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 .
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.
(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.
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(s) 1-11 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by
Goto (USPub20080248316) or, in the alternative, under 35 U.S.C. 103 as obvious over Goto (USPub20080248316) in view of either one of (USPub20190362754) or (USPub20120188663).
Regarding claims 1-7: ‘316 teaches a glass containing a crystalline phase such as cristobalite, lithium disilicate, etc. (see Tables) and provides examples such as, but not limited to, that shown below in mass%.
K and L
SiO2
75.3
Al2O3
7
P2O5
2
Li2O
9.9
K2O
2
Na2O
0
MgO
0.8
CaO
0
BaO
0
ZnO
0.5
SrO
0
ZrO2
2.3
TiO2
0
Sb2O3
0.2
As2O3
0
Y2O3
0
The glasses have a E/p ratio as claimed (see E/d of Examples listed in Tables)
While ‘’316 does teach their glass having CTE (at 25-100oC) of above 85x10-7/oC (see K and L in Table 3 for instance as well as other some other Examples shown in the tables), ‘316 does not explicitly teach their glass CTE measured at 100-300oC as required in claim 3 or the glass transition point as required in claims 1 and 2. However, the following is noted.
Initially, as shown above, the oxide composition of ‘316 meets that of Applicants’ claims. Additionally, Applicants disclose that their claimed glass can be formed with a 2-stage heat treatment as shown below (see specification par 0053),
Temperature (C)
Duration (min)
1st Nucleating step
400-680, 450-650, or 500-600
30-2000 or 180-1440
2nd crystal growth step
≥680, 700-850, or 700-780
30-500 or 60-400
which is substantially the same as the method used by ‘316 shown below (see K and L in Table 3 for instance).
Temperature (C)
Duration
1st Nucleating step
540 (K and L)
5hr (300min)
2nd crystal growth step
730 (K) or 750 (L)
3hr (180min)
Given the similarities, one skilled in the art would reasonably conclude the same properties to result (MPEP 2112).
Alternatively, it is noted that ‘316 does not appear to place limits on CTE measured at 100-300oC or the glass transition point and instead, only generally teaches a glass used as a substrate for information recording media such as magnetic disks, etc. (abstract).
As ‘754 and ‘663, who each similarly disclose glasses used as substrates for information recording media such as magnetic disks, teaches that because of the high temperatures required of such substrates, good heat resistance is desired (see 0069 in ‘754 and 0040 in ‘663) with desirably a transition point of ≥680oC (0069 in ‘754) or even 630-750oC (0040 in ‘663), and in order to keep the difference of CTE between the glass and spindles used in magnetic disks small, the glass should desirably have CTE at 100-300 of 51 to 90 x10-7 (0077 in ‘754) or even 75 to 120 x10 -7/oC (0042 in ‘663), it would have been obvious to one having ordinary skill at the time of invention to modify ‘316 to include forming their glass with a transition point of ≥680oC or even 630-750oC for heat resistance and a CTE at 100-300 of 51 to 90 x10-7 or even 75 to 120 x10 -7/oC in order to keep the difference of CTE between the glass and spindles used in magnetic disks small.
Note that the above ranges overlap with the ranges claimed (MPEP 2144.05).
Regarding claim 8: ‘316’s glass can have a Vicker’s hardness as claimed (see K and L in Table 3).
Regarding claim 9: As discussed above, ‘316 teaches their glass being a magnetic recording medium substrate.
Regarding claims 10 and 11: A magnetic recording layer can be applied on the magnetic recording medium substrates (0012, 0151) and ‘316 additionally suggests their substrate being used with a magnetic recording head (see discussion of magnetic head in 0005-0011, 0081, 0100-0101, 0107).
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by
Yagi (USPub20090118113) or, in the alternative, under 35 U.S.C. 103 as obvious over Yagi (USPub20090118113) in view of either one of (USPub20190362754) or (USPub20120188663).
Regarding claims 1-7: Yagi teaches a glass containing a crystalline phase such as cristobalite, lithium disilicate, etc. (see Tables) and provides examples such as, but not limited to, that shown below in mass%.
Example 6
SiO2
70.5
Al2O3
6.5
P2O5
2
Li2O
8.5
B2O3
0
K2O
1.5
Na2O
0
MgO
0.8
CaO
0
BaO
5.5
ZnO
0.5
SrO
0
ZrO2
4
TiO2
0
Sb2O3
0.2
The glasses have a E/p ratio as claimed (see E/d of Examples listed in Tables including that of Example 6)
While ‘Yagi does teach their glass having CTE (at 25-100oC) of 55-120 x10-7/oC (0059) and even values above 85 x10-7/oC (see for instance Example 6), Yagi does not explicitly teach their glass CTE measured at 100-300oC as required in claim 3 or the glass transition point as required in claims 1 and 2. However, the following is noted.
Initially, as shown above, the oxide composition of Yagi meets that of Applicants’ claims. Additionally, Applicants disclose that their claimed glass can be formed with a 2-stage heat treatment as shown below (see specification par 0053),
Temperature (C)
Duration (min)
1st Nucleating step
400-680, 450-650, or 500-600
30-2000 or 180-1440
2nd crystal growth step
≥680, 700-850, or 700-780
30-500 or 60-400
which is substantially the same as the method used by Yagi shown below (see Example 6 and par 0073).
Temperature (C)
Duration
1st Nucleating step
500-600 (540 in Ex 6)
1-12hr (60-720min)
2nd crystal growth step
600-850 (740 in Ex 6)
1-12hr (60-720min)
Given the similarities, one skilled in the art would reasonably conclude the same properties to result (MPEP 2112).
Alternatively, it is noted that Yagi does not appear to place limits on CTE measured at 100-300oC or the glass transition point and instead, only generally teaches a glass used as a substrate for information recording media such as magnetic disks, etc. (abstract).
As ‘754 and ‘663, who each similarly disclose glasses used as substrates for information recording media such as magnetic disks, teaches that because of the high temperatures required of such substrates, good heat resistance is desired (see 0069 in ‘754 and 0040 in ‘663) with desirably a transition point of ≥680oC (0069 in ‘754) or even 630-750oC (0040 in ‘663), and in order to keep the difference of CTE between the glass and spindles used in magnetic disks small, the glass should desirably have CTE at 100-300 of 51 to 90 x10-7 (0077 in ‘754) or even 75 to 120 x10 -7/oC (0042 in ‘663), it would have been obvious to one having ordinary skill at the time of invention to modify Yagi to include forming their glass with a transition point of ≥680oC or even 630-750oC for heat resistance and a CTE at 100-300 of 51 to 90 x10-7 or even 75 to 120 x10 -7/oC in order to keep the difference of CTE between the glass and spindles used in magnetic disks small.
Note that the above ranges overlap with the ranges claimed (MPEP 2144.05).
Regarding claim 8: Given the similarities between Yagi and Applicants’ invention as laid out above, one skilled in the art would conclude the same resulting hardness (MPEP 2112)
Regarding claim 9: As discussed above, Yagi teaches their glass being a magnetic recording medium substrate.
Regarding claims 10 and 11: A magnetic recording layer can be applied on the magnetic recording medium substrates (0009) and Yagi additionally suggests their substrate being used with a magnetic recording head (see discussion of magnetic head throughout the disclosure).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/713168 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 8, 10-11 of copending Application No. 18/834606 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/024489 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/024491 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/024490 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18834614 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/919627 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18994649 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented
Claims 1-11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,807,568. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784