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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis 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.
Priority
Receipt is acknowledged of the International Application PCT/JP2023/026174. A Notice of Acceptance of Application under 35 U.S.C. 371 and 37 CFR 1.495 was mailed 10 September 2025.
Acknowledgment is made of applicant's claim for foreign priority based on application JP 2022-114475 filed in Japan on 19 July 2022. It is noted, however, that applicant has filed a certified copy of the application as required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted 7 February 2025, 30 December 2025, and 30 December 2025 have been considered by the Examiner.
Drawings
The original drawings received on 20 December 2024 are accepted by the Examiner.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-7 and 9-13 are rejected under 35 U.S.C. § 103 as being unpatentable over Fukuda, Japanese Patent Publication JP 2009-206233 A.
A machine-generated translation of JP 2009-206233 A accompanies this action. In reciting this rejection, the examiner will cite this translation.
Fukuda teaches a method of making a ceramic substrate where the ceramic substrate comprises a glass component and ceramics (inorganic fillers). See Abstract and the entire specification, specifically, paragraphs [0001]-[0004] and [0017]. Fukuda teaches that the ceramic substrate is made from ceramic green sheets which comprise a glass component. See paragraphs [0001]-[0004]. Fukuda teaches that the inorganic fillers include corundum (a-alumina), cristobalite, quartz, mullite, and cordierite. See paragraph [0017]. Fukuda teaches that the glass component consists of a low-melting-point crystallized glass where the crystalline phases include at least one of cordierite, mullite, anorthite, cergian, spinel, granite, willemite, dolomite, petalite, and substituted derivatives. See paragraph [0018]. Fukuda teaches that the unsintered sheets (green sheet) include the glass frit, inorganic filler, binder, and solvent to form a tape. See paragraphs [0023] and [0024]. Fukuda teaches that the average particle size is 1.0-6.0 µm. See paragraph [0025]. Fukuda teaches that the glass composition which precipitates anorthite includes SiO2, B2O3, Al2O3, ZnO, and alkaline earth metal oxides. See paragraph [0026]. Fukuda teaches that the inorganic fillers include ceramics such as corundum (a-alumina), cristobalite, quartz, mullite, and cordierite, where the inorganic fillers have a particle size of 1.0-6.0 µm. See paragraph [0027].
Fukuda fails to teach any examples or compositional ranges that are sufficiently specific to anticipate the glass ceramic substrate, the green sheet, and the composite powder as recited in instant claims 1-7 and 9-13. However, the method of making a glass ceramic substrate taught by Fukuda have overlapping compositions with instant claims 1-13. See paragraphs [0001]-[0004], [0017], [0018], and [0023]-[0027]. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Fukuda because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional components taught by Fukuda overlap the instantly claimed components 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.
Specifically, as to claim 1, Fukuda discloses a glass ceramic substrate comprising a crystallized glass where the crystal phase includes anorthite and inorganic fillers which include cordierite, mullite, anorthite, cergian, spinel, granite, willemite, dolomite, petalite, and substituted derivatives (see paragraphs [0017] and [0018]), which reads on a glass ceramic substrate comprising a glass, a first ceramic filler of alumina, a second ceramic filler of cordierite, and a crystalline material of anorthite, as recited in instant claim 1.
One of ordinary skill in the art would expect that a glass ceramic substrate comprising a glass, alumina, cordierite, and a crystalline material, anorthite would have a (X-ray diffraction peak intensity of a (2-20) crystal plane of the anorthite)/(X-ray diffraction peak intensity of the (2-20) crystal plane of the anorthite + X-ray diffraction peak intensity of a (104) crystal plane of the alumina + X-ray diffraction peak intensity of a (100) crystal plane of the cordierite) of 0.15 or more, as recited in instant claim 1.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 2, Fukuda teach a glass ceramic substrate and one of ordinary skill in the art would expect that a glass ceramic substrate comprising a glass, alumina, cordierite, and a crystalline material, anorthite would have a three-point bending strength of 250 MPa or more, as recited in instant claim 2.
As to claim 3, Fukuda teach a glass ceramic substrate and one of ordinary skill in the art would expect that a glass ceramic substrate comprising a glass, alumina, cordierite, and a crystalline material, anorthite would have a thermal expansion coefficient in a temperature range of from -40°C to +125°C of 4.0 x 10-6/°C or less, as recited in instant claim 3.
As to claim 4, Fukuda teach a glass ceramic substrate which comprises inorganic fillers of alumina and cordierite, which have a particle size of 1.0-6.0 µm (see paragraph [0027]), which reads on a glass ceramic substrate, wherein a maximum particle diameter of the cordierite is larger than a maximum particle diameter of the alumina, as recited in instant claim 4.
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to have a glass ceramic substrate where the maximum particle diameter of the cordierite is larger than the maximum particle diameter of the alumina, which falls within the range of particle sizes taught by Fukuda, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). See MPEP 2144.05 II(A).
As to claim 5, Fukuda teach a glass ceramic substrate which comprises inorganic fillers of alumina and cordierite, which have a particle size of 1.0-6.0 µm (see paragraph [0027]), which reads on a glass ceramic substrate, wherein a value obtained by dividing the maximum particle diameter of the cordierite by the maximum particle diameter of the alumina is from 1.5 to 10.0, as recited in instant claim 5.
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to have a glass ceramic substrate where the a value obtained by dividing the maximum particle diameter of the cordierite by the maximum particle diameter of the alumina is from 1.5 to 10.0, which falls within the range of particle sizes taught by Fukuda, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). See MPEP 2144.05 II(A).
As to claim 6, Fukuda teach a glass ceramic substrate which comprises inorganic fillers of alumina and cordierite, which have a particle size of 1.0-6.0 µm (see paragraph [0027]), which reads on a glass ceramic substrate, wherein an average particle diameter of the cordierite is larger than an average particle diameter of the alumina, as recited in instant claim 6.
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to have a glass ceramic substrate where the average particle diameter of the cordierite is larger than the average particle diameter of the alumina, which falls within the range of particle sizes taught by Fukuda, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). See MPEP 2144.05 II(A).
As to claim 7, Fukuda teach a glass ceramic substrate which comprises inorganic fillers of alumina and cordierite, which have a particle size of 1.0-6.0 µm (see paragraph [0027]), which reads on a glass ceramic substrate, wherein a value obtained by dividing the average particle diameter of the cordierite by the average particle diameter of the alumina is from 1.5 to 10.0, as recited in instant claim 7.
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to have a glass ceramic substrate where the a value obtained by dividing the average particle diameter of the cordierite by the average particle diameter of the alumina is from 1.5 to 10.0, which falls within the range of particle sizes taught by Fukuda, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). See MPEP 2144.05 II(A).
As to claim 10, Fukuda discloses unsintered sheets (green sheets) for a glass ceramic substrate comprising a glass and inorganic fillers which include cordierite, mullite, anorthite, cergian, spinel, granite, willemite, dolomite, petalite, and substituted derivatives, where the inorganic filler has a particle size of 1.0-6.0 µm (see paragraphs [0005], [0017], [0018], [0024], and [0027]), which reads on a green sheet for glass ceramic substrate comprising a glass, a first ceramic filler of alumina, and a second ceramic filler of cordierite, wherein a maximum particle diameter of the cordierite is larger than a maximum particle diameter of the alumina, as recited in instant claim 10.
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to have a green sheet for a glass ceramic substrate where the maximum particle diameter of the cordierite is larger than the maximum particle diameter of the alumina, which falls within the range of particle sizes taught by Fukuda, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). See MPEP 2144.05 II(A).
As to claim 11, Fukuda discloses unsintered sheets (green sheets) for a glass ceramic substrate comprising a glass and inorganic fillers which include cordierite, mullite, anorthite, cergian, spinel, granite, willemite, dolomite, petalite, and substituted derivatives, where the inorganic filler has a particle size of 1.0-6.0 µm (see paragraphs [0005], [0017], [0018], [0024], and [0027]), which reads on a green sheet for glass ceramic substrate comprising a glass, a first ceramic filler of alumina, and a second ceramic filler of cordierite, wherein an average particle diameter of the cordierite is larger than an average particle diameter of the alumina, as recited in instant claim 11.
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to have a green sheet for a glass ceramic substrate where the maximum particle diameter of the cordierite is larger than the maximum particle diameter of the alumina, which falls within the range of particle sizes taught by Fukuda, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). See MPEP 2144.05 II(A).
As to claim 12, Fukuda discloses a composite powder for making unsintered sheets (green sheets) for a glass ceramic substrate comprising a glass and inorganic fillers which include cordierite, mullite, anorthite, cergian, spinel, granite, willemite, dolomite, petalite, and substituted derivatives, where the inorganic filler has a particle size of 1.0-6.0 µm (see paragraphs [0005], [0017], [0018], [0024], and [0027]), which reads on a composite powder for glass ceramic substrate comprising a glass, a first ceramic filler of alumina, and a second ceramic filler of cordierite, wherein a maximum particle diameter of the cordierite is larger than a maximum particle diameter of the alumina, as recited in instant claim 12.
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to have a composite powder for a glass ceramic substrate where the maximum particle diameter of the cordierite is larger than the maximum particle diameter of the alumina, which falls within the range of particle sizes taught by Fukuda, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). See MPEP 2144.05 II(A).
As to claim 13, Fukuda discloses a composite powder for making unsintered sheets (green sheets) for a glass ceramic substrate comprising a glass and inorganic fillers which include cordierite, mullite, anorthite, cergian, spinel, granite, willemite, dolomite, petalite, and substituted derivatives, where the inorganic filler has a particle size of 1.0-6.0 µm (see paragraphs [0005], [0017], [0018], [0024], and [0027]), which reads on a composite powder for glass ceramic substrate comprising a glass, a first ceramic filler of alumina, and a second ceramic filler of cordierite, wherein an average particle diameter of the cordierite is larger than an average particle diameter of the alumina, as recited in instant claim 13.
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to have a composite powder for a glass ceramic substrate where the maximum particle diameter of the cordierite is larger than the maximum particle diameter of the alumina, which falls within the range of particle sizes taught by Fukuda, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). See MPEP 2144.05 II(A).
Claims 8 and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Fukuda, Japanese Patent Publication JP 2009-206233 A in view of Abe et al., Japanese Patent Publication JP H06-350254 A.
A machine-generated translations of JP 2009-206233 A and JP H06-350254 A accompany this action. In reciting this rejection, the examiner will cite these translations.
Fukuda teaches a method of making a ceramic substrate where the ceramic substrate comprises a glass component and ceramics (inorganic fillers). See Abstract and the entire specification, specifically, paragraphs [0001]-[0004] and [0017]. Fukuda teaches that the ceramic substrate is made from ceramic green sheets which comprise a glass component. See paragraphs [0001]-[0004]. Fukuda teaches that the inorganic fillers include corundum (a-alumina), cristobalite, quartz, mullite, and cordierite. See paragraph [0017]. Fukuda teaches that the glass component consists of a low-melting-point crystallized glass where the crystalline phases include at least one of cordierite, mullite, anorthite, cergian, spinel, granite, willemite, dolomite, petalite, and substituted derivatives. See paragraph [0018]. Fukuda teaches that the unsintered sheets (green sheet) include the glass frit, inorganic filler, binder, and solvent to form a tape. See paragraphs [0023] and [0024]. Fukuda teaches that the average particle size is 1.0-6.0 µm. See paragraph [0025]. Fukuda teaches that the glass composition which precipitates anorthite includes SiO2, B2O3, Al2O3, ZnO, and alkaline earth metal oxides. See paragraph [0026]. Fukuda teaches that the inorganic fillers include ceramics such as corundum (a-alumina), cristobalite, quartz, mullite, and cordierite, where the inorganic fillers have a particle size of 1.0-6.0 µm. See paragraph [0027].
Fukuda fails to teach any examples or compositional ranges that are sufficiently specific to anticipate the glass composition of the glass ceramic substrate as recited in instant claims 8 and 9.
As to claim 8, Abe et al. teach a similar glass ceramic substrate comprising a glass and inorganic fillers. See Abstract and the entire specification, specifically, paragraphs [0001]-[0004], [0007], [0017], and [0026]. Abe et al. teach that the glass powder comprises 65-85 wt.% of SiO2, 10-20 wt.% of B2O3, 1-15 wt.% of Al2O3, 0-5 wt.% of alkali metal oxides, or 0-1 wt.% of others. See paragraph [0026].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have a glass ceramic substrate containing a glass comprising at most 1 mol% of Al2O3 as recited in instant claim 8 from the glass ceramic substrate of Fukuda as suggested by Abe et al. because the resultant glass ceramic substrate would have the superior insulating properties while having excellent melting performance of the glass composition of Abe et al. See paragraph [0026] of Abe et al.
As to claim 9, Abe et al. teach a similar glass ceramic substrate comprising a glass and inorganic fillers. See Abstract and the entire specification, specifically, paragraphs [0001]-[0004], [0007], [0017], and [0032]. Abe et al. teach that the glass powder comprises 40-60 wt.% of SiO2, 0-10 wt.% of B2O3, 10-35 wt.% of Al2O3, 5-25 wt.% of MgO, 0-25 wt.% of CaO, and 0-5 wt.% of alkali metal oxides. See paragraph [0032].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have a glass ceramic substrate containing a glass comprising 50-80 mol.% of SiO2, 5-30 mol.% of B2O3, and 3-25 mol.% of CaO, as recited in instant claim 9 from the glass ceramic substrate of Fukuda as suggested by Abe et al. because the resultant glass ceramic substrate would have the superior insulating properties while having excellent melting performance of the glass composition of Abe et al. See paragraph [0032] of Abe et al.
Conclusion
The additional references cited on the 892 have been cited as art of interest since they are considered to be cumulative to or less than the art relied upon in the rejections above.
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
25 September 2026
