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 .
Response to Amendment
The reply filed on June 17, 2025 has been entered into the prosecution for the application. Currently, claims 1-4 are pending. Claims 1, 3, and 4 have been amended.
All prior art grounds of rejection are withdrawn.
Applicant’s amendments necessitated the new ground(s) of rejection.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art.
The term “containing,” appearing in claims 1, 3, and 4, is treated as indicating an open construction, functionally equivalent to “comprising” or “including.”
Claim Rejections - 35 USC § 103
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 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over DE 4119380 A1 to Morimoto et al. (with reference to the previously provided machine translation, hereinafter “Morimoto”).
Regarding claim 1, Morimoto teaches a method for producing a porous glass member (¶¶ 0001, 0002), the method comprising the steps of subjecting a glass base material (i.e., “mother glass”) to thermal treatment to separate the glass base material into two phases (¶¶ 0018, 0022, teaching use of heat treatment to separate the glass base material into an SiO2-rich phase and a phase rich in B2O3 and Na2O) and removing one of the two phases with an acid (¶ 0022, teaching use of H2SO4 acid solution to remove the B2O3-Na2O phase). Morimoto teaches the glass base material containing 50 to 70 wt.% SiO2, 20-30 wt.% B2O3, 0 to 5 wt.% P2O5, 0 to 10 wt.% ZrO2, 0 to 5 wt.% Al2O3, and 3 to 10 wt.% of at least one metal oxide selected from the group consisting of Na2O, K2O, and Li2O (Abstract). Within those taught ranges, one of ordinary skill in the art would have found it obvious to select proportions of components that would read on the recited ranges of claim 1 as amended. For instance, the glass base material of Example 4 of Morimoto possesses the component proportions summarized in Table A:
Table A
Component
Claim 1 (mole %)
Example 4 (Table 1, p. 7) (wt.%)
Example 4 (mole %)
SiO2
40 to 80
65.2
69.0
B2O3
over 0 to 40
29.1
26.6
Li2O
0 to 20
0
0
Na2O
0 to 20
3.2
3.3
K2O
0 to 20
0
0
P2O5
over 0 to 0.4
1.4
0.63
ZrO2
over 0 to 20
1.1
0.57
Al2O3
0 to 10
0
0
RO
0 to 20
0
0
Thus, Example 4 of Morimoto teaches a glass base material in which all proportion components fall within the claimed ranges, except for P2O5, which has a molar percentage that is close to the upper bound of the claimed range. 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). Since the general teachings of Morimoto teach that the proportion of P2O5 may be anywhere in the range of 0 to 5 weight % (see Abstract), it would have been obvious to one of ordinary skill in the art to select a proportion of P2O5 such that the molar percentage of P2O5 falls within the claimed range.
Regarding claim 3, Morimoto teaches glass base material containing 50 to 70 wt.% SiO2, 20-30 wt.% B2O3, 0 to 5 wt.% P2O5, 0 to 10 wt.% ZrO2, 0 to 5 wt.% Al2O3, and 3 to 10 wt.% of at least one metal oxide selected from the group consisting of Na2O, K2O, and Li2O (Abstract). Within those taught ranges, one of ordinary skill in the art would have found it obvious to select proportions of components that would read on the recited ranges of claim 1 as amended. For instance, the glass base material of Example 4 of Morimoto possesses the component proportions summarized in Table A above. Example 4 of Morimoto teaches a glass base material in which all proportion components fall within the claimed ranges, except for P2O5, which has a molar percentage that is close to the upper bound of the claimed range. 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). Since the general teachings of Morimoto teach that the proportion of P2O5 may be anywhere in the range of 0 to 5 weight % (see Abstract), it would have been obvious to one of ordinary skill in the art to select a proportion of P2O5 such that the molar percentage of P2O5 falls within the claimed range. For all of the components of the glass base material of claim 3, then, Morimoto teaches component ranges which, if expressed in molar percentages, substantially overlap or lie within the claimed ranges. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Morimoto in view of JP 2019163198 A to Tsujiguchi (with reference to the previously provided machine translation, hereinafter “Tsujiguchi”).
Regarding claim 2, Morimoto teaches a method for producing a porous glass member according to claim 1, as detailed above (see pp. 3-4). However, Morimoto does not explicitly teach wherein the glass base material has an aspect ratio of 2 to 1000.
Tsujiguchi, in the same field of endeavor, teaches a method for producing a porous glass member (Abstract). Tsujiguchi teaches that the glass base material preferably has an aspect ratio of 2 to 1000 (¶ 0032). Tsujiguchi teaches that if the aspect ratio is too small (e.g., less than 2), then the process of removing the boron oxide-rich phase with acid causes a large difference in the removal rate of the boron oxide-rich phase between the surface and the inside of the glass base material, producing a porous glass member that is more likely to crack (¶ 0032). Tsujiguchi further teaches that if the aspect ratio is too large (e.g., greater than 1000), then handling of the glass base material becomes difficult (¶ 0032).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Morimoto to incorporate the teaching of Tsujiguchi such that the glass base material has an aspect ratio of 2 to 1000. One would have been motivated to do so by a desire to have a glass base material that is not difficult to handle while still producing a porous glass member that is not too likely to crack (Tsujiguchi ¶ 0032).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Morimoto to incorporate the teaching of Tsujiguchi such that the glass base material has an aspect ratio of 2 to 1000, thereby arriving at a method reading on every limitation of claim 2.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. 2014/0120297 to Reinshagen et al. (hereinafter “Reinshagen”).
Regarding claim 4, Reinshagen teaches a porous glass member (a dental blank “which consists entirely of porous glass,” Abstract) containing, in terms of % by mass, the components listed in the Table B below:
Table B
Component
Claim 4 (mass %)
Reinshagen (¶ 0018; claim 5) (mass %)
SiO2
50 to 99
55 to 80
Na2O
0 to 15
3 to 13
K2O
0 to 10
3 to 10
P2O5
over 0 to 1.9
0 to 1
ZrO2
over 0 to 30
0 to 8
Al2O3
over 0 to 20
7 to 23
RO
0 to 20
-
Thus, Reinshagen teaches a porous glass member with component ranges for all components that lie within or substantially overlap the claimed ranges in claim 4. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Response to Arguments
Applicant’s arguments filed June 17, 2025 have been fully considered but are not persuasive.
Applicant states, on page 6 of the Remarks submitted with the Amendment filed June 17, 2025 (hereinafter “Remarks”):
In anticipation of the Examiner considering rejecting Applicant’s claim 1, claim 3, or claim 4 under 35 U.S.C. § 103 as allegedly being obvious over Morimoto, Applicant notes that one having ordinary skill in the art at the time of Applicant's invention would not have had any reason or motivation to modify the embodiments or features of Morimoto to include all of the method steps and features recited in Applicant's claim 1, or all of the features recited in Applicant's claims 3 and 4, because there would have been no reason or motivation to explain why providing such a composition or performing such method steps would have been beneficial or otherwise desirable.
In reply to this, the Examiner would note that the new grounds of rejection under Section 103 rest principally on general ranges taught by Morimoto, and on Example 4 of Morimoto, neither of which were discussed in the previous Office Action. Applicant urges that one having ordinary skill in the art “would not have had any reason or motivation to modify the embodiments or features of Morimoto” to arrive at the inventions claimed in claims 1 and 3 (see Remarks at p. 6; emphasis added). However, the present rejection of the amended claims 1 and 3 under Morimoto does not depend on a modification of previously cited embodiments disclosed by Morimoto; the general ranges taught by Morimoto overlap and read on the claimed subject matter. A prior art reference is prior art for all that it teaches (MPEP 2121.01), and thus the teaching of Morimoto is not limited to Examples 1 and 2 disclosed in that reference. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (MPEP 2123). As noted above (see pp. 3-5), the broader disclosure of Morimoto teaches component ranges which, if expressed in molar percentages, substantially overlap or lie within the claimed ranges for both claim 1 and claim 3.
Applicant’s remaining arguments with respect to claim(s) 1-4 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
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.
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/P.A.F./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731