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 Note
The Examiner acknowledges the amendments of claims 1 – 2, 5, & 8, as well as the cancellation of claim 6. Claims 1 – 5 & 7 – 13 are examined herein.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4 – 5, 7 – 10, & 12 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga et al. (US 2014/0366581 A1).
With regard to claim 1, Tokunaga et al. teach a non-alkali (alkali-free) glass, formed into a sheet (paragraph [0020]), with a glass composition, in mol%, comprising 66 – 70% SiO2, 12 – 15% Al2O3, 0 – 1.5% B2O3, 9.5 – 13% MgO, 4 – 9% CaO, 0.5 – 4.5% SrO, 0 – 1% BaO (Table 1), 2,000 ppm or less Li2O + Na2O + K2O (paragraph [0002]), 17 to 21% MgO+CaO+SrO+BaO (paragraph [0042]).
Tokunaga et al. disclose the use of up to 1.5% B2O3, while the present claims require 1.7 to 4% B2O3.
It is apparent, however, that the instantly claimed amount of 1.7% B2O3 and that taught by Tokunaga et al. are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 1.5% disclosed by Tokunaga et al. and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of 1.7% disclosed in the present claims is but an obvious variant of the amounts disclosed in Tokunaga et al., and thereby one of ordinary skill in the art would have arrived at the claimed invention.”
B2O3 is present in the range of 0 – 1.5 mol% and Al2O3 is present in the range of 12 – 15 mol%. Therefore, the mol% ratio of B2O3/Al2O3 is in the range of 0 – 0.125, which overlaps with Applicant’s claimed range of 0.1 to 0.4.
MgO is present in the range of 9.5 – 13 mol% and CaO is present in the range of 4 – 9 mol%. Therefore, the mol% ratio of MgO/CaO is a range of 1.05 – 4, which overlaps with Applicant’s claimed range of from 0.1 to 1.5.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Additionally, Tokunaga et al. teach the non-alkali glass has Tokunaga et al. do teach a β-OH value is preferably 0.3/mm or less (paragraph [0183]) and a strain point of preferably higher than 730°C, and most preferably 735°C or higher (paragraphs [0166] – [0167]), which is within Applicant’s claimed range of 727°C or higher.
With regard to claim 4, Tokunaga et al. teach the non-alkali glass does not substantially contain As2O3 and Sb2O3 (paragraph [0106]), and further comprises from 5 mol% or less of SnO2 in the glass composition (paragraph [0107]), which includes Applicant’s claimed range of 0.001 to 1 mol%.
With regard to claim 5, Tokunaga et al. teach the non-alkali glass has a Young’s modulus of 84 GPa or more (paragraph [0175]), a strain point of 725°C or higher (paragraph [0056]). Furthermore, Tokunaga et al. teach the non-alkali glass has a glass viscosity (i.e., “liquidus viscosity”) reaches 104 dPas at 1320°C or lower (i.e. “liquidus temperature”) (paragraph [0056]).
With regard to claim 7, Tokunaga et al. teach the non-alkali glass has a Young’s modulus of 84 GPa or more (paragraph [0175]).
With regard to claim 8, Tokunaga et al. are silent with regard to a specific Young’s modulus is 34 GPa/g-cm3 or more.
Tokunaga et al. teach a glass composition substantially similar to the glass composition claimed by Applicant. Furthermore, Tokunaga et al. teach the composition is molded into the form of a plate having a thickness of 0.5 mm or less (paragraph [0167]). Applicant’s glass sheet has a thickness of 0.05 to 0.5 mm (paragraph [0072]), which overlaps with the range taught by Tokunaga et al. Therefore, one of ordinary skill in the art would expect the glass plate taught by Tokunaga et al. to inherently have the same properties as claimed by Applicant because Tokunaga et al. teach a glass plate of substantially similar composition and thickness as Applicant’s glass sheet.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
With regard to claim 9, Tokunaga et al. teach the non-alkali glass has an average thermal expansion coefficient in a temperature range of from 50 – 300°C is from 30 x 10-7 to 40 x 10-7/°C (paragraphs [0056] & [0169]), which is within Applicant’s claimed temperature range of from 30 to 380°C and thermal expansion range from 30 x 10-7 to 50 x 10-7/°C.
With regard to claim 10, Tokunaga et al. teach the non-alkali glass has a glass viscosity (i.e., “liquidus viscosity”) reaches 104 dPas at 1320°C or lower (paragraph [0056]).
With regard to claim 12, Tokunaga et al. teach the non-alkali glass is for use in an organic EL device (paragraph [0167]).
With regard to claim 13, Tokunaga et al. teach the non-alkali glass is for use in a magnetic disk (i.e., “magnetic recording medium”) (paragraph [0208])
Claim(s) 1, 4 – 5, 7 – 10, & 12 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tsujimura et al. (US 2013/0288877 A1), in view of Saito et al. (US 2018/0141849 A1).
With regard to claim 1, Tsujimura et al. teach a non-alkali glass, in the form of a sheet (title & paragraphs [0010] & [0040]), wherein the glass has a composition in mol% of 66 – 69 SiO2, 12 – 15 Al2O3, 0 – 1.5 B2O3, 6 - 9.5 MgO, 7 – 9 CaO, 0.5 – 3 SrO, & 0 – 1 BaO (paragraph [0017]). The glass is completely alkali-free (i.e., 0% Li2O + Na2O + K2O). As discussed above, MgO + CaO + SrO + BaO is present in the range of 13.5 – 22.5%, which includes Applicant’s claimed range of 15 to 19%.
Tsujimura et al. disclose the use of up to 1.5% B2O3, while the present claims require 1.7 to 4% B2O3.
It is apparent, however, that the instantly claimed amount of 1.7% B2O3 and that taught by Tsujimura et al. are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 1.5% disclosed by Tsujimura et al. and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of 1.7% disclosed in the present claims is but an obvious variant of the amounts disclosed in Tsujimura et al., and thereby one of ordinary skill in the art would have arrived at the claimed invention.”
B2O3 is present in the range of 0 – 1.5 mol% and Al2O3 is present in the range of 12 – 15 mol%. Therefore, the mol% ratio of B2O3/Al2O3 is in the range of 0 – 0.125, which overlaps with Applicant’s claimed range of 0.1 to 0.4.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
MgO is present in the range of 6 – 9.5 mol% and CaO is present in the range of 7 – 9 mol%. Therefore, the mol% ratio of MgO/CaO is a range of 0.66 – 1.056, which is within Applicant’s claimed range of from 0.1 to 1.5.
Additionally, Tsujimura et al. teach a strain point of 735°C or higher (paragraph [0017]), which is within Applicant’s claimed range of 727°C or higher.
Tsujimura et al. teach β-OH values for glass sheet working examples 1 – 2 for glass sheets (containing 0 mol% B2O3) of 0.3/mm (Table 1).
Furthermore, Saito et al. teach a non-alkali glass substrate comprising a β-OH value preferably less than 0.20/mm. When the β-OH value is too large, the strain point is liable to lower. When the β-OH is too small, the meltability is liable to lower. The β-OH value can be adjusted by a number of means, including selecting raw materials having low water contents, adding a desiccant, such as Cl or SO3, reducing the water content in a furnace atmosphere, performing N2 bubbling, adopting a small melting surface, increasing the flow rate of the molten glass, or heating through application of a current with a heating electrode (paragraphs [0053] – [0054]).
Therefore, based on the teachings of Saito et al., it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to minimize the β-OH value, preferably less than 0.20/mm, of the glass substrate taught by Tsujimura et al. in a variety of ways in order to achieve the desired strain point of the glass substrate, regardless of the B2O3 content.
With regard to claim 4, Tsujimura et al. teach the alkali-free glass does not substantially contain As2O3 and Sb2O3 (paragraph [0036]), and further comprises from 5 mol% or less of SnO2, in the glass composition, which includes Applicant’s claimed range of 0.001 to 1 mol%.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 5, Tsujimura et al. teach the alkali-free glass has a Young’s modulus of 84 GPa or more (paragraph [0049]), and a strain point of 735°C or higher (paragraph [0017]). Furthermore, the alkali-free glass has a temperature T4 (i.e., “liquidus temperature”) at which a glass viscosity (i.e., “liquidus viscosity”) is 104 dPas of 1,340°C or lower, more preferably 1,330°C or lower (abstract, paragraphs [0017] & [0045]).
With regard to claim 7, Tsujimura et al. the alkali-free glass has a Young’s modulus of 84 Gpa or more (paragraph [0049]).
With regard to claim 8, Tsujimura et al. are silent with regard to a specific Young’s modulus is 34 GPa/g-cm3 or more.
Tsujimura et al. teach a glass composition substantially similar to the glass composition claimed by Applicant. Furthermore, Tsujimura et al. teach the composition is molded into the form of a plate having a thickness of 100 µm or less (0.100 mm or less) (paragraph [0040]). Applicant’s glass sheet has a thickness of 0.05 to 0.5 mm (paragraph [0072]), which overlaps with the range taught by Tsujimura et al. Therefore, one of ordinary skill in the art would expect the glass plate taught by Tsujimura et al. to inherently have the same properties as claimed by Applicant because Tsujimura et al. teach a glass plate of substantially similar composition and thickness as Applicant’s glass sheet.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
With regard to claim 9, Tsujimura et al. teach the alkali-free glass has an average thermal expansion coefficient at from 50 to 350°C of from 30 x 10-7 to 50 x 10-7/°C, which is within Applicant’s claimed temperature range of from 30 to 380°C and thermal expansion range from 30 x 10-7 to 50 x 10-7/°C.
With regard to claim 10, Tsujimura et al. teach the alkali-free glass has a temperature T4 at which a glass viscosity (i.e., “liquidus viscosity”) is 104 dPas of 1,340°C or less (abstract, paragraphs [0017] & [0045]).
With regard to claim 12, Tsujimura et al. the alkali-free glass is for use in an organic EL device (paragraph [0039]).
With regard to claim 13, Tsujimura et al. do not explicitly teach the glass substrate is for use in magnetic recording medium.
However, a recitation of the intended use of the claimed invention 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.
As discussed above for claim 1, Tsujimura et al. teach a glass substrate of similar composition and structure. The glass substrate taught by Tsujimura et al. is capable of performing the intended use in a magnetic recording medium, and thus, meets the claim.
Claim(s) 1 – 5, 7 – 10, & 12 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Akihiro (*CN 103429547 A), in view of Saito et al. (US 2018/0141849 A1).
Submitted by Applicant with IDS filed 7/15/2025
With regard to claim 1, Akihiro et al. teach a glass substrate in the form of a plate (i.e., “sheet”) (paragraph [0154]) for a flat panel display (paragraph [0014]) comprising a glass composition in mol% of ranges larger than all of the ranges recited above (abstract). The total amount of alkali-metals is 0.01 – 0.5 mol% (paragraph [0056]). Applicant’s claim 1 recites an alkali-free glass wherein the glass composition contains up to 0.5 mol% alkali compounds (Li2O + Na2O + K2O). Therefore, based on Applicant’s recited glass composition, Akihiro et al. teach an alkali-free sheet.
Akihiro et al. teach the glass substrate has a composition comprising, in mol%, of 55 – 80% SiO2, 8 – 20% Al2O3, 0 – 8% B2O3, 0.01 – 0.5% Li2O + N2O + K2O, 0 – 15% MgO, 0 – 20% CaO, 0 – 15% SrO, 0 – 10% BaO, (paragraphs [0017] – [0025] & [0056]). Furthermore, based on the ranges given above, the composition contains 0 – 60% MgO + CaO + SrO + BaO, which includes Applicant’s claimed range of 15 to 19%.
Based on the ranges discussed above, a mol% ratio B2O3/Al2O3 is from 0 – 1, which includes Applicant’s claimed range of 0.1 to 0.4. A molar ratio MgO/RO, wherein RO is the total amount of MgO, CaO, SrO, and BaO, is within the range of 0.15 to 0.9 (paragraph [0138]), which overlaps with Applicant’s claimed range of 0.1 to 1.5.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Akihiro et al. teach a strain point is preferably 695°C or higher (paragraph [0146]), which includes Applicant’s claimed range of 700°C or more.
Akihiro et al. do not explicitly teach the β-OH value of the glass sheet.
Saito et al. teach a non-alkali glass substrate comprising a β-OH value preferably less than 0.20/mm. When the β-OH value is too large, the strain point is liable to lower. When the β-OH is too small, the meltability is liable to lower. The β-OH value can be adjusted by a number of means, including selecting raw materials having low water contents, adding a desiccant, such as Cl or SO3, reducing the water content in a furnace atmosphere, performing N2 bubbling, adopting a small melting surface, increasing the flow rate of the molten glass, or heating through application of a current with a heating electrode (paragraphs [0053] – [0054]).
Therefore, based on the teachings of Saito et al., it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to minimize the β-OH value, preferably less than 0.20/mm, of the glass substrate taught by Akihiro et al. in order to increase the strain point of the glass substrate.
With regard to claim 2, Akihiro et al. teach a glass substrate in the form of a plate (i.e. “sheet”) (paragraph [0154]) for a flat panel display (paragraph [0014]) comprising a glass composition in mol% of ranges larger than all of the ranges recited above (abstract). The total amount of alkali-metals is 0.01 – 0.5 mol% (paragraph [0056]). Applicant’s claim 1 recites an alkali-free glass wherein the glass composition contains up to 0.5 mol% alkali compounds (Li2O + Na2O + K2O). Therefore, based on Applicant’s recited glass composition, Akihiro et al. teach an alkali-free sheet.
Akihiro et al. teach the glass substrate has a composition comprising, in mol%, of 55 – 80% SiO2, 8 – 20% Al2O3, 0 – 8% B2O3, 0.01 – 0.5% Li2O + N2O + K2O, 0 – 15% MgO, 0 – 20% CaO, 0 – 15% SrO, 0 – 10% BaO (paragraphs [0017] – [0025] & [0056]). Furthermore, based on the ranges given above, the composition contains 0 – 60% MgO + CaO + SrO + BaO, which includes Applicant’s claimed range of 15 to 19%.
Based on the ranges discussed above, a mol% ratio B2O3/Al2O3 is from 0 – 1, which includes Applicant’s claimed range of 0.12 to 0.3. A molar ratio MgO/RO, wherein RO is the total amount of MgO, CaO, SrO, and BaO, is within the range of 0.15 to 0.9 (paragraph [0138]),
Akihiro et al. teach a molar ratio MgO/RO, wherein RO is the total amount of MgO, CaO, SrO, and BaO, is within the range of 0.15 to 0.9 (paragraph [0138]), which overlaps with Applicant’s claimed range of 0.5 to 1.4.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Akihiro et al. teach a strain point is preferably 695°C or higher (paragraph [0146]), which includes Applicant’s claimed range of 700°C or more.
Akihiro et al. do not explicitly teach the β-OH value of the glass sheet.
Saito et al. teach a non-alkali glass substrate comprising a β-OH value preferably less than 0.20/mm. When the β-OH value is too large, the strain point is liable to lower. When the β-OH is too small, the meltability is liable to lower. The β-OH value can be adjusted by a number of means, including selecting raw materials having low water contents, adding a desiccant, such as Cl or SO3, reducing the water content in a furnace atmosphere, performing N2 bubbling, adopting a small melting surface, increasing the flow rate of the molten glass, or heating through application of a current with a heating electrode (paragraphs [0053] – [0054]).
Therefore, based on the teachings of Saito et al., it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to minimize the β-OH value, preferably less than 0.20/mm, of the glass substrate taught by Akihiro et al. in order to increase the strain point of the glass substrate.
With regard to claim 3, as discussed above for claim 1, the content of B2O3 is from 0 – 8 mol%, which includes Applicant’s claimed range of 2 – 3 mol%.
With regard to claim 4, Akihiro et al. do not teach the presence of As2O3 or Sb2O3. Furthermore, Akihiro et al. teach SnO2 may be present in the amount of 0.01 to 0.2 mol% (paragraph [0126]), which is within Applicant’s claimed range of 0.01 to 1 mol%.
With regard to claim 5, Akihiro et al. teach a strain point is preferably 695°C or higher (paragraph [0146]), which includes Applicant’s claimed range of 700°C or more. Akihiro et al. do not explicitly teach a Young’s modulus is 83 GPa or more and a liquidus temperature is 1350°C or less.
However, as discussed above for claim 5, Akihiro et al. teach a glass composition substantially similar to the glass composition claimed by Applicant. Furthermore, Akihiro et al. teach the composition is molded into the form of a plate having a thickness of 0.1 – 1.1 mm (paragraph [0154]). Applicant’s glass sheet has a thickness of less than 0.7 mm, which overlaps with the range taught by Akihiro et al. Therefore, one of ordinary skill in the art would expect the glass plate taught by Akihiro et al. to inherently have the same properties as claimed by Applicant because Akihiro et al. teach a glass plate of substantially similar composition and thickness as Applicant’s glass sheet.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
With regard to claim 7, as discussed above for claim 5, Akihiro et al. do not explicitly teach a Young’s modulus is higher than 84 GPa. However, it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With regard to claim 8, Akihiro et al. do not explicitly teach a specific Young’s modulus is 34 GPa/g-cm3 or more. However, it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With regard to claim 9, Akihiro et al. teach an average thermal expansion coefficient in a temperature range of 100 – 300°C is from 28x10-7/°C or more and less than 50 x 10-7/°C (paragraph [0145]), which includes Applicant’s claimed range of an average thermal expansion coefficient in a temperature range of from 30 to 380°C is from 30 x 10-7 to 50 x 10-7/°C.
With regard to claim 10, Akihiro et al. do not explicitly teach a liquidus viscosity of 104.0 dPa-s or more. However, it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With regard to claim 12, Akihiro et al. the glass substrate is for use in an organic EL device (paragraphs [0002] & [0155]).
With regard to claim 13, Akihiro et al. do not explicitly teach the glass substrate is for use in magnetic recording medium.
However, a recitation of the intended use of the claimed invention 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.
As discussed above for claim 1, Akihiro et al. teach a glass substrate of similar composition and structure. The glass substrate taught by Akihiro et al. is capable of performing the intended use in a magnetic recording medium, and thus, meets the claim.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga et al., as applied to claim 1 above, and further in view of Bookbinder et al. (US 2019/0375668 A1).
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tsujimura et al. & Saito et al., as applied to claim 1 above, and further in view of Bookbinder et al. (US 2019/0375668 A1).
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Akihiro et al. & Saito et al., as applied to claim 1 above, and further in view of Bookbinder et al. (US 2019/0375668 A1).
With regard to claim 11, the references cited above fail to teach the alkali-free glass sheet has a rectangular shape with a short side of 1500 mm or more.
Bookbinder et al. teach a glass sheet for visual display device (paragraph [0003]), wherein the glass sheet may be any shape suitable for a particular application. For ease of description, it is assumed the glass sheet has a rectangular sheet wherein the width (short side) is equal to or greater than about 1500 mm (paragraph [0081] & Fig. 1).
Therefore, based on the teachings of Bookbinder et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date for the alkali-free glass sheet for use as a display device taught by Tokunaga et al., Tsujimura et al., or Akihiro et al. as a rectangular shape with a width (short side) equal to or greater than 1500 mm based on the desired display device application.
Response to Arguments
Applicant argues, “Claim 8 is objected to for an informality. Claim 8 is amended as recommended by the Office Action. Withdrawal of the objection is respectfully requested” (Remarks, Pg. 4).
EXAMINER’S RESPONSE: In light of the amendment of claim 8, the objection of claim 8 has been withdrawn.
Applicant argues, “For at least the following reasons, Applicant respectfully submits that Tokunaga fails to disclose or render obvious the claimed combinations comprising ‘in mol%, . . . from 1.7 to 4% of B2O3,’ among other features.
“As observed by the Office Action, Tokunaga discloses 0 – 1.5 mol% B2O3, which is outside the recited range of 1.7 to 4 mol%. Indeed, Tokunaga discloses if B2O3 content ‘is too large,’ i.e., above 1.5 mol%, ‘strain point is decreased. Therefore, it is preferably 1% or less. Considering environmental load it is preferred that it is not substantially contained.’ See Tokunaga, ¶ [0079]. Accordingly, a person having ordinary skill in the art would have understood Tokunaga as not only failing to disclose or suggest the recited range of 1.7 to 4 mol% but also teaching away from this range” (Remarks, Pgs. 4 – 5).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, as previously discussed for claim 6, Tokunaga et al. explicitly teach a strain point of 725°C or higher (paragraph [0056]), and more preferably higher than 730°C, and most preferably 735°C or higher (paragraphs [0166] – [0167]), which is within Applicant’s claimed range of 727°C or more. Therefore, the concentration difference of 1.5 mol% B2O3 taught by Tokunaga et al. and Applicant’s recited lower endpoint of 1.7 mol% did not result in an undesirable strain point.
Second, Applicant’s specification, as well as the teachings of Tokunaga et al. and Saito et al., teach multiple variables that influence the measured strain point of glass. As demonstrated by Tokunaga et al., a difference of 0.2 mol% B2O3 between Applicant’s claimed B2O3 content and the preferred maximum taught by Tokunaga et al. did not result in an undesirable strain point.
Third, Applicant’s specification, and previous claim 1, teach a B2O3 lower limit content is preferably 0%, more preferably 0.1%. The specification suggests when the content of B2O3 is too high (above 4%), the Young’s modulus and the strain point tend to decrease. Applicant’s specification teaches a more preferred lower limit of B2O3 is 1.5% and the most preferred lower limit of B2O3 is 1.8% (not 1.7% as recited in amended claim 1). See specification, paragraph [0033]. In other words, Applicant’s specification does not teach or suggest any difference in properties of a glass sheet comprising 1.7% B2O3 compared to a glass sheet comprising 1.5% B2O3, as taught by the cited prior art references of Tokunaga et al. This is evidenced by the fact that Applicant’s specification does not contain any working examples to support Applicant’s assertion that the strain point would be any different for a glass comprising 1.5 mol% B2O3 as opposed to a glass comprising 1.7 mol% B2O3.
Fifth, Applicant’s specification does not teach adverse effects when the B2O3 is too low because the specification does not teach the possibility of a B2O3 content that is “too low,” as the specification teaches the preferred lower limit of B2O3 is zero. See specification, paragraph [0033].
Sixth, It is apparent that the instantly claimed amount of 1.7% B2O3 and that taught by Tokunaga et al. are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 1.5 mol% B2O3 disclosed by Tokunaga et al. and the amount of 1.7 mol% B2O3 disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of 1.7 mol% disclosed in the present claims is but an obvious variant of the amounts disclosed in Tokunaga et al., and thereby one of ordinary skill in the art would have arrived at the claimed invention.”
Applicant argues, “For at least the following reasons, Applicant respectfully submits that Tujimara fails to disclose or render obvious the claimed combinations comprising ‘in mol%, . . . from 1.7 to 4% of B2O3,’ among other features.
“As observed by the Office Action, Tsujimura discloses 0 – 1.5 mol% B2O3, which is outside the recited range of 1.7 to 4 mol%. Like Tokunaga above, Tsujimura discloses if B2O3 content ‘is too large,’ i.e., above 1.5 mol%, ‘a strain point is decreased. Therefore, the content is preferably 1% or less. Considering environmental load, it is preferred that B2O3 is not substantially contained (that is, B2O3 is not contained except that B2O3 is unavoidably contained as impurities; herein after the same).’ See Tsujimura, ¶ [0025]. Accordingly, a person having ordinary skill in the art would have understood Tsujimura as not only failing to disclose or suggest the recited range of 1.7 to 4 mol% B2O3 but also teaching away from this range” (Remarks, Pg. 5).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. For all the reasons given above with regard to Tokunaga et al., similar arguments apply to the teachings of Tsujimura et al.
Applicant argues, “Merely to expedite prosecution and without agreeing to the propriety of the rejection, claim 1 is amended to recite, in part, an ‘alkali-free glass sheet, . . . wherein . . . a beta-OH value is 0.35/mm or less, and a strain point is 727°C or more,’ and claim 2 is amended to recite, in part, an ‘alkali-free glass sheet, . . . wherein . . . a β-OH value is 0.35/mm or less, and a strain point is 727°C or more.’… For at least the following reasons, Applicant respectfully submits that Akihiro fails to disclose or render obvious the claimed combinations comprising ‘alkali-free glass sheet, . . . wherein . . . a β-OH value is 0.35/mm or less, and a strain point is 727°C or more,’ among other features.
“Applicant respectfully submits that Akihiro does not disclose a β-OH value. Applicant further submits that Akihiro discloses only glasses with a lower strain point to the claimed subject matter. For example, none of Examples 1 – 34 of Akihiro have a strain point above 725°C. See Akihiro, Table 1. Lastly, Applicant submits that, because Akihiro fails to disclose a β-OH value, and thus fails to disclose or suggest that adjusting the β-OH value affects the strain point of the glass, a person having ordinary skill in the art would not have been motivated to have adjusted a β-OH value to the recited range to obtain a strain point of 727°C or more as recited in claims 1 and 2.
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, in light of Applicant’s most recent amendment of the recited β-OH values, Saito et al. teach a non-alkali glass substrate comprising a β-OH value preferably less than 0.20/mm. When the β-OH value is too large, the strain point is liable to lower. When the β-OH is too small, the meltability is liable to lower. The β-OH value can be adjusted by a number of means, including selecting raw materials having low water contents, adding a desiccant, such as Cl or SO3, reducing the water content in a furnace atmosphere, performing N2 bubbling, adopting a small melting surface, increasing the flow rate of the molten glass, or heating through application of a current with a heating electrode (paragraphs [0053] – [0054]).
Therefore, based on the teachings of Saito et al., it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to minimize the β-OH value, preferably less than 0.20/mm, of the glass substrate taught by the previously cited prior art references in order to increase the strain point of the glass substrate.
Second, with regard to the strain point, the teachings of a reference are not limited to the working examples. MPEP 2123 [R-6]. II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
The broader teachings of the Akihiro et al. reference explicitly teach a strain point range of 695°C or higher. Applicant’s claimed range of 727°C or more is within the range taught by the broader disclosure of Akihiro et al.
Applicant argues, “The Office Action relies on Bookbinder to purportedly remedy Tokunaga’s, Tsujimura’s, and Akihiro’s deficiencies with respect to claim 11, which depends from claim 1. However, Bookbinder, as understood, fails to remedy the deficiencies of Tokunaga, Tsujimura, and Akihiro discussed above with respect to claim 1. Accordingly, the combinations of Tokunaga, Tsujimura, or Akihiro and Bookbinder fail to disclose or render obvious all the features of claim 11, which depends from claim 1” (Remarks, Pg. 7)
EXAMINER’S RESPONSE: Applicant is directed to the discussion above.
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.
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781