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.
Status of the Claims
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Claims 1-3, 5-7, 9-16, 18, 19, 23, and 24 are currently pending.
Claims 13-16, 18, 19, and 24 have been withdrawn.
Claims 4, 8, 17, and 20-22 have been cancelled.
Claims 1-3, 5-7, 9-12, and 23 are currently rejected.
Claims 1-3, 5-7,9, 11, 12, and 23 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Sasaki et al., U.S. Patent Application Publication 2023/0121192 A1.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over by Sasaki et al., U.S. Patent Application Publication 2023/0121192 A1.
Claims 1-3, 5-7,9, 11, 12, and 23 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Zou et al., U.S. Patent Application Publication 2010/0317507 A1.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over by Zou et al., U.S. Patent Application Publication 2010/0317507 A1.
Claims 1-3, 5-7, 9-12, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Nagaoka, Japanese Patent Publication JP 2010-006676 A.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 14 May 2026 has been entered.
Claim Rejections - 35 USC § 102 and 35 USC § 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.
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.
Claims 1-3, 5-7,9, 11, 12, and 23 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Sasaki et al., U.S. Patent Application Publication 2023/0121192 A1.
Sasaki et al., US 2023/0121192 A1 qualifies as prior art under 35 U.S.C. § 102(a)(2), since it claims the benefit of earlier filing dates to Japanese Applications: JP 2020-042968, filed 12 March 2020, JP 2020-050620, filed 223 March 2020, JP 2020-050618, filed 23 March 2020, and JP 2020-050615, filed 23 March 2020.
Sasaki et al. disclose an optical glass comprising in terms of weight percentages, 0-10% of P2O5, 1-50% of SiO2, 1-50% of TiO2, 1-50% of Nb2O5, 0-8% of Na2O, 0-10% of B2O3, 0-10% of Al2O3, 0-10% of ZrO2, 10-50% of Nb2O5, 0-10% of WO3, 0-10% of Bi2O3, 0-10% of Li2O, 0-10% of Na2O, 0-10% of K2O, 0-10% of Cs2O, 1-20% of CaO, 0-20% of MgO, 0-10% of SrO, 0-20% of BaO, 0-10% of ZnO, 0-10% of Ta2O5, 0-10% of La2O3, 0-10% of Y2O3, 0-2% of Sc2O3, 0-2% of HfO2, 0-2% of Lu2O3, 0-2% of GeO2, 0-3% of Gd2O3, and 0-2% of Yb2O3. See Abstract and the entire specification, specifically, paragraphs [0028]-[0031], [0077], [0079], [0081], [0091], [0095], [0101], [0103], [0108]-[0112], [0120], [0121], [0123], [0125], [0127], [0130], [0132], [0134], [0136, [0137], [0139], [0141], [0143], and [0145]. Sasaki et al. disclose that the optical glass has a refractive index of 1.86-2.20. See paragraph [0167]. Sasaki et al. disclose that the optical glass has an Abbe number of 15-30. See paragraph [0165]. Sasaki et al. disclose that the optical glass has a specific gravity (~density) of at most 4.2. See paragraph [0170]. Sasaki et al. disclose that the optical glass has a refractive index divided by the specific gravity of at least 0.5. See paragraph [0172]. Sasaki et al. disclose that the optical glass has a glass transformation temperature (Tg) of 500-690°C. See paragraph [0174]. The compositional ranges of Sasaki et al. are sufficiently specific to anticipate the optical glass composition as recited in claims 1-3, 5-7, 9-12, and 23. See MPEP 2131.03.
As to claim 1, Sasaki et al. disclose an optical glass in Examples 53, 54, 58, 59, 64, 65, 76, 78-82, 85-99, 106-116, 118-121, 130-132, 153-161, 163-170, and 179-185, (see Tables 1-1(1) to Table 1-1(4) and Table 1-2(1) to Table 1-2(4)), which reads on an optical glass comprising in terms of weight %: 6-35% of SiO2, 0-12% of B2O3, >20-55% of Nb2O5, 10-50% of TiO2, 0-5% of ZrO2, 0-5% of Al2O3, 0-12% of ZnO, 0.1-12% of CaO, 0.1-35% of BaO, 0-8% of SrO, 0-20% of Na2O, 0.5-25% of K2O, 0-2% of Sb2O3, and 0-2% of As2O3, having a refractive index in the range of 1.85-2.00, a dispersion (Abbe number) of 19-27, and a ratio of the density (specific gravity)/refractive index of less than 1.97, as recited in instant claim 1.
Since the optical glass of the reference is the same as those claimed herein it follows that the optical glasses of Sasaki et al. would inherently possess the internal transmission at 450 nm property as recited in claim 1. See MPEP 2112.
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, Sasaki et al. an optical glass in Examples 53, 54, 58, 59, 64, 65, 76, 78-82, 85-99, 106-116, 118-121, 130-132, 153-161, 163-170, and 179-185, (see Tables 1-1(1) to Table 1-1(4) and Table 1-2(1) to Table 1-2(4)), which reads in a refractive index of 1.85-1.95 or a density/refractive index of less than 1.95, as recited in claim 2.
As to claim 3, Sasaki et al. an optical glass in Examples 53, 54, 58, 59, 64, 65, 76, 78-82, 85-99, 106-116, 118-121, 130-132, 153-161, 163-170, and 179-185, (see Tables 1-1(1) to Table 1-1(4) and Table 1-2(1) to Table 1-2(4)), which reads on the glass comprising at least one of Ta2O5, WO3, and GeO2 being less than 5 wt% as recited in claim 3.
As to claim 5, Sasaki et al. an optical glass in Examples 53, 54, 58, 59, 64, 65, 76, 78-82, 85-99, 106-116, 118-121, 130-132, 153-161, 163-170, and 179-185, (see Tables 1-1(1) to Table 1-1(4) and Table 1-2(1) to Table 1-2(4)), which reads on the sum of Nb2O5+TiO2+BaO being at least 45 wt% as recited in claim 5.
As to claim 6, Sasaki et al. an optical glass in Examples 53, 54, 58, 59, 64, 65, 76, 78-82, 85-99, 106-116, 118-121, 130-132, 153-161, 163-170, and 179-185, (see Tables 1-1(1) to Table 1-1(4) and Table 1-2(1) to Table 1-2(4)), which reads on the glass having at least one of a Knoop hardness of 500-650, a Tg of 500-650°C, or a chemical resistance corresponding to class 0, 1, or 2, as recited in claim 6.
As to claim 7, since the optical glass of the reference is the same as those claimed herein it follows that the optical glasses of Sasaki et al. would inherently possess the ratio of B3+/Si4+ of at most 2.5 g/cm3, as recited in claim 7. See MPEP 2112.
As to claim 9, Sasaki et al. disclose an optical glass in Examples 53, 54, 58, 59, 64, 65, 76, 78-82, 85-99, 106-116, 118-121, 130-132, 153-161, 163-170, and 179-185, (see Tables 1-1(1) to Table 1-1(4) and Table 1-2(1) to Table 1-2(4)), which reads on an optical glass comprising 6-35% of SiO2, 0-12% of B2O3, >20-55% of Nb2O5, 10-50% of TiO2, 0-5% of ZrO2, 0-5% of Al2O3, 0-12% of ZnO, 0.1-12% of CaO, 1.0-35% of BaO, 0-8% of SrO, 0-20% of Na2O, 0.5-25% of K2O, 0-2% of Sb2O3, and 0-2% of As2O3, as recited in claim 9.
As to claim 11, Sasaki et al. disclose an optical glass in Examples 53, 54, 58, 59, 64, 65, 76, 78-82, 85-99, 106-116, 118-121, 130-132, 153-161, 163-170, and 179-185, (see Tables 1-1(1) to Table 1-1(4) and Table 1-2(1) to Table 1-2(4)), which reads on the glass being substantially free of at least one of La2O3, Gd2O3, Y2O3, GeO2, Ta2O5, MgO, Li2O, ZrO2,P2O5, and WO3 as recited in claim 11.
As to claim 12, Sasaki et al. disclose an optical glass in Examples 53, 54, 58, 59, 64, 65, 76, 78-82, 85-99, 106-116, 118-121, 130-132, 153-161, 163-170, and 179-185, (see Tables 1-1(1) to Table 1-1(4) and Table 1-2(1) to Table 1-2(4)), which reads on the glass being substantially free of at least one of lead, bismuth, cadmium, nickel, arsenic, and antimony as recited in claim 12.
As to claim 23, Sasaki et al. disclose an optical glass in Examples 53, 54, 58, 59, 64, 65, 76, 78-82, 85-99, 106-116, 118-121, 130-132, 153-161, 163-170, and 179-185, (see Tables 1-1(1) to Table 1-1(4) and Table 1-2(1) to Table 1-2(4)), which reads on the ratio of Nb2O5/TiO2 being between 0.72 and 3.5 as recited in claim 23.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over by Sasaki et al., U.S. Patent Application Publication 2023/0121192 A1.
Sasaki et al., US 2023/0121192 A1 qualifies as prior art under 35 U.S.C. § 103, since it claims the benefit of earlier filing dates to Japanese Applications: JP 2020-042968, filed 12 March 2020, JP 2020-050620, filed 223 March 2020, JP 2020-050618, filed 23 March 2020, and JP 2020-050615, filed 23 March 2020.
Sasaki et al. teach an optical glass comprising in terms of weight percentages, 0-10% of P2O5, 1-50% of SiO2, 1-50% of TiO2, 1-50% of Nb2O5, 0-8% of Na2O, 0-10% of B2O3, 0-10% of Al2O3, 0-10% of ZrO2, 10-50% of Nb2O5, 0-10% of WO3, 0-10% of Bi2O3, 0-10% of Li2O, 0-10% of Na2O, 0-10% of K2O, 0-10% of Cs2O, 1-20% of CaO, 0-20% of MgO, 0-10% of SrO, 0-20% of BaO, 0-10% of ZnO, 0-10% of Ta2O5, 0-10% of La2O3, 0-10% of Y2O3, 0-2% of Sc2O3, 0-2% of HfO2, 0-2% of Lu2O3, 0-2% of GeO2, 0-3% of Gd2O3, and 0-2% of Yb2O3. See Abstract and the entire specification, specifically, paragraphs [0028]-[0031], [0077], [0079], [0081], [0091], [0095], [0101], [0103], [0108]-[0112], [0120], [0121], [0123], [0125], [0127], [0130], [0132], [0134], [0136, [0137], [0139], [0141], [0143], and [0145]. Sasaki et al. teach that the optical glass has a refractive index of 1.86-2.20. See paragraph [0167]. Sasaki et al. teach that the optical glass has an Abbe number of 15-30. See paragraph [0165]. Sasaki et al. disclose that the optical glass has a specific gravity (~density) of at most 4.2. See paragraph [0170]. Sasaki et al. teach that the optical glass has a refractive index divided by the specific gravity of at least 0.5. See paragraph [0172]. Sasaki et al. teach that the optical glass has a glass transformation temperature (Tg) of 500-690°C. See paragraph [0174].
Sasaki et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claim 10,
However, the weight percent ranges taught by Sasaki et al. have overlapping compositional ranges with instant claim 10. See paragraphs [0028]-[0031], [0077], [0079], [0081], [0091], [0095], [0101], [0103], [0108]-[0112], [0120], [0121], [0123], [0125], [0127], [0130], [0132], [0134], [0136, [0137], [0139], [0141], [0143], and [0145]. 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 Sasaki et al., which reads on an optical glass comprising 10-29% of SiO2, 0-8% of B2O3, >20-45% of Nb2O5, 15-40% of TiO2, 0-2% of ZrO2, 0-2% of Al2O3, 0-8% of ZnO, 0.1-6% of CaO, 2-22% of BaO, 0-5% of SrO, 2-15% of Na2O, 0.5-18% of K2O, 0-0.3% of Sb2O3, and 0-0.3% of As2O3, as recited in claim 10.
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 the reference 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 ranges taught by Sasaki et al. overlap the instantly claimed ranges 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.
Claims 1-3, 5-7,9, 11, 12, and 23 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Zou et al., U.S. Patent Application Publication 2010/0317507 A1.
Zou et al. disclose an optical glass comprising in terms of weight percentages, 12-40% of SiO2, 0-10% of B2O3, 15-<42% of Nb2O5, 2-<18% of TiO2, 0-20% of BaO, 0-10% of Al2O3, 0-13% of ZnO, 0-17% of CaO, 0-13% of SrO, 0.1-15% of Na2O, 0.1-25% of K2O, 0-20% of ZrO2, 0.1-20% of Li2O, 0-22% of WO3, 0-3% of La2O3, 0-3% of Gd2O3, 0-3% of Y2O3, 0-3% of Yb2O3, 0-10% of Ta2O5, 0-3% of GeO2, 0-10% of Bi2O3, 0-2% of Sb2O3, 0-2% of SnO2, 0-1% of Lu2O3, 0-1% of HfO2, and substantially no As, Pb, U, Th, Te, Cd, Cu, Cr, V, Fe, Ni, and Co. See Abstract and the entire specification, specifically, paragraphs [0075] -[0081], [0090]-[0105], [0126]-[0135], [0143]-[0155], and [0164]-[0167]. Zou et al. disclose that the optical glass has a refractive index of 1.82-1.90. See paragraph [0162]. Zou et al. disclose that the optical glass has an Abbe number of 20-30. See paragraph [0138]. Zou et al. disclose that the optical glass has a glass transformation temperature (Tg) of at most 600°C. See paragraph [0168]. The compositional ranges of Zou et al. are sufficiently specific to anticipate the optical glass composition as recited in claims 1-3, 5-7, 9-12, and 23. See MPEP 2131.03.
As to claim 1, Zou et al. disclose an optical glass in Example 11, (see Tables 1 and 3), which reads on an optical glass comprising in terms of weight %: 6-35% of SiO2, 0-12% of B2O3, >20-55% of Nb2O5, 10-50% of TiO2, 0-5% of ZrO2, 0-5% of Al2O3, 0-12% of ZnO, 0.1-12% of CaO, 0.1-35% of BaO, 0-8% of SrO, 0-20% of Na2O, 0.5-25% of K2O, 0-2% of Sb2O3, and 0-2% of As2O3, having a refractive index in the range of 1.85-2.00, a dispersion (Abbe number) of 19-27, and a ratio of the density (specific gravity)/refractive index of less than 1.97, as recited in instant claim 1.
Since the optical glass of the reference is the same as those claimed herein it follows that the optical glasses of Zou et al. would inherently possess the internal transmission at 450 nm property as recited in claim 1. See MPEP 2112.
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, Zou et al. an optical glass in Example 11, (see Tables 1 and 3), which reads in a refractive index of 1.85-1.95 or a density/refractive index of less than 1.95, as recited in claim 2.
As to claim 3, Zou et al. an optical glass in Example 11, (see Tables 1 and 3), which reads on the glass comprising at least one of Ta2O5, WO3, and GeO2 being less than 5 wt% as recited in claim 3.
As to claim 5, Zou et al. an optical glass in Example 11, (see Tables 1 and 3), which reads on the sum of Nb2O5+TiO2+BaO being at least 45 wt% as recited in claim 5.
As to claim 6, Zou et al. an optical glass in Example 11, (see Tables 1 and 3), which reads on the glass having at least one of a Knoop hardness of 500-650, a Tg of 500-650°C, or a chemical resistance corresponding to class 0, 1, or 2, as recited in claim 6.
As to claim 7, since the optical glass of the reference is the same as those claimed herein it follows that the optical glasses of Zou et al. would inherently possess the ratio of B3+/Si4+ of at most 2.5 g/cm3, as recited in claim 7. See MPEP 2112.
As to claim 9, Zou et al. disclose an optical glass in Example 11, (see Tables 1 and 3), which reads on an optical glass comprising 6-35% of SiO2, 0-12% of B2O3, >20-55% of Nb2O5, 10-50% of TiO2, 0-5% of ZrO2, 0-5% of Al2O3, 0-12% of ZnO, 0.1-12% of CaO, 1.0-35% of BaO, 0-8% of SrO, 0-20% of Na2O, 0.5-25% of K2O, 0-2% of Sb2O3, and 0-2% of As2O3, as recited in claim 9.
As to claim 11, Zou et al. disclose an optical glass in Example 11, (see Tables 1 and 3), which reads on the glass being substantially free of at least one of La2O3, Gd2O3, Y2O3, GeO2, Ta2O5, MgO, Li2O, ZrO2,P2O5, and WO3 as recited in claim 11.
As to claim 12, Zou et al. disclose an optical glass in Example 11, (see Tables 1 and 3), which reads on the glass being substantially free of at least one of lead, bismuth, cadmium, nickel, arsenic, and antimony as recited in claim 12.
As to claim 23, Zou et al. disclose an optical glass in Example 11, (see Tables 1 and 3), which reads on the ratio of Nb2O5/TiO2 being between 0.72 and 3.5 as recited in claim 23.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over by Zou et al., U.S. Patent Application Publication 2010/0317507 A1.
Zou et al. teach an optical glass comprising in terms of weight percentages, 12-40% of SiO2, 0-10% of B2O3, 15-<42% of Nb2O5, 2-<18% of TiO2, 0-20% of BaO, 0-10% of Al2O3, 0-13% of ZnO, 0-17% of CaO, 0-13% of SrO, 0.1-15% of Na2O, 0.1-25% of K2O, 0-20% of ZrO2, 0.1-20% of Li2O, 0-22% of WO3, 0-3% of La2O3, 0-3% of Gd2O3, 0-3% of Y2O3, 0-3% of Yb2O3, 0-10% of Ta2O5, 0-3% of GeO2, 0-10% of Bi2O3, 0-2% of Sb2O3, 0-2% of SnO2, 0-1% of Lu2O3, 0-1% of HfO2, and substantially no As, Pb, U, Th, Te, Cd, Cu, Cr, V, Fe, Ni, and Co. See Abstract and the entire specification, specifically, paragraphs [0075] -[0081], [0090]-[0105], [0126]-[0135], [0143]-[0155], and [0164]-[0167]. Zou et al. teach that the optical glass has a refractive index of 1.82-1.90. See paragraph [0162]. Zou et al. teach that the optical glass has an Abbe number of 20-30. See paragraph [0138]. Zou et al. teach that the optical glass has a glass transformation temperature (Tg) of at most 600°C. See paragraph [0168].
Zou et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claim 10,
However, the weight percent ranges taught by Zou et al. have overlapping compositional ranges with instant claim 10. See paragraphs [0075] -[0081], [0090]-[0105], [0126]-[0135], [0143]-[0155], and [0164]-[0167]. 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 Zou et al., which reads on an optical glass comprising 10-29% of SiO2, 0-8% of B2O3, >20-45% of Nb2O5, 15-40% of TiO2, 0-2% of ZrO2, 0-2% of Al2O3, 0-8% of ZnO, 0.1-6% of CaO, 2-22% of BaO, 0-5% of SrO, 2-15% of Na2O, 0.5-18% of K2O, 0-0.3% of Sb2O3, and 0-0.3% of As2O3, as recited in claim 10.
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 the reference 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 ranges taught by Zou et al. overlap the instantly claimed ranges 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.
Claims 1-3, 5-7, 9-12, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Nagaoka, Japanese Patent Publication JP 2010-006676 A.
A machine-generated translation of JP 2010-006676 A accompanied a previous action. In reciting this rejection, the examiner will cite this translation.
Nagaoka teaches an optical glass comprising in terms of weight percent: 5-55% of TiO2, 0-25% of SiO2, 0-10% of B2O3, 0-50% of Nb2O5, 0-40% of Bi2O3, 0-25% of MgO, 0-25% of CaO, 0-25% of SrO, 0-25% of BaO, 0-25% of ZnO, 0-10% of Li2O, 0-20% of Na2O, 0-10% of K2O, 0-10% of Cs2O, 0-10% of Rb2O, 0-10% of Al2O3, 0-10^% of Y2O3, 0-10% of La2O3, 0-10% of Gd2O3, 0-10% of Yb2O3, 0-10% of Lu2O3, 0-15% of ZrO2, 0-15% of Ta2O5, 0-15% of WO3, 0-10% of TeO2, 0-15% of GeO2, 0-10% of P2O5, and 0-1% of Sb2O3. See Abstract and the entire specification, specifically, paragraphs [0009]-[0017]. Nagaoka teaches the optical glass has an Abbe number of 13-27. See paragraph [0009]. Nagaoka teaches that the glasses have a refractive in in the range of 1.862-1.901. See the refractive indexes of the Examples in Table 1. Nagaoka teaches that when the transmittance is 5% the wavelength is preferably less 400 nm and when the transmittance is 70% the wavelength is preferably less than 480 nm. See paragraph [0070].
As to claim 1, Nagaoka teaches an optical glass comprising in terms of weight percent: 5-55% of TiO2, 0-25% of SiO2, 0-10% of B2O3, 0-50% of Nb2O5, 0-40% of Bi2O3, 0-25% of MgO, 0-25% of CaO, 0-25% of SrO, 0-25% of BaO, 0-25% of ZnO, 0-10% of Li2O, 0-20% of Na2O, 0-10% of K2O, 0-10% of Cs2O, 0-10% of Rb2O, 0-10% of Al2O3, 0-10^% of Y2O3, 0-10% of La2O3, 0-10% of Gd2O3, 0-10% of Yb2O3, 0-10% of Lu2O3, 0-15% of ZrO2, 0-15% of Ta2O5, 0-15% of WO3, 0-10% of TeO2, 0-15% of GeO2, 0-10% of P2O5, and 0-1% of Sb2O3. See paragraphs [0009]-[0017].
Nagaoka fails to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claim 1,
However, the weight percent ranges taught by Nagaoka have overlapping compositional ranges with instant claim 1, 3, 5, and 9-12. See paragraphs [0009]-[0017]. Nagaoka teaches that CaO can be added to the glass in amounts up to 25.0% in order to control the dispersion, specific gravity, and refractive index of the glass. See paragraph [0032]. Nagaoka teaches that the optical glass comprises 0-10% of K2O in order to enhance the meltability of the glass, and adjust the partial dispersion ratio and Abbe number of the optical glass. See paragraph [0039]. 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 Nagaoka because Nagaoka teaches that the addition of CaO and K2O allows the partial dispersion, specific gravity, Abbe number, and refractive index to be controlled.
Therefore, the compositional ranges of Nagaoka as taught in paragraphs [0009]-[0017], [0032], and [0039], reads on an optical glass comprising 6-35% of SiO2, 0-12% of B2O3, >20-55% of Nb2O5, 10-50% of TiO2, 0-5% of ZrO2, 0-5% of Al2O3, 0-12% of ZnO, 0.1-12% of CaO, 0.1-35% of BaO, 0-8% of SrO, 0-20% of Na2O, 0.5-25% of K2O, 0-2% of Sb2O3, and 0-2% of As2O3, as recited in claim 1. Nagaoka teach that the optical glass has a refractive index in the range of 1.862-1.901, (see the refractive indexes of the Examples in Table 1), which reads on a refractive index in the range of 1.85-2.00, as recited in claim 1, Nagaoka teaches the optical glass has an Abbe number of 13-27, (see paragraph [0009]), which reads on an Abbe number of 19-27, as recited in instant claim 1.
One of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the density for the ratio of r/nd and the internal transmission at 450 nm property as recited in 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, Nagaoka teach that the optical glass has a refractive index in the range of 1.862-1.901, (see the refractive indexes of the Examples in Table 1), which reads in a refractive index of 1.85-1.95 as recited in claim 2.
As to claim 3, Nagaoka teaches an optical glass comprising in terms of weight percent: 5-55% of TiO2, 0-25% of SiO2, 0-10% of B2O3, 0-50% of Nb2O5, 0-40% of Bi2O3, 0-25% of MgO, 0-25% of CaO, 0-25% of SrO, 0-25% of BaO, 0-25% of ZnO, 0-10% of Li2O, 0-20% of Na2O, 0-10% of K2O, 0-10% of Cs2O, 0-10% of Rb2O, 0-10% of Al2O3, 0-10^% of Y2O3, 0-10% of La2O3, 0-10% of Gd2O3, 0-10% of Yb2O3, 0-10% of Lu2O3, 0-15% of ZrO2, 0-15% of Ta2O5, 0-15% of WO3, 0-10% of TeO2, 0-15% of GeO2, 0-10% of P2O5, and 0-1% of Sb2O3, (see paragraphs [0009]-[0017]), which reads on the glass comprising at least one of Ta2O5, WO3, and GeO2 being less than 5wt% as recited in claim 3.
As to claim 5, Nagaoka teaches an optical glass comprising in terms of weight percent: 5-55% of TiO2, 0-25% of SiO2, 0-10% of B2O3, 0-50% of Nb2O5, 0-40% of Bi2O3, 0-25% of MgO, 0-25% of CaO, 0-25% of SrO, 0-25% of BaO, 0-25% of ZnO, 0-10% of Li2O, 0-20% of Na2O, 0-10% of K2O, 0-10% of Cs2O, 0-10% of Rb2O, 0-10% of Al2O3, 0-10^% of Y2O3, 0-10% of La2O3, 0-10% of Gd2O3, 0-10% of Yb2O3, 0-10% of Lu2O3, 0-15% of ZrO2, 0-15% of Ta2O5, 0-15% of WO3, 0-10% of TeO2, 0-15% of GeO2, 0-10% of P2O5, and 0-1% of Sb2O3, (see paragraphs [0009]-[0017]), which reads on the sum of Nb2O5+TiO2+BaO being at least 45 wt% as recited in claim 5.
As to claim 6, Nagaoka discloses that the optical glass has a Tg of less than or equal to 700°C, (see paragraph [0074]), which reads on a Tg of 500-650°C as recited in claim 6.
One of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the ratio of B3+/Si4+ of at most 2.5, as recited in claim 7.
As to claim 9, Nagaoka teaches an optical glass comprising in terms of weight percent: 5-55% of TiO2, 0-25% of SiO2, 0-10% of B2O3, 0-50% of Nb2O5, 0-40% of Bi2O3, 0-25% of MgO, 0-25% of CaO, 0-25% of SrO, 0-25% of BaO, 0-25% of ZnO, 0-10% of Li2O, 0-20% of Na2O, 0-10% of K2O, 0-10% of Cs2O, 0-10% of Rb2O, 0-10% of Al2O3, 0-10^% of Y2O3, 0-10% of La2O3, 0-10% of Gd2O3, 0-10% of Yb2O3, 0-10% of Lu2O3, 0-15% of ZrO2, 0-15% of Ta2O5, 0-15% of WO3, 0-10% of TeO2, 0-15% of GeO2, 0-10% of P2O5, and 0-1% of Sb2O3, (see paragraphs [0009]-[0017]), which reads on an optical glass comprising 6-35% of SiO2, 0-12% of B2O3, >20-55% of Nb2O5, 10-50% of TiO2, 0-5% of ZrO2, 0-5% of Al2O3, 0-12% of ZnO, 0.1-12% of CaO, 1.0-35% of BaO, 0-8% of SrO, 0-20% of Na2O, 0.5-25% of K2O, 0-2% of Sb2O3, and 0-2% of As2O3, as recited in claim 9.
As to claim 10, Nagaoka teaches an optical glass comprising in terms of weight percent: 5-55% of TiO2, 0-25% of SiO2, 0-10% of B2O3, 0-50% of Nb2O5, 0-40% of Bi2O3, 0-25% of MgO, 0-25% of CaO, 0-25% of SrO, 0-25% of BaO, 0-25% of ZnO, 0-10% of Li2O, 0-20% of Na2O, 0-10% of K2O, 0-10% of Cs2O, 0-10% of Rb2O, 0-10% of Al2O3, 0-10^% of Y2O3, 0-10% of La2O3, 0-10% of Gd2O3, 0-10% of Yb2O3, 0-10% of Lu2O3, 0-15% of ZrO2, 0-15% of Ta2O5, 0-15% of WO3, 0-10% of TeO2, 0-15% of GeO2, 0-10% of P2O5, and 0-1% of Sb2O3, (see paragraphs [0009]-[0017]), which reads on an optical glass comprising 10-29% of SiO2, 0-8% of B2O3, >20-45% of Nb2O5, 15-40% of TiO2, 0-2% of ZrO2, 0-2% of Al2O3, 0-8% of ZnO, 0.1-6% of CaO, 2.0-22% of BaO, 0-5% of SrO, 2-15% of Na2O, 0.5-18% of K2O, 0-0.3% of Sb2O3, and 0-0.3% of As2O3, as recited in claim 10.
As to claim 11, Nagaoka teaches an optical glass comprising in terms of weight percent: 5-55% of TiO2, 0-25% of SiO2, 0-10% of B2O3, 0-50% of Nb2O5, 0-40% of Bi2O3, 0-25% of MgO, 0-25% of CaO, 0-25% of SrO, 0-25% of BaO, 0-25% of ZnO, 0-10% of Li2O, 0-20% of Na2O, 0-10% of K2O, 0-10% of Cs2O, 0-10% of Rb2O, 0-10% of Al2O3, 0-10^% of Y2O3, 0-10% of La2O3, 0-10% of Gd2O3, 0-10% of Yb2O3, 0-10% of Lu2O3, 0-15% of ZrO2, 0-15% of Ta2O5, 0-15% of WO3, 0-10% of TeO2, 0-15% of GeO2, 0-10% of P2O5, and 0-1% of Sb2O3, (see paragraphs [0009]-[0017]), which reads on the glass being substantially free of at least one of La2O3, Gd2O3, Y2O3, GeO2, Ta2O5, MgO, Li2O, ZrO2,P2O5, and WO3 as recited in claim 11.
As to claim 12, Nagaoka teaches an optical glass comprising in terms of weight percent: 5-55% of TiO2, 0-25% of SiO2, 0-10% of B2O3, 0-50% of Nb2O5, 0-40% of Bi2O3, 0-25% of MgO, 0-25% of CaO, 0-25% of SrO, 0-25% of BaO, 0-25% of ZnO, 0-10% of Li2O, 0-20% of Na2O, 0-10% of K2O, 0-10% of Cs2O, 0-10% of Rb2O, 0-10% of Al2O3, 0-10^% of Y2O3, 0-10% of La2O3, 0-10% of Gd2O3, 0-10% of Yb2O3, 0-10% of Lu2O3, 0-15% of ZrO2, 0-15% of Ta2O5, 0-15% of WO3, 0-10% of TeO2, 0-15% of GeO2, 0-10% of P2O5, and 0-1% of Sb2O3, (see paragraphs [0009]-[0017]), which reads on the glass being substantially free of at least one of lead, bismuth, cadmium, nickel, arsenic, and antimony as recited in claim 12.
As to claim 23, Nagaoka teaches an optical glass comprising in terms of weight percent: 5-55% of TiO2 and 0-50% of Nb2O5, (see paragraphs [0009]-[0017]), which reads on the ratio of Nb2O5/TiO2 being between 0.72 and 3.5 as recited in claim 23.
Response to Arguments
Applicant's arguments filed 27 April 2026 have been fully considered but they are not persuasive.
Applicant argues that the compositional ranges of Nagaoka would not have been obvious over the instant amended claims since claim 1 requires 0.1-12.0 wt% of CaO and 0.5-25.0 wt% of K2O in combination with the other recited components. This is not found persuasive since Nagaoka teaches the optical glass comprises 0-25 wt% of CaO and 0-10 wt% of K2O, (see paragraphs [0013] and [0015] of Nagaoka). The compositional ranges of Nagaoka clearly overlap the compositional ranges of instant claim 1. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Applicant further argues that the compositional ranges of Nagaoka do not establish prima facie obviousness since “the reference’s disclosed range is so broad as to encompass a very large number of possible distinct compositions”. This is not found persuasive since the compositional ranges of Nagaoka substantially overlap the ranges of the instant claims.
Component
Range of claim 1
Range of Nagaoka
Overlapping portion
Portion of claim 1 which does not overlap
Portion of Nagaoka which does not overlap
SiO2
6.0-35.0
0-25
6-25
>25-35
0-<6
B2O3
0.0-12.0
0-10
0-10
>10-12
Nb2O5
>20-55.0
0-50
>20-50
>50-55
0-20
TiO2
10.0-50.0
5-55
5-50
>50-55
ZrO2
0.0-5.0
0-15
0-5
>5-15
Al2O3
0.0-5.0
0-10
0-5
>5-10
ZnO
0.0-12.0
0-25
0-12
>12-25
CaO
0.1-12.0
0-25
0.1-12
0-<0.1 and >12-25
BaO
0.1-35.0
0-25
0.1-25
>25-35
0-<0.1
SrO
0-8.0
0-25
0-8
>8-25
Na2O
0.0-20.0
0-20
0-20
K2O
0.5-25.0
0-10
0.5-10
>10-25
0-<0.5
Sb2O3
0.0-2.0
0-1
0-1
>1-2
As2O3
0.0-2.0
0-2
Applicant argues that none of the examples of Nagaoka contain CaO or K2O. This is not deemed persuasive since the reference is not limited to the examples alone for disclosure. See MPEP 2123. Nagaoka teach that the optical glass comprises 0-25 wt% of CaO and 0-10 wt% of K2O, see paragraphs [0013] and [0015]. The ranges of CaO and K2O by Nagaoka overlap the ranges of CaO and K2O as recited in instant claim 1. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
The Applicant further argues that the glass of Nagaoka does not disclose the density or ratio of the density/refractive index of any of the glasses. This is not found persuasive since a glass having overlapping compositional limitations would be expected to have overlapping properties absent evidence to the contrary.
The Examiner will consider rejoinder of the withdrawn claims once the elected claims have been indicated allowable and the scope of the withdrawn claims in instep with the elected claims.
Conclusion
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
13 June 2026
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