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
Newly submitted claims 35-39 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claims 35-39 are directed towards a glass fiber. Examiner notes the restriction requirement dated 09/06/2022 restricted between a glass composition and a glass fiber, while the response dated 10/22/2022 Applicant elected the glass composition over the glass fiber. As such, claims directed towards a glass fiber have been withdrawn via election by original presentation.
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 Accordingly, claims 35-39 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should 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. In either instance, 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 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Amendment
The amendment to claims 1 has overcome the 112(a) rejection of claims 1, 3-4, 6-7, and 9.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3, 6, 9, 29-32, and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matano et al. (US20230357070, hereinafter referred to as Matano).
Regarding claim 1, Matano discloses a glass composition (See Matano at [0051], disclosing a glass), consisting of: a main material, comprising silicon dioxide having a percentage by weight of 59%-63% of the glass composition (see Matano at [0020], disclosing SiO2 is 40% to 70%, which overlaps with the claimed range.) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05): a reinforcing material for improving structural strength of the glass composition, comprising aluminum oxide having a percentage by weight of 15%- 16.5% of the glass composition (See Matano at [0021], disclosing Al2O3 is from … 10% to 25%, which overlaps with the claimed range.):
and a fluxing material for lowering a thermal expansion coefficient and a viscosity temperature of the glass composition, comprising magnesium oxide, zinc oxide, and titanium dioxide, wherein a percentage by weight of magnesium oxide is 6%-8.5% of the glass composition (See Matano at [0024], disclosing MgO is … 2.5% to 8%, which overlaps with the claimed range.), a percentage by weight zinc oxide is 2.5%-3.5% of the glass composition (See Matano at [0025], disclosing ZnO is … preferably from 0.6 to 10%, which overlaps with the claimed range.), and a percentage by weight of titanium dioxide is 1.5%-3.5% of the glass composition (See Matano at [0029], disclosing TiO2 is … preferably from 0.1 to 5%, which overlaps with the claimed range.); and boron trioxide having a percentage by weight of 7.8%-10% of the glass composition (See Matano at [0022], disclosing B2O3 … preferably from 8% to 18%, which overlaps with the claimed range.) wherein a percentage by weight of lithium oxide in the glass composition is 0 (see Matano at [0032], disclosing Li2O is from 0% to 4%, which overlaps with the claimed range.),
the percentage by weight of silicon dioxide, the percentage by weight of aluminum oxide, the percentage by weight of magnesium oxide, the percentage by weight of zinc oxide, the percentage by weight of titanium dioxide, the percentage by weight of boron trioxide, a percentage by weight of calcium oxide, a percentage by weight of at least one alkali metal oxide, and a percentage by weight of ferric oxide together constitute 100% of the glass composition (see Matano at [0018], disclosing 40% to 70% of SiO2, 5% to 40% of Al2O3, 2% to 25% of B2O3, 0% to 15% of MgO+ZnO, 0% to 20% of CaO+SrO+BaO, 0% to 8% of P2O5+TiO2+ZrO2, 1% to 20% of Na2O+K2O, and 0% to 6% of Li2O), and a percentage by weight of rare earth oxides in the glass composition is 0% (see Matano at [0035], disclosing CeO2 is preferably from 0% to 0.5%, which overlaps with the claimed range. Examiner notes CeO2 appears to be the only rare earth disclosed by Matano.), and the thermal expansion coefficient of the glass composition is higher than 2.37 ppm/°C and lower than 2.5 ppm/°C (see Matano at [0049], disclosing a thermal expansion coefficient within the range of … 20×10-7/K to 120×10-7/K, which Examiner notes corresponds to 2.0 ppm/°C to 12.0 ppm°C, which overlaps with the claimed range.).
While Matano does not explicitly disclose at least one alkali metal oxide that includes at least one of sodium oxide and potassium oxide for lowering dielectric loss of the glass composition, wherein a sum of every single one of the at least one alkali metal oxide has a percentage by weight of, or below, 0.7% of the glass composition, Matano discloses a range of Na2O and K2O which is close to touching the claimed range (see Matano at [0031], disclosing Na2O+K2O is from 1% to 20%, which is close to touching the claimed range.). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (see MPEP 2144.05(I), second paragraph).
Regarding claim 3, Matano discloses further comprising calcium oxide for increasing water resistance of the glass composition, having a percentage by weight of, or below, 5% of the glass composition (see Matano at [0018], disclosing 0% to 20% of CaO+SrO+BaO, which overlaps with the claimed range.).
Regarding claim 6, Matano discloses further comprising an impurity substance comprising ferric oxide (see Matano at [0035], disclosing Fe serving as an impurity).
Regarding claim 9, Matano discloses the percentage by weight of calcium oxide is 0.1%- 0.50% of the glass composition (see Matano at [0018], disclosing 0% to 20% of CaO+SrO+BaO, which overlaps with the claimed range.).
Regarding claim 29, Matano discloses a glass composition (See Matano at [0051], disclosing a glass), comprising: a main material, comprising silicon dioxide having a percentage by weight of 59%-63% of the glass composition (see Matano at [0020], disclosing SiO2 is 40% to 70%, which overlaps with the claimed range.) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).; a reinforcing material for improving structural strength of the glass composition, comprising aluminum oxide having a percentage by weight of 15%-16.5% of the glass composition (See Matano at [0021], disclosing Al2O3 is from … 10% to 25%, which overlaps with the claimed range.); a fluxing material for lowering a thermal expansion coefficient and a viscosity temperature of the glass composition, comprising magnesium oxide, zinc oxide, and titanium dioxide, wherein a percentage by weight of magnesium oxide is 6%-8.5% of the glass composition (See Matano at [0024], disclosing MgO is … 2.5% to 8%, which overlaps with the claimed range.),
a percentage by weight of zinc oxide is 2.5%-3.5% of the glass composition (See Matano at [0025], disclosing ZnO is … preferably from 0.6 to 10%, which overlaps with the claimed range.), and a percentage by weight of titanium dioxide is 1.5%-3.5% of the glass composition (See Matano at [0029], disclosing TiO2 is … preferably from 0.1 to 5%, which overlaps with the claimed range.); and boron trioxide having a percentage by weight of 7.8%-10% of the glass composition (See Matano at [0022], disclosing B2O3 … preferably from 8% to 18%, which overlaps with the claimed range.),
wherein a percentage by weight of lithium oxide in the glass composition is 0 (see Matano at [0032], disclosing Li2O is from 0% to 4%, which overlaps with the claimed range.), and the thermal expansion coefficient of the glass composition is equal to or higher than 2.37 ppm/C, and lower than 2.5 ppm/°C (see Matano at [0049], disclosing a thermal expansion coefficient within the range of … 20×10-7/K to 120×10-7/K, which Examiner notes corresponds to 2.0 ppm/°C to 12.0 ppm°C, which overlaps with the claimed range.).
Regarding claim 30, Matano discloses further comprising calcium oxide for increasing water resistance of the glass composition, having a percentage by weight of, or below, 5% of the glass composition (see Matano at [0018], disclosing 0% to 20% of CaO+SrO+BaO, which overlaps with the claimed range.).
Regarding claim 31, Matano discloses further comprising at least one alkali metal oxide that includes at least one of sodium oxide and potassium oxide for lowering dielectric loss of the glass composition, wherein a sum of every single one of the at least one alkali metal oxide has a percentage by weight of, or below, 2% of the glass composition (see Matano at [0031], disclosing Na2O+K2O is from 1% to 20%, which overlaps with the claimed range.).
Regarding claim 32, Matano discloses further comprising an impurity substance comprising ferric oxide (see Matano at [0035], disclosing Fe serving as an impurity).
Regarding claim 34, Matano discloses wherein the percentage by weight of calcium oxide is 0.1%-0.5% of the glass composition (see Matano at [0018], disclosing 0% to 20% of CaO+SrO+BaO, which overlaps with the claimed range.).
Claim(s) 7 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matano in view of Yokota et al. (US20230159379, hereinafter referred to as Yokota).
Regarding claim 7, while Matano at [0035] discloses Fe serving as an impurity, Matano does not disclose a percentage by weight of ferric oxide is 0.05%-0.2% of the glass composition because Matano does not disclose the amount of Fe which would be present in the glass as an impurity. Therefore, a person having ordinary skill in the arts before the effective filing date of the claimed invention would naturally look to the prior art to determine how much Fe2O3 would be present as an impurity glass.
Yokota is directed towards a crystallized glass (see Yokota at the Abstract) with compositional component similar to those of Matano (see Matano at the Abstract). Yokota discloses Fe2O3 is likely to be mixed as impurities into the glass (see Yokota at [0066]). Yokota discloses Fe2O3 is preferably 0.1% or less, which overlaps with the claimed range (See Yokota at [0066]). Yokota teaches if complete removal of Fe2O3 is pursued, the raw material batch tends to be expensive to increase the production cost.
Therefore, it would have been obvious to a person having ordinary skill in the arts before the effective filing date of the claimed invention when practicing the invention of Matano to include Fe2O3 as an impurity as disclosed by Matano and Yokota within the overlapping range disclosed by Yokota with a reasonable expectation of successfully providing a crystallized glass which is not too expensive to produce as taught by Yokota.
Regarding claim 33, while Matano at [0035] discloses Fe serving as an impurity, Matano does not disclose a percentage by weight of ferric oxide is 0.05%-0.2% of the glass composition because Matano does not disclose the amount of Fe which would be present in the glass as an impurity. Therefore, a person having ordinary skill in the arts before the effective filing date of the claimed invention would naturally look to the prior art to determine how much Fe2O3 would be present as an impurity glass.
Yokota is directed towards a crystallized glass (see Yokota at the Abstract) with compositional component similar to those of Matano (see Matano at the Abstract). Yokota discloses Fe2O3 is likely to be mixed as impurities into the glass (see Yokota at [0066]). Yokota discloses Fe2O3 is preferably 0.1% or less, which overlaps with the claimed range (See Yokota at [0066]). Yokota teaches if complete removal of Fe2O3 is pursued, the raw material batch tends to be expensive to increase the production cost.
Therefore, it would have been obvious to a person having ordinary skill in the arts before the effective filing date of the claimed invention when practicing the invention of Matano to include Fe2O3 as an impurity as disclosed by Matano and Yokota within the overlapping range disclosed by Yokota with a reasonable expectation of successfully providing a crystallized glass which is not too expensive to produce as taught by Yokota.
Response to Arguments
Applicant's arguments concerning the 103 rejections in the Remarks filed 11/26/2025 have been fully considered but they are not persuasive. At the last paragraph of page 9 of the Remarks, Applicant argues that Matano restricts the Na2O+K2O content of from 1% to 20%, which is outside the range of instant claim 1 of 0.7% or less. Examiner agrees that the range of Matano is outside of the claimed range, however, maintains the 103 rejection over Matano because the range of Matano is close to touching the claimed range as detailed in the rejection of claim 1 above.
At page 9, Applicant provides Table from Fig. 1B of the instant application, and argues the claimed range of no greater than 0.7% Na2O+K2O is critical because too high of an alkali metal oxide content leads to a high dielectric loss tangent and poor water resistance. However, Examiner respectfully disagrees that this argument establishes the claimed range is critical. Examiner first notes that none of the inventive examples from the Table of Fig. 1B meet the limitations of instant claim 1, where the inventive examples are examples are A5-A8. Examiner notes all of examples A5-A7 comprise Li2O which is explicitly excluded in instant claim 1, and further notes Example A8 comprises no Na2O or K2O as required by claim 1 as amended. As such, Examiner cannot be convinced that any of the examples from the table at Fig. 1B establish the criticality of the claimed range, because none of the examples are within the claimed range.
Additionally, while the examples provide some samples within the claimed Na2O+K2O range of 0.7% or less, the examples A5-A7 are the only examples that contain either of Na2O or K2O, and these examples only span sum total Na2O+K2O values of 0.03%, 0.27%, and 0.33%, which does not establish the criticality of the entire claimed range of 0.7% or less. Per MPEP 716.02(d), the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In the instant case, the full scope of the claims have not been established as critical. Additionally, inventive examples A8 are outside of the claimed range and appear to be an inventive example of the glass with beneficial properties and does not comprise any Na2O or K2O, which is evidence against the criticality of the claimed range. As such, Applicant’s arguments are not convincing, and the 103 rejections over Matano are maintained as detailed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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, Amber Orlando can be reached at (571) 270-3149. 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.
CAMERON K MILLER
Examiner
Art Unit 1731
/C.K.M./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731