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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 6, 2026 has been entered.
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, 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.
Claim(s) 1-8, 13, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki JP2015193521 (rejection using English machine translation), alternatively, in further view of Kass (JP201132162).
Regarding claims 1 and 2: Suzuki teaches UV transmitting glass that can comprise (in mass%), 60-68 SiO2 (Pg. 4, par 4), 1-20 Al2O3 (Pg. 4, Par 6), 3-25, 5-22, 7-19 or even 9-16 B2O3 (Pg. 4, Par. 7), 0-1 Li2O (Pg. 4, par 9), 0-25 Na2O (Pg. 4, par 10), 1-5 K2O (Pg. 5, par 2), 0-25, 1-20, or even 7-13 Li2O+Na2O+K2O (Pg. 4, par 8), 0-15 CaO (Pg. 5, par 5), 0-3 SrO (Pg. 5, Par 6), 0-3% BaO (Pg. 5, par. 7), 100-3000ppm (0.01-0.3 wt%) Cl (Pg. 6, par 4) and 1-20ppm (0.0001-0.002wt%) Fe2O3+TiO2 (Pg. 5, par 11). These individual ranges all overlap with those claimed providing a prima facie case absent a showing of unexpected results (MPEP 2144.05).
As discussed above, Suzuki’s glass comprises 3-25, 5-22, 7-19 or even 9-16 B2O3 and Suzuki teaches the glass further comprising 0-25, 0-15, 0.1-12 or even 1-5% MgO+CaO+SrO+BaO (Pg. 5, par 3). These ranges allow for differences between B2O3 and MgO+CaO+SrO+BaO overlapping the 10-20% range claimed (MPEP 2144.05).
Alternatively, in the instance Applicants argue against Suzuki’s above ranges allowing for overlap being enough to render the difference obvious, the following is noted. Initially, as mentioned above, Suzuki’s ranges do clearly allow for differences which overlap that claimed.
Additionally, note that the claimed difference relates to concentration and differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In the instant case, given that Suzuki teaches their B2O3 contents being added for enhanced meltability and devitrification resistance, improved scratch strength, etc. (see Pg. 4, par 7) and Suzuki teaches their MgO+CaO+SrO+BaO contents being added to lower high temperature viscosity and increased meltability (see Pg. 5, par 3), it would be well within the skill in the art to optimize the content of both, and in turn any resulting difference, until a desired combination of properties is reached.
Even further, given that a difference of B2O3- (MgO+CaO+SrO+BaO) within the range of 10-20% has been suggested as both suitable and desirable in high UV transmitting glass (see All Examples in JP201132162 for instance that result in a difference as claimed), arriving at such a difference through routine optimization would have been considered obvious with a reasonable expectation of success.
Given that Suzuki’s glass composition is the same as claimed, one skilled in the art would reasonably conclude the same transmittance to result when measured similarly (i.e. at a 0.5mm thickness) (MPEP 2112).
Regarding claim 3: Given that Suzuki’s glass composition is the same as claimed, one skilled in the art would reasonably conclude the same properties to result when subjected to the same conditions (MPEP 2112).
Regarding claim 4 and 5: Given that Suzuki’s glass composition is the same as claimed, one skilled in the art would reasonably conclude the same properties to result (MPEP 2112).
Regarding claim 6: Given that Suzuki’s glass composition is the same as claimed, one skilled in the art would reasonably conclude the same properties to result (MPEP 2112). However, it is noted for the record that Suzuki does teach that their glass composition can have a CTE overlapping that claimed (see last paragraph of Pg. 3) (MPEP 2144.05).
Regarding claim 7: Given that Suzuki’s glass composition is the same as claimed, one skilled in the art would reasonably conclude the same transmittance to result when measured similarly (at a thickness of 0.5mm) (MPEP 2112).
Regarding claim 8: Given that Suzuki’s glass composition is the same as claimed, one skilled in the art would reasonably conclude the same properties, and thereby, the same relationship of those properties, to result when measured similarly (at a thickness of 0.5mm) (MPEP 2112).
Regarding claim 13: Suzuki teaches that their glass preferably has a sheet shape with a thickness of 2mm or less (see Page 2 of translation) and Suzuki’s example as mentioned above, has a thickness of 1mm falling within the range claimed.
Regarding claim 15: Suzuki teaches their glass being used for a UV light-emitting diode (see page 1 of translation).
Claim(s) 9, 10, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki JP2015193521 (rejection using English machine translation) as applied to claim 1 above, in view of Jousse (USPub2009/0174300).
Regarding claim 9, 10 and 12: Suzuki does not teach the requirements of claims 9-10 and 12, however, Suzuki suggests their UV transmitting glass being used for LED devices.
Given that Jousse, who similarly teaches UV transmitting glass used in an LED device, suggests the following structure being desirable in the art wherein metallic functional layers are added on the glass surface, a lens is added on an internal surface of the glass, via filler 7 or an adhesive, and although not labeled, an adhesive is on the glass (see 0051, 0054, 0114, 0215, 0233, 0242-0243, 0247), it would have been obvious to one skilled in the art to modify Suzuki to include the features claimed in order to obtain a desirable LED device.
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Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki JP2015193521 (rejection using English machine translation) as applied to claim 1 above, in view of Ohga (USPN5,474,589).
Regarding claim 11: While Suzuki may not teach the presence of a prism, Suzuki’s glass is a UV transmitting glass.
Given that Ohga, from the same field of endeavor of UV transmitting glass, teaches that UV transmitting glass can be made to have a prism structure on the surface as desired (see Col. 3, lines 33), it would have been obvious to one having ordinary skill at the time of invention to modify Suzuki to include a prism structure as desired in order to obtain a desirable UV transmitting glass.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki JP2015193521 (rejection using English machine translation) as applied to claim 1 above, or alternatively, in view of Sakagami (USPub20180057393) or alternatively, in further view of Iwasa (USPub20020047516).
Regarding claim 14: While Suzuki does not explicitly teach their glass having a tube shape or dimension as claimed, it has been held by the courts that changes in shape and size/dimension is merely matter of design choice and does not hold any patentable weight (see MPEP 2144.04, IV. A and B). More specifically, it would have been well within the skill in the art to modify Suzuki to choose any shape and dimension desired depending on desired application for their UV transmitting glass.
Alternatively, in the instance Applicants argue against the assertion above, it is additionally noted that Suzuki’s glass is that of UV transmitting glass for UV-LEDs. As Sakagami from the same field of endeavor of UV transmitting glass for UV-LEDs teach that such UV transmitting glasses can be made into a tube shape housing UV-LEDs (see 0059-0061), it would have been obvious to one having ordinary skill at the time of invention to modify Suzuki to include making their UV transmitting glass that of a tube shape to house UV-LEDs.
Regarding the dimensions of the tube, again as mentioned above, changes in size/dimension is merely matter of design choice and does not hold any patentable weight (see MPEP 2144.04, IV. A). More specifically, it would have been well within the skill in the art to modify Suzuki to choose any dimension desired.
However, in the instance Applicants argue against the assertion above, it is additionally noted that given that Isawa, from the same field of endeavor of glass tubes housing UV-LEDS, suggest desirable diameters for such tubes being 5mm to 10cm or more (see 0010), it would have been obvious to one skilled in the art in determining a diameter size to choose sizes of greater than 1mm to obtain a desirable UV-LED containing glass tube.
Response to Arguments
Applicant’s arguments filed January 6, 2026 have been considered but are not persuasive.
In summary, Applicants argue that Suzuki fails to teach the invention as now claimed because the claim now requires B2O3- (MgO+CaO+SrO+BaO) of 10-20% which Applicants argue provides high transmittance in the deep UV region and excellent weather resistance while suppressing an increase in density, and not only do Suzuki’s Examples fail to have such difference, Suzuki does not provide any indication of such a difference nor provide any indication that the objectives of its glass are to have Applicants’ noted characteristics.
This is not persuasive.
Initially, while the Examiner agrees that Suzuki’s Examples may not have a difference as claimed, 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, Suzuki’s glass comprises 3-25, 5-22, 7-19 or even 9-16 B2O3 and Suzuki teaches the glass further comprising 0-25, 0-15, 0.1-12 or even 1-5% MgO+CaO+SrO+BaO (Pg. 5, par 3) and these ranges allow for differences between B2O3 and MgO+CaO+SrO+BaO overlapping the 10-20% range claimed providing for a prima facie case of obviousness absent a showing of unexpected results (MPEP 2144.05). As Applicants’ have yet to provide such evidence, the rejection is proper.
Alternatively, it was also noted in the above Office Action that in the instance Applicants argue against Suzuki’s above ranges allowing for overlap being enough to render the difference obvious, note that the claimed difference relates to concentration and differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In the instant case, given that Suzuki teaches their B2O3 contents being added for enhanced meltability and devitrification resistance, improved scratch strength, etc. (see Pg. 4, par 7) and Suzuki teaches their MgO+CaO+SrO+BaO contents being added to lower high temperature viscosity and increased meltability (see Pg. 5, par 3), it would be well within the skill in the art to optimize the content of both, and in turn any resulting difference, until a desired combination of properties is reached.
Even further, given that a difference of B2O3- (MgO+CaO+SrO+BaO) within the range of 10-20% has been suggested as both suitable and desirable in high UV transmitting glass (see All Examples in JP201132162 for instance that result in a difference as claimed), arriving at such a difference through routine optimization would have been considered obvious with a reasonable expectation of success.
Regarding Applicants’ argument regarding Suzuki not providing any indication of the objectives of its glass being Applicants’ noted characteristics, this is not persuasive because Suzuki does not have to teach the same objectives. 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).
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Conclusion
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/ Primary Examiner, Art Unit 1784