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 claims 1-9 and 12 in the reply filed on 11/7/2025 is acknowledged.
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-2, 4-5 and 8-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Comstock, II et al. (US 2016/0097885 A1, hereafter Comstock)
As to claim 1, Comstock teaches determining a reference shape defect and a reference surface roughness of an optical surface of an optical part (both have defects during the manufacturing process, as broadly claimed), and wherein the optical part comprises a substrate and a coating, the coating being applied onto a surface of the substrate and being configured to form the optical surface of the optical part, the substrate being made of a first aluminium alloy and the coating being made of a second aluminium alloy (para 0012-0014, 0080, 0097 for example) having lesser porosity than a porosity of the first aluminium alloy (para 0013- the porosity in the substrate is greater and undesirable from a DMLS Al alloy substrate with the coating in para 0014 having less porosity); determining an initial shape defect and initial surface roughness of the coating of the optical part (general surface roughness during deposition, as broadly claimed);
using the initial surface roughness to determine polishing parameters required to obtain the determined reference surface roughness (diamond tuning to a particular surface roughness in para 0083);
using the polishing parameters to machine the coating and obtain a machined coating having a machined shape defect (diamond tuning creates periodic structures in para 0090); and using the determined polishing parameters to polish the machined coating by smoothening (polishing formulation by polishing pad para 0084-0090), in order to modify the surface roughness and machined shape defect of the machined coating and obtain modified surface roughness and modified shape defect that correspond to the determined reference roughness and reference shape defect (less than 25 angstroms in para 0092, also see para 0096-0099, Figure 8 for removal of defect peaks and desired surface roughness).
It is noted that ‘determining’ is broadly claimed in the claim language and the broadest reasonable interpretation includes simply noticing defects or having inherent defects known from the processes and polishing them to an acceptable level.
As to claim 2, Comstock teaches these techniques as well in para 0090 that would remove oxide defects from the coating surface.
As to claims 4-5, a thermal stabilization step is utilized as broadly claimed in para 0078, 0092 as broadly claimed for example and occurs before machining/polishing as claimed.
As to claim 8, initial preparation of the substrate by machining to gain the claimed surface roughness occurs in para 0078-79, 0092.
As to claim 9, as these steps are optional if the defect reduction is not met, and Comstock meets the defect reduction, thus this claim is met by the polishing steps in paras 0084-0099.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Comstock in view of Horie et al. (JP 2004/178777 A)
As to claim 3, the polishing pad is as claimed in Comstock para 0090, but Comstock does not teach an aqueous diamond polishing agent. Horie et al. teaches using aqueous diamond in polishing mirror substrates as it is effective in reducing surface roughness in paras 0024-0025. Therefore, it would have been obvious at the time of filing to modify Comstock to include polishing with aqueous diamond as taught by Horie et al. as Horie et al. teaches the art recognized suitability and utility of such.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Comstock in view of CN 109628894 (hereafter CN; citations taken from attached google translate document)
As to claim 6-7, Comstock teaches cleaning in para 0078 but not with water vapor and vacuum drying. CN teaches using water vapor as part of an alkaline solution and vacuum drying on p 4-5 and the embodiment. Therefore, it would have been obvious at the time of filing to modify Comstock to include cleaning as drying as taught by CN as CN teaches the art recognized suitability and utility of such.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Comstock.
As to claim 12, the resulting surface roughness of the substrate is as claimed in paras 0079 and the examples, but not the exact roughness claimed. It would have been obvious to a person having ordinary skill in the art at the time the invention was made to include the claimed surface roughness, 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1715
/KELLY M GAMBETTA/ Primary Examiner, Art Unit 1715