DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/20/26 has been entered.
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14, 16, 18, 20, and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 11 recites a glass composition comprising 2.5-5.5 mass% of B2O3 and 5-9 mass% of B2O3+MgO. Although the specification discloses 5-9 mass% of B2O3+MgO, the specification does not provide support to broadly claim any MgO concentration. The instant specification discloses that the total amount of B2O3+MgO is based upon specific concentration of MgO. For example, there is no support in the specification to have 5-5.5 mass% of B2O3 and 0 mass % of MgO.
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 1-7, 10-14, 16, 18, 20, and 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 Hayashi et al. (JP 2017-007940).
Regarding claims 1-4, 6, 10-13, 16, 18, 20, and 22, Hayashi discloses a glass substrate for a magnetic recording medium [0002], the glass substrate comprises a glass composition comprising 58-70 mass% of SiO2, 16-25 mass% of Al2O3, 3-8 mass% of B2O3, 0-5 mass% of MgO, 3-13 mass% of CaO, 0-6 mass% of SrO, 0-6 mass% of BaO, and 0-5 mass% of ZrO2 (Abstract). Hayashi further discloses that the glass composition is within the claimed range and satisfies the claimed B2O3+MgO (no. 11 and 26-27).
Further, Hayashi discloses an average coefficient of linear thermal expansion within a temperature range of from 30-380°C is (30-40) x10-7/°C, a Young’s modulus of 70 GPa or more, a strain point of 680-740°C and is within the claimed range, a specific Young’s modulus is 30 GPa/g·cm-3 or more, and β -OH value is 0.35/mm or less (Abstract, [0045], [0056], all Tables).
Hayashi is silent on the crack generation, Vickers hardness, average linear transmittance, and is essentially fire-polished surface.
However, it is the examiner's position that the reference to Hayashui teaches similar structure, composition, and other properties as claimed and therefore, would be expected to inherently satisfy the claimed crack generation, Vickers hardness, average linear transmittance, 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, Hayashi fails to explicitly disclose the surface roughness of the glass substrate as presently claimed. However, Hayashi discloses that the glass surface is polished and discloses that no roughness was observed ([0072], Tables). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hayashi’s surface to have little to no surface roughness, since Hayashi discloses it preferably wants a smooth polished surface [0072].
Regarding claim 14, please see [0002].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (JP 2017-007940) and further in view of Nakae (WO 2013/047288).
Regarding claim 9, Hayashi discloses a glass substrate for a magnetic recording medium, as set forth above, with a sheet thickness of less than 0.5 mm [0055]. However, Hayashi 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 Hayashi’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.
Claims 1-8 and 10-22 are rejected 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 and the claims differ in that Murata does not teach the exact same proportions as recited in the instant claims.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the compositional proportions taught by Murata overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
With regards to the claimed 5-9 mass% of B2O3+MgO, Murata discloses 0-8 mass% of B2O3 and 0-22 mass% of MgO and that all values within the range appears to be functionally equivalent. It would have been obvious to choose any concentration from that ranged based on the desired glass properties and that choosing concentration values would have rendered the claimed relationship between B2O3 and MgO to have a total concentration of 5-9 mass% obvious in the absence of showing criticality.
Further, Murata discloses an average coefficient of linear thermal expansion within a temperature range of from 30-380°C 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.
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.
With regards to applicant’s arguments that Murata fails to disclose the glass composition as claimed, it is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Conclusion
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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