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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 16, 2026 has been entered.
Applicants' arguments, filed April 16, 2026, have been fully considered but they are not deemed to be fully persuasive. The following rejections and/or objections constitute the complete set presently being applied to the instant application.
Election/Restrictions
Applicants again assert that claim 33 should be under examination as it is part of elected group I.
While it is true that claim 33 is listed as part of group I, the species election requirement set forth on p 4 of the Requirement for Restriction/Election mailed January 31, 2025 that required election of any materials that the glass is substantially lacking in. Applicants’ election required the material to only be substantially lacking in Li2O and none of the materials specified in claim 33 as being substantially lacking were elected in the response filed March 21, 2025, so claim 33 is properly withdrawn from consideration.
Claim Rejections - 35 USC § 112 – New Matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 24 was rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This new matter rejection is MAINTAINED for the reasons of record set forth herein.
Claim 24 was previously rejected as containing new matter and in response, Applicants have amended claim 24, but this claim still contains new matter.
The mole fractions of each ingredient listed in claim 24 have been amended although all the amounts are still preceded by the word “about”. ¶ [0096] of the PGPub of the instant application discloses a material with a theoretical composition of 0.687 mole fraction of SiO2; 0.163 mole fraction of Na2O; 0.068 mole fraction of BaO; about 0.070 mole fraction of Ta2O5; and about 0.012 mole fraction of B2O3.
As currently presented, all amounts in claim 24 are preceded by the word “about” when only the mole fractions for Ta2O5 and B2O3 in this paragraph are preceded by the word “about” in the disclosure as originally filed. This results in amended claim 24 containing new matter as all of the amounts including those for SiO2, Na2O and BaO are preceded by the word “about”.
The numerical values for SiO2, Na2O and BaO have all been rounded but, for example, “about 0.69 mole fraction SiO2” encompasses the disclosed value of 0.687 but also other values both above and below the value now recited in the claims, which is also new matter.
If Applicant is in disagreement with the Examiner regarding support for the amended claim, Applicant is respectfully requested to point to page and line number wherein support may be found for the instant invention.
Applicants state that while the amounts sum to 1.002, the use of word about implicitly allows for lesser amounts of each component so the claim in not indefinite.
No indefiniteness rejection was made previously when the presence of “about” could result in amounts over 1 mole fraction as higher amounts are also encompassed by this term and no rejection based on the total amount is currently of record.
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 – 8, 12 – 16, 18, 22 – 24, 34, 39 and 45 were rejected under 35 U.S.C. 103 as being unpatentable over Hoescheler et al. (WO 2005/060921) in view of Stark et al. (US 8,658,188). This rejection is MAINTAINED for the reasons of record set forth herein.
Hoescheler et al. discloses a glass filler material with an average particle size of 0.1 – 20 µm (abstract). Glass fillers are used to increase the mechanical properties of plastic polymers and the compositions are useful in areas such as medical applications as joint implants or as dental materials (p 4, ln 24 – 32) with dental composite materials having further requirements relating to properties such as X-ray opacity (p 5, ln 2 – 5). The glass filler material comprises 65 – 99.95 mol% SiO2; 0 – 15 mol% Al2O3 and/or B2O3; 0 – 30 mol% ZrO2, TiO2 and/or HfO2 and/or Y2O3 and/or Sc2O3 and/or La2O3 and/or CeO2 and/or other lanthanioxides; 0.05 – 4 mol% alkali metal oxides (Na2O, Li2O, K2O, Rb2O, Cs2O) and 0 – 25 mol% earth alkali metal oxides (MgO, CaO, Sr, BaO) (p 7, ln 5 – 12) with narrower ranges provided for preferred embodiments on p 7, ln 13 – 30. The best melting temperature depends on the amount of the different ingredients with Al2O3, B2O3 and alkali metal oxides especially helping to decrease the melting temperature of the mixture (p 12, ln 16 – 19). Example 2 in table 1 (p 16) and example 2 in table 2 (p 18) given the broadening of the claimed ranges by the use of the “about” in the instant claims both meet the instant claim limitations for all but Ta2O5. While Li2O is disclosed as a possible ingredient, it is in a list of alternatives and Na2O and K2O can also be used for this element and therefore compositions with less than 0.01 mole fraction Li2O are disclosed. No fluorine containing ingredients are disclosed so the materials comprise less than 0.005 mole fraction fluoride as required by amended claim 1. &&
The presence of Ta2O5 is not disclosed.
Stark et al. discloses nanoparticulates comprising a radiopacifier and a matrix (whole document, e.g., abstract). Suitable uses include advanced dental applications such as dental fillings (abstract), indicating that the materials are suitable for use with medical and dental applications. The matrix of the inventive particles contains, or consists of, oxides of Si, Ca, Na and optionally P with suitable bioactive glasses comprising a matrix of silicon oxide and additional metal oxides (col 4, ln 1 – 6). In addition to the matrix, one or more radiopacifiers are present (col 4, ln 25 onward). Suitable radiopacifiers can be selected from the group consisting of Bi2O3, TaO2, Ta2O5, WO3 [and] BaO (col 4, ln 63 – 65). The amount of radiopacifier may be varied in a broad range and may be determined by routine experimentation and 5 – 50 wt% can be suitable (col 5, ln 12 – 18).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Ta2O5 into the glass fillers disclosed by Hoescheler et al. The person of ordinary skill in the art would have been motivated to make those modifications and reasonably would have expected success because a combination of materials can be used to impart the necessary radiopacity as disclosed by both Hoescheler et al. and Stark et al. The person of ordinary skill in the art can select from the known radiopacifiers and their combinations to provide the desired radiopacity without adversely affecting other properties of the final material based on the amount of such ingredients required to obtain the radiopacity. The amount of a specific ingredient in a composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results based on the desired characteristics such as melting temperature, strength and radiopacity of the final material. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that 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, 227 USPQ 773 (Fed. Cir. 1985) MPEP 2144.05 As stated by Stark et al., one can vary the amount of ingredients such as radiopacifiers and determine them by routine experimentation. There is no evidence of record as to the criticality of the claimed amounts of the various required ingredients.
The recitation “obtained from spherodizing the irregular microparticulate glass material” in claim 39 is a product-by-process recitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) MPEP 2113. There is no evidence that the size and shape of the particles produced by the claimed process are different and non-obvious compared to those rendered obvious by Hoescheler et al. and Stark et al.
The average particle size disclosed by Hoescheler et al. also overlaps with the claimed range and therefore the limitations of claims 34, 39 and 45 are met.
Applicants traverse this rejection on the grounds that the X-ray opacity is explicitly tied to dental composite materials and other uses are only for non-radiopaque fillers and thus would need to be radiopaque and meet other requirements related to the refractive index. The previously presented arguments in the response filed August 6, 2025 would dissuade a skilled person from using Ta2O5 at a mole fraction of 0.05. Substitution of Y2O3 with Ta2O5 is not a simple or predictable modification but a non-trivial perturbation of the glass network that a skilled person would expect to alter multiple interdependent properties. Various aspects of Y2O3 and Ta2O5 are set forth in the remarks as being different from one another with the higher field strength of Ta2O5 meaning it does not behave as a simple compositional substitute for Y2O3 and influences the structure and properties thought multiple non-equivalent mechanism. The proposed substitution implicitly assumes linear compositional additivity which is not valid for multicomponent glasses and given the narrow refractive index range in Hoescheler, one of ordinary skill in the art would expect the addition of even modest amounts of Ta2O5 to increase the refractive index significantly and this could not be compensated for without broader compositional redesign. The paragraph bridging p 11 and 12 of the remarks filed estimates that 5 mol% Ta2O5 addition would increase the refractive index above the range of 1.49 – 1.55 from Hoescheler, producing a glass that was unsatisfactory for its intended purpose.
These arguments are unpersuasive. While there are some citations for some of the information presented, the information consists mainly of conclusions that are not substantiated by a detailed discussion of how the conclusions were arrived at and no attempt has been made to address the statement in the applied prior art as to what is routine. A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton (MPEP 2141(II)(C). There is no implicit assumption as to “linear compositional additivity” in the rejection but that one of ordinary skill, in view of the explicit, implicit and inherent teachings of the applied prior art and their knowledge, would add Ta2O5 to the materials of Hoescheler et al. to impart radiopacity with Stark et al. discloses 5 – 50 wt% and that the amounts of radiopacifiers can be determined by routine experimentation (col 5, ln 12 – 18). The actual result of the calculation is not given, only that it exceeds the refractive index range of 1.49 to 1.55. If the value was close to the upper limit or greatly exceeded that limit cannot be evaluated by the Examiner. Ranges that do not overlap but nevertheless are close to one another are primae facie obvious (see MPEP 2144.05 for more information on obviousness of ranges). Only a reasonable and not an absolute expectation of success is required for a prima facie case of obviousness and the arguments of record have not established the lack of a reasonable expectation of success and the rejection is maintained.
Claim(s) 1 – 8, 12 – 16, 18, 22 – 24 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over George et al. (US 9,263,850).
George et al. discloses Nd-doped silicate based laser glass with a peak emission wavelength long than 1059.7 nm, an emission cross section of ≥ 1.5 x 10-20 cm2 and/or an emission bandwidth of ≥ 28 nm while maintaining glass properties suitable for commercial use such as a low glass transition temperature and low nonlinear index n2 (whole document, e.g., abstract). Disclosed Nd-doped sodium-silicate glass composition 1 includes (from claims 1 and 10, mole percents shown as mole fractions)
SiO2
Na2O
B2O3
Ta2O5
Y2O3
Instant claim 1
0.55-0.85
0.01-0.23
0.05-0.28
0.05-0.12
Up to 0.20
Claim 1
0.4-0.75
0.1-0.35
0-0.20
0.0005-0.15
0.0005-0.20
Claim 10
0.5-0.72
0.1-0.22
0.04-0.20
> 0.0005
> 0.005
Claims 7 and 8, that each depend from claim 1, further limit the ranges for Ta2O5 and Y2O3 to 0.005 – 0.15 mole fraction and 0.005 – 0.20 mole fraction respectively. Li2O is not disclosed as a possible ingredient and therefore the formulations comprise less than 0.01 mole fraction Li2O. Fluorine is not disclosed as a required ingredient in any formulation. While halides, a group that includes fluoride, is disclosed as an optional ingredient to dry the melt or residual water and to help refine the glass (col 11, ln 45 – 47), this is optional and therefore formulations with less than 0.005 mole fraction fluoride are disclosed.
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to optimize within the ranges disclosed by George et al. to prepare a Nd-doped silicate based laser glass. The person of ordinary skill in the art would have been motivated to make those modifications and reasonably would have expected success because the glass disclosed by George et al. as discussed above has ranges for the various ingredient that completely lie within those disclosed or substantially overlap with those of the instant claims. Such ranges are prima facie obvious absent evidence of unexpected results (see MPEP 2144.05). The amount of a specific ingredient in a composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results. “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 Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05. While parameters such as the total of the Y2O3 and Ta2O5 are not specifically calculated by George et al., given the encompassing and overlap of the disclosed ranges for the individual ingredients, optimization of those amounts will necessarily alter these sums and there is no evidence rendering those values critical to unexpected properties of the claimed glass material.
Claim(s) 34, 39 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over George et al. as applied to claims 1 – 8, 12 – 16, 18, 22 – 24 and 34 above, and further in view of Murugan et al. (Optics Letters, 2011).
George et al. is discussed above.
That the glass is in microparticulate form is not disclosed.
Murugan et al. discloses that microsphere resonators have the potential to become key components in photonic circuits, providing feedback, wavelength selectivity, and energy storage to allow dispersion control and enhanced nonlinearity, resonant filtering, and ultralow threshold lasing (p 73, col 1, ¶ 1). Glass host materials such as silica and active dopants such as Nd3+ have been demonstrated with wavelengths from green to the near infrared (p 73, col 1, ¶ 2). 55 µm microspheres were placed directly on top of and coupled to waveguides (p 73, col 2, ¶ 2) to produce laser output (p 73, col 2, ¶ 3).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to prepare microparticles of the Nd-doped silicate laser glass of George et al. The person of ordinary skill in the art would have been motivated to make those modifications and reasonably would have expected success because George et al. discloses that the glass is useful in laser applications and Murugan et al. discloses that glass microspheres can be used for laser applications and can be used in a bulk form or in microsphere form as taught by Murugan et al. for laser applications.
The recitation “obtained from spherodizing the irregular microparticulate glass material” in claim 39 is a product-by-process recitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) MPEP 2113. There is no evidence that microspheres of Murugan et al. are different and non-obvious compared to those produced by the claimed process.
Terminal Disclaimer
The terminal disclaimer filed on April 16, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/038,933 has been reviewed and is accepted. The terminal disclaimer has been recorded. Accordingly, the provisional nonstatutory double patenting rejection based on this Application has been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nissa M Westerberg whose telephone number is (571)270-3532. The examiner can normally be reached M - F 8 am - 4 pm.
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/Nissa M Westerberg/Primary Examiner, Art Unit 1618
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