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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 11-14, in the reply filed on 10/6/2025 is acknowledged.
Claims 1-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/6/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 11 and 12 are objected to because of the following informalities:
In claim 11 on line 6, the phrase “the main surface” is objected to grammatically. The objection can be overcome by changing the phrase to “the at least one main surface” which is how the claim will be interpreted.
In claim 11 on line 8, the phrase “the other region of the main surface” is objected to grammatically. The objection can be overcome by changing the phrase to “the another region of the at least one main surface” which is how the claim will be interpreted.
In claim 12 on line 4, the phrase “the other region of the main surface” is objected to grammatically. The objection can be overcome by changing the phrase to “the another region of the at least one main surface” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
Claims 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakajima et al. (JP 2009-269762), machine translation included.
The Examiner notes the presence of the product-by-process limitations of a “flattened region” at the outer edge of the disk and the inner edge of the disk alongside a circular inner hole. It has been held that “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.” Please see MPEP 2112 and In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With regard to claims 11, 12 and 14, Nakajima et al. teach a glass substrate for a magnetic disk that is formed by cutting the glass material 17 of Figure 2 [0039].
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The glass material 17 is formed to have two different surface roughnesses, wherein the central cutting region 18 and the outer peripheral cutting region 19 have a lower roughness than the other regions of the surface of the first face 20 [0040]. The regions 18 and 19 have an Ra of 0.1 nm to 50 nm and the first face 20 portion is set to have an Ra of 300 nm or larger, which reads on the Ra’s of claim 12 [0040]. The region 19 in Example 1 is formed at 32.5 ± 1 mm from the center, which means the region is 2 mm wide in the radial direction before being cut, i.e. from 31.5 to 33.5 mm from the center [0053]. The cut lines 22 are approximately in the center of the regions 18 and 19 [0026] and Figures 2 and 6; hence, immediately after cutting away unnecessary portions 36 and 37 the remaining cut disk will have a circular inner hole, a portion of the central cutting region 18 alongside the circular inner hole, which reads on applicants’ flattened region extending along an outer edge of the inner hole of claim 14, and a portion of the outer peripheral cutting region 19, which reads on applicants’ flattened region at an outer circumferential edge portion of at least one of the main surfaces [0039] and Figure 6. The remaining portion of the outer peripheral cutting region 19 will necessarily have a width in the radial direction of less than 5 mm as claimed as the starting width is 2 mm [0039] and [0053]. Lastly, given the roughnesses of the two regions, the height difference between these two regions will inherently be within the range of claim 11 [0040].
With regard to claim 13, applicants’ specification explains what the meaning of “linear stripes” is at [0071] of their specification that they are “some holes or modified glass portion” arising from the laser beam irradiation. Nakajima et al. teach at [0055] that when they observed their glass disks after cutting, there was “chippings on the end faces of the cut portions were observed, the width of 5 microns was the largest”. Despite being formed by a difference process than how applicants’ linear stripes were formed, i.e. a cutting wheel vs. laser cutting, these chippings on the end faces of the glass disks would read on modified glass portions; hence, they would read on the plurality of linear stripes claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm (variable one work-at-home day).
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/Gerard Higgins/Primary Examiner, Art Unit 1785