Applicant’s arguments with respect to claim(s) 9 and 17 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
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 LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785