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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis 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.
Status of the Claims
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Claims 2-7, 9-12, 14-16, 18, and 19 are currently pending.
Claims 2-7, 9-12, and 14-16 have been withdrawn.
Claims 1, 8, 13, and 17 have been cancelled.
Claims 18 and 19 are currently rejected.
Claims 18 and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Aitken et al., International Patent Publication WO 2015/073282 A1.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The original drawings received on 3 March 2022 are accepted by the Examiner.
Claim Comment
Claims 9 and 14 have claim status indicators as “Previously presented”, however the label should read “withdrawn” since the claims are withdrawn.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 18 and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Aitken et al., International Patent Publication WO 2015/073282 A1.
Aitken et al. teach an IR transparent glass (see paragraph [0011]) comprising in terms of mol%, 50-95% of GeX, 0.5-35% of Ga2X3 or In2X3, and 0.5-40% of RX, where X is Se, S, Te, or combinations thereof, and R is an alkaline earth metal. See Abstract and the entire specification, specifically, paragraph [0005]. Aitken et al. teach Examples which have compositions falling within the following atomic % ranges (mole%): 1.32-14.13% of Ba, 3.06-13.70% of Ga, 17.49-34.72% of Ge, and 51.9-68.25% of Se. See Tables 1-3. Aitken et al. teach that if the germanium chalcogenide glass contains multiple chalcogenides at least 50% of the chalcogenides is Se and the glass further comprises S , Te, or combinations thereof. See paragraph [0012].
Aitken et al. fail to teach any examples or compositional ranges in the terms of elemental mol% that are sufficiently specific to anticipate the compositional limitations of claims 18, and 19. However, the mol% ranges of the Examples taught by Aitken et al. and the teaching that the glass can further comprise Te or S (as recited in paragraph [0012]) one of ordinary skill in the art would expect the glass of Aitken et al. would have overlapping compositional ranges with instant claims 18 and 19. See paragraphs [0005], [0011], and [0012] and Tables 1-3. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Aitken et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Aitken et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. Furthermore, Aitken et al. specifically teaches that more than 1 chalcogenide may be included as long as at least 50% of the chalcogenides present is in the form of Se. See paragraph [0011]. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“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 Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Specifically, as to claim 18, Aitken et al. teach an IR transparent glass (see paragraph [0011]) comprising in terms of mol%, 50-95% of GeX, 0.5-35% of Ga2X3 or In2X3, and 0.5-40% of RX, where X is Se, S, Te, or combinations thereof, and R is an alkaline earth metal and further exemplifies ranges of 1.32-14.13% of Ba, 3.06-13.70% of Ga, 17.49-34.72% of Ge, and 51.9-68.25% of Se and Aitken et al. teach the addition of Te in addition to Se (see paragraphs [0005], [0011] and [0012] and Tables 1-3), which reads on the glass comprising in mol%: 22.5-46.875% of Ge, 1.875-12.5% of Ga, 43-69% of Se, and 1-7 % of Te, as recited in instant claim 18.
Since the composition of the reference is the same as those claimed herein, it follows that the glasses of Aitken et al. would inherently possess the intended use for a glass transmitting an infrared wavelength band of light by 60% or more, having a hardness of 170HK or more, and a refractive index of 2.5 or more, as recited in claim 18. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 15, since the composition of the reference is the same as those claimed herein it follows that the glasses of Aitken would inherently possess a ratio of the refractive index/specific gravity of 0.48-0.60, as recited in claim 15. See MPEP 2112.
Specifically, as to claim 19, Aitken et al. teach an IR transparent glass (see paragraph [0011]) comprising in terms of mol%, 50-95% of GeX, 0.5-35% of Ga2X3 or In2X3, and 0.5-40% of RX, where X is Se, S, Te, or combinations thereof, and R is an alkaline earth metal and further exemplifies ranges of 1.32-14.13% of Ba, 3.06-13.70% of Ga, 17.49-34.72% of Ge, and 51.9-68.25% of Se and Aitken et al. teach the addition of Te in addition to Se (see paragraphs [0005], [0011] and [0012] and Tables 1-3), which reads on the glass comprising in mol%: 22.5-46.875% of Ge, 1.875-12.5% of Ga, 10-57.5% of Se, and 2.5-50% of S, as recited in instant claim 19.
Since the composition of the reference is the same as those claimed herein, it follows that the glasses of Aitken et al. would inherently possess the intended use for a glass transmitting an infrared wavelength band, having a hardness of 175HK or more, and a refractive index of 2.45 or more, as recited in claim 18. See MPEP 2112.
Response to Arguments
Applicant's arguments filed 24 November 2025 have been fully considered but they are not persuasive.
As to claim 18, Applicant argues that the glass of Aitken et al. comprises an alkaline earth metal as an essential component, whereas the instant claim does not include an alkaline earth. This is not found persuasive since the instant claim uses the open claim language of “comprises” , which allows for additional components even in large amounts. Therefore, claim 18 does not exclude the addition of an alkaline earth metal to the glass composition. Applicant further argues that a Ba-Ge-Ga-Se-Te glass of claim 18 does not have the IR transmittance, harness, and refractive index. This is not deemed persuasive since arguments cannot take the place of evidence in the record to overcome a rejection. See MPEP 2145.
As to claim 19, Applicant argues that the glass of Aitken et al. comprises an alkaline earth metal as an essential component, whereas the instant claim does not include an alkaline earth. This is not found persuasive since the instant claim uses the open claim language of “comprises” , which allows for additional components even in large amounts. Therefore, claim 19 does not exclude the addition of an alkaline earth metal to the glass composition. Applicant further argues that a Ba-Ge-Ga-Se-S glass of claim 19 does not have harness and refractive index. This is not deemed persuasive since arguments cannot take the place of evidence in the record to overcome a rejection. See MPEP 2145.
Applicant further argues that the S content of claim 19 can be increased from 2.5-50 mol% and the Se content of 10-57.5 mol%, Applicant argues that Aitken et al. states that if S or Te is included the amount of Se must remain at least 50% as stated in paragraph [0012]. This is not found persuasive since claim 19 recites the Se content is 10-57.5 mol% which overlaps at least 50% of Se as recited by Aitken et al.
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 Elizabeth A. Bolden whose telephone number is (571)272-1363. The examiner can normally be reached 10:00 am to 6:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
27 January 2026