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 August 27, 2025 has been entered into the prosecution for the application. Currently, claims 1-31 are pending. Claims 29-31 are withdrawn. Claims 1, 3, 14, 15, and 31 have been amended.
All prior art grounds of rejection are withdrawn.
Applicant’s amendments necessitated the new ground(s) of rejection.
Non-Compliant Amendment
Claims 14 and 15 have not been provided with the proper status identifier. Although both claims were amended in the most recently filed reply, the status identifier of both claims reads “Original” rather than “Currently Amended.”
Where an amendment substantially responds to the rejections, objections, or requirements in a non-final Office action (and is a bona fide attempt to advance the application to final action) but contains a minor deficiency (e.g., fails to treat every rejection, objection, or requirement), the examiner may simply act on the amendment and issue a new (non-final or final) Office action (see MPEP 714.03).
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) 1-28 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1714948 A2 to Hayden et al. (hereinafter “Hayden”).
Regarding claim 1, Hayden teaches a glass comprising, in % by weight on an oxide basis: 65–80% of P2O5; 4–20% of Al2O3; 0 to less than 5.5% of B2O3; greater than 2% to 12.5% of Li2O; 0-6% of Na2O; 0–4% of K2O; 0–7.9% of MgO; 0–5% of CaO; 0–5% of SrO; 0–10% of BaO; 0–8% of ZnO; 5–15% of CuO; and 0–0.5% of V2O5, wherein the sum of alkaline-earth metal oxides + ZnO is less than 18% (Abstract, ¶ 0011). Within those taught ranges, one of ordinary skill in the art could readily select component proportions which, when converted to mol%, read on every limitation of claim 1, including the molar ratios Li2O/Rn2O and (Li2O+CuO)/P2O5. For instance, Example CuP-12 from Table 2 of Hayden discloses a glass with a composition summarized in Table A below:
Table A
Component
Claim 1
(mol%)
Hayden, Ex. CuP-12
(Table 2) (wt.%)
Hayden, Ex. CuP-12
(mol%)
P2O5
38 – 65
77.89
60.78
Al2O3
2 – 15
9.88
10.73
CuO
8 – 25
5.59
7.78
Rn2O
5 – 40
3.60
(Li2O 3.24)
(Na2O 0.36)
12.65
(Li2O 12.01)
(Na2O 0.64)
RO
1 – 30
(MgO) 2.91
8.00
V2O5
0 – 3
0
0
B2O3
0 – 5
0
0
Sb2O3
N/A
0.13
0.05
Li2O/Rn2O
0.4 – 1.0
12.01/12.65 =
0.95
(Li2O+CuO)/P2O5
0.3 – 1.2
0.326
Thus, Example CuP-12 of Hayden teaches a glass that reads on every limitation of claim 1, except that the content of CuO (5.59 wt.%, or 7.78 mol%) is slightly below 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). Given the ranges taught by Hayden, one of ordinary skill in the art would have found it obvious to alter some of the proportions—for example, including a small amount of additional CuO and subtracting a corresponding proportion of P2O5, so as to produce a glass with at least 8 mol% CuO, with a molar percentage of P2O5 still well within the recited range of claim 1. 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).
Therefore, in view of Hayden, a glass reading on every limitation of claim 1 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claim 2, Hayden teaches wherein the glass comprises 0 wt.% SiO2 (¶ 0011), which is necessarily within the recited range for SiO2 in claim 2 (0 wt.% and 0 mol% being equivalent).
Regarding claim 3, Hayden teaches a glass comprising, in % by weight on an oxide basis: 65–80% of P2O5; 4–20% of Al2O3; greater than 2% to 12.5% of Li2O; 0-6% of Na2O; 0–4% of K2O; and 5–15% of CuO (Abstract, ¶ 0011). Thus, Hayden teaches a glass comprising the components (P2O5, Al2O3, CuO, and Rn2O) of claim 3. Furthermore, as set forth above in the discussion of claim 1 (see pp. 3-4), Hayden teaches component ranges from which one of ordinary skill in the art would find it obvious to select component proportions which, when converted to mol%, produce molar ratios Li2O/Rn2O and (Li2O+CuO)/P2O5 within the claimed ranges of claim 3; for instance, Example CuP-12 of Hayden discloses component molar ratios such that Li2O/Rn2O is 0.4 to 1.0 and (Li2O+CuO)/P2O5 is 0.3 to 1.2 (Table 2). Hayden teaches that the glass includes 0 to less than 5.5 wt% of B2O3 (¶ 0029)and 5–15 wt% of CuO (¶ 0034); both of these ranges, when expressed in mol%, substantially overlap the claimed ranges for these components in claim 3.
Hayden does not explicitly recite that the glass of Example CuP-12 has an upper limit temperature of crystallization of 1050°C or lower. However, given the substantial overlap in compositional ranges between the glass of Example CuP-12 in Hayden and the glass of the claimed invention (compare the example glasses in Tables 1-3 of the Specification, pp. 18-20), one of ordinary skill in the art would reasonably expect that the glass disclosed by Hayden would, like the example glasses of the claimed invention, exhibit an upper limit temperature of crystallization of 1050°C or lower, 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 either anticipation or obviousness has been established (see MPEP 2112.01(I), first paragraph).
Regarding claims 4 and 6, Hayden teaches wherein the glass comprises 4 to 20 wt% Al2O3 (¶ 0028). Within that taught range, one of ordinary skill in the art would have found it obvious to select a content of Al2O3 falling within the claimed ranges; for instance, Example CuP-12 comprises 10.73 mol% Al2O3 (see Table A above), which is within the range of 5 to 13 mol% Al2O3 recited in claim 4 and within the range of 6 to 11 mol% Al2O3 recited in claim 6.
Regarding claims 5 and 7, Hayden teaches the glass wherein Li2O/Rn2O is 0.95 (Example CuP-12; see Table A above), which is within the recited range of 0.5 to 1.0 of claim 5 and within the recited range of 0.7 to 1.0 of claim 5. Further, Hayden teaches the glass wherein Na2O + K2O = 0.64 + 0 = 0.64 mol% (Example CuP-12; see Table A above), which is within the range of 10% or less of claim 5 and within the range of 8% or less of claim 7.
Regarding claim 8, Hayden teaches the glass wherein Li2O/Rn2O is 0.95 (Example CuP-12; see Table A above), which is within the recited range of 0.8 to 1.0 of claim 8.
Regarding claim 9, Hayden teaches the glass comprising 0.64 mol% Na2O, 0 mol% K2O, 8.00 mol% MgO, and 0 mol% of CaO, SrO, and BaO (Example CuP-12, p. 8, Table 2), all of which proportions fall within the recited ranges of claim 9.
Regarding claim 10, Hayden teaches the glass comprising 0.64 mol% Na2O, 0 mol% K2O, 8.00 mol% MgO, and 0 mol% of CaO and SrO (Example CuP-12, p. 8, Table 2), all of which proportions fall within the recited ranges of claim 10.
Regarding claim 11, Hayden teaches the glass comprising 0 wt.% F (¶ 0012), which is necessarily within the recited range for F in claim 11 (0 wt.% and 0 mol% being equivalent).
Regarding claim 12, Hayden teaches the glass wherein a density ρ is 2.651 g/cm3 (Example CuP-12, p. 9, Table 3), which is within the recited range of claim 12. Further, Hayden teaches the glass wherein a transition temperature Tg is 459°C (Example CuP-12, p. 9, Table 3), which is within the recited range of claim 12.
Regarding claim 13, Hayden teaches the glass wherein a density ρ is 2.651 g/cm3 (Example CuP-12, p. 9, Table 3), which is within the recited range of claim 13. Further, Hayden teaches that the coefficient of thermal expansion of the glass is most preferably less than 90x10-7/K (¶ 0046). (Although Hayden measures coefficient of thermal expansion over a range of 20-300°C, rather than 20-120°C as in claim 13, based on the data in Hayden, one of ordinary skill in the art would reasonably expect that the coefficient of thermal expansion in Hayden, if measured over the same range as in claim 13, would still be less than 90x10-7/K.)
Regarding claim 14, Hayden teaches a glass product (¶ 0013) comprising the following components, in % by weight on an oxide basis: 65–80% of P2O5; 4–20% of Al2O3; 0 to less than 5.5% of B2O3; greater than 2% to 12.5% of Li2O; 0-6% of Na2O; 0–4% of K2O; 0–7.9% of MgO; 0–2.5% of CaO; 0–2.5% of SrO; 0–2.5% of BaO; 0–8% of ZnO; 5–15% of CuO; and 0–0.5% of V2O5, wherein the sum of alkaline-earth metal oxides + ZnO is less than 18% (¶ 0013). Within those taught ranges, one of ordinary skill in the art could readily select component proportions which, when converted to mol%, read on every limitation of claim 14. For instance, Example CuP-12 from Table 2 of Hayden discloses a glass with a composition summarized in Table B below:
Table B
Component
Claim 14
(mol%)
Hayden, Ex. CuP-12
(Table 2) (wt.%)
Hayden, Ex. CuP-12
(mol%)
P2O5
38 – 65
77.89
60.78
Al2O3
2 – 15
9.88
10.73
CuO
8 – 25
5.59
7.78
Rn2O
5 – 40
3.60
(Li2O 3.24)
(Na2O 0.36)
12.65
(Li2O 12.01)
(Na2O 0.64)
RO
1 – 30
(MgO) 2.91
8.00
B2O3
0 – 5
0
0
V2O5
0 – 3
0
0
Sb2O3
N/A
0.13
0.05
Li2O/Rn2O
0.4 – 1.0
12.01/12.65 =
0.95
(Li2O+CuO)/P2O5
0.3 – 1.2
0.326
Thus, Example CuP-12 of Hayden teaches a glass composition for a glass product that reads on every limitation of claim 14, except that the molar percentage of CuO is slightly below 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).
Further, given the ranges taught by Hayden, one of ordinary skill in the art would have found it obvious to alter some of the proportions—for example, including a small amount of additional CuO and subtracting a corresponding proportion of P2O5, so as to produce a glass with at least 8 mol% CuO, with a molar percentage of P2O5 still well within the recited range of claim 14. 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). Therefore, in view of Hayden, a glass product reading on every limitation of claim 14 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claim 15, Hayden teaches the glass product wherein the glass comprises 0 wt.% SiO2 (¶ 0011), which is necessarily within the recited range for SiO2 in claim 15 (0 wt.% and 0 mol% being equivalent).
Regarding claims 16 and 18, Hayden teaches the glass product wherein the glass comprises 10.73 mol% Al2O3 (Example CuP-12; see Table B above), which is within the range of 5 to 13 mol% Al2O3 recited in claim 16 and within the range of 6 to 11 mol% Al2O3 recited in claim 18.
Regarding claims 17 and 19, Hayden teaches the glass product wherein Li2O/Rn2O is 0.95 (Example CuP-12; see Table B above), which is within the recited range of 0.5 to 1.0 of claim 17 and within the recited range of 0.7 to 1.0 of claim 19. Further, Hayden teaches the glass wherein Na2O + K2O = 0.64 + 0 = 0.64 mol% (Example CuP-12; see Table B above), which is within the range of 10% or less of claim 17 and within the range of 8% or less of claim 19.
Regarding claim 20, Hayden teaches the glass product wherein Li2O/Rn2O is 0.95 (Example CuP-12; see Table B above), which is within the recited range of 0.8 to 1.0 of claim 20.
Regarding claim 21, Hayden teaches the glass product comprising 0.64 mol% Na2O, 0 mol% K2O, 8.00 mol% MgO, and 0 mol% of CaO, SrO, and BaO (Example CuP-12, p. 8, Table 2), all of which proportions fall within the recited ranges of claim 21.
Regarding claim 22, Hayden teaches the glass product comprising 0.64 mol% Na2O, 0 mol% K2O, 8.00 mol% MgO, and 0 mol% of CaO and SrO (Example CuP-12, p. 8, Table 2), all of which proportions fall within the recited ranges of claim 22.
Regarding claim 23, Hayden teaches the glass product comprising 0 wt.% F (¶ 0012), which is necessarily within the claimed range for F (0 wt.% and 0 mol% being equivalent).
Regarding claim 24, Hayden teaches the glass product wherein a density ρ is 2.651 g/cm3 (Example CuP-12, p. 9, Table 3), which is within the recited range of claim 12. Further, Hayden teaches the glass product wherein a transition temperature Tg is 459°C (Example CuP-12, p. 9, Table 3), which is within the recited range of claim 24.
Regarding claim 25, Hayden teaches the glass product wherein a density ρ is 2.651 g/cm3 (Example CuP-12, p. 9, Table 3), which is within the recited range of claim 25.
Regarding claim 26, Hayden teaches a glass element containing the glass according to claim 1 (see ¶ 0013, teaching a goggle containing the glass as a lens).
Regarding claim 27, Hayden teaches an optical filter containing the glass according to claim 1 (see ¶ 0013, teaching a goggle containing the glass as a lens and teaching a graduated filter containing the glass; see also ¶ 0006).
Regarding claim 28, Hayden teaches a device containing the glass according to claim 1 (see ¶ 0013, teaching a color video camera containing the glass as a color correction filter).
Response to Arguments
Applicant's arguments filed August 27, 2025 have been fully considered but they are not persuasive.
Applicant argues that Hayden teaches away from the claimed subject matter, in so far as Hayden allegedly teaches a CuO content below the claimed range in claims 1, 3, and 14 (see Applicant’s Remarks submitted with the reply filed August 27, 2025, hereinafter “Remarks,” at p. 10). Applicant points out, accurately, that all of the described examples in Hayden have a CuO content of 6.04 wt% or less (see Remarks at p. 10, and see Hayden, Table 2, pp. 7-8). However, the teaching of Hayden is not limited to the specific example glasses. Hayden teaches more generally that higher CuO content values are possible and are embraced by the scope of the disclosure:
The CuO content is, for example, 5 to 7.5 wt% (for example, 5 to 6.5 wt %, to provide absorption in the infrared range. However, higher contents of CuO are also possible. Thus, the CuO content can be 5-15 wt. %, e.g., 5-12 % or 5-10.5 %.
(Hayden at ¶ 0034.) Thus, Hayden teaches a general range of CuO content that can be from 5 wt% to 15 wt%. One of ordinary skill in the art would have found it obvious to select a CuO content from any point within the taught range of Hayden. A prior art reference is prior art for all that it teaches (MPEP 2121.01). “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (MPEP 2123). Here, the fact that Hayden discloses examples with CuO content falling outside the claimed range does not constitute a teaching away from Hayden’s broader teaching of a CuO content range that substantially overlaps the claimed range.
Applicant also notes that claim 1 requires specific molar ratios for Li2O/Rn2O and (Li2O+CuO)/P2O5 (as do independent claims 3 and 14), and Applicant submits that Hayden “neither discloses nor suggests these ratios” (Remarks at p. 10). However, as noted above (see pp. 3-4), Hayden teaches a specific embodiment (CuP-12) which exhibits molar ratios for Li2O/Rn2O = 0.95 and (Li2O+CuO)/P2O5 = 0.326; that is, molar ratios falling within the claimed ranges. Therefore, one of ordinary skill in the art, following the teachings of Hayden, would have found it obvious to produce a glass having molar ratios within the claimed ranges. Applicant urges that Hayden does not “address crystallization resistance as a technical concern” and does not teach Applicant’s recited crystallization resistance values as an advantageous result of the above-discussed molar ratios (Remarks at p. 10). However, if a glass possessing the claimed molar ratios is obvious in view of the cited art (as set forth above), then the fact that Applicant has recognized a previously unrecognized advantage flowing from the glass possessing those molar ratios is not sufficient to render the claimed glass nonobvious. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979); MPEP 2145(II).
Applicant’s other 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
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
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