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
Response to Amendment
Applicant’s Amendment filed on April 29, 2026 has been fully considered and entered.
Election/Restrictions
New claims 37-41 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
I. Claims 1, 3-19, 24-27, 29-31, 42 and 43, drawn to an optical fiber comprising 1.76% to 20% of BaO.
II. Claims 37-41, drawn to an optical fiber comprising 0.70% to 10% of Al2O3 and 0% to 20% of TiO2.
The inventions are distinct, each from the other because of the following reasons:
Inventions II and I 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 1.76% to 20% of BaO 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 Accordingly, claims 37-41 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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, 3-19, 24-27, 29-31, 42 and 43 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 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.
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 3, the proposed combination of Yamaguchi and Sato teaches the claimed invention except for the glass comprising Al2O3. However, Yamaguchi discloses Al2O3 is effective in improving the chemical durability of the glass in paragraph 0011. Yamaguchi further discloses 5% of Al2O3 in Example 1 and 3% of Al2O3 in Example 7. As such, it would have been obvious to one having ordinary skill in the art at the time of the invention for the glass to comprise the claimed amount of 0.70% to 10% of Al2O3 in order to improve the chemical durability of the 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. Further, Applicant has not shown unexpected results or criticality of the claimed range.
Regarding claim 4, Yamaguchi discloses 0% to 1% of 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 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%).
Regarding claim 42, the proposed combination of Yamaguchi and Sato teaches the claimed invention except for the ratio of TiO2 /P2O5 is 0.45 or more and less than 1.3. However, Yamaguchi discloses the ratio of TiO2 /P2O5 is 0.4 (see Example No. 2). The courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”). Further, 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 increase the amount of TiO2 which would lead to the claimed ratio, in order 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.
Regarding claim 43, the proposed combination of Yamaguchi and Sato teaches the claimed invention except for the ratio of Nb2O5 /P2O5 is from 0.7 to 1.03. However, Yamaguchi discloses the ratio of Nb2O5 /P2O5 is 1.2 (see Example No. 2). The courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”). Further, Yamaguchi discloses the ratio of Nb2O5 /P2O5 is 1 in Examples 7 and 8. 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 ratio of Nb2O5 /P2O5 in order to impart high dispersibility to the 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.
Response to Arguments
Applicant's arguments, filed April 29, 2026, with respect to claims have been considered but are not persuasive.
On page 8, Applicant states that during the interview on April 8, 2026, it was agreed the proposed amendments would overcome the prior art rejection. However, the proposed amendments included the combination of narrowing the range of Na2O, in addition to the ranges of Al2O3 and BaO. The combination of ranges together overcome the prior art rejection. The amendment to claim 1 that was made of 1.76% to 20% BaO by itself does not overcome the prior art because that limitation was derived from now cancelled claim 23 and was previously addressed. As stated in the Non-Final Rejection on December 29, 2025, 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 1.76% to 20% 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. Further, Applicant has not shown unexpected results or criticality of the claimed range.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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 July 30, 2026
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