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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 29, 2025 has been entered.
Response to Amendment
The reply filed on September 29, 2025 has been entered into the prosecution for the application. Currently, claims 1-9 and 11-21 are pending. Claim 10 is cancelled. Claims 1, 11, and 16 have been amended.
All prior art grounds of rejection are withdrawn.
Applicant’s amendments necessitated the new prior art ground(s) of rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 claims (in line 20) a range of 0–7 mol% RO, wherein RO is the sum of MgO, CaO, SrO, BaO, and ZnO in the glass composition. However, in line 9 of the same claim, the minimum content of CaO is given as 0.75 mol%. Therefore, because of the necessary minimum content of CaO, the minimum content of RO could never be less than 0.75 mol%. The recitation of a range of 0–7 mol% RO in line 20 therefore creates a mathematical contradiction and uncertainty as to the scope of the claim.
Claims 12-15 are rejected by reason of their dependence from claim 11.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-8, and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015/118964 A1 to Tsutsumi et al. (with reference to the provided machine translation, hereinafter “Tsutsumi”).
Regarding claim 1, Tsutsumi teaches a glass composition (Table 2, Example 10) comprising the following components:
Component
Claim 1 (mol%)
Tsutsumi, Ex. 10 (weight %)
Tsutsumi, Ex. 10 (mol %) (calculated)
SiO2
58 – 90
58.18
65.7
Al2O3
0 – 2.5
1.38
0.92
B2O3
4 – 10
5.27
5.14
Li2O
3 – 25
0.92
2.09
Na2O
2 – 25
16.16
17.69
K2O
0 – 25
MgO
0 – 5
CaO
0 – 7
1.38
1.67
SrO
0 – 5
BaO
0 – 5
3.54
1.57
ZnO
0 – 5
Fe2O3
2.22
0.943
FeO
2.84
2.68
Sb2O3
0.14
0.03
Nd2O3
0.65 – 12 of X2O3
7.96
1.61
R2O = Li2O + Na2O + K2O + Cs2O
10 – 30
19.78
RO = MgO + CaO + SrO + BaO + ZnO
0 – 7
3.24
Thus, Tsutsumi teaches a glass composition comprising component molar percentages for the listed components that fall within the recited ranges of the amended claim 1, except for Li2O, where Example 10 of Tsutsumi teaches a value that is close. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap but are merely close (see MPEP 2144.05(I), second paragraph). Moreover, the general teachings of Tsutsumi teach a range of Li2O content (up to 3 wt.%; see ¶ 0015) that encompasses values that fall within the claimed range for Li2O; this is evidenced, for example, by the glass composition of Example 20 (see Table 3), which comprises 2.00 wt.% Li2O (4.13 mol% Li2O). Therefore, based on the general teachings of Tsutsumi, a glass composition with a Li2O content within the claimed range of 3-25 mol% would have been obvious to one of ordinary skill in the art.
Regarding claims 3-6, Tsutsumi teaches the glass composition of claim 1, as set forth above. One of ordinary skill in the art before the effective filing date of the claimed invention would expect that a glass composition with overlapping compositional ranges would inherently have the properties as recited in claims 3-6, since products of identical composition are presumed not to have mutually exclusive properties. 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 obviousness has been established (see MPEP 2112.01(I), first paragraph).
Regarding claim 7, Tsutsumi teaches the glass composition of claim 1, as set forth above. Further, Tsutsumi teaches wherein, for Example 10, the total value of a mole percent of R2O is equal to 19.78 and a total value of a mole percent of RO is equal to 3.24:
R2O/RO = (Li2O + Na2O + K2O)/( MgO + CaO + SrO + BaO + ZnO)
= (2.09 + 17.67 + 0)/(0 + 1.67 + 0 + 1.57 + 0)
= (19.78)/(3.24)
= 6.10
Thus, Tsutsumi teaches a ratio of a mole percent of R2O to a mole percent of RO is 6.10, which is within the claimed range.
Regarding claim 8, Tsutsumi teaches the glass composition of claim 1, as set forth above. One of ordinary skill in the art before the effective filing date of the claimed invention would expect that a glass composition with overlapping compositional ranges would inherently have the properties as recited in claim 8, since products of identical composition are presumed not to have mutually exclusive properties. 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 obviousness has been established (see MPEP 2112.01(I), first paragraph).
Regarding claim 11, Tsutsumi teaches a glass composition (Table 2, Example 10) comprising the following components:
Component
Claim 11 (mol%)
Tsutsumi, Ex. 10 (weight %)
Tsutsumi, Ex. 10 (mol %) (calculated)
SiO2
60 – 74
58.18
65.7
Al2O3
0 – 2.5
1.38
0.92
B2O3
4 – 10
5.27
5.14
Li2O
3 – 25
0.92
2.09
Na2O
2 – 25
16.16
17.69
K2O
0 – 25
MgO
0 – 5
CaO
0.75 – 7
1.38
1.67
SrO
0 – 5
BaO
0 – 5
3.54
1.57
ZnO
0 – 5
Fe2O3
2.22
0.943
FeO
2.84
2.68
Sb2O3
0.14
0.03
Nd2O3
0.5 – 12 of X2O3
7.96
1.61
R2O = Li2O + Na2O + K2O + Rb2O + Cs2O
10 – 30
19.78
RO = MgO + CaO + SrO + BaO + ZnO
0 – 7
3.24
Thus, Tsutsumi teaches a glass composition comprising component molar percentages for the listed components that fall within the recited ranges of the amended claim 11, except for Li2O, where Example 10 of Tsutsumi teaches a value that is close. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap but are merely close (see MPEP 2144.05(I), second paragraph). Moreover, the general teachings of Tsutsumi teach a range of Li2O content (up to 3 wt.%; see ¶ 0015) that encompasses values that fall within the claimed range for Li2O; this is evidenced, for example, by the glass composition of Example 20 (see Table 3), which comprises 2.00 wt.% Li2O (4.13 mol% Li2O). Therefore, based on the general teachings of Tsutsumi, a glass composition with a Li2O content within the claimed range of 3-25 mol% would have been obvious to one of ordinary skill in the art.
Tsutsumi teaches wherein the difference between the mol% of the R2O (19.78 mol% for Example 10; see above, p. 7) and the mol% of the RO (3.24 mol%) is greater than the mol% of the X2O3 (1.61 mol% Nd2O3, the only component present falling within the category of X2O3 as defined in claim 11): Example 10 has a difference of (19.78 – 3.24) = 16.54, which is greater than 1.61.
Thus, in view of Tsutsumi, a glass composition according to claim 11 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claims 12-15, Tsutsumi teaches the glass composition of claim 11, as set forth above. One of ordinary skill in the art before the effective filing date of the claimed invention would expect that a glass composition with overlapping compositional ranges would inherently have the properties as recited in claims 12-15, since products of identical composition are presumed not to have mutually exclusive properties. 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 obviousness has been established (see MPEP 2112.01(I), first paragraph).
Allowable Subject Matter
Claims 2, 9, and 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 16-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 2, the closest prior art is Tsutsumi, which teaches the glass composition of claim 1, as set forth above. Additionally, Tsutsumi teaches that the glass composition of Example 10 comprises 65.68 mol% SiO2 (see above, p. 4), which falls within the recited range of 62-90 mol% SiO2. Tsutsumi is silent as to PbO, CdO, and TeO2, and therefore one of ordinary skill in the art reasonably would conclude that PbO, CdO, and TeO2 are each absent from the glass composition (i.e., the mol% of each is zero). Moreover, Tsutsumi teaches that the glass includes Fe2O3, which functions as a colorant (see Table 2, Example 10; see also ¶ 0018). However, Tsutsumi does not teach wherein a mole percent of the colorant (Fe2O3) is 50% or less of a mole percent of the X2O3. Example 10 of Tsutsumi comprises 0.943 mol% Fe2O3 and 1.61 mol% Nd2O3, the only component present falling within the category of X2O3 as defined in claim 1 (see above, p. 4; and see Table 2 of Tsutsumi); thus, Tsutsumi teaches a glass composition wherein a mole percent of the colorant (Fe2O3) is 58.6% of a mole percent of the X2O3. Thus, the specific combination of required components set forth in claim 2 is neither taught nor rendered obvious by the prior art of record.
Regarding claim 9, the closest prior art is Tsutsumi, which teaches the glass composition according to claim 1, as set forth above. However, Tsutsumi does not teach an article comprising the glass composition according to claim 1 combined with at least one other glass composition that has a softening point of less than 800°C. Thus, the specific combination of required components set forth in claim 9 is neither taught nor rendered obvious by the prior art of record.
Regarding claim 16, the closest prior art is Tsutsumi, which teaches a glass composition (Example 10) comprising the following components:
Component
Claim 16 (mol%)
Tsutsumi, Ex. 10 (weight %)
Tsutsumi, Ex. 10 (mol %) (calculated)
SiO2
58 – 90
58.18
65.7
Al2O3
0 – 2.5
1.38
0.92
B2O3
4 – 10
5.27
5.14
Li2O
3 – 25
0.92
2.09
Na2O
2 – 25
16.16
17.69
K2O
0 – 25
MgO
0 – 5
CaO
0 – 7
1.38
1.67
SrO
0 – 5
BaO
0 – 5
3.54
1.57
ZnO
0 – 5
Fe2O3
2.22
0.943
FeO
2.84
2.68
Sb2O3
0.14
0.03
Nd2O3
0.6 – 7 of X2O3
7.96
1.61
R2O = Li2O + Na2O + K2O + Cs2O
10 – 30
19.78
RO = MgO + CaO + SrO + BaO + ZnO
0 – 7
3.24
Thus, Tsutsumi teaches a glass composition comprising component molar percentages for the listed components that fall within the recited ranges of the amended claim 16, except for Li2O, where Example 10 of Tsutsumi teaches a value that is close. Tsutsumi is silent as to PbO, CdO, and TeO2, and therefore one of ordinary skill in the art reasonably would conclude that PbO, CdO, and TeO2 are each absent from the glass composition (i.e., the mol% of each is zero). Moreover, Tsutsumi teaches that the glass includes Fe2O3, which functions as a colorant (see Table 2, Example 10; see also ¶ 0018).
However, Tsutsumi does not teach wherein a mole percent of the colorant (Fe2O3) is 50% or less of a mole percent of the X2O3. Example 10 of Tsutsumi comprises 0.943 mol% Fe2O3 and 1.61 mol% Nd2O3, the only component present falling within the category of X2O3 as defined in claim 1 (see above, p. 4; and see Table 2 of Tsutsumi); thus, Tsutsumi teaches a glass composition wherein a mole percent of the colorant (Fe2O3) is 58.6% of a mole percent of the X2O3. Thus, the specific combination of required components set forth in claim 16 is neither taught nor rendered obvious by the prior art of record.
Claims 17-20 depend from claim 16 and therefore necessarily include the allowable subject matter of claim 16. Since claims that depend from an allowable base claim are also allowable over the prior art, claims 17-20 are allowable.
Regarding claim 21, the closest prior art is Tsutsumi, which teaches the glass composition of claim 1, as set forth above. Moreover, Tsutsumi teaches wherein, in some embodiments, the glass composition comprises Pr2O3 (see ¶ 0006; claim 1). However, Tsutsumi teaches that Nd2O3 is an essential component of the glass composition (see ¶ 0011); thus, Tsutsumi teaches away from a glass composition comprising 0 mol% Nd2O3.
Response to Arguments
Applicant’s arguments with respect to the pending claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/P.A.F./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731