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 November 7, 2025 has been entered into the prosecution for the application. Currently, claims 1-3, 5, 7, and 10-19 are pending. Claims 15-19 are withdrawn. Claims 4, 6, and 8-9 have been cancelled. Claim 1 has been amended.
All prior art grounds of rejection are withdrawn.
Applicant’s amendments necessitated the new ground(s) of rejection.
Claim Objections
Claims 15-19 are objected to because of the following informalities: the status identifiers for these claims should read “Withdrawn” rather than “Previously Presented,” in accordance with 37 C.F.R. 1.121(c) and MPEP 714. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-3, 5, 7, and 10-14 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In the case of claim 1, as amended, the claim recites that a1 is from 0.45 to 0.75 and that b1 is from 0.55 to 0.8 (lines 9-10). In line 11 of claim 1, it is recited that the product of a1 and b1 is at least 0.22; however, with the amended ranges for a1 and b1, the lowest possible value for the product of a1 and b1 is (0.45 x 0.55) = 0.2475. Thus, claim 1, as currently worded, appears to claim range for the product of a1 and b1 that includes a mathematical impossibility, leaving one of ordinary skill in the art uncertain as to the actual scope of the claim. Appropriate correction is required.
Claims 2-3, 5, 7, and 10-14 are rejected by reason of their dependence from claim 1.
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) 1-3, 5, 7, and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. 2011/0017297 to Aitken et al. (hereinafter “Aitken”).
Regarding claim 1, Aitken teaches an aluminosilicate glass having a composition comprising 52 to 59 wt% SiO2, 10 to 25 wt% Al2O3, 0 to 10 wt% B2O3, 10 to 25 wt% total M2O, and 2 to 25 wt% total RO, wherein M is an alkali metal selected from Na, K, Li, Rb, and Cs and wherein the glass comprises at least 9 weight percent Na2O, and wherein R is an alkaline earth metal selected from Mg, Ca, Ba, and Sr (¶¶ 0104-0110). Within those taught ranges, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select amounts of each component to create a composition reading on every limitation of claim 1. This obviousness is evidenced by, for instance, Example Glass 35 (p. 9, Table 7), which comprises 62.40 wt% SiO2, 16.70 wt% Al2O3, 7.70 wt% SrO, 12.90 wt% Na2O, and 0.22 wt% SnO2; expressed in terms of the formula (I) of claim 1, this Example Glass 35 has values of x = 16.70, a1 = 0.461, b1 = 0.786, and a1 * b1 = 0.36. Except for the value of x (i.e., the Al2O3 wt% content), all of the values fall within the claimed ranges of claim 1 as amended, while the value of x is within 10% of the lower bound (18) of the claimed range. Although Example Glass 35 does not anticipate the amended claim 1, Example Glass 35 provides evidence that one of ordinary skill in the art, selecting component amounts from the ranges taught by Aitken, in the course of routine experimentation and optimization, would have been able to select values such that the glass composition would satisfy every limitation of claim 1. In particular, Aitken teaches embodiments in which the content of Al2O3 is in the range of 17 to 25 wt% (see ¶ 0177), substantially overlapping the claimed range for x. Aitken teaches 2 to 25 wt% total RO, where R is an alkaline earth metal selected from Mg, Ca, Ba, and Sr (see ¶ 0161). Within those taught ranges, it would have been obvious to one of ordinary skill in the art to select amounts of each component to create a composition such that a1 (which is, effectively, a ratio of total alkaline earth metal oxides to Al2O3) is in the range of 0.45 to 0.75. Likewise, Aitken teaches the aluminosilicate glass comprising 17 to 25 wt% Al2O3, 0 to 10 wt% B2O3, and 10 to 25 wt% total M2O, wherein M is an alkali metal selected from Na, K, Li, Rb, and Cs and wherein the glass comprises at least 9 weight percent Na2O (see ¶¶ 0107-0108, 0110, 0160, 0169, 0177). Within those taught ranges, it would have been obvious to one of ordinary skill in the art to select amounts of each component to create a composition such that b1 is in the range of 0.55 to 0.8. 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). Further, given the overlapping ranges for MO and R, one of ordinary skill in the art reasonably would expect that the product of a1 and b1 would be at least 0.22 (or at least 0.2475), as evidenced, again, by Example Glass 35 (p. 9, Table 7), for which the product of a1 and b1 is 0.36.
Regarding claim 2, Aitken teaches the aluminosilicate glass wherein R further comprises B2O3 (see ¶ 0160, line 5, teaching 1 to 10 wt% B2O3).
Regarding claim 3, Aitken teaches the aluminosilicate glass having 1 to 10 wt% B2O3 (¶ 0160), a range substantially overlapping the recited range of less than 10 wt%. 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).
Regarding claim 5, Aitken teaches the aluminosilicate glass having 17 to 21 wt% Al2O3, a range for x which overlaps the claimed value of 18. In a case where a claimed value lies inside a range disclosed by the prior art, a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 7, Aitken teaches embodiments of the aluminosilicate glass in which the content of Al2O3 is in the range of 17 to 25 wt% (see ¶ 0177), substantially overlapping the claimed range for x. Aitken teaches 2 to 25 wt% total RO, where R is an alkaline earth metal selected from Mg, Ca, Ba, and Sr (see ¶ 0161). Within those taught ranges, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select amounts of each component to create a composition such that a1 (which is, effectively, a ratio of total alkaline earth metal oxides to Al2O3) is 0.5. In a case where a claimed value lies inside a range disclosed by the prior art, a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 10, Aitken teaches the aluminosilicate glass comprising 52 to 59 wt% SiO2 (¶ 0105), within the recited range of claim 10.
Regarding claim 11, Aitken discloses the aluminosilicate glass according to claim 1, as set forth above. One of ordinary skill in the art would reasonably expect that the aluminosilicate glass of Aitken, being identical in composition to the claimed invention, would therefore inherently possess a refractive index in a range of from 1.45 to 1.55, 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 claim 12, the Examples cited above from Aitken are silent as to iron, leading one of ordinary skill in the art reasonably to conclude that iron is absent (i.e., the aluminosilicate glass comprises iron in an amount of zero) or is present only as a trace impurity; in either case, iron is present in an amount leading to a Fe2+ absorption of less than 0.2 dB/cm at 1100 nm.
Regarding claim 13, Aitken teaches the aluminosilicate glass wherein MO comprises CaO (see ¶ 0167).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Aitken as applied to claim 1 above, and further in view of U.S. Pat. Pub. 2017/0276874 to Kashyap et al. (hereinafter “Kashyap”).
Regarding claim 14, Aitken teaches the aluminosilicate glass according to claim 1, as set forth above (see pp. 3-4). However, Aitken does not teach the aluminosilicate glass having an optical waveguide inscribed therein.
Kashyap teaches a method for inscribing a waveguide into a media glass substrate (Abstract), the waveguide being an optical waveguide (i.e., a waveguide in an optical device, see ¶¶ 0011-0013). Kashyap teaches that the media glass substrate may comprise an aluminosilicate glass, an alkali aluminosilicate glass, or an alkaline earth boroaluminosilicate glass (¶ 0067).
One of ordinary skill in the art would have found it obvious to use the waveguide inscription method of Kashyap to inscribe an optical waveguide in the aluminosilicate glass taught by Aitken. It would have been obvious to use the known waveguide inscription technique taught by Kashyap to inscribe an optical waveguide in the aluminosilicate glass of Aitken, since Kashyap already teaches that the technique may be used for waveguide inscription on aluminosilicate, alkali aluminosilicate, and alkaline earth boroaluminosilicate glasses (Kashyap at ¶ 0067). Because Kashyap teaches that the waveguide inscription technique may be used on aluminosilicate, alkali aluminosilicate, and alkaline earth boroaluminosilicate glasses, one of ordinary skill in the art would have found it obvious to use the same technique on the aluminosilicate glass of Aitken, with predictable results and a high degree of confidence in success. See MPEP 2143(I)(C).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the waveguide inscription method of Kashyap to modify the aluminosilicate glass of Aitken, thereby producing an aluminosilicate glass having an optical waveguide inscribed therein.
Response to Arguments
Applicant’s arguments filed November 7, 2025 have been fully considered but they are not persuasive.
On page 8 of the Remarks submitted with the reply (hereinafter “Remarks”), Applicant argues that “the specifically claimed ranges of x, a1, and b1 are not arbitrary, but collectively tailored to achieve the unexpectedly desirable optical properties.” Applicant asserts that the “simultaneous redistribution of alkali and alkaline earth ions creates a localized region of increased refractive index, which constitutes the optical guiding core of the waveguide”; and Applicant points to portions of “the specification as filed” for support for the position that this “dual migration mechanism” is interdependent on specific compositional constraints—including x (i.e., the wt% content of Al2O3), a1, b1, and the product of a1 and b1 (Remarks at p. 8).
The above line of argument fails to persuade for a few reasons. Firstly, to the extent that Applicant is relying upon unexpected results to support the nonobviousness of the claimed ranges, Applicant’s showing lacks sufficient detail and specificity. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997) (conclusory statements regarding unusually low immune response or unexpected biological activity that were unsupported by comparative data held insufficient to overcome prima facie case of obviousness); MPEP 2145. Arguments presented by the applicant cannot take the place of evidence in the record. In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); MPEP 716.01(c). Here, Applicant broadly gestures at data allegedly showing unexpected results, but Applicant’s statements cannot take the place of specific data.
Secondly, it is far from clear that the data in Applicant’s specification support the assertion of unexpected results attributable to the interdependence of the claimed compositional limits. Applicant points generally to “paragraphs [0124]-[0126]” of “the specification as filed” (Remarks at p. 8); however, the as-filed specification includes page numbers and line numbers, but no numbered paragraphs. When looking at the pre-grant publication of the application (which does include numbered paragraphs), paragraphs [0124]-[0126] include some discussion in general terms about how aluminum and calcium migration affect the refractive index of the glass, but there is no specific data tying specific compositional constraints to specific results, for refractive index or other glass properties. Also, while Applicant urges that the specifically claimed ranges of x, a1, and b1 are not arbitrary, but collectively tailored to achieve the unexpectedly desirable optical properties” (Remarks at p. 8), it appears clear from the specification that some of the “unexpectedly desirable optical properties” are also achieved outside the claimed ranges; for instance, “Waveguides of good optical quality and guiding characteristics can be obtained, for example, by having b1 equal to 0.835” (paragraph [0058]); this value of b1 lies outside the claimed range for b1 in the amended claim 1.
Thirdly, to the extent that Applicant’s argument seeks to premise patentability on, for instance, “a localized region of increased refractive index, which constitutes the optical guiding core of the waveguide” (Remarks at p. 8), it is noted that the features upon which applicant relies are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s remaining arguments with respect to the pending claims 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pat. Pub. 2020/0189962 to Dejneka et al. (“Dejneka”) teaches aluminosilicate glass compositions having from 50 to 80 mol % SiO2, less than or equal to 25 mol % Al2O3, from 6.5 to 10.0 mol % Li2O and, optionally, other components, such as alkali metal oxides, alkaline earth metal oxides, and boron oxide (Abstract). Dejneka teaches example embodiments wherein the difference Al2O3−R2O−RO, calculated on molar basis, is greater than or equal to 7.5 mol %, wherein R2O is the total sum of alkali metal oxides and RO is the total sum of divalent metal oxides (¶ 0014; claim 9).
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