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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 9, 2025 has been entered.
Claim Rejections - 35 USC § 112
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.
Claims 1-4, 6-10 and 12 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.
Applicants claims now recite 1.14% to 2.4% of the Ta2O5 in mol% and Applicants specification as originally filed does not clearly support this in combination with the rest of the ranges allowed for by the claims.
Initially, nowhere in Applicants’ original disclosure is the above mol% range mentioned. Additionally, while the Office does acknowledge that Applicants point to their Examples within their specification in an attempt to provide the support for the Ta2O5 mol % range (note Example 22 converts to 1.14mol% and Example 5 converts to 2.41mol%), note that the Examples include very specific compositions and oxide content combinations which are much more specific and narrower than the composition and ranges currently allowed for by the claims. This is simply not enough to support that Applicants had possession of the now recited mol% range in combination with the entirety of the much broader ranges/compositions claimed.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-4, 6-10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Momono (USPub20160355434).
Regarding claims 1-4, 6-10 and 12: Momono teaches crystallized glass having a composition in mol% (see compositions of Momono’s claims 1, 7 and 8 for instance) that allow for, when converted to mass%, compositions overlapping that required by claims 1-4 providing for a prima facie case of obviousness (MPEP 2144.05).
For instance, Momono’s mol% taught ranges allow for compositions such as that shown in the middle column below which converts to the following wt% values
Taught mol% ranges
Mol%
Wt% (approx.)
SiO2
30-70
43
32.63
Al2O3
8-25
18
23.22
Na2O (Rn2O)
0-25
10
7.84
MgO
0-25
5
2.53
TiO2
0-10
2
2.02
ZnO
0-30
20
20.58
Ta2O5
0-5
2
11.18
Al2O3/(MgO+ZnO)
0.5-2
18/5+20=0.72
MgO+ZnO+Ta2O5
34.29
ZnO+Ta2O5
31.76
Momono also teaches their crystallized glasses being strengthened to form a compressive stress layer in the surface (see 0137-0138) as required by claims 7-10 and 12.
While they may not explicitly disclose the index or specific gravity of the crystallized glass as required by claims 1 and 6, Momono’s crystallized glass above meets that claimed. Additionally, Applicants suggest that their crystallized glasses can be made by a two-stage heating treatment with a first step of heating to 600-750oC for 30min-2000min and then heating to 650-850oC for 30-600min (see specification oar 0038) and Momono teaches their glasses being made by a two-stage heating at similar temperatures and durations (see Tables).
Further, Applicants disclose that their glass is strengthened with a one stage treatment with salt of KNO3, NaNO3 or mixture thereof at 350-550oC for 1-1440min (see specification par 0041-0043) or even heating at 300-600oC (see specification par 0043) which is substantially similar to Momono strengthening with KNO3, NaNO3 or mixture thereon of 350-500oC at 0.1-12hours (see par 0138) or heating at 300-600oC (par 0140).
Given the similarities, one having ordinary skill would reasonably conclude the same resulting index and gravity properties (MPEP 2112).
Response to Arguments
Applicant's arguments filed October 9, 2025 have been fully considered but they are not persuasive.
Initially, Applicants argue that Momono does not disclose any specific Examples wherein the content of Ta2O5 falls within the mol% range now claimed.
This is not persuasive as it has been held by the courts that a reference is not limited to their Examples but instead, what it teaches as a whole. In the instant case, as discussed in the Office Action, Momono as a whole does teach compositions that allow for overlap with that presently claimed providing a prima facie case of obviousness (MPEP 2144.05).
Applicants argue that setting the Ta2O5 content within the claimed range and setting the contents of the claimed components to that of the claimed ranges achieves high refractive index and Vicker’s hardness which is nowhere taught in Momono but this is not persuasive.
Although Momono may does explicitly disclose the effect set to be achieved by Applicants, Momono does not have to. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In the instance Applicants are attempting to argued unexpected results, the following is noted.
Initially, relying on Applicants’ Example compositions provided in their specification in an attempt to support unexpected results, it is noted that the Example compositions are not persuasive as they are commensurate in scope with the claimed invention. For instance, the Examples all include other oxides which are not even required by claim 1 (i.e. CaO, TiO2, Sb2O3, etc.). Note that whether the unexpected results are the result of unexpectedly improved result 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."
Further, a 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). In the instant case, the Examples do not show the entirety of the ranges allowed for by the claims. For Example, the lowest Ta2O5 content in the Examples in which Ta2O5 is included is 7.41mass% with the highest being 14mass% but the claimed range is 5-20mass%, the lowest SiO2 is 30.72mass% with the highest being 39.42mass% but the claimed range is much broader beginning at 20% and ending at less than 40%, all of the Examples include ZnO with the smallest content being 11% with the greatest being 36.2% which is much narrower than the claimed 0-45%, all the MgO+ZnO+Ta2O5 sums are >25mass% wherein the claim is broader at 15% or more, etc. As such, regardless of whether or not the Example compositions are argued to have some new and unexpected benefit, the Examples themselves are not enough to support that such benefit would be achieved over the entirety of the claimed ranges.
Additionally, note 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 only provide one singular comparative Example having contents outside the claimed ranges which is not enough. Initially, the Examiner notes that the one comparative Example does not appear to be close enough to any of the inventive Examples to determine which oxides and contents specifically are truly critical.
Further, note that the one comparative Example includes contents such as 53.49mass% SiO2 which although outside the upper end of the claimed 20-40mass%, there is no comparative showing below the range end point of 20mass% claimed. Even further, while the 53.49mass% may be outside the upper end point, it is far outside the claimed end point instead of closer to the “less than 40mass%” end point to determine whether anything is really critical about the claimed range. Also note that Applicants arguing that the claimed composition provides for higher index and higher vicker’s hardness, however, there does not appear to be anything truly unexpected about this when relying upon Applicants’ one comparative Example compared to the claimed composition. Note that the comparative Example has a much high SiO2 content than that claimed and due to SiO2 being a known lower index material and the known hardness properties of SiO2, one skilled in the art would readily expect a lower SiO2 content composition to high higher index and hardness. Where unexpected properties of a claimed invention are not shown to have a significance equal to or greater than the expected properties, evidence unexpected properties may not be sufficient to rebut the evidence of obviousness. In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977).
Even further, Applicants arguing that setting the Ta2O5 content within the claimed range is critical for high index and high hardness, however, initially note that Applicants’ Tables in their specification show Inventive Examples such as Examples 31-33 which do not include any Ta2O5 but are still above to achieve high index of 1.55 or more as claimed and still have a hardness greater than that of the one comparative Example. As such, there does not appear to be anything critical about including Ta2O5 let alone in a content of more than 5%-20mass% Ta2O5 as claimed in achieving those properties. Also, as mentioned previously the lowest Ta2O5 content in the Examples in which Ta2O5 is included is 7.41mass% with the highest being 14mass% but the claimed range is 5-20mass%. There is simply nothing clearly showing criticality with including 5mass% Ta2O5 or even 20mass% Ta2O5 in achieving the argued effects.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784