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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 27, 2026 is being considered by the examiner.
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.
Claim(s) 1-2, 5-6, 8-16, 18, 21-22, 42-43 and 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gross (USPub20170341973).
Regarding claims 1-2, 8-15, 21-22, 42 and 43: Gross teaches a chemically toughened or chemically toughenable sheet glass articles which comprise a composition comprising Al2O3, SiO2, Li2O and B2O3 (see abstract).
While Gross’ Examples may not have a composition meeting the content requirements of claim 1, Gross does teach that their glass composition can include a composition that allows for, when converted to wt%, compositions overlapping that claimed (MPEP 2144.05) (see 0008, 0051-0078).
For example, and solely for clarity of record, see below along with the relevant paragraphs relied upon and cited by the Examiner supporting their assertion of overlap.
mol% teaching
Additional teaching of the mol% ranges
Allows for compositions in Mol%
Converts to
wt% (Approx)
SiO2
About 60 - about 80 (0052)
Such as 60-66 (0053)
65.75
61.37
Al2O3
≥ 10 (0052)
Such as 10-15 (0054)
12
19.04
B2O3
> 0.9 (0052)
Such as 0.9-4 (0055)
4
4.36
Li2O
About 5 - about 10 (0052)
Such as 9-10 (0059)
9
4.18
P2O5
About 1 – about 5 (0052)
Note that not only does the “about” in “about 1” allow for values slightly below 1 (see MPEP 2144.05) but it is noted that Gross does teach that the P2O5 can instead be 0.5-3 (see 0071)
0.75
1.66
Na2O
About 0.5–about 12 (0052)
Such as 3-7.5 (0061)
7
6.75
K2O
< about 2 (0063)
Such as 0-0.5 (0063)
0.5
0.73
ZrO2
0-about 2 (0073, 0076-0078)
1
1.91
Regarding claim 5: Gross’ glass can have a young’s modulus of 72-85GPa (0083).
Regarding claim 6: Given that Gross’ glasses meet that claimed and is ion exchanged with a substantially similar process to Applicants (note Gross’ abstract, 0103-0105, 0156-0159 and Examples discussing their ion exchange process including overlapping temperature, overlapping duration and the same salts as discussed in par 0105 of Applicants’ published specification), one skilled in the art would conclude the same features to result (i.e. comprise an ion exchange prestress that increases an elastic component of deformation as claimed) (MPEP 2112).
Regarding claim 16: The glass thickness is 0.4-3mm (0085).
Regarding claim 18: The glass article can be configured for use as a cover sheet for display devices, mobile phones, etc. (0134).
Regarding claim 44: The B2O3 is a 3-fold coordination (trigonal) (0056).
Claim(s) 44 and 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gross (USPub20170341973) as applied to claim 43 above in view of 9145333.
Regarding claims 44 and 45: As discussed above, Gross teaches a chemically strengthened borosilicate glass.
As ‘333, who similarly teaches chemically strengthened borosilicate glass, discloses that the coordination of B2O3 in the glass can be that of trigonal and that of tetragonal wherein the coordinates are result effective as they affect chemical strengthening properties such as mutual diffusion, compressive stress and indentation threshold and suggest that balancing the contents of the coordinations in the glass alters the properties (see abstract, Fig 17-18 and Col. 5, lines 19-42 and 62-67), it would have been well within the skill in the art at the time of invention to find it obvious to modify Gross to include B2O3 being that of trigonal and tetragonal as desired depending on chemical strengthening properties desired and to adjust the content of the coordinations therein depending on desired final chemical strengthening results.
Response to Arguments
Applicant's arguments filed June 11, 2026 have been fully considered but they are not persuasive.
Initially, note that all arguments related to Beall are moot as Beall is no longer relied upon in the present Office Action in view of the most recent amendment.
Applicants argue against the Office’s assertion that Gross’ overlapping ranges renders the claims obvious because the claimed composition, in addition to the recited B2O3 and P2O5 contents, now includes 0.2-3wt% ZrO2 and the claimed composition is not just a selection of a value from an overlapping range but rather, Applicants have shown by Declaration that the selected combination of components is significant as it provides unexpected results of improved set drop performance and ion-exchange stress properties. This is not persuasive.
Initially, it is noted for the record that as provided in the above Office Action, the now claimed composition with the additional 0.2-3wt% ZrO2 is still overlapped by Gross’ disclosed composition providing for a prima facie case of obviousness (MPEP 21444.05).
While Applicants argue that the composition as now claimed is significant and provides unexpected results, the Examiner maintains that Applicants evidence and Declaration is still not sufficient to show unexpected results.
Initially, the evidence provided in the Declaration is still not commensurate in scope with the claims and it has been held by the courts that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." The evidence is still not commensurate in scope.
Note that the evidence in the Declaration uses a singular Example composition which is much more specific than what is claimed. Specifically, it includes specific amounts of SiO2, Al2O3, and Li2O which are all not claimed and the Example also includes additional oxides of Na2O, SnO2, CaO, K2O, MgO, CeO2, ZnO, Fe2O3, etc. in specific amounts which are all not claimed. As such, even if Applicants’ very specific singular Example is argued to provide some benefit over the comparative Example in the Declaration, this is not enough to show that the same benefits would be obtained with any SiO2, Al2O3, and Li2O containing glass having above 4wt%-7wt% B2O3, 0.2wt%-3wt%ZrO2 and 0.5wt%-3wt% P2O5, including those having any amounts of SiO2, Al2O3 and Li2O and those not including Na2O, SnO2, CaO, K2O, MgO, CeO2, ZnO, Fe2O3, etc. as is currently encompassed by the present broad independent claims.
Further, the Declaration includes a singular Example composition with specific amounts of Al2O3, SiO2, Li2O, B2O3, ZrO2 and P2O5 but again, the present claims are much broader. Specifically, the present independent claims allow for any amount of Al2O3, SiO2, and Li2O, as well as above 4wt%-7wt% B2O3, 0.2wt%-3wt%ZrO2 and 0.5wt%-3wt% P2O5. As such, even if Applicants’ show that their very specific singular Example having 63.9wt%, 18.5wt% Al2O2, 3.95wt% Li2O, 6.24wt% B2O3, 0.78wt% ZrO2 and 1.12wt% along with a variety of other components present therein provides some benefit over their comparative Example, this is not enough to show that the same results would be obtained with any SiO2, Al2O3, and Li2O containing glass having above 4wt%-7wt% B2O3, 0.2wt%-3wt%ZrO2 and 0.5wt%-3wt% P2O5 as encompassed by the present independent claims.
Note that a showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) and not just a single point within the claimed ranges.
Also, Applicants’ Declaration only providing a single Example having B2O3, ZrO2 and P2O5 within the claimed ranges and one comparative Example wherein ZrO2 falls outside of the claimed range is not enough to show criticality of the claimed ranges. Initially, again as noted above, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed ranges. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) and an Example showing a singular point within each range is not enough to show criticality for the entirety of the ranges claimed.
In the instant case, showing results of a single Example wherein B2O3 is 6.24wt%, ZrO2wt% is 0.78wt% and P2O5 is 1.12wt% is not enough to show that the same results will occur over the entirety of the B2O3 range of “about 4.0 wt% to not more than 7wt% B2O3”, over the entirety of the ZrO2 range of 0.2-3wt% and over the entirety of the P2O5 range of “from at least 0.5wt% to not more than 3wt% of P2O5”. Note that there are no Examples showing closer to 4wt% or closer to and at 7wt% B2O3, no examples showing closer to or at 0.2wt% ZrO2 and closer to or at 3wt% ZrO2 and similarly, no Examples showing closer to or at 0.5wt% P2O5 and closer to or at 3wt
% P2O5.
Further, it has also been held by the courts that 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 re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). In the instant case, Applicants’ Declaration only provides one Inventive Example having 6.24wt% B2O3, 0.78wt% ZrO2 and 1.12wt% P2O5 falling within the claimed ranges and one comparative Example wherein B2O3 and ZrO2 are outside and under the claimed ranges. This is not considered a sufficient number of tests for comparison as there are no tests with the components falling outside the upper end point of the claimed ranges nor are there any tests including the lower and upper end points of the claimed ranges themselves to adequately determine whether these end points are even critical. For instance, while the Example in the Declaration may show results for 6.24wt% B2O3, 0.78wt% ZrO2 and 1.12wt% and P2O5, would the same results occur if the ZrO2 is at the minimum claimed end point of 0.2wt% with the B2O3 being at the minimum of “about 4wt%”, and the P2O5 being at the 0.5wt% end point? Would the same results occur if the ZrO2 is at the maximum claimed end point of 3wt% with the B2O3 at the maximum of “7wt%”, and the P2O5 being at 3wt% maximum? Would the results not occur immediately below and immediately above these end points? There are simply not enough to adequately determine criticality of the entirety of the ranges in arriving at the argued results with only a single Example and comparative Example.
Even further, note for the record that the Declaration’s singular Example includes 6.24wt% B2O3 but at least claim 2 in the present Application, B2O3 cannot be higher than 4.5wt% so even if Applicants added additional comparative Examples, the singular Inventive Example cannot be used at all to support a showing of unexpected results for at least claim 2.
Applicants additionally argue that while Gross includes broad optional disclosures of ZrO2, Gross does not disclose or suggest the claimed combination and given that Gross’ actual examples do not include the combination.
This is not persuasive. Initially, while Gross’ Examples may not include the combination, note that it has been held by the courts that a reference is not limited to their Examples and more specifically, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). In the instant case, as discussed in the Office Action, Gross’ broader disclosure does teach/suggest a composition which overlaps the combination claimed (MPEP 2144.05).
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 LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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