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 Amendment
1. This action is in response to the amendment filed June 30, 2026.
Claims 1, 4-5, 7 and 10 were amended, rendering claims 1-20 pending, with claims 12-20 withdrawn as a non-elected invention.
Claim Rejections – 35 USC § 103
2. 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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
3. Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Carberry et al. (U.S. 2010/0218556).
Carberry discloses an apparatus for joining together pieces of low thermal expansion glass to form parts that can be used in the manufacturing of mirror blanks. The parts are then used as a basis for the fabrication, using the method described herein, of hexagon sub-assemblies that would then be joined for assembly into mirror blanks (abstract) where it would have been obvious to one of ordinary skill in the art for the hexagon sub-assemblies to have openings since it is known in the art hexagon assemblies to have openings. Additionally, Figure 9 shows openings in the hexagon sub-assemblies. Carberry discloses laser welding of glass parts to make hexagonal sub-assemblies (paragraph 5). Carberry discloses a mirror assembly has an opening for directing a laser beam from a laser beam source to a joint that is to be welded (paragraph 29), as in claim 1.
In claim 1, the phrases, “attached to the first plate by a first plurality of laser-welded joints, the core assembled from a plurality of glass parts”, “connected by a second plurality of laser-welded joints” and “formed in at least one of the glass parts”
introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a first plate and a core attached by laser welded joints. The reference suggests such a product because Carberry discloses an apparatus for joining together pieces of low thermal expansion glass to form parts that can be used in the manufacturing of mirror blanks. The parts are then used as a basis for the fabrication, using the method described herein, of hexagon sub-assemblies that would then be joined for assembly into mirror blanks (abstract). Carberry discloses laser welding of glass parts to make hexagonal sub-assemblies (paragraph 5). In claim 1, the phrase, “at least one laser access opening is positioned to provide a direct line-of-sight by a laser through the at least one laser access opening toward an internal abutment between two of the glass parts to form at least one of the second plurality of laser-welded joints” is an intended use. 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. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Concerning claim 2, Carberry discloses an apparatus for joining together pieces of low thermal expansion glass to form parts that can be used in the manufacturing of mirror blanks (abstract).
Concerning claim 3, Carberry discloses the parts and sub-assemblies of the invention are made of silica-titania glass (paragraph 4).
Concerning claims 4-5, Carberry discloses the parts are hexagon sub-assemblies that would then be joined for assembly into mirror blanks (abstract) where it would have been obvious to one of ordinary skill in the art for the hexagon sub-assemblies to have openings since it is known in the art hexagon assemblies to have openings. Carberry discloses a mirror assembly has an opening for directing a laser beam from a laser beam source to a joint that is to be welded (paragraph 29).
Concerning claim 6, Carberry discloses the parts and sub-assemblies of the invention are made of silica-titania glass (paragraph 4).
Concerning claim 7, Carberry discloses the parts are hexagon sub-assemblies that would then be joined for assembly into mirror blanks (abstract) where it would have been obvious to one of ordinary skill in the art for the hexagon sub-assemblies to have openings since it is known in the art hexagon assemblies to have openings. Carberry discloses a mirror assembly has an opening for directing a laser beam from a laser beam source to a joint that is to be welded (paragraph 29).
Concerning claim 8, Carberry discloses laser welding of glass parts to make hexagonal sub-assemblies (paragraph 5).
Concerning claim 9, Carberry discloses the parts are hexagon sub-assemblies that would then be joined for assembly into mirror blanks (abstract) where laser welding of glass parts to make hexagonal sub-assemblies (paragraph 5) where the additional plates would be expected to include a second plate attached by additional laser welded joints.
Concerning claim 10, Carberry discloses the parts are hexagon sub-assemblies that would then be joined for assembly into mirror blanks (abstract) where laser welding of glass parts to make hexagonal sub-assemblies (paragraph 5). Carberry discloses a mirror assembly has an opening for directing a laser beam from a laser beam source to a joint that is to be welded (paragraph 29).
Carberry does not appear to teach a line extending through an opening of the first plate intersecting a point along one of the third laser welded joints, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical outcomes. In the present case the apparatus is carried out using material (glass) and process (laser welded) conditions which are substantially identical to those disclosed by applicants. Therefore the apparatus discussed above would be expected to meet the claimed line extending through an opening of the first plate intersecting a point along one of the third laser welded joints.
Concerning claim 11, Carberry discloses the parts and sub-assemblies of the invention are made of silica-titania glass (paragraph 4).
Response to Arguments
4. Applicant’s arguments of the rejection made under 35 U.S.C. 103 as being unpatentable over Carberry et al. (U.S. 2010/0218556) have been considered; however, are unpersuasive. Applicant argues Carberry fails to teach or suggest at least, "at least one laser access opening formed in at least one of the glass parts, wherein the at least one laser access opening is positioned to provide a direct line-of-sight by a laser through the at least one laser access opening toward an internal abutment between two of the glass parts to form at least one of the second plurality of laser-welded joints," as set forth in amended claim 1. In response to Applicant’s argument, Carberry discloses a mirror assembly has an opening for directing a laser beam from a laser beam source to a joint that is to be welded (paragraph 29). In claim 1, the phrase, “at least one laser access opening is positioned to provide a direct line-of-sight by a laser through the at least one laser access opening toward an internal abutment between two of the glass parts to form at least one of the second plurality of laser-welded joints” is an intended use. 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. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Conclusion
5. 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.
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Frank Vineis, can be reached on 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAWRENCE D FERGUSON/Examiner, Art Unit 1781
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