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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-8, drawn to a brittle material chip.
Group II, claims 9-13, drawn to a method for producing the brittle material sheet.
The inventions listed as Groups I and II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The common feature --a brittle material chip with a brittle material layer formed of a brittle material, the brittle material chip: comprising first processed marks on one side in a thickness direction of the brittle material layer on at least one end surface of the brittle material layer, the first processed marks having depths of 1 µm or more and less than half a thickness of the brittle material layer; and comprising or not comprising second processed marks that are formed on another side in the thickness direction on the end surface of the brittle material layer, face the first processed marks in the thickness direction, and have depths of less than 1 µm-- cannot qualify as a special technical feature as it does not provide a contribution over the prior art because it is disclosed by Lu et al. (JP 2016-203607 A) (see the international search report).
In particular, Lu teaches a brittle material wafer having multiple diving lines formed into the brittle material from its surface, and further indicates the diving lines are formed to a depth of less than or equal to one-tenth of the thickness of the brittle material (e.g., for a wafter with a thickness of 90 to 130 µm, the depth is 3 to 15 µm) ([0001], [0011], [0014], [0029], and [0048] of Lu); which anticipates the claimed range of --1 µm or more and less than half a thickness of the brittle material layer--. See MPEP §2131.03(I). Therefore, the reference(s) specifically suggest(s) using the common elements as claimed.
During a telephone conversation with Enoch Peavey on 11 September 2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-8 and 14-16. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-13 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With Regards to Claim 4: Instant claim 4 recites --the brittle material layer is formed of a glass-- in lines 1 to 2. Claim 1, from which claim 4 depends, recites --a brittle material layer formed of a brittle material-- in lines 1 to 2. The claim as written, is rendered indefinite because it can have two conflicting interpretations: (1) that claim 4 is attempting to redefine the brittle material layer (i.e., it would no longer comprise said "brittle material"); or (2) that claim 4 intended to recite that the brittle material is formed of a glass. For the purposes of examination, the latter interpretation will be applied and the claim will be treated to read "the brittle material [[layer]] is formed of a glass".
With Regards to Claim 15: Instant claim 15 recites --the brittle material layer is formed of a glass-- in lines 1 to 2. Claim 1, from which claim 15 depends, recites --a brittle material layer formed of a brittle material-- in lines 1 to 2. The claim as written, is rendered indefinite because it can have two conflicting interpretations: (1) that claim 15 is attempting to redefine the brittle material layer (i.e., it would no longer comprise said "brittle material"); or (2) that claim 15 intended to recite that the brittle material is formed of a glass. For the purposes of examination, the latter interpretation will be applied and the claim will be treated to read "the brittle material [[layer]] is formed of a glass".
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 4, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lu et al. (JP 2016-203607 A).
Regarding Claim 1: Lu teaches a brittle material wafer having multiple diving lines formed into the brittle material from its surface, and that the diving lines are formed to a depth of less than or equal to one-tenth of the thickness of the brittle material (e.g., for a wafter with a thickness of 90 to 130 µm, the depth is 3 to 15 µm) ([0001], [0011], [0014], [0029], and [0048] of Lu); which anticipates the claimed range of --1 µm or more and less than half a thickness of the brittle material layer--. See MPEP §2131.03(I).
Regarding Claim 3: Lu teaches that the first processed marks have depths of 3 to 15 µm ([0048] of Lu); which anticipates the claimed range of --10 µm or less--. See MPEP §2131.03(I).
Regarding Claim 4: Lu teaches that the brittle material is formed of a glass and has a thickness of 90 to 130 µm ([0002], [0029], and [0048] of Lu); which anticipates the presently claimed range of --100 µm or less--. See MPEP §2131.03(I).
Regarding Claim 6: Lu teaches a brittle material sheet that is divided along a planned division line to form the brittle material chip, the brittle material sheet: comprising the first processed marks on a surface of the brittle material layer on one side in a thickness direction of the brittle material layer, the first processed marks being formed along the planned division line ([0001], [0002], [0011], [0014], [0029], and [0048] of Lu).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (JP 2016-203607 A) as applied to claim 1 above, and further in view of Matsuo (US 2020/0353567 A1).
Lu is relied upon as described above.
Regarding Claim 5: Lu fails to disclose --the brittle material chip is in a substantially rectangular shape in plan view, and the end surfaces including the first processed marks includes a pair of end surfaces corresponding to a pair of sides of the rectangular shape that at least face each other--.
Matsuo discloses diving a composite material comprising a brittle material layer, wherein the composite material is divided into a rectangular shape (figures 1A to 4A, [0034], [0036], and [0104]-[0106] of Matsuo).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have combined the composite material of Matsuo with the brittle material chip disclosed by Lu in order to --the brittle material chip is in a substantially rectangular shape in plan view, and the end surfaces including the first processed marks includes a pair of end surfaces corresponding to a pair of sides of the rectangular shape that at least face each other--. One of ordinary skill in the art would have been motivated to have combined the composite material of Matsuo with the brittle material chip disclosed by Lu, from the stand-point of dividing a composite material without causing a crack ([0001] of Matsuo). (In the instant case, it would have been obvious to change the shape of the brittle material chip to be rectangular, since such a modification would have involved a mere change in the shape of the chip. A change in shape is generally recognized as being within the level of ordinary skill in the art. See MPEP §2144.04(IV)(B).)
Claims 2, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (JP 2016-203607 A) as applied to claim 1 above, and further in view of Xuan et al. (US 6,744,009 B1).
Lu is relied upon as described above.
Regarding Claim 2: Lu fails to disclose --the second processed marks have depths of 100 nm or less--.
Xuan discloses scribing both surfaces of a brittle material (e.g., glass) to control breaking (figures 5 to 6, [Col. 2: li. 11-13], and [Col. 3: li. 27-45] of Xuan).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have incorporated the second processed marks disclosed by Xuan with the brittle material layer disclosed by Lu in order to have --the second processed marks have depths of 100 nm or less--. One of ordinary skill in the art would have been motivated to have incorporated the second processed marks disclosed by Xuan with the brittle material layer disclosed by Lu, from the stand-point of having an adjustable offset alignment of the break (figure 6 and [Col. 3: li. 27-45] of Xuan).
Lu in view of Xuan discloses that the processed marks can have depths less than or equal to one-tenth of the thickness of the brittle material (e.g., wafer thickness of 90 to 130 µm) (i.e., a depth of 9 µm or less) ([0048] of Lu); which overlaps the presently claimed range of --100 nm or less--. Lu differs from the claims by failing to disclose an anticipatory example or a range that is sufficiently specific to anticipate the claimed range. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Lu, because overlapping ranges have been held to establish prima facie obviousness. See MPEP §2144.05.
Regarding Claim 14: Lu in view of Xuan discloses that the first processed marks have depths of 3 to 15 µm ([0048] of Lu); which anticipates the claimed range of --10 µm or less--. See MPEP §2131.03(I).
Regarding Claim 15: Lu in view of Xuan discloses that the brittle material is formed of a glass and has a thickness of 90 to 130 µm ([0002], [0029], and [0048] of Lu); which anticipates the presently claimed range of --100 µm or less--. See MPEP §2131.03(I).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (JP 2016-203607 A) in view of Xuan et al. (US 6,744,009 B1) as applied to claims 1 and 2 above, and further in view of Matsuo (US 2020/0353567 A1).
Lu in view of Xuan is relied upon as described above.
Regarding Claim 16: Lu in view of Xuan fails to disclose --the brittle material chip is in a substantially rectangular shape in plan view, and the end surfaces including the first processed marks includes a pair of end surfaces corresponding to a pair of sides of the rectangular shape that at least face each other--.
Matsuo discloses diving a composite material comprising a brittle material layer, wherein the composite material is divided into a rectangular shape (figures 1A to 4A, [0034], [0036], and [0104]-[0106] of Matsuo).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have combined the composite material of Matsuo with the brittle material chip disclosed by Lu in view of Xuan in order to --the brittle material chip is in a substantially rectangular shape in plan view, and the end surfaces including the first processed marks includes a pair of end surfaces corresponding to a pair of sides of the rectangular shape that at least face each other--. One of ordinary skill in the art would have been motivated to have combined the composite material of Matsuo with the brittle material chip disclosed by Lu in view of Xuan, from the stand-point of dividing a composite material without causing a crack ([0001] of Matsuo). (In the instant case, it would have been obvious to change the shape of the brittle material chip to be rectangular, since such a modification would have involved a mere change in the shape of the chip. A change in shape is generally recognized as being within the level of ordinary skill in the art. See MPEP §2144.04(IV)(B).)
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (JP 2016-203607 A) as applied to claims 1 and 6 above, and further in view of Takimoto et al. (WO 2019/244712 A1), and as further evidenced by Non-Patent Literature No. 2 ("List of refractive indices") (referred to herein as "NPL-2").
Lu is relied upon as described above.
Regarding Claim 7: Lu fails to disclose --a resin material layer that is in contact with a surface of the brittle material layer on the one side with no gap and is formed of a resin material having a refractive index of which an absolute difference from a refractive index of the brittle material is 0.2 or less--.
Takimoto discloses a method for manufacturing a glass plate (ref. #1), wherein a surface (ref. #1B), opposite a surface (ref. #1A) of the glass having a gap (ref. #4) formed by cutting, is entirely covered by a sheet body (ref. #12), and wherein the sheet body is a resin of polyethylene terephthalate (PET) (figures 3A to 4A, [0010]-[0012], and [0047]-[0049] of Takimoto).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have combined the sheet body of Takimoto with the brittle material layer disclosed by Lu in order to have --a resin material layer that is in contact with a surface of the brittle material layer on the one side with no gap and is formed of a resin material--. One of ordinary skill in the art would have been motivated to have combined the sheet body of Takimoto with the brittle material layer disclosed by Lu, from the stand-point of achieving smooth cutting of glass with improved cut surface quality ([0010] of Takimoto).
Lu in view of Takimoto discloses that the resin material is PET and the brittle material is glass ([0047]-[0049] of Takimoto), but does not explicitly recite the resin material --having a refractive index of which an absolute difference from a refractive index of the brittle material is 0.2 or less--. However, it has been evidenced by NPL-2 that glass (e.g., plate glass) can have a refractive index of 1.52 and that PET has a refractive index of 1.58 ([Page 3] of NPL-2). As evidenced by NPL-3, a person having ordinary skill in the art at the time the invention was made would have been able to calculate the absolute different of the refractive index between the glass and PET to be about 0.06 [=|(1.52)-(1.57)|]; which anticipates the claimed range of --0.2 or less)--. See MPEP §2131.03(I).
Regarding Claim 8: Lu in view of Takimoto discloses that the resin material is a pressure sensitive adhesive ([0049] of Takimoto). (In the instant case, the sheet body adheres tightly upon being pressed against the glass plate, and is therefore a pressure sensitive adhesive.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Donald M. Flores, Jr. whose telephone number is (571)270-1466. The examiner can normally be reached 7:30 to 17:00 M-F; Alternate Fridays off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (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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/DONALD M FLORES JR/
Donald M. Flores, Jr.Examiner, Art Unit 1781
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