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 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 12/11/2025 has been entered.
This action is responsive to Applicant’s request for continued examination and amendment/remarks filed 12/11/2025.
Claims 1-16 are currently pending.
Response to Amendment
The addition of the limitation "the glass composition contains no TiO2" to independent claim 1 is noted. Upon careful consideration of the original disclosure, the Office notes the original disclosure has sufficient written description for the newly added "the glass composition contains no TiO2" exclusionary limitation. While the limitation does not have literal in haec verba basis in the original disclosure, [0036] of the specification discloses it is preferred that the glass composition "does not substantially contain components having the above-described transitional metals" where Ti is listed, indicating Ti compounds may be excluded from the claimed invention. Additionally, the comparative showing in the specification has comparative examples outside the claimed invention expressly including TiO2 (see Comparative Examples 1 & 2 in Table 2) and inventive examples completely lacking TiO2 (see Examples 1 to 14 in Table 1). In view of these disclosures, the original disclosure has sufficient written description basis for the newly added TiO2 exclusionary limitation.
However, other amendments to the independent claim (the limitation pertaining to “the glass consists only of …” in the context of the entire claim) renders the claim indefinite. See the new 112(b) rejection and the interpretation of the indefinite limitations, below.
The rejection of claims 1-16 under 35 U.S.C. 103 as being unpatentable over Izumitani et al. (US 3,958,999 A) is withdrawn in view of the above amendment and arguments. Note the claims are interpreted as being closed to the recited components (see below). While Izumitani et al. teach a ThO2-free B2O3-La2O3--Gd2O3-Ta2O5-based glass composition (abstract), Izumitani et al. teach and require a content of 2-60 wt.% ZnO + CdO + PbO + BaO + SrO + CaO + MgO, i.e., divalent metal oxide(s), in their glass in order to obtain devitrification stability (col. 2 lines 27-29 and col. 2 line 66 to col. 3 line 12). See also Applicant’s arguments to Izumitani et al. in the present response. So long as the claim is actually closed to the recited ingredients (consists of the recited with a ratio/concentration of impurity components of 0.2 mass% or less), the claims are patentably distinguished over Izumitani et al. Izumitani et al.’s required divalent metal oxide(s) are excluded by the closed language of the claims and exceed the concentration/impurity content permitted by the claim, and there is no reason or motivation to lower Izumitani et al.’s required divalent metal oxide(s) concentration(s) without rendering the reference unsatisfactory for its intended purpose.
The rejection of claims 1-16 under 35 U.S.C. 103 as being unpatentable over Fu (JP 2008-088021 A) of record is maintained and has been revised below to reflect the changes in claim scope made by Applicant’s present claim amendments.
The rejection of claims 1-16 under 35 U.S.C. 103 as being unpatentable over Momono (JP 2012-166962 A) of record is maintained and has been revised below to reflect the changes in claim scope made by Applicant’s present claim amendments.
The current rejection also utilizes a new reference, Fu (WO 2007/077581 A1), under a new ground(s) of rejection which renders obvious the instant claims. See the new 103 rejection over the new Fu reference, below.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites “An X-ray shielding glass composition comprising:” followed by a list of components including B2O3, La2O3, Gd2O3, WO3, SiO2, ZrO2, Nb2O5, Ta2O5, BiO3, CeO2, and Sb2O3 and later recites a limitation that “the glass composition consists only of B2O3, La2O3, Gd2O3, and WO3 as essential components and optionally one or more components selected from SiO2, ZrO2, Nb2O5, Ta2O5, BiO3, CeO2, and Sb2O3, with a ratio of impurity components of 0.2 mass or less”. The transitional term "comprising" as recited at the beginning of the claim is inclusive or open-ended and does not exclude additional, unrecited elements or components. However, the transitional phrase "consists only of", i.e., "consisting of", as recited later in the claim is exclusionary and closed ended and excludes any element, ingredient, or component not specified in the claim. See MPEP 2111.03.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the above two differing aspects of the claim renders the open “comprising” list of components a broad limitation and the closed “consists only of” list of the same components a narrower statement of the broad limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Also in claim 1, it is unclear what is meant by “a ratio of impurity components of 0.2 mass or less”. Specifically, the basis of the range “0.2 mass or less” is unclear. Is this a ratio a mass of a multiple/amount of 0.2 or less of the composition (i.e., the number 0.2 in decimal form equals 20% in percent form, meaning 20% or less of the composition) or a typo for a mass of 0.2 percent (%) or less? It is noted the specification states, regarding impurity components, “the ratio of the impurity components is 0.2 mass% or less” stating the basis of this impurity component range is mass percent but please note that this is not what the instant claim states.
For purposes of further examination and compact prosecution, the claim will be interpreted as if the preamble stated “An X-ray shielding glass composition consisting of: …” and the impurity components limitation recited “a ratio of impurity components of 0.2 mass% or less”. While the claim as written is unclear for the reasons described above, review of Applicant’s arguments implies Applicant intends for the claimed composition to be closed rather than open. Additionally, construing the impurity component range as a typo of mass percent rather than mass decimal seems fair in view of construing the composition be closed as a composition with up to 20 mass% impurities is hardly a closed composition and/or an “impurity” concentration.
If Applicant later clarifies the claims are indeed much more broad than as presently interpreted above (e.g., that the glass composition merely comprises the recited components rather than consists of the recited components and/or that the glass composition may comprise a mass of 0.2 or less, i.e., 20% by mass or less, unrecited impurities) the withdrawn 103 rejection will need to be reassessed and very likely be reinstated at that later time.
Claims 2-16 are also indefinite for their dependency on claim 1 without clarifying/correcting the identified issues.
Appropriate correction/clarification is required.
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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Fu (WO 2007/077681 A1). The Office has provided an English language machine translation of this reference attached to the provided copy of the reference, and citations to the reference are with respect to this machine translation unless stated otherwise.
As to claim 1, Fu teaches an X-ray/radiation shielding glass composition comprising 25-95 wt.% Gd2O3 and/or Dy2O3, 10-70 wt.% SiO2 and/or B2O3, 0-5 wt.% M2O3, (where M = Al, Ga, or In) 0-30 wt.% ZnO, 0-10 wt.% RO (where R = Ba, Sr, Ca, or Mg), and 0-10 wt.% Rn2O (where Rn = Li, Na, K, or Cs) (abstract and para. 0011). These concentrations generally overlap those claimed. However, see also Example 5 in Table 1 (page 12 of the original document) comprising 6 wt.% SiO2, 20 wt.% B2O3, 3 wt.% ZnO, 6 wt.% ZrO2, 25 wt.% La2O3, 35 wt.% Gd2O3, and 5 wt.% Nb2O5 explicitly with 0 wt.% TiO2 and 0 wt.% WO3. This glass composition meets the claimed glass composition and falls within the claimed concentrations except for the 3 wt.% ZnO and 0 wt.% WO3 concentrations.
However, the disclosed range of ZnO in the abstract (0-30 wt.%, Id.) includes zero mass% inclusive as its lower boundary indicating it as entirely optional. Fu further teaches WO3 is effective in improving the radiation shielding ability of the glass and is provided in an amount of up to 25 wt.% of the composition to balance the improvement of radiation shielding ability and stability (para. 0059). These teachings indicate ZnO can obviously be excluded and WO3 can obvious by included in an amount overlapping that claimed. Fu teaches the Gd2O3 and Dy2O3 components are provided for their radiation shielding ability and stability against devitrification (para. 0033; note the exemplary amounts, Id., fall within the ranges claimed and the disclosed sum of the components also overlap and encompass those claimed), SiO2 and B2O3 are glass forming oxides for obtaining a stable glass and their simultaneous use improves meltability, stability, and chemical durability of the glass (para. 0034-0036; note the exemplary amounts, Id., fall within the ranges claimed and the disclosed sum of the components also overlap and encompass those claimed), and La2O3 contributes to stability improvement (para. 0052).
Regarding the claimed excluded ZnO and TiO2 components, Fu teaches the amount of ZnO includes zero mass% inclusive as its lower boundary (0-30 wt.%, Id. at the abstract) signifying the component as entirely optional in the composition and reads on the claimed limitation that the glass contains no ZnO; its disclosed optionality means that a person of ordinary skill in the art would be motivated to not provide/include any ZnO with a reasonable expectation of success. Also, the exemplary amount of TiO2 in the cited example 5 is zero wt.% (Id.), meaning that composition certainly excludes TiO2 as claimed. Furthermore, Fu also teaches the amount of TiO2 includes zero mass% inclusive as its lower boundary (para. 0017), signifying the component as entirely optional in the composition and reads on the claimed limitation that the glass contains no TiO2; its disclosed optionality means that a person of ordinary skill in the art would be motivated to not provide/include any TiO2 with a reasonable expectation of success.
While Fu fails to teach an specific working example of their glass that meets the claimed glass composition under the meaning of anticipation, the claimed glass composition is nevertheless obvious over the above-cited teachings of the reference because the reference teaches component concentrations that overlap the claimed ranges. 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). Additionally, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to arrive at a glass composition with components and concentrations within/overlapping the claimed glass composition from the cited teachings of Fu by varying/optimizing the concentrations of Fu’s B2O3, La2O3, Gd2O3, WO3, etc. components while also excluding ZnO and TiO2 (such as, starting from Example 5 and reducing the amount of ZnO to zero and increasing the amount of WO3 to increase radiation shielding ability balanced with stability, Id.) in order to obtain a glass composition with tailored properties for the reasons taught and cited above for providing each component (e.g., x-ray shielding ability, chemical stability, etc.) with a reasonable expectation of success.
Fu’s teachings also read on and meet the closed “consists only of” language of the claims. As described above, Gd2O3 is a required component, Dy2O3 and Lu2O3 are optional rare earth oxide components (exemplified, Id.), SiO2 and B2O3 may be included (exemplified, Id.), La2O3 and WO3 may be included while ZnO and TiO2 are each optional and may be excluded (Id.). It is noted that Fu teaches the provision of additional components, but they are all optional. Going in order, the abstract also lists Dy2O3 and Lu2O3 but these are each optional so long as there is Gd2O3 per the abstract’s recitations of “and/or” between each species as well as the cited example. The abstract also discloses the glass may comprise GeO2 and/or P2O5 via 10-70 wt.% the sum of SiO2 and/or B2O and/or GeO2 and/or P2O5 but these are optional per the abstract’s recitations of “and/or” between each species as well as the cited example. The abstract further discloses the glass may comprise 0-5 wt.% M2O3 (M = Al, Ga, or In), 0-10 wt.% RO (R = Ba, Sr, Ca, or Mg), and 0-10 wt.% Rn2O (Rn = Li, Na, K, or Cs), but the fact that the concentrations include zero (which is also exemplified, Id.) means these are all optional meeting the instant closed claim language. In addition to what is disclosed above, discussion of essential and optional ingredients in the reference’s composition begins at para. 0033 and ends at 0060. Therein, it is elaborated that all of Dy2O3, Lu2O3, GeO2, P2O5, Al2O3, Ga2O3, In2O3, BaO, SrO, CaO, MgO, Li2O, Na2O, K2O, Cs2O, SbO3, As2O3, Y2O3, Yb2O3, Ce2O3, ZrO2, SnO2, Nb2O5, and Ta2O5 are optional. The fact that each of these additional components are optional meets the instant closed claim language. However, please note the further similarities between Fu’s optionality of ZrO2, Nb2O5, Ta2O5, and Sb2O3 (Id.) and the claimed optionality (i.e., permission) of ZrO2, Nb2O5, Ta2O5, and Sb2O3 components in the claimed invention’s closed claim language; for these components, the ranges further overlap. A glass composition containing only the above components would be expected to have little to no impurity components, as well. For example, a hypothetical composition of 6 wt.% SiO2, 20 wt.% B2O3, 25 wt.% La2O3, 30 wt.% Gd2O3, 14 wt.% WO3, 5 wt.% ZrO2, and 0 wt.% ZnO & TiO2, summing to 100 wt.%, within the scope/constraints of Fu and the instant claims has little if any impurity components, as claimed.
While also not sufficiently met under anticipation, the claimed conditional limitation(s) of the glass having certain X-ray transmittance percentages when the glass has a certain thickness and is exposed to an X-ray from an X-ray tube with certain tube voltages would also flow naturally from the teachings of the reference since Fu teaches their glass contains substantially the same components (B2O3, La2O3, Gd2O3, WO3, etc.) in the same concentrations as that instantly claimed and teaches their glass is for similarly shielding X-rays. The same is true for the claimed limitation having a density of 5.0 g/cm3 or more of claim 2 as well as the refractive index of 1.855 or less of claim 3. Note that Applicant discloses the glass’ density and X-ray shielding ability is increased by the provision of La2O3 and Gd2O3 ([0022]-[0024] of the specification) as does Fu (para. 0010 and 0014); Applicant also discloses the glass’ X-ray shielding capability is increased by the provision of WO3 ([0025] of the spec.) as does Fu (Id. at para. 0059); also note Fu discloses a glass’ X-ray shielding ability is proportional to its density (para. 0010), and since Fu teaches the composition comprises up to 25 wt.% WO3, another heavy, dense metal oxide, the additional provision of WO3 would be expected to increase the density of the glass (such as from Example 5’s density of 4.90 g/cm3 to a density of 5.00 g/cm3 or more as claimed, e.g., in the above hypothetical composition of 6 wt.% SiO2, 20 wt.% B2O3, 25 wt.% La2O3, 30 wt.% Gd2O3, 14 wt.% WO3, 5 wt.% ZrO2, and 0 wt.% ZnO & TiO2). "The fact that appellant 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." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding the limitations of the remaining dependent claims 4-16, Fu’s concentrations of components overlap/encompass the claimed limitation that the total content of La2O3, Gd2O3 and WO3 is 36 mol% or more; for example, a hypothetical composition of 5 wt.% SiO2, 15 wt.% B2O3, 25 wt.% La2O3, 35 wt.% Gd2O3, 15 wt.% WO3, 5 wt.% ZrO2, and 0 wt.% ZnO & TiO2, within the scope/constraints of Fu and the instant claims, corresponds to mol% amounts of 13.29 mol% La2O3, 16.73 mol% Gd2O3, and 11.21 mol% WO3, which sum to over 36 mol% as claimed. Fu’s glass is suitable as a radiation shielding glass (abstract, background paragraphs on page 1, claim 7, etc.), particularly as a shield with transparency in the visible light region in a facility handling radiation (para. 0024), and the glass is obtained by a process that melts and molds the raw components (para. 0068 & 0070), either of which reads on a glass component comprising the glass composition.
Any remaining components/limitations are optional.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Fu (JP 2008-088021 A). Applicant previously provided an English language machine translation of this reference and citations to the reference are with respect to this machine translation unless stated otherwise.
As to claim 1, Fu teaches an X-ray/radiation shielding glass composition comprising 20-35 wt.% B2O3, 16-50 wt.% La2O3, 0-25 wt.% of Gd2O3 and/or Dy2O3 and/or Lu2O3, 0.5-30 wt.% WO3, and 0-30 wt.% ZnO (abstract and the embodiments among para. 0009-0019), all of which overlap the instantly claimed ranges of these components.
Fu teaches the B2O3 component is kept within the disclosed range to prevent devitrification and obtain a high transparency while balancing radiation shielding ability, chemical durability, and stability of the glass and a preferred narrower range of the component is also 21-28 wt.% (para. 0026), further overlapping/encompassing the claimed amount of B2O3. Fu teaches the La2O3 component increases density of the glass and imparts a high radiation shielding ability to the glass and a preferred narrower range of the component is also 25-40 wt.% (para. 0029), further overlapping/encompassing the claimed amount of La2O3. Fu also teaches the additional rare earth oxide component (Gd2O3 and/or Dy2O3 and/or Lu2O3) like the La2O3 component is also provided to increase the density of the glass and impart high radiation shielding ability to the glass (para. 0030). Of the additional rare earth oxide component, Gd2O3 is also one of two most preferred species due to its effectiveness of increasing density/shielding ability and a preferred narrower range of the component is also up to 20 wt.% (para. 0030), further overlapping/encompassing the claimed amount of Gd2O3. Note that, even though Gd2O3 is recited in the alternative from other rare earth oxide components, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide, if not at once envisage the provision, of Gd2O3 from the above-cited teachings of Fu; Gd2O3 is one species among very few (three to six species; three in the abstract, six at para. 0030) species of potential rare earth oxide components and Gd2O3 is even among one of two most preferred species of potential rare earth oxide components for provision to increase the density and shielding ability of the glass (Id.). Fu also teaches the WO3 component is preferably added to the composition because of its great effect on improving the stability, chemical durability, and radiation shielding ability of the glass and a preferred narrower range of the component is 3-20 wt.% (para. 0031), further overlapping/encompassing the claimed amount of WO3.
Regarding the claimed excluded ZnO and TiO2 components, Fu teaches the amount of ZnO includes zero mass% inclusive as its lower boundary (Id. at para. 0019). Fu further teaches the ZnO “is a component that can be added arbitrarily” (para. 0037). Both of these teachings signify the component as entirely optional in the composition and reads on the claimed limitation that the glass contains no ZnO; its disclosed optionality means that a person of ordinary skill in the art would be motivated to not provide/include any ZnO with a reasonable expectation of success. Fu also teaches the amount of TiO2 includes zero mass% inclusive as its lower boundary (Id. at para. 0019). Fu further teaches the TiO2 “is a component that can be added arbitrarily” (para. 0047). Both of these teachings signify the component as entirely optional in the composition and reads on the claimed limitation that the glass contains no TiO2; its disclosed optionality means that a person of ordinary skill in the art would be motivated to not provide/include any TiO2 with a reasonable expectation of success.
While Fu fails to teach an specific working example of their glass that meets the claimed glass composition under the meaning of anticipation, the claimed glass composition is nevertheless obvious over the above-cited teachings of the reference because the reference teaches component concentrations that overlap the claimed ranges. 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). Additionally, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to arrive at a glass composition with components and concentrations within/overlapping the claimed glass composition from the cited teachings of Fu by varying/optimizing the concentrations of Fu’s B2O3, La2O3, Gd2O3, WO3, etc. components while also excluding ZnO and TiO2 in order to obtain a glass composition with tailored properties for the reasons taught and cited above for providing each component (e.g., density, x-ray shielding ability, chemical stability, etc.) with a reasonable expectation of success.
Fu’s teachings also read on and meet the closed “consists only of” language of the claims. As described above, B2O3 and La2O3 are required components, Gd2O3 may be the only additional rare earth oxide component included, and WO3 may be expressly provided while ZnO and TiO2 are each optional and may be excluded (Id.). It is noted that Fu teaches the provision of additional components, but they are all optional. Going in order, the abstract further discloses the glass may comprise 0-5 wt.% M2O3 (M=Al, Ga, In) and 0-10 wt.% BaO, but the fact that the concentration includes zero means these are all optional meeting the instant closed claim language. As implied above, the abstract also lists Dy2O3 and Lu2O3 but these are each optional so long as there is Gd2O3 per the abstract’s recitations of “and/or” between each species. In addition to what is disclosed above, para. 0019 also discloses all of SiO2, GeO2, P2O5, Y2O3, Yb2O3, Tb2O3, Rn2O (R=Li, Na, K, Cs), RO (R=Sr, Ca, Mg), ZrO2, SnO2, Nb2O5, Ta2O5, Ce2O3, Sb2O3, and As2O3 are optional for the same reason as above (their ranges each include zero). These additional components are elaborated on at para. 0030-0053. The fact that each additional component’s concentration includes zero means these are all optional meeting the instant closed claim language. However, please note the further similarities between Fu’s optionality of SiO2, ZrO2, Nb2O5, Ta2O5, and Sb2O3 (Id.) and the claimed optionality (i.e., permission) of SiO2, ZrO2, Nb2O5, Ta2O5, and Sb2O3 components in the claimed invention’s closed claim language; for these components, the ranges further overlap. A glass composition containing only the above components would be expected to have little to no impurity components, as well. For example, a hypothetical composition of 24 wt.% B2O3, 39 wt.% La2O3, 19 wt.% Gd2O3, 18 wt.% WO3, and 0 wt.% ZnO & TiO2, summing to 100 wt.%, within the scope/constraints of Fu (including even the most preferred concentration embodiments) and the instant claims has little if any impurity components, as claimed.
While also not sufficiently met under anticipation, the claimed conditional limitation(s) of the glass having certain X-ray transmittance percentages when the glass has a certain thickness and is exposed to an X-ray from an X-ray tube with certain tube voltages would also flow naturally from the teachings of the reference since Fu teaches their glass contains substantially the same components (B2O3, La2O3, Gd2O3, WO3, etc.) in the same concentrations as that instantly claimed and teaches their glass is for similarly shielding X-rays and gamma-rays. The same is true for the claimed limitation having a density of 5.0 g/cm3 or more of claim 2 as well as the refractive index of 1.855 or less of claim 3. Note that Applicant discloses the glass’ density and X-ray shielding ability is increased by the provision of La2O3 and Gd2O3 ([0022]-[0024] of the specification) as does Fu (Id. at para. 0029-0030); Applicant also discloses the glass’ X-ray shielding capability is increased by the provision of WO3 ([0025] of the spec.) as does Fu (Id. at para. 0031), and Fu teaches the composition comprises up to 30 wt.%, preferably up to 25 wt.%, and most preferably up to 20 wt.% WO3, which is also a heavy, dense metal oxide. "The fact that appellant 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." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding the limitations of the remaining dependent claims 4-16, Fu’s concentrations of components overlap/encompass the claimed limitation that the total content of La2O3, Gd2O3 and WO3 is 36 mol% or more; for example, a hypothetical composition of 24 wt.% B2O3, 39 wt.% La2O3, 19 wt.% Gd2O3, 18 wt.% WO3, and 0 wt.% ZnO & TiO2, within the scope/constraints of Fu (including even the most preferred concentration embodiments) and the instant claims, corresponds to mol% ranges of 20.14 mol% La2O3, 8.82 mol% Gd2O3, and 13.06 mol% WO3, which sum to over 36 mol% as claimed. Fu’s glass is suitable as a radiation shielding glass (abstract, background paragraphs on page 1, claim 7, etc.), particularly as a shielding window (para. 0058), and the glass is obtained by a process that melts and casts the raw components (para. 0063 & 0065), either of which reads on a glass component comprising the glass composition.
Any remaining components/limitations are optional.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Momono (JP 2012-166962 A). The Office previously provided an English language machine translation of this reference attached to the provided copy of the reference, and citations to the reference are with respect to this machine translation unless stated otherwise.
Momono teaches an optical glass composition having a high devitrification resistance and tailor refractive index comprising 5-30 wt.% B2O3, 15-50 wt.% La2O3 where the mass ratio of La2O3/(La2O3+Gd2O3) is at most 0.690 (therefore also requiring Gd2O3 as an essential component of the glass composition), up to 35 wt.% Gd2O3 , 0-25 wt.% WO3, optionally TiO2, and optionally ZnO (abstract and pages 2 & 3, the paragraph bridging pages 5 & 6, page 5, and page 8), all of which overlap the instantly claimed ranges of these components.
Momono further teaches B2O3 is an essential component that improves devitrification resistance of the glass and narrower preferred ranges of the component are 8-25 wt.%, 8-20 wt.% and 10-17 wt.% (bottom of page 2), further overlapping/encompassing the claimed amount of B2O3. Momono further teaches the amount of La2O3 is tailored to increase the stability of the glass, increase the refractive index of the glass, and reduce devitrification of the glass and narrower preferred ranges of the component are 17-45 wt.% and 18-37 wt.% (top of page 3), further overlapping/encompassing the claimed amount of La2O3. Momono further teaches the amount of Gd2O3 is tailored to obtain a desired optical constant of the glass, suppress an increase in the glass transition point, prevent devitrification of the glass, and increase the refractive index of the glass and a narrower preferred range of the component is 13-33 wt.% (middle of page 3), further overlapping/encompassing the claimed amount of Gd2O3. Meanwhile, Momono further teaches the ratio of La2O3/(La2O3+Gd2O3) is preferably 0.370-0.670 in view of tailoring the optical constant and devitrification resistance (near top of page 3) and the sum of all rare earth element components (Ln2O3) is preferably 20-65 wt.% to tailor the refractive index, increase resistance to devitrification, and increase the transmittance for light in the visible wavelength range (middle of page 4), further overlapping/encompassing the claimed amounts of La2O3 and Gd2O3. Momono further teaches the amount of WO3 is tailored to increase refractive index of the glass and improve devitrification resistance of the glass and a narrower preferred range of the component is 3-20 wt.% (paragraph bridging pages 5 & 6), further overlapping/encompassing the claimed amount of WO3.
Regarding the claimed excluded ZnO and TiO2 components, as described above, Momono directly teaches ZnO as an optional component of the glass composition (Id. near the bottom of page 8), which reads on the claimed limitation that the glass contains no ZnO; its disclosed optionality means that a person of ordinary skill in the art would be motivated to not provide/include any ZnO with a reasonable expectation of success. As also described above, Momono directly teaches TiO2 as an optional component of the glass composition (Id. near the middle of page 5), which reads on the claimed limitation that the glass contains no TiO2; its disclosed optionality means that a person of ordinary skill in the art would be motivated to not provide/include any TiO2 with a reasonable expectation of success.
While Momono fail to teach an specific working example of their glass that meets the claimed glass composition under the meaning of anticipation, the claimed glass composition is nevertheless obvious over the above-cited teachings of the reference because the reference teaches component concentrations that overlap the claimed ranges. 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). Additionally, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to arrive at a glass composition with components and concentrations within/overlapping the claimed glass composition from the cited teachings of Momono by varying/optimizing the concentrations of Momono’s B2O3, La2O3, Gd2O3, WO3, etc. components while also excluding ZnO and TiO2 in order to obtain a glass composition with tailored properties for the reasons taught and cited above for providing each component (e.g., devitrification, optical constants, etc.) with a reasonable expectation of success.
Momono’s teachings also read on and meet the closed “consists only of” language of the claims. As described above, B2O3, La2O3, and Gd2O3 are required components and WO3 may be expressly provided while ZnO and TiO2 are each optional and may be excluded (Id.). It is noted that Momono teaches the provision of additional components, but they are all optional.
Going in order (in the “About essential and optional components” section beginning on p.2 and after describing the required/essential B2O3, La2O3, and Gd2O3 components), Y2O3, Yb2O3, & Lu2O3 are each optional per p.3, the Ln2O3 component on p.4 is merely the sum of the above rare earth oxides (e.g., La2O3, Gd2O3, Y2O3, Yb2O3, and Lu2O3) and need not require any further rare earth oxide other than the essential La2O3 & Gd2O3, Ta2O5 is optional per p.4, Nb2O5 is optional per p.4-5, TiO2 is optional per p.5 (Id.), WO3 may be included per p.5-6 (Id.), SiO2 is optional per p.6, Li2O is optional per p.6, MgO, CaO, SrO, & BaO are each optional per p.7, Na2O and K2O are each optional per p.7, GeO2 is optional per p.8, P2O5 is optional per p.8, ZnO is optional per p.8 (Id.), ZrO2 is optional per p.9, Bi2O3 is optional per p.9, TeO2 is optional per p.9, Al2O3 is optional per p.9, Sb2O3 is optional per p.9-10, and fluorine compounds (F components) are optional per p.10. The fact that each additional component is expressly disclosed in the reference as “optional” means their concentration includes zero meeting the instant closed claim language.
However, please note the further similarities between Momono’s optionality of Ta2O5, Nb2O5, SiO2, ZrO2, Bi2O3, Sb2O3 (Id.) and the claimed optionality (i.e., permission) of Ta2O5, Nb2O5, SiO2, ZrO2, Bi2O3, Sb2O3 components in the claimed invention’s closed claim language; for these components, the ranges further overlap. A glass composition containing only the above components would be expected to have little to no impurity components, as well. For example, a hypothetical composition of 17 wt.% B2O3, 32 wt.% La2O3, 32 wt.% Gd2O3, 19 wt.% WO3, and 0 wt.% ZnO & TiO2, summing to 100 wt.%, within the scope/constraints of Momono (including even the most preferred concentration/constraint embodiments) and the instant claims has little if any impurity components, as claimed.
While also not sufficiently met under anticipation, the claimed conditional limitation(s) of the glass having certain X-ray transmittance percentages when the glass has a certain thickness and is exposed to an X-ray from an X-ray tube with certain tube voltages would also flow naturally from the teachings of the reference since Momono teaches their glass comprises substantially the same components (B2O3, La2O3, Gd2O3, WO3, etc.) in the same concentrations as that instantly claimed. The same is true for the claimed limitation having a density of 5.0 g/cm3 or more of claim 2. Note that Applicant discloses the glass’ density and X-ray shielding ability is increased by the provision of La2O3 and Gd2O3 ([0022]-[0024] of the specification) and Momono teaches the composition comprises up to 50 wt.%, preferably up to 37 wt.% La2O3 and up 35 wt.%, preferably up to 33 wt.% Gd2O3; Applicant also discloses the glass’ X-ray shielding capability is increased by the provision of WO3 ([0025] of the spec.) and Momono teaches the composition comprises up to 25 wt.% WO3, which is also a heavy, dense metal oxide. "The fact that appellant 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." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding the limitations of the remaining dependent claims 3-16, Momono teaches the glass composition has a refractive index (nd) of 1.75-1.95 (top of page 2) which overlaps the claimed refractive index range of 1.855 or less. Also, Momono’s concentrations of components overlap/encompass the claimed limitation that the total content of La2O3, Gd2O3 and WO3 is 36 mol% or more; for example, a hypothetical composition of 17 wt.% B2O3, 32 wt.% La2O3, 32 wt.% Gd2O3, 19 wt.% WO3, and 0 wt.% ZnO & TiO2, within the scope/constraints of Momono (including even the most preferred concentration/constraint embodiments) and the instant claims, corresponds to mol% ranges of 19.16 mol% La2O3, 17.22 mol% Gd2O3, and 15.99 mol% WO3, which sum to over 36 mol% as claimed. Also, Momono’s glass is suitable for use as an optical glass to produce optical elements such as lenses (abstract, preform materials and optical elements section bridging pages 12 & 13, etc.) and the glass is obtained by a process that melts and casts the raw components (production method section on page 11), either of which reads on a glass component comprising the glass composition.
Any remaining components/limitations are optional. While it is also noted Momono teaches their glass is an optical glass whereas the instant claims recite the glass is an x-ray shielding glass in their preambles, the recitations that the glass is an x-ray shielding glass are merely preamble statements reciting the intended use/purpose of the claimed glass composition that is of little further significance to claim construction since the body the claim(s) fully and intrinsically sets forth all the limitations of the claimed invention (the glass composition’s particular oxide components and concentration thereof).
Response to Arguments
Applicant's arguments filed 12/11/2025 have been fully considered but they are not persuasive.
Applicant argues the Fu (JP 2008-088021 A) and Momono (JP 2012-166962 A) references do not teach or suggest a glass composition consisting only of the components specified in amended claim 1 because they each disclose working examples that consistently include components other than those listed in the “consists only of” limitation of amended claim 1 in amounts far exceeding the claimed impurity limit of 0.2 mass%, e.g., ZnO in amounts ranging from approximately 5% to over 20%. Applicant categorizes the prior art references as requiring significant components such as divalent metal oxides and serve as a teaching away from the claimed invention.
In response, this argument is not persuasive because, as similarly set forth on pages 9 to 12 in the Final Office action mailed 07/18/2025 and incorporated herein, working examples do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Fu and Momono each teach their ZnO is an optional component, meaning a person of ordinary skill in the art would be motivated not to provide/include any ZnO with reasonable expectations of success. The teachings of Fu and Momono read on and meet the claimed closed ended language of the instant claims. The rejections have each been revised explaining why. Please see the revised rejections, above.
Applicant further argues the claims have been amended to exclude TiO2, and the prior art examples of Fu and Momono lead one of ordinary skill in the art away from the claimed invention by their working examples actively employing TiO2, and the Office has not provided a reason why a person of ordinary skill in the art would exclude TiO2 when Fu and Momono consistently include it in their exemplary compositions.
In response, this argument is not persuasive because, like the ZnO component in Fu and Momono, Fu and Momono teach TiO2 is also optional. Fu teaches the amount of TiO2 includes zero mass% inclusive as its lower boundary (para. 0019), and Fu further teaches the TiO2 “is a component that can be added arbitrarily” (para. 0047). Both of these teachings signify the component as entirely optional in the composition and reads on the claimed limitation that the glass contains no TiO2; its disclosed optionality means that a person of ordinary skill in the art would be motivated to not provide/include any TiO2 with a reasonable expectation of success. Similarly, Momono directly teaches TiO2 as an optional component of the glass composition (near the middle of page 5), which reads on the claimed limitation that the glass contains no TiO2; its disclosed optionality means that a person of ordinary skill in the art would be motivated to not provide/include any TiO2 with a reasonable expectation of success. The rejections have been revised with this same reasoning, too. Similarly, Applicant is again citing working examples that do not constitute any form of a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2323.
Applicant further argues the narrowing of the instant claims renders the claims now commensurate in scope with the data provided in the 132 declaration filed 06/12/2025. Applicant proffers the declaration precisely provides a showing that the claimed ranges are critical relative to a prior art range. Applicant argues that if any of the four essential components is outside the claimed range then the glass either fails to vitrify or fails to meet the required X-ray transmittance thresholds.
In response, this argument is not persuasive for substantially the same detailed reasons of record set forth on pages 3 to 9 of the Final Office action mailed 07/18/2025:
The comparative showing of record is no probative value in the determining patentability of claims since it does not compare Applicant’s invention to the closest applied prior art of record (i.e., the glass compositions of the applied prior art references).
Also, while Applicant proffers vitrification is a critical property (showing that some compositions outside the claimed range(s) might not vitrify), each of the applied prior art references requires vitrification or strongly suggests maintaining compositional elements in concentrations to avoid devitrification, which constitutes closer prior art than many of the present application’s comparative examples.
Fu teaches their glass has improved devitrification resistance from the content of B2O3, La2O3, and WO3 as glass components (para. 0010). See also para. 0026 of Fu disclosing the B2O3 component is kept within their disclosed range to prevent devitrification and obtain a high transparency while balancing radiation shielding ability, chemical durability, and stability of the glass. See also para. 0027 of Fu disclosing SiO2 is optionally included in an amount of up to 10 wt.% for improving the devitrification stability, chemical durability, and surface hardness of the glass. See also para. 0029 of Fu disclosing the La2O3 component is limited to at most 50 wt.% because devitrification resistance deteriorates if La2O3 exceeds 50 wt.%. The concentrations of additional components are also controlled to avoid devitrification in the glass (see para. 0034, 0040, 0041, & 0043-0046). Vitrification (avoiding devitrification and/or a resistance/stability to devitrification) is a express/preferred teaching, if not a requirement, of Fu’s glass compositions.
Regarding the X-ray transmittance properties, while not taught in Fu under the meaning of anticipation these properties would flow naturally from the teachings of Fu since they teach their glass comprises substantially the same components (B2O3, La2O3, Gd2O3, WO3, etc.) in the same concentrations as that instantly claimed. Note that Applicant discloses the X-ray shielding ability is increased by the provision of La2O3 and Gd2O3 ([0022]-[0024] of the specification) as does Fu (para. 0029-0030), and Applicant also discloses the glass’ X-ray shielding capability is increased by the provision of WO3 ([0025] of the spec.) as does Fu (para. 0031). "The fact that appellant 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." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). 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).
Momono similarly teaches their glass has a high devitrification resistance (abstract). See also the bottom of page 2 of Momono disclosing the B2O3 component is kept within their disclosed range(s) to improve devitrification resistance. See also page 3 of Momono disclosing the La2O3 and Gd2O3 components, both individually and combined, are kept within their disclosed ranges (and ratios thereof) to improve devitrification resistance. See also the paragraph bridging pages 5 & 6 of Momono disclosing the WO3 is kept within their disclosed range(s) to improve devitrification resistance of the glass while increasing the refractive index of the glass. The concentrations of additional components are also controlled to impart a high devitrification resistance to the glass (see pages 4 to 9 of the reference). Vitrification (avoiding devitrification and/or a resistance to devitrification) is a express/preferred teaching, if not a requirement, of Momono’s glass compositions.
Regarding the X-ray transmittance properties, while not taught in Momono under the meaning of anticipation these properties would flow naturally from the teachings of Momono since they teach their glass comprises substantially the same components (B2O3, La2O3, Gd2O3, WO3, etc.) in the same concentrations as that instantly claimed. Note that Applicant discloses the glass’ X-ray shielding ability is increased by the provision of La2O3 and Gd2O3 ([0022]-[0024] of the specification) and Momono teaches the composition comprises up to 50 wt.%, preferably up to 37 wt.% La2O3 and up 35 wt.%, preferably up to 33 wt.% Gd2O3 (p.3); Applicant also discloses the glass’ X-ray shielding capability is increased by the provision of WO3 ([0025] of the spec.) and Momono teaches the composition comprises up to 25 wt.% WO3 (p.5-6). See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) & In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
See also pages 3 to 9 of the Final Office action mailed 07/18/2025.
While Applicant alleges the declaration/comparative showing of record compares the claimed ranges to the prior art, the Office cannot locate any such comparison. Where specifically is the claimed invention compared to both Fu and Momono?
While Applicant states the Office previously dismissed the 132 declaration of record (p.7 present remarks), please note that this is not true. The Office carefully and entirely considered the 132 declaration. In fact, the Office provided a seven-paged explanation why the declaration was insufficient to withdraw the 103 rejections of record (see pages 3 to 9 of the Final Office action mailed 07/18/2025). The 132 declaration remains insufficient to withdraw the 103 rejections of record (and is insufficient to obviate the new 103 rejection over Fu WO 2007/077581 A1) for the reasons of record.
While Applicant further argues the claimed composition which excludes Izumitani et al.'s stabilizing divalent oxides achieves superior X-ray shielding properties that the prior art cannot achieve, please note that this argument only applies to the teachings/former rejection over Izumitani et al. and is moot to the other grounds of rejection of record.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at https://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
February 2, 2026