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 .
Examiner’s Note
The Examiner acknowledges the amendments of claims 1 – 2 & 17 – 18, the addition of new claims 19 – 20, and the cancellation of claim 4. Claims 11 – 15 were previously withdrawn from consideration. Claims 1 – 3, 5 – 10, & 16 – 20 are examined herein.
A new rejection has been made for claims 5 & 7, which were previously indicated as allowable. Therefore, this rejection is non-final.
Claim Rejections - 35 USC § 102
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) 17 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by McPherson et al. (WO 98/19974 A1).
With regard to claim 17, McPherson et al. teach an optical glass, such as working example ND-T8 (pg. 8), which comprises 20 mol.% TiO2, 0 mol.% Nb2O5, which has a sum in the claimed range of 20% by more or more, 0 mol.% ZnO, which is within Applicant’s claimed range of 0 – less than 0.1%, and 5 mol.% SiO2, which is within Applicant’s claimed range of 3 – 25%.
ND-T8 has a basicity in the range of 19.6 - 19.9, which is greater than 12, based on the following calculation:
Oxide
Mol%
+Ion valence (Z)
+Ion Radius (r), Angstroms
F.S.
Z/r2
O atoms/mol
(mol%*O#)
SiO2
5
4
0.4
4/(0.4)2 = 20
5 * 20 = 100/mol
5*2 = 10
TiO2
20
4
0.75
4/(0.75)2 = 7.11
20 * 7.11 = 142.2/mol
20*2 = 40
B2O3
30
3
0.315
3/(0.315)2 = 30.23
30 * 30.23 =
906.9/mol
3*30 = 90
Al2O3
15
3
0.53
3/(0.53)2 = 10.68
15 * 10.68 =
160.2/mol
15*3 = 45
Nd2O3
30
3
0.98 – 1.123
3/(0.98)2 = 3.13
3/(1.123)2 = 2.38
3.13 * 30 = 93.9/mol or
30 * 2.38 = 71.4/mol
30*3 = 90
Nb2O5
0
-
-
-
-
ZnO
0
-
-
-
-
Total
100
1380 - 1403.2
275
*See specification, paragraphs [0058] – [0065]:
Applicant has defined “basicity” as ((the sum of number of moles of oxygen atoms)/(the sum of field strengths of cations (cation field strengths))) x 100.
Field strength can be determined by the following formula:
F.S. = Z/r2,
where Z represents ion valence and r represents ion radius (Angstrom)
Applicant has provided the Z and r values on pg. 26 (¶ [0065]).
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.
Claim(s) 1 – 3, 6 – 9, & 16 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over *Momono (JP 2019-116408 A).
*See English translation provided with IDS filed 9/05/2025
With regard to claim 1, Momono teaches an optical glass comprising all of the oxides of Applicant’s disclosed optical glass and an Abbe’s number (vd) is preferably in the range of 20 or more and 30 or less (pg. 3).
Momono does not explicitly teach the content in units of % by mole of each oxide in said glass or the basicity of the glass. However, it would have been obvious to one of ordinary skill in the art to use any amount taught in the ranges of the broader teachings of the reference, then calculate the % by mole and basicity accordingly.
For example, Applicant’s working example 2-1 contained 16.4 mol% SiO2, 19 mol% B2O3, 27.4 mol% TiO2, 3.2 mol% Nb2O5, 7.2 mol% ZrO2, 22.1 mol% La2O3, 3.2 mol% Gd2O3, 1.5 mol% Y2O3, a TiO2/Nb2O5 value of 8.6, an Abbe’s Number of 28.7, and a basicity of 13.1. It can be seen in the table below that when the unit of mol% is converted into mass% that Applicant’s composition for their optical glass is within the ranges taught by Momono. All other components of the glass taught by Momono are optional.
It would have been obvious to a person of ordinary skill in the art at the time of the effective filing date to form an optical glass comprising 16.4 mol% SiO2, 19 mol% B2O3, 27.4 mol% TiO2, 3.2 mol% Nb2O5, 7.2 mol% ZrO2, 22.1 mol% La2O3, 3.2 mol% Gd203, 1.5 mol% Y2O3, as used in Applicant’s working example No. 2-1 because, as shown in the chart below, these values are within the ranges of the optical glass composition taught by Momono et al. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to basicity, Applicants recited **basicity is a calculation based on only two factors: (1) the type of oxide compounds present (SiO2, TiO2, etc.) and (2) the concentration of each oxide compound (see explanation and table below and math conversions between wt.% and mol.%). Momono et al. teach the same types of oxides as Applicant (“App”) and similar amounts of each oxide. In fact, the content of each oxide compound in Applicant’s working example No. 2-1 is within preferred oxide compound content ranges taught by Momono et al.
As shown in the table below, Momono et al. teach the preferred amounts of each oxide compound in the glass composition results in an optical glass product that has the beneficial properties of enhanced refractive index, stability of the glass, devitrification resistance, Abbe’s number, as well as optimal transmittance of visible light, reduces specific gravity, and cost effective.
Therefore, based on the teachings of Momono et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to select the type of oxide compound and the amount of each oxide compound in the optical glass taught by Momono et al. through routine experimentation in order to achieve the desired properties of refractive index, stability of the glass, devitrification resistance, Abbe’s number, transmittance of visible light, specific gravity, and financial cost (see table below). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
**See specification, paragraphs [0058] – [0065]:
Applicant has defined “basicity” as ((the sum of number of moles of oxygen atoms)/(the sum of field strengths of cations (cation field strengths))) x 100.
Field strength can be determined by the following formula:
F.S. = Z/r2,
where Z represents ion valence and r represents ion radius (Angstrom)
Applicant has provided the Z and r values on pg. 26 (¶ [0065]).
Momono’s rationale for preferred oxide compound ranges
Momono’s optical glass
Wt.% (PREFERRED ranges)
App’s
No. 2-1 Wt.%
App’s No. 2-1
Mol% (Table 3)
Cation charge (Z)
Cation radius (r),
Å
Field Strength
Z/r2
O atoms/mol
(mol%*O#)
Enhances stability of the glass, suppresses glass transition, suppresses decrease of the refractive index (pg. 4)
SiO2
4 – 7% (pg. 4)
6.6%
16.4
4
0.4
4/(0.4)2 = 25
16.4 * 25 = 410/mol
16.4*2 = 32.8
Enhances the stability of the glass, devitrification resistance, Abbe’s number, chemical durability, larger refractive index (pg. 4).
B2O3
5 – 10% (pg. 4)
8.9%
19
3
0.315
3/(0.315)2 = 30.2
19 * 30.2 = 573.8/mol
19 * 3 = 57
Enhances stability of the glass, meltability, devitrification resistance, refractive index, Abbe’s number, cost effective (pg. 4)
La2O3
43.0 – 51.0% (pg. 4)
48.2%
22.1
3
1.32
3(1.32)2 =
1.72
22.1 * 1.72 =
38.01/mol
22.1 * 3 = 66.3
Enhances refractive index, stability of the glass, devitrification resistance, Abbe’s number; optimal transmittance of visible light’ reduce specific gravity; cost effective (pgs. 4 – 5)
TiO2
13 – 25%,
preferably 15.0% (pgs. 4 – 5)
14.7%
27.4
4
0.75
4/(0.75)2 = 7.11
27.4 * 7.11 = 194.8/mol
27.4 * 2 = 54.8
Enhances devitrification resistance, Abbe’s number; increases refractive index and transmission of visible light; cost effective (pg. 5)
Nb2O5
3.0 – 10.0% (pg. 5)
5.7%
3.2
4
0.78
4/(0.78)2 =
6.57
3.2 * 6.57 = 21.02/mol
3.2 * 5 = 16
Cost effective; high refractive index; high Abbe’s number’ low specific gravity; meltability, enhances stability of the glass (pg. 5)
Y2O3
0 – 4.0% (pg. 5)
2.3%
1.5
3
1.03
3/(1.03)2 =
2.83
1.5 * 2.83 = 4.25/mol
1.5 * 3 = 4.5
Increases the refractive index and Abbe number of the glass; improves devitrification resistance (pg. 5)
ZrO2
5.0 – 7.0% (pg. 5)
5.9%
7.2
4
0.86
4/(0.86)2 =
5.4
7.2 * 5.4 = 38.88/mol
7.2 * 2 = 14.4
Increases refractive index and Abbe’s number; reduces raw material cost; optimizes specific gravity of the glass (pg. 5)
Gd2O3
10% or less (pg. 5)
7.8%
3.2
3
1.08
3/(1.08)2 =
1.8
3.2*1.8 = 5.76/mol
3.2 * 3 = 9.6
Optional component for enhancing the stability of the glass, reducing coloration, lowers glass transition temperature, improve chemical durability, optimizes refractive index and devitrification resistance (pg. 5)
ZnO
1% or less (pg. 6)
0
0
2
0.89
2/(0.89)2 =
2.52
0 * 2.52 = 0/mol
0 * 1 = 0
Sum of Ln2O (La, Gd, Y, Yb, Lu)
40 – 65% (pg. 7)
58.3%
Sum of RO (R is Mg, Ca, Sr, Ba)
10% or less (pg. 8)
0%
Sum of Rn2O (Rn is Li, Na, K)
10% or less (pg. 8)
0%
Y2O3/(La2O+Gd2O3+Yb2O3)
0 – 0.5% (pg. 8)
0.04
TiO2 + Nb2O5 + WO3
15 – 45% (pg. 8)
20.4%
B2O3 + SiO2
5 – 20% (pgs. 8 – 9)
15.5%
(TiO2 + WO3 + Nb2O5)/(SiO2 + B2O3)
1 – 3.3 (pg. 9)
1.32
*See specification, paragraphs [0058] – [0065]:
Applicant has defined “basicity” as ((the sum of number of moles of oxygen atoms)/(the sum of field strengths of cations (cation field strengths))) x 100.
Applicant’s example 2-1:
Sum of oxygen atoms = 255.4
Sum of cation field strength = 1286.5
255.4/1286.5 * 100 = 19.85
With regard to claim 2, as discussed above, Nb2O5 is present in the amount of 3.2 mol%. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 3, Momono et al. teach the optical glass has a refractive index of about 2.00 or more (pg. 2).
With regard to independent claim 5, Momono et al. fail to explicitly teach the optical glass has a thickness of 10 mm, an internal transmittance of 80% or more at a wavelength of 450 nm.
However, as discussed above, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to select the type of oxide compound and the amount of each oxide compound in the optical glass taught by Momono et al. through routine experimentation in order to achieve the desired visible transmittance of light (@450 nm). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 6, see claim 1 discussed above.
With regard to independent claim 7, McPherson et al. & Momono fail to teach the optical glass is thermally treated in a range of plus or minus 200°C from a glass transition point for 72 hours, an amount of change in internal transmittance of the optical glass with a thickness of 10 mm at a wavelength of 450 nm is less than 10%.
However, as discussed above, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to select the type of oxide compound and the amount of each oxide compound in the optical glass taught by Momono et al. through routine experimentation in order to achieve the desired visible transmittance of light (@450 nm). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 8, Applicant’s example No. 2-1 has a (B2O3+La2O3+ZnO) - (SiO2+Y2O3+ZrO2) = 16.0%. Therefore, as discussed above, Momono teaches a preferred embodiment of similar composition, and therefore within Applicant’s claimed range of 10 – 40%. Monono teaches a range of values for these components. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Momono does not explicitly teach the presence of bubbles and foreign substances in the interior of the optical glass.
Applicant’s specification, paragraph [0050], teaches that controlling the content of the difference between B2O3+La2O3+ZnO and SiO2+Y2O3+ZrO2 results in the number of bubbles and foreign substances present in an interior of the optical glass is one or less per cm3.
Therefore, given that Momono teaches an embodiment in which difference between B2O3+La2O3+ZnO and SiO2+Y2O3+ZrO2 is within taught by Applicant, one of ordinary skill in the art would conclude the optical glass taught by Momono et al. inherently has bubbles and foreign substances is less than one or less per cm3.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
With regard to claim 9, Momono teaches the optical glass is in the form of a lens (i.e., “a plate”) (paragraphs [0002], [0058], [0065], & [0082]).
With regard to claim 16, as discussed for claim 1 above, the optical glass is free of ZnO as a component of the glass composition.
With regard to claim 17, as shown in the table above, Momono teaches an optical glass comprising both TiO2 and Nb2O5 in a total amount of 20% by mole or more, and in terms of % by mole, zero percent ZnO, and 16.4 mol% SiO2. Furthermore, Applicant’s calculated **basicity for working example No. 2-1 is 13.1, which is greater than 12. Therefore, the composition of the optical glass taught by Momono also has a basicity greater than 12.
As shown in the table above, Momono teaches a range of wide range of values for TiO2, Nb2O5, and SiO2. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 18, as shown in the table above, Momono teaches an optical glass comprising both TiO2 and Nb2O5 in a total amount of 20% by mole or more, and in terms of % by mole, zero percent ZnO, 16.4 mol% SiO2, 27.4 mol% TiO2, and the ratio of TiO2/Nb2O5 is 8.6. Furthermore, Applicant’s calculated **basicity for working example No. 2-1 is 13.1, which is greater than 12. Therefore, the composition of the optical glass taught by Momono also has a basicity greater than 12.
As shown in the table above, Momono teaches a range of wide range of values for TiO2, Nb2O5, and SiO2. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 19, as shown in the table above, Momono teaches an optical glass comprising both TiO2 and Nb2O5 in a total amount of 20% by mole or more, and in terms of % by mole, zero percent ZnO, and 16.4 mol% SiO2. Furthermore, Applicant’s calculated **basicity for working example No. 2-1 is 13.1, which is greater than 12. Therefore, the composition of the optical glass taught by Momono also has a basicity greater than 12.
As shown in the table above, Momono teaches a range of wide range of values for TiO2, Nb2O5, and SiO2. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 20, as shown in the table above, Momono teaches an optical glass comprising both TiO2 and Nb2O5 in a total amount of 20% by mole or more, and in terms of % by mole, zero percent ZnO, 27.4 mol% TiO2, and the ratio of TiO2/Nb2O5 is 8.6. Furthermore, Applicant’s calculated **basicity for working example No. 2-1 is 13.1, which is greater than 12. Therefore, the composition of the optical glass taught by Momono also has a basicity greater than 12.
As shown in the table above, Momono teaches a range of wide range of values for TiO2 and Nb2O5. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Momono, as applied to claim 9 above, and further in view of McPherson et al. (WO 98/19974 A1).
With regard to claim 10, Momono fails to teach the thickness of the optical lens discussed above for claim 9.
McPherson et al. teach an optical glass, such as a lens, has a thickness of 4.0 mm or less (McPherson’s claims 2 – 11), and more particularly, a typical lens thickness is 2.0 mm (pg. 9, lines 17 – 18), which is within Applicant’s claimed range of 0.01 to 5 mm.
Therefore, based on the teachings of McPherson et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form the optical lens taught by Momono of typical thickness, which is 2.0 mm.
Response to Arguments
Applicant argues, “In contrast to Applicant’s claims 1, 17, and 18, and as acknowledged by the Examiner in the Table bridging pages 4 and 5 of the Office Action, the optical glass in Example 1 of Momono contains 33.151 mol% of TiO2, which is far outside of Applicant’s claimed range.
“Thus Momono fails to teach or suggest the features of ‘An optical glass containing TiO2 and Nb2O5 in total amount of 20% by mole or more’ and ‘8 to 28.4% TiO2,’ as recited in Applicant’s claim 1, and similarly recited in Applicant’s claim 17 and 18.
“Accordingly, Applicant respectfully requests reconsideration and withdrawal of the rejection of claims 1, 17, and 18 under 35 U.S.C. 102(a)(1) as being anticipated by Momono” (Remarks, Pg 7),
EXAMINER’S RESPONSE: In light of the amendments of claims 1, 17 – 18, the previous rejection under 35 U.S.C. §102(a)(1) over Momono has been withdrawn. However, Applicant’s amendment does not put the claims in condition for allowance.
As discussed above, the broader teachings of the Momono reference discloses an optical glass comprising all of Applicant’s claimed components, wherein Applicant’s claimed content ranges are within the ranges disclosed by Momono.
MPEP 2123 [R-6]. II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
Applicant’s claimed content ranges for each component of their optical glass lie inside the content ranges of the optical glass taught by Momono. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Based on the broader disclosure of Momono, Applicant’s claimed optical glass would have been obvious to one of ordinary skill in the art, and therefore not patentable under 35 U.S.C. §103.
Applicant argues, “With respect to McPherson, the Examiner alleged that optical glass ND-T8 in Table III of McPherson has a composition that overlaps with the composition recited in Applicant’s claim 17. The Examiner also calculated the basicity of the optical glass ND-T8 of McPherson as falling within Applicant’s claimed range of 12 or more.
“However, as acknowledged by The Examiner in the Table bridging pages 3 and 4 of the Office Action, the optical glass ND-T8 in Table III of McPherson does not contain any Nb2O5.
“Thus, McPherson fails to teach or suggest the features of an ‘An optical glass containing both TiO2 and Nb2O5 in a total amount of 20% by mole or more’ and ‘8 to 28.4% TiO2,’ as recited in Applicant’s claim 17” (Remarks, Pgs. 7 – 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, the Examiner respectfully disagrees with Applicant’s interpretation of their claim 17 amendment. Applicant’s amendment which incorporates the word “both” into the claim language does not change the meaning because the limitation is with regard to the total concentration of the combination of TiO2 and Nb2O5, not the individual amounts of each component, even if the content of one of those components is 0%.
Second, as discussed above, McPherson et al. teach TiO2 is present in the amount of 20 mol%, which is within the claimed range of 8 – 28.4 mol%.
Applicant argues, “With the unit combination of features recited in Applicant’s claim 19, including the above-emphasized features, Applicant has been able to provide an optical glass with increased stability of vitrification, chemical durability, internal transmittance, and refractive index (see, for example, paragraph [0029] of Applicant’s specification).
“In contrast to Applicant’s claim 19, the optical glass in Example 1 of Momono contains 12.22 mol% of SiO2, which is far outside of Applicant’s claimed range.
“Thus, Momono fails to teach or suggest the features of ‘An optical glass containing TiO2 and Nb2O5 in a total amount of 20% by mole or more’ and ’16 to 25% SiO2,’ as recited in Applicant’s claim 19” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant’s specification does not contain sufficient evidence of unexpected results. Momono teaches the optical glass of their invention has chemical durability (pg. 4), a high visible light transmittance (pg. 11), high devitrification resistance (pg. 10), and similar refractive index as claimed by Applicant (pg. 9).
Second, as discussed above, the content of components in Applicant’s optical glass are within the broader ranges taught by Momono. Therefore, based on the broader disclosure of Momono, Applicant’s claimed optical glass would have been obvious to one of ordinary skill in the art. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
Applicant argues, “In contrast to Applicant’s claim 20, the molar ratio of TiO2/Nb2O5 in the optical glass in Example 1 of Momono is 5.862 (33.151/5.655), which is below Applicant’s claimed range.
“Thus, Momono fails to teach or suggest the features of ‘An optical glass containing TiO2 and Nb2O5 in a total amount of 20% by mole or more’ and ‘the molar ratio of TiO2/Nb2O5 being not less than 8.3 and not more than 30,’ as recited in Applicant’s claim 20” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As discussed above, the content of components in Applicant’s optical glass are within the broader ranges taught by Momono. Therefore, based on the broader disclosure of Momono, Applicant’s claimed optical glass would have been obvious to one of ordinary skill in the art. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781