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 § 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) 1-4, 7, and 9-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagaoka et al. (JP2011144063 with reference to machine translation, hereinafter referred to as Nagaoka).
Regarding claim 1, Nagaoka discloses an optical glass (see Nagaoka at [0001] from the machine translation, disclosing an optical glass) comprising, by mass%; 24.5% to 41% of a P2O5 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0.1-30.0 mass% P2O5, 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).).; 6% to 17% of an Na2O content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-45.0 mass% Na2O, which overlaps with the claimed range.); 5% to 15% of a K2O content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-30.0 mass% K2O, which overlaps with the claimed range.); over 0% to 7% or less of an Al2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-15.0 mass% Al2O3, which overlaps with the claimed range.); 8% to 21% of a TiO2 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-60.0 mass% TiO2, which overlaps with the claimed range.); and 5.4% to 38% of an Nb2O5 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0.1-45.0 mass% Nb2O5, which overlaps with the claimed range.); 0 to 3% of a Bi2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-7.0 mass% Bi2O3, which overlaps with the claimed range.); 4.68% to 9% of a BaO content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-25.0 mass% BaO, which overlaps with the claimed range.); and over 0% to 10% or less of a B2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-25.0 mass% B2O3, which overlaps with the claimed range.); and 0% to 1.5% of an La2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-7.0 mass% La2O3, which overlaps with the claimed range.), wherein the optical glass has a partial dispersion ratio (Pg, f) of 0.634 or less (see Nagaoka at [0012] of the machine translation, disclosing a partial dispersion ratio of 0.62 or more and 0.69 or less, which overlaps with the claimed range.), and an abbe number (vd) is within a range from 23 to 32 (see Nagaoka at [0012] of the machine translation, disclosing an Abbe number of 15 or more and 27 or less, which overlaps with the claimed range.).
While Nagaoka does not explicitly disclose a ratio of the TiO2 content to the P2O5 content (TiO2/P2O5) is from 0.454894 to 0.7, Nagaoka discloses a range of TiO2 and a range of P2O5 as detailed by [0073] above. Examiner notes the ranges of TiO2 and P2O5 detailed above provide for values of TiO2/P2O5 which are within the claimed range, and therefore the TiO2 and P2O5 ranges of Nagaoka provide a range of (TiO2/P2O5) values which overlap with the claimed range. For example, Example 10 of Table 1 of Nagaoka shows the invention of Nagaoka conceived of values of TiO2 of 15.2 mass% and P2O5 of 22.799 mass%, which provides a ratio of (TiO2/P2O5) of 15.2/22.799= 0.667, which is within the claimed range. Therefore, the TiO2 and P2O5 ranges of Nagaoka provide a range of (TiO2/P2O5) values which overlap with the claimed range.
While Nagaoka does not explicitly disclose a ratio of Nb2O5 content to the P2O5 content (Nb2O5/P2O5) is from 0.1 to 1.3, Nagaoka discloses a range of Nb2O5 and P2O5 values as detailed by [0073] above. Examiner notes the ranges of Nb2O5 and P2O5 detailed above provide for values of (Nb2O5/P2O5) which are within the claimed range, and therefore the P2O5 and B2O3 ranges of Nagaoka provide a range of (Nb2O5/P2O5) values which overlap with the claimed range. For example, the point 36 mass% Nb2O5 is within the range disclosed by Nagaoka at [0073] above, and the point 28 mass% P2O5 is within the range disclosed by Nagaoka at [0073] above. This provides a value of (Nb2O5/P2O5) of 36/28= 1.285, which is within the claimed range. Therefore, because Nagaoka provides for values of Nb2O5 and P2O5 which contain points of Nb2O5/P2O5 within the claimed range, the Nb2O5 and P2O5 ranges of Nagaoka overlap with the claimed (Nb2O5/P2O5) range.
Regarding claim 2, Nagaoka discloses further comprising: by mass%, 0 to 3.5% of an SiO2 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-25.0 mass% SiO2, which overlaps with the claimed range.); 0% to 2% of an MgO content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-60.0 mass% MgO, which overlaps with the claimed range.); 0% to 3.5% of an Li2O content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-40.0 mass% Li2O, which overlaps with the claimed range.); 0% to 9.5% of a CaO content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-50.0 mass% CaO, which overlaps with the claimed range.); 0% to 1.5% of an SrO content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-40.0 mass% SrO, which overlaps with the claimed range.); 0% to 5% of a ZnO content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-40.0 mass% ZnO, which overlaps with the claimed range.); 0% to 6% of a ZrO2 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-17.0 mass% ZrO2, which overlaps with the claimed range.); 0% to 1.5% of a Y2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-7.0 mass% Y2O3, which overlaps with the claimed range.); 0% to 2% of a Gd2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-7.0 mass% Gd2O3, which overlaps with the claimed range.); 0% to 3% of a WO3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-15.0 mass% WO3, which overlaps with the claimed range.); and 0% to 0.4% of an Sb2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-0.5 mass% Sb2O3, which overlaps with the claimed range.).
Regarding claim 3, while Nagaoka does not explicitly disclose a total content of P2O5 and B2O3 (P2O5+B2O3) is from 28% to 43%, Nagaoka discloses a range of P2O5 and B2O3 values as detailed by [0073] above. Examiner notes the ranges of P2O5 and B2O3 detailed above provide for values of (P2O5+B2O3) which are within the claimed range, and therefore the P2O5 and B2O3 ranges of Nagaoka provide a range of (P2O5+B2O3) values which overlap with the claimed range. For example, Nagaoka conceives of the point 27.509 mass% at Table 3 Example 21, as well as 1.587 mass% B2O3 at Table 2 Example 11. These values, which are within the B2O3 and P2O5 ranges disclosed by [0073] of Nagaoka, provide for (P2O5+B2O3) values of 27.509+1.587= 29.096 which are within the claimed range. Therefore, the P2O5 and B2O3 ranges of Nagaoka overlap with the claimed (P2O5+B2O3) range.
Regarding claim 4, while Nagaoka does not explicitly disclose a ratio of the B2O3 content to the P2O5 content (B2O3/P2O5) is from 0 to 0.24, Nagaoka discloses a range of P2O5 and B2O3 values as detailed by [0073] above. Examiner notes the ranges of P2O5 and B2O3 detailed above provide for values of (B2O3/P2O5) which are within the claimed range, and therefore the P2O5 and B2O3 ranges of Nagaoka provide a range of (B2O3/P2O5) values which overlap with the claimed range. For example, Nagaoka conceives of the point 27.509 mass% at Table 3 Example 21, as well as 1.587 mass% B2O3 at Table 2 Example 11. These values, which are within the B2O3 and P2O5 ranges disclosed by [0073] of Nagaoka, provide for a (B2O3/P2O5) value of 1.587/27.509= 0.0576, which is within the claimed range. Therefore, the P2O5 and B2O3 ranges of Nagaoka overlap with the claimed (B2O3/P2O5) range.
Regarding claim 7, while Nagaoka does not explicitly disclose a sum of contents including Li2O, Na2O, and K2O (Li2O + Na2O + K2O) is from 14% to 25% or less, Nagaoka discloses a range of Li2O, Na2O, and K2O at [0073] as detailed above. Examiner notes the ranges of Li2O, Na2O, and K2O detailed above provide for values of Li2O+Na2O+K2O which are within the claimed range, and therefore the Li2O, Na2O, and K2O ranges of Nagaoka provide for values of Li2O+Na2O+K2O which overlap with the claimed range. For example, Nagaoka at Example 10 from Table 1 conceived of the point 0% Li2O, 5.772 wt.% Na2O, and 11.094 wt.% K2O, which provides a value of Li2O+Na2O+K2O of 0+5.772+11.094= 16.866, which is within the claimed range. Therefore, because Nagaoka provides for values of Li2O, Na2O, and K2O which contain points of Li2O+Na2O+K2O within the claimed range, the Li2O, Na2O, and K2O ranges of Nagaoka overlap with the claimed Li2O+Na2O+K2O range.
Regarding claim 9, while Nagaoka does not explicitly disclose a specific gravity (Sg) is from 2.8 to 3.4, the specific gravity of a glass is a function of the composition of the glass as detailed by the instant specification at [0018] teaching a component such as TiO2 and Nb2O5 has been attempted in order to achieve high dispersion. However, when the content amounts of those are increased, reduction of a transmittance and increase of specific gravity are liable to be caused. Because the glass of Nagaoka has a composition substantially identical to the instant composition as detailed in the rejections above, the glass of Nagaoka would inherently possess the claimed specific gravity. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 10, while Nagaoka does not explicitly disclose a ΔPg, F is from 0.0190 to 0.0320, the ΔPg, F is a function of the abbe number (νd) and the partial dispersion ratio (Pg, F) as detailed by the instant specification at [0093]. Because the glass of Nagaoka has an Abbe number and partial dispersion ratio substantially identical to those of the instant invention as detailed by the rejections above, the glass of Nagaoka would inherently possess the claimed ΔPg, F.
Regarding claim 11, while Nagaoka does not explicitly disclose when 50 g of raw materials of the optical glass are heated at a temperature from 1,100 degrees Celsius to 1,250 degrees Celsius, a time period required for melting the raw materials is less than 15 minutes, this property is a function of the composition of the glass because the melting temperature of a glass is a function of the composition of the glass. Because the glass of Nagaoka is substantially identical to the instant glass, the glass of Nagaoka would inherently possess this claimed property.
Regarding claim 12, Nagaoka discloses an optical element using the optical glass (see Nagaoka at [0001] from the machine translation, disclosing an optical element.).
Regarding claim 13, Nagaoka discloses an optical system comprising the optical element (see Nagaoka at [0002] from the machine translation, disclosing an optical system).
Regarding claim 14, Nagaoka discloses an interchangeable lens comprising the optical system (see Nagaoka at [0078], disclosing optical elements such as lenses.) Examiner notes "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In the instant case, the lens of Nagaoka would be capable of being interchanged, therefore it meets the instant limitation.
Regarding claim 15, Nagaoka discloses an optical device comprising the optical system (see Nagaoka at [0082] disclosing optical devices).
Regarding claim 16, Nagaoka discloses further comprising: by mass%, 1.43% to 3.5% of an SiO2 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-25.0 mass% SiO2, which overlaps with the claimed range.); and 4.37% to 10% or less of a B2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-25.0 mass% B2O3, which overlaps with the claimed range.).
Regarding claim 17, Nagaoka discloses further comprising: by mass%, 12.28% to 17% of an Na2O content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-45.0 mass% Na2O, which overlaps with the claimed range.); and 15.70% to 21 % of a TiO2 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-60.0 mass% TiO2, which overlaps with the claimed range.).
Regarding claim 18, Nagaoka discloses an optical glass (see Nagaoka at [0001] from the machine translation, disclosing an optical glass) comprising: by mass%, 24.5% to 41% of a P2O5 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0.1-30.0 mass% P2O5, which overlaps with the claimed range.); 6% to 17% of an Na2O content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-45.0 mass% Na2O, which overlaps with the claimed range.); 5% to 15% of a K2O content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-30.0 mass% K2O, which overlaps with the claimed range.); over 0% to 7% or less of an Al2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-15.0 mass% Al2O3, which overlaps with the claimed range.); 8% to 21% of a TiO2 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-60.0 mass% TiO2, which overlaps with the claimed range.); 5.4% to 38% of an Nb2O5 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0.1-45.0 mass% Nb2O5, which overlaps with the claimed range.); 0% to 3% of a Bi2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-7.0 mass% Bi2O3, which overlaps with the claimed range.); 4.68% to 9% of a BaO content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-25.0 mass% BaO, which overlaps with the claimed range.); over 0% to 10% or less of a B2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-25.0 mass% B2O3, which overlaps with the claimed range.); and 0 % to 1.5% of an La2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-7.0 mass% La2O3, which overlaps with the claimed range.); wherein the optical glass has a partial dispersion ratio (Pg,F) of 0.634 or less (see Nagaoka at [0012] of the machine translation, disclosing a partial dispersion ratio of 0.62 or more and 0.69 or less, which overlaps with the claimed range.), and a refractive index (nd) with respect to a d-line is within a range from 1.66 to 1.81 (see Nagaoka at [0098], disclosing a refractive index of 1.75 or more… and 1.95 or less, which overlaps with the claimed range.).
While Nagaoka does not explicitly disclose a ratio of the TiO2 content to the P2O5 content (TiO2/P2O5) is from 0.454894 to 0.7, Nagaoka discloses a range of TiO2 and a range of P2O5 as detailed by [0073] above. Examiner notes the ranges of TiO2 and P2O5 detailed above provide for values of TiO2/P2O5 which are within the claimed range, and therefore the TiO2 and P2O5 ranges of Nagaoka provide a range of (TiO2/P2O5) values which overlap with the claimed range. For example, Example 10 of Table 1 of Nagaoka shows the invention of Nagaoka conceived of values of TiO2 of 15.2 mass% and P2O5 of 22.799 mass%, which provides a ratio of (TiO2/P2O5) of 15.2/22.799= 0.667, which is within the claimed range. Therefore, the TiO2 and P2O5 ranges of Nagaoka provide a range of (TiO2/P2O5) values which overlap with the claimed range.
While Nagaoka does not explicitly disclose a ratio of Nb2O5 content to the P2O5 content (Nb2O5/P2O5) is from 0.1 to 1.3, Nagaoka discloses a range of Nb2O5 and P2O5 values as detailed by [0073] above. Examiner notes the ranges of Nb2O5 and P2O5 detailed above provide for values of (Nb2O5/P2O5) which are within the claimed range, and therefore the P2O5 and B2O3 ranges of Nagaoka provide a range of (Nb2O5/P2O5) values which overlap with the claimed range. For example, the point 36 mass% Nb2O5 is within the range disclosed by Nagaoka at [0073] above, and the point 28 mass% P2O5 is within the range disclosed by Nagaoka at [0073] above. This provides a value of (Nb2O5/P2O5) of 36/28= 1.285, which is within the claimed range. Therefore, because Nagaoka provides for values of Nb2O5 and P2O5 which contain points of Nb2O5/P2O5 within the claimed range, the Nb2O5 and P2O5 ranges of Nagaoka overlap with the claimed (Nb2O5/P2O5) range.
Regarding claim 19, Nagaoka discloses further comprising: by mass % 0% to 3.5% of an SiO2 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-25.0 mass% SiO2, which overlaps with the claimed range.); 0% to 2% of an MgO content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-60.0 mass% MgO, which overlaps with the claimed range.); 0% to 3.5% of an Li2O content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-40.0 mass% Li2O, which overlaps with the claimed range.); 0% to 9.5% of a CaO content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-50.0 mass% CaO, which overlaps with the claimed range.); 0% to 1.5% of an SrO content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-40.0 mass% SrO, which overlaps with the claimed range.); 0% to 5% of a ZnO content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-40.0 mass% ZnO, which overlaps with the claimed range.); 0% to 6% of a ZrO2 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-17.0 mass% ZrO2, which overlaps with the claimed range.); 0% to 1.5% of a Y2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-7.0 mass% Y2O3, which overlaps with the claimed range.); 0% to 2% of a Gd2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-7.0 mass% Gd2O3, which overlaps with the claimed range.); 0% to 3% of a WO3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-15.0 mass% WO3, which overlaps with the claimed range.); and 0% to 0.4% of an Sb2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-0.5 mass% Sb2O3, which overlaps with the claimed range.).
Regarding claim 20, Nagaoka discloses further comprising: by mass%, 1.43% to 3.5% of an SiO2 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-25.0 mass% SiO2, which overlaps with the claimed range.); and 4.37% to 10% or less of a B2O3 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-25.0 mass% B2O3, which overlaps with the claimed range.).
Regarding claim 21, Nagaoka discloses further comprising: by mass%, 12.28% to 17% of an Na2O content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-45.0 mass% Na2O, which overlaps with the claimed range.); and 15.70% to 21% of a TiO2 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0-60.0 mass% TiO2, which overlaps with the claimed range.).
Regarding claim 22, Nagaoka discloses further comprising: by mass %, 7% to 38% of an Nb2O5 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0.1-45.0 mass% Nb2O5, which overlaps with the claimed range.).
Regarding claim 23, Nagaoka discloses further comprising: by mass %, 7% to 38% of an Nb2O5 content (see Nagaoka at [0073] of the machine translation as well as the original Japanese publication, disclosing 0.1-45.0 mass% Nb2O5, which overlaps with the claimed range.).
Response to Arguments
Applicant's arguments filed 05/01/2026 have been fully considered but they are not persuasive.
At page 7 of the Remarks, Applicant argues that Nagaoka does not disclose or readily conceive the ratio of Nb2O5/P2O5 from 0.1 to 1.3, and therefore the subject matter of instant claims 1 and 18 is non-obvious. Applicant argues that the examiner stated “Nagaoka’s range may encompass this limitation”. Examiner respectfully disagrees. Examiner did not argue that Nagaoka’s range may encompass this limitation, Examiner explicitly proves that the Nb2O5 and P2O5 ranges disclose by Nagaoka provide for a range of Nb2O5/P2O5 ratios which have been mathematically demonstrated to overlap with the claimed Nb2O5/P2O5 ratio. The claimed ratio is therefore prima facie obvious per MPEP 2144.05 because the ranges overlap.
At page 7, Applicant argues that a person skilled in the art would have no motivation to adjust the composition so as to arrive at the claimed ratio, and that based on the preferred ranges of Nagaoka, such a rejection would be hindsight knowledge. Examiner respectfully disagrees, and notes that the rejection does not rely upon any adjustment of Nagaoka; the rejection is based upon a prima facie obviousness rejection because the Nb2O5 and P2O5 ranges of Nagaoka provide for a range of Nb2O5/P2O5 ratios which overlap with the claimed ratio. As such, no adjustment exists. The rejection is based solely upon this overlap. Per MPEP 2144.05 “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists”. Examiner notes that no adjustment, nor motivation for such an adjustment, is relied upon the form the basis of the prima facie obviousness rejection herein. The rejection is based wholly upon the disclosed ranges of Nagaoka, which have been mathematically demonstrated to overlap with the claimed ratio ranges.
Applicant’s arguments that other preferred ranges of Nagaoka reach away from the claimed range are similarly unconvincing. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123(II)). In the instant case, that Nagaoka discloses more narrow ranges or more narrow specific examples is of no consequence to the instant rejections because the instant rejections are based upon the overlapping ranges cited above. Per MPEP 2123(II), other ranges and examples within Nagaoka do not teach away from the broader disclosure of Nagaoka used to form the basis of the above rejection.
At page 8 of the Remarks, Applicant argues that the specific examples of Nagaoka do not meet the claimed Nb2O5/P2O5 ratio, and thus the claimed ratio is non-obvious. Examiner respectfully disagrees for the reasons stated above. Specifically, the rejection of the claimed Nb2O5/P2O5 ratio is not based upon any of the examples cited by Nagaoka or table 8 of the Remarks; the rejections are based upon the ranges of Nb2O5 and P2O5 which provide for ratios of Nb2O5/P2O5 that overlap with the claimed ratio range. That the examples of Nagaoka do not meet the claimed limitations is immaterial to the instant question of patentability. Prior art is not limited to the specific examples found within. The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain (see MPEP 2123(I)).
For at least these reasons, Applicants arguments are not found to be convincing, and all pending claims remain rejected over Nagaoka.
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.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
Prosecution Insights