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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 4, 2025 has been entered.
Response to Amendment
Applicant’s Amendment filed November 12, 2025 has been fully considered and entered.
Election/Restrictions
New claims 32-36 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
I. Claims 1-19 and 23-31, drawn to an optical fiber comprising 13.08% to 20% of TiO2.
II. Claims 32-36, drawn to an optical fiber comprising a ratio of content of Nb2O5/P2O5 is from 0.7 to 1.03.
The inventions are distinct, each from the other because of the following reasons:
Inventions I and II are related as species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as an optical fiber without Nb2O5/P2O5 is from 0.7 to 1.03 and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 32-36 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Claim Objections
Regarding claim 28, the claim fails to further limit claim 1 from which is depends. Claim 28 recites a range of 8.22% to 20% by mass of TiO2 while amended claim 1 now recites a range of 13.08% to 20% by mass of TiO2.
Appropriate correction is required.
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 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 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 1-19 and 23-31 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (JP 5-270853A from Applicant’s Information Disclosure Statement filed December 13, 2019) in view of Sato (JP 08-157231A from Applicant’s Information Disclosure Statement filed December 13, 2019).
Regarding claim 1, Yamaguchi discloses an optical glass (see Example No. 2 on page 3) comprising by mass%,
0% to 4% of SiO2 (2.3%);
10% to 40% of P2O5 (25%);
4% to 30% of B2O3 (10%);
5% to 7.82% of K2O (5%);
0% to 2% of ZrO2 (0.5%);
0% to 10% of ZnO (0%);
20% to 70% of Nb2O5 (30%); wherein
total content P2O5 + B2O3 is more than 25% and 41% or less (35%),
B2O3 /P2O5 is 0.15 or more and less than 1.23 (.4),
TiO2 /P2O5 is 0.26 or more and less than 1.3 (.4),
Nb2O5 /P2O5 is from 0.7 to 2.8 (1.2), and
(Na2O + K2O)/(P2O5 + B2O3) is from 0.42 to 0.8 (.57),
and a ratio of a content amount of WO3 is 0% to 2% (0%).
Still regarding claim 1, Yamaguchi teaches the claimed invention except for specifically stating 13.08% to 20% of TiO2. However, Yamaguchi states in paragraph 0010 that TiO2 is an effective component for increasing the refractive index of glass and that the maximum amount is 20%. As such, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed 13.08% to 20% of TiO2 to achieve a desired refractive index of the optical glass, and 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, 105 USPQ 233.
Still regarding claim 1, Yamaguchi teaches the claimed invention except for specifically stating the amount of Na2O. Sato discloses an optical glass (see Example No. 8 on page 7) comprising by mass%,
8% to 11% of Na2O (9.5%); and
5% to 7.82% of K2O (7%);
as well as mass%’s of SiO2 (0%), P2O5 (23.9%); B2O3 (5.6%); ZrO2 (0%); ZnO (0%); and Nb2O5 (33.8%) within the claimed ranges.
Since both inventions relate to optical glasses, one having ordinary skill in the art at the time of the invention would have found it obvious to use the mass% of Na2O as disclosed by Sato in the optical glass of Yamaguchi for the purpose of forming a glass with high dispersion characteristics without causing devitrification.
Regarding claim 2, Yamaguchi discloses 0% of a BaO since it is not included in Example 2.
Regarding claim 3, Yamaguchi discloses 0% of a Al2O3 since it is not included in Example 2.
Regarding claim 4, Yamaguchi discloses 0% to 1% of a Sb2O3 (0.2) in Example 2.
Regarding claim 5, Yamaguchi discloses Ta not being substantially included in Example 2 since it discloses only a small amount, 2%, of Ta2O5. Paragraph 0046 of Applicant’s specification states that the content of Ta2O5 is “preferably 0% to 5%, and more preferably, is not substantially included.” As such, the limitation “not substantially included” will be taken to mean less than 5%, which is taught in Example 2.
Regarding claim 6, Yamaguchi discloses a refractive index with respect to a d-line from 1.70 to 1.78 in Example 2.
Regarding claim 7, Yamaguchi discloses an abbe number vd from 20 to 30 in Example 2.
Regarding claim 8, the proposed combination of Yamaguchi and Sato teaches the claimed invention except for specifically stating the claimed relationship. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to arrive at the claimed value to achieve a desired optical properties such as reduction of chromatic aberration, and 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, 105 USPQ 233.
Regarding claim 9, the proposed combination of Yamaguchi and Sato teaches the claimed invention except for specifically stating the specific gravity. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to arrive at the claimed specific gravity to achieve a desired weight of the optical glass, and 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, 105 USPQ 233.
Regarding claim 10, the proposed combination of Yamaguchi and Sato teaches the claimed invention except for specifically stating the partial dispersion ratio. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to arrive at the claimed partial dispersion ratio to achieve a desired transmissivity, and 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, 105 USPQ 233.
Regarding claim 11, the proposed combination of Yamaguchi and Sato teaches the claimed invention except for specifically stating the wavelength at which transmittance is 80%. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to arrive at the wavelength to achieve a desired visible light transmittance, and 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, 105 USPQ 233.
Regarding claim 12, Yamaguchi discloses an optical glass in the abstract which is inherently an optical element.
Regarding claims 13-19 and 24-27, the proposed combination of Yamaguchi and Sato teaches the claimed invention except for the optical glass used as an interchangeable camera lens, a first or second lens element in a cemented lens as part of an optical device, a lens barrel or a microscope objective lens. However, optical devices such as cameras having interchangeable camera lens, a cemented lens, a lens barrel or a microscope objective lens are ubiquitous in the art of optical devices and as such, one of ordinary skill in the art at the time of the invention would have found it obvious to use the optical glass as a lens in the claimed devices since the glass exhibits desirable light transmissivity and devitrification resistance.
Regarding claim 23, the proposed combination of Yamaguchi and Sato teaches the claimed invention except for specifically stating the glass containing by mass, 1.76% to 20% BaO. However, it would have been obvious to one having ordinary skill in the art at the time of the invention to comprise the claimed amount of BaO since Yamaguchi discloses BaO is effective in suppressing devitrification of glass, but that it becomes difficult to obtain a desired optical constant if the amount exceeds 20% in paragraph 0013, and 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, 105 USPQ 233.
Regarding claim 28, Yamaguchi discloses 8.22% to 20% by mass of TiO2 in Example 2.
Regarding claim 29, Yamaguchi a ratio of Nb2O5/P2O5 is from 0.7 to 1.62 in Example 2.
Regarding claim 30, Yamaguchi discloses 20% to 37.06% by mass of Nb2O5 in Example 2.id crystal moleculesand specifically stating the exposure voltage greater than a
Regarding claim 31, Sato in view of the rejection of claim 1 above, discloses an optical glass (see Example No. 8 on page 7) comprising by mass% of 8% to 11% of Na2O (9.5%).
Response to Arguments
Applicant's arguments, filed November 12, 2025, with respect to claims have been considered but are moot in view of the new grounds of rejection. However, in order to further expedite the prosecution of the application, the relevant portions of Applicant’s remarks will be addressed.
On page 7, Applicant states that the amended limitation of 13.08% to 20% of TiO2 is not described in Yamaguchi. However, Yamaguchi states in paragraph 0010 that TiO2 is an effective component for increasing the refractive index of glass and that the maximum amount is 20%. As such, it would have been obvious to one having ordinary skill in the art to include up to 20%, including the claimed 13.08% to 20% of TiO2, to achieve a desired refractive index of the optical glass. Applicant further states that changing the amount in Example 2 would result in “decreasing the effective component, which is unlikely.” However, Example 1 shows an amount of 15% of TiO2, which is within the claimed range of 13.08% to 20%. Therefore, it is not unlikely as asserted by Applicant, but even suggested by Yamaguchi.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRIS H CHU whose telephone number is (571)272-8655. The examiner can normally be reached on Mon-Fri 9AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached on 571-272-239797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Any inquiry of a general or clerical nature should be directed to the Technology Center 2800 receptionist at telephone number (571) 272-1562.
Chris H. Chu
/CHRIS H CHU/Primary Examiner, Art Unit 2874 December 23, 2025