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 .
Election/Restrictions
Newly submitted claims 3 and 5 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claims 3 and 5 have been amended such that these claims no longer depend upon claim 1, but are now independent. Claim 3 at line 5 claims 10 mol% to 20 mol% of BaO, however, claim 1 previously examined at lines 4-5 recites a composition that consists of TeO2, La2O3, and ZnO, and therefore cannot comprise BaO. Claim 5 at line 4 recites the composition consists of a dopant, however, claim 1 previously examined at lines 4-5 recites a composition that consists of TeO2, La2O3, and ZnO, and therefore cannot comprise a dopant.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Claims 1, 3, and 5 lack unity of invention because even though the inventions of these groups require the technical feature of a composition for glass wherein the composition includes TeO2 and La2O3, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Fu et al. (JP2016088761, with reference to the machine translation, hereinafter referred to as Fu). Fu discloses a glass (see Fu at the Abstract of the machine translation). Fu at Table 1, Example 7, discloses an example of a glass comprising TeO2 and La2O3.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 3, 5, 7-8, and 11 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
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, claim 1 recites the broad recitation the composition includes “present content of two of La2O3, BaO, and ZnO”, and the claim also recites “the composition consists of … 5 mol% to 10 mol% of La2O3, and 10 mol% to 40 mol% of ZnO” which is the narrower statement of the range/limitation. The claim(s) are 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. To illustrate, claim 1 at line 3 appears to allow the composition to comprise BaO, while lines 4-5 appear to exclude the present of BaO in the composition.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rhonehouse et al. (US20140205258, hereinafter referred to as Rhonehouse).
Regarding claim 1, Rhonehouse discloses a composition for glass (See Rhonehouse at [0050], disclosing a TeLaZnO glass) transmitting a 3 to 5 µm wavelength band of light by a preset reference value or more (see Rhonehouse at Fig. 3, showing a TeLaZnO glass which transmits a 3 to 5 µm wavelength band of light by a preset reference value or more), wherein the composition includes preset contents of two of La2O3, BaO, and ZnO, and a present content of TeO2 (See Rhonehouse at [0050], disclosing a TeLaZnO glass) wherein the composition consists of 55 mol% to 80 mol% of TeO2 (see Rhonehouse at [0023], disclosing TeO2 of 65 to 90 mole percent, which overlaps with the claimed range.) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05), 5 mol% to 10 mol% of La2O3 (see Rhonehouse at [0023], disclosing La2O3 of 0.2 to 15 mole percent, which overlaps with the claimed range.), and 10 to 40 mol% of ZnO (see Rhonehouse at [0023], disclosing a glass modifier MO of 0.2 to 35 mole percent where M is selected from Mg, Ca, Sr, Ba, Zn, Pb and Cd, which Examiner notes includes ZnO and overlaps with the claimed range.).
while Rhonehouse teaches one method to change the refractive index is to vary the TeO2 to ZnO ratio while leaving the La2O3 level approximately constant (see Rhonehouse at [0075]), Rhonehouse does not disclose a refractive index of 1.9 or more because Rhonehouse does not disclose the refractive index. However, as taught by Rhonehouse at [0075], the refractive index is a function of the composition of the glass. Because the glass of Rhonehouse has a composition which is substantially identical to the instant composition, the glass of Rhonehouse would inherently possess the claimed refractive index. 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).
Response to Arguments
Applicant’s arguments, see the first full paragraph of page 6 from the Remarks, filed 10/28/2025, with respect to the rejection(s) of claim(s) 1 under 102 in view of Fu have been fully considered and are persuasive because Fu does not disclose the composition consists of 55 mol% to 80 mol% of TeO2, 5 mol% to 10 mol% of La2O3, and 10 mol% to 40 mol% of ZnO. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Rhonehouse over 103 as detailed above.
Applicant’s remaining arguments concerning claims 3, 5, 7, 8, and 11 are moot as claims 3, 5, 7, 8, and 11 are withdrawn per the election by original presentation restriction requirement above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
Examiner interviews are available via telephone, in-person, 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 http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731