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.
The Examiner notes that claim 14 recite(s) nominal method of making limitations, in combination with product limitations encompassing those of claim 1. As such, there is presently no undue burden in examining these, technically, divergent statutory classes of invention. Should Applicants' amend these claims to include non-nominal method limitations, these newly added claims may be subject to restriction by original presentation.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1-8 and 10-22 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Murata et al. (JP 2019-032918).
Regarding claims 1-4, 6, 10-13, and 15-22, Murata discloses a glass substrate for a magnetic recording medium (Title), the glass substrate comprises a glass composition comprising 53-66 mass% of SiO2, 7-34 mass% of Al2O3, 0-8 mass% of B2O3, 0-22 mass% of MgO, 1-15 mass% of CaO 0-15 mass% of SrO, 0-15 mass% of BaO, and 0-10 mass% of ZrO2 (claim 3, [0027-0030]). Murata further discloses that the glass composition is within the claimed range (Tables 1-3 and 9). Murata discloses an average coefficient of linear thermal expansion within a temperature rang e of from 30-380C is 30x10-7/°C or more (Abstract), a Young’s modulus of 80 GPA or more (Abstract), and a strain point within the claimed range (all Tables).
Murata is silent on the specific Young’s modulus, crack generation, Vickers hardness, β-OH, and is essentially fire-polished surface.
However, it is the examiner's position that the reference to Murata teaches similar structure, composition, and other properties as claimed and therefore, would be expected to inherently satisfy the claimed Young’s modulus, crack generation, Vickers hardness, β-OH, and being essentially fire-polished surface. It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977). When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the appellant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the alternative to anticipation, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the claimed properties within the limits known in the art based on the desired end use of the glass material since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA) 1980.
Regarding claim 5, please see Tables.
Regarding claim 7, please see [0015].
Regarding claim 8, please see [0016].
Regarding claim 14, please see [0044].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Murata et al. (JP 2019-032918) and further in view of Nakae (WO 2013/047288).
Regarding claim 9, Murata discloses a glass substrate for a magnetic recording medium, as set forth above, with a sheet thickness of 0.3-0.9 mm [0047]. However, Murata fails to disclose that the glass substrate has a substantially rectangular shape having dimensions larger than or equal to 500 m2 as presently claimed.
Nakae discloses a glass substrate for a magnetic recording medium comprising a substantially rectangular shape having dimensions larger than 500 mm square.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Murata’s glass substrate to have the dimensions as claimed, since Saito discloses that this is a known size for a glass substrate for a magnetic recording medium.
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 1-8 and 10-22 are rejected under 35 U.S.C. 103 as being unpatentable over Saito (JP 2021-086643).
Regarding claims 1-2, 5, 11-12, and 15-22, Saito discloses a glass substrate or disk for a magnetic recording medium having an average coefficient of linear thermal expansion within a temperature range of from 30°C to 380°C of from 30x10-7/°C to 50x10-7/°C [0039], a Young’s modulus of 80 GPa or more (Abstract), a specific Young’s modulus of more than 30 GPa/g·cm-3 (Tables), and a strain point of more than 700ºC (Tables). Saito discloses a glass composition as claimed ([0022-0036] and Tables), however, Saito discloses that the B2O3 content is 0-2%.
However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
In the instant case, the difference between 2% and 2.2% or up to 3% does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed B2O3 content range, especially since Saito discloses the glass properties as claimed.
Regarding claims 3-4, and 10, Saito fails to explicitly disclose that the glass substrate or disk comprises a crack generation rate of less than 50 % when an indentation is made thereon at a load of 500 g with a Vickers indenter, having a Vickers hardness of 640 or more, and is essentially fire-polished surface. However, it is the examiner's position that the reference to Saito teaches similar structure, composition, and other properties as claimed and therefore, would be expected to inherently satisfy the claimed crack generation rate, Vickers hardness, and being essentially fire-polished surface.
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977). When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the appellant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 6, please see [0043].
Regarding claim 7, please see [0046].
Regarding claim 8, please see [0015].
Regarding claim 13, please see Title, [0002], and [0041].
Regarding claim 14, please see [0048].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Saito (JP 2021-086643) and further in view of Nakae (WO 2013/047288).
Regarding claim 9, Saito discloses a glass substrate for a magnetic recording medium, as set forth above, with a sheet thickness of 0.3-0.9 mm [0047]. However, Saito fails to disclose that the glass substrate has a substantially rectangular shape having dimensions larger than or equal to 500 m2 as presently claimed.
Nakae discloses a glass substrate for a magnetic recording medium comprising a substantially rectangular shape having dimensions larger than 500 mm square.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Saito’s glass substrate to have the dimensions as claimed, since Saito discloses that this is a known size for a glass substrate for a magnetic recording medium.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 11 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
/Holly Rickman/Primary Examiner, Art Unit 1785
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