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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/27/2026 has been entered.
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) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kiefer et al. (US5045509, hereinafter referred to as Kiefer).
Regarding claim 1, Kiefer discloses a glass (see Kiefer at the Abstract, disclosing a glass),
While Kiefer does not explicitly disclose a transmission throughout a wavelength range of from 207 nm to 222 nm of at least 60%, measured at a thickness of 1 mm, this is a property which depends upon the composition of the glass. This instant specification at the Table at [0275] discloses an example of a glass which meets the claimed transmission properties at Example No. 1. This glass is substantially identical to the glass of Table 1 Glass 9 from Kiefer as detailed in the composition section of this rejection below. Because the glass of Table 1 Glass 9 is substantially identical in composition to the glass of Example No. 1 from the Table at [0275] of the instant specification, the glass of Table 1 Glass 9 of Kiefer would inherently possess the claimed transmission. 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). As further evidence of the inherency of this property, Kiefer discloses for a thickness of 1 mm and the wavelength of 253.7 nm has a transmission of at least 75% (see Kiefer at the Abstract).
Further regarding claim 1, Kiefer discloses wherein the glass is a borosilicate glass having a total platinum content of not more than 3.5 ppm (see Kiefer at the glass of Table 1 Glass 9, disclosing a glass with no platinum, which corresponds to 0ppm platinum, which is within the claimed range),
While Kiefer does not explicitly disclose a hydrolytic resistance characterized by an extracted Na2O equivalent in pg per g glass determined according to ISO 719 of not more than 250 µg/g, this is a property which depends upon the composition of the glass. The glass of Table 1 Glass 9 from Kiefer is substantially identical to the glass of Example No. 1 from the Table at [0275] of the instant specification as detailed in the rejection above. Therefore, the glass of Table 1 Glass 9 of Kiefer would inherently possess the claimed hydrolytic resistance.
Additionally regarding claim 1, Kiefer discloses wherein the glass comprises the following components in the indicated amounts (in mol%): SiO2 40 to 85 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 66.3 wt.% SiO2, which corresponds to approximately 67.59 mol% SiO2), Al2O3 0 to 25 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 6 wt.% Al2O3, which corresponds to approximately 3.6 mol% Al2O3) Na2O 0 to 18 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 2.5 wt.% Na2O, which corresponds to approximately 2.47 mol% Na2O) K2O 0 to 15 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 1 wt.% K2O, which corresponds to approximately 0.65 mol% K2O) MgO 0 to 10 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 0% MgO) B2O3 5 to 24 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 20 wt.% B2O3, which corresponds to approximately 17.6 mol% B2O3) Li2O 0 to 10 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 0.5 wt.% Li2O, which corresponds to approximately 1.02 mol% Li2O) ZnO 0 to 5 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 0% ZnO) CaO 0 to 16 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 0.6 wt.% CaO, which corresponds to approximately 0.66 mol% CaO) BaO 0 to 12 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 0.5 wt.% BaO, which corresponds to approximately 0.2 mol% BaO) ZrO2 0 to 5 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 0% ZrO2) SnO2 0 to 3 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 0% SnO2) SrO 0 to 4 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 0% SrO),
F- 0 to 4 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising 1.6 wt.% F-, which corresponds to approximately 5.1 mol% F-. However, Kiefer at Col. 3 lines 59-61 discloses a fluorine content of 0.5 to 2.0% by weight improves the fusion and refining behavior without having an adverse effect on the UV transparency. Examiner notes Kiefer at the Col. 3, lines 21-27 discloses the Al2O3 content should not exceed 6.0% by weight... the hydrolytic resistance becomes poorer if the Al2O3 content exceeds 6.0% by weight. With an Al2O3 content below 4% by weight, the glass becomes milky. Examiner notes 0.5 to 2.0% by weight fluorine and 4-6% by weight Al2O3 overlaps with the claimed fluorine content as evidenced by the point of Table 1 Glass 9 whereby the Al2O3 content is modified to 5.3 wt.% and F- is modified to 1 wt.% would correspond to the glass of Table 1 Glass 9 which corresponds to approximately 3.25 mol% Al2O3 and approximately 3.3 mol% F-, both of which are within the claimed range. Therefore the Al2O3 and F- ranges made obvious by Kiefer overlap with the claimed range. As such, it would be obvious to a person having ordinary skill in the arts before the effective filing date of the claimed invention when practicing the invention of Kiefer Table 1 Glass 9 to vary the F- content to within the overlapping claimed range with a reasonable expectation of successfully providing a glass with improved fusion and refining behavior without adverse effect on the UV transparency as taught by Kiefer.),
Cl- 0 to 1 (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising approximately 0.6 wt.% Cl-, which corresponds to approximately 1 mol% Cl-),
wherein a ratio of a sum of the contents (in mol%) of B2O3, R2O, and RO to a sum of the contents (in mol%) of SiO2 and Al2O3 is at most 0.34, wherein R2O refers to the alkaline metal oxides Li2O, Na2O, and K2O and RO refers to the alkaline earth metal oxides MgO, CaO, BaO, and SrO (see Kiefer at Table 1, Glass 9, disclosing an example of a glass comprising approximately 17.41 mol% B2O3, 1.02 mol% Li2O, 2.47 mol% Na2O, 0.65 mol% K2O, 0.66 mol% CaO, 0.2 mol% BaO, 67.59 mol% SiO2, and 3.6 mol% Al2O3. Examiner notes this provides a ratio of a sum of the contents (in mol%) of B2O3, R2O, and RO to a sum of the contents (in mol%) of SiO2 and Al2O3 of (17.41+1.02+2.47+0.65+0.66+0.2)/(67.59+3.6)= 0.31, which is within the claimed range.).
Kiefer makes obvious the sum of the content of R2O and RO is between 6 and 10 mol% (see Kiefer at at Table 1, Glass 9, disclosing an example of a glass comprising approximately 5 mol% R2O+RO, 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 2, while Kiefer does not explicitly disclose a refractive index (na) of from 1.450 to 1.580, this is a property which depends upon the composition of the glass. The glass of Table 1 Glass 9 from Kiefer is substantially identical to the glass of Example No. 1 from the Table at [0275] of the instant specification as detailed in the rejection of claim 1 above. Therefore, the glass of Table 1 Glass 9 of Kiefer would inherently possess the claimed refractive index.
Regarding claim 3, Kiefer discloses the glass has a total content of one or more UV-blocking impurities that is below 10 ppm (see Kiefer at the glass of Table 1 Glass 9, disclosing a glass with no mercury, which corresponds to 0ppm mercury, which is within the claimed range. Examiner notes mercury is a UV-blocking impurity per [0217] of the instant specification.).
Regarding claim 4, Kiefer discloses the UV-blocking impurities are selected from the group consisting of lead, cadmium, mercury, rhodium, hexavalent chromium, iron, titanium, and any combination thereof (see Kiefer at the glass of Table 1 Glass 9, disclosing a glass with no mercury, which corresponds to 0ppm mercury, which is within the claimed range. Examiner notes mercury is a UV-blocking impurity per [0217] of the instant specification.).
Regarding claim 5, Kiefer discloses the total platinum content is below 1.0 ppm (see Kiefer at the glass of Table 1 Glass 9, disclosing a glass with no platinum, which corresponds to 0ppm platinum, which is within the claimed range).
Response to Arguments
Applicant's arguments filed 06/01/2026 have been fully considered but they are not persuasive. Ay the second paragraph of page 2 of the Remarks, Applicant argues that the sum of R2O and RO from 6-10 mol% would not be obvious in view of Kiefer. Examiner respectfully disagrees, and notes per the rejection of claim 1 that example 9 of Kiefer has 5 mol% R2O and RO, which is close to touching the claimed range per MPEP 2144.05. Examiner notes the underlying logic of MPEP 2144.05 is not necessarily of mathematical proximity by some arbitrary percentage, but that “[t]he proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.” (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)).
At the last full paragraph of page 2, Applicant argues that the sum of R2O and RO components increase the phase separation tendency and reduce the hydrolytic resistance of the glasses in too high proportions per [00156] of the instant application. Examiner notes that this section only speaks to a detrimentally high amount of R2O and RO, and does not provide evidence that a sum or R2O and RO slightly lower than the claimed range would have different properties. As such, arguments that the claimed range would not be obvious in view of Kiefer’s slightly lower range are not convincing.
Additionally, [0118] of the instant PGPub does not appear to state that advantageous effects of the phase separation tendency and reduce the hydrolytic resistance of the glasses in too high proportions are found only between 6-10 mol%. [0118] explicitly states “RO+R2O, can be limited to a maximum of 10 mol %. Some embodiments can contain these components in quantities of maximum 9 mol %. In some embodiments the content of these oxides is at least 4 mol %, at least 5 mol %, or at least 6 mol %. In some embodiments the RO+R2O-proportion is between 6 and 8 mol %.” This paragraph appears to state the RO+R2O content should have a maximum value of 10 mol%, but does not state that a lower limit is necessary to achieve the desired benefit. Indeed, this paragraph explicitly mentions ranges as low as 4 mol% providing the benefit. As such, Applicant’s arguments are not convincing.
Additionally, at page 2 Applicant argues that Kiefer does not disclose, suggest, or teach an advantage realized by a sum of content of R2O and RO from 6 to 10 mol%, however, this is not convincing because the claimed structure of the glass of the instant claims is obvious in view of the structure of the glass of Kiefer. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (see MPEP 2112(I)). In the instant case, it is immaterial to the instant question of patentability that Kiefer does not explicitly recite some advantage for a sum of content of R2O and RO from 6 to 10 mol%.
At the last sentence of page 2 to the first paragraph of page 3, Applicant argues that a person having ordinary skill in the arts would not be motivated to modify Glass 9 of Kiefer, because such a person motivated to increase the UV transmission of a glass would not lower the F- content of a glass. Examiner respectfully disagrees, and notes arguments presented by the applicant cannot take the place of evidence in the record (see MPEP 716.01(c)). In the instant case, these arguments do not appear to be supported by evidence and cannot be found convincing. Additionally, Kiefer at at least the Abstract discloses a range of F- and Al2O3 values, all of which are obvious in view of the teachings of Kiefer as outlined in the rejection of claim 1 above. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123(II)). As such, claim 1 is obvious over the broader teachings of Kiefer per the rejection above, and this argument is not convincing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. David et al. (US20170121058).
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
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