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 & 5 – 7. Claims 2, 4, & 17 – 20. Claims 11 – 15 are withdrawn from consideration. Claims 1, 3, 5 – 10, & 16 are examined herein.
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, 5 – 9, & 16 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, but rather teaches the content in units of % by weight. 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. Ln2O3 is the sum of La2O3, Gd2O3, and Y2O3, which is 26.8 mol%. It can be seen in the table below that when the unit of mol% is converted into mass% that Applicant’s composition in mol% for their optical glass is inherently within the mass % 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%
19
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 3, Momono et al. teach the optical glass has a refractive index of about 2.00 or more (pg. 2).
With regard to 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 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.
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, “Claims 2 & 17 – 20 have been canceled.
“Accordingly, Applicant respectfully submits that the rejection of claim 17 under 35 U.S.C. § 102(a)(1) as being anticipated by McPherson, and the rejection of claims 17 – 20 under 35 U.S.C. § 102(a)(1) as being anticipated by Momono are moot” (Remarks, Pg. 5).
EXAMINER’S RESPONSE: In light of Applicant’s cancellation of claim 17, the rejection of claim 17 over Momono under 35 U.S.C. § 102(a)(1) has been withdrawn. Furthermore, the rejection of claims 2 & 17 – 20 over Momono under 35 U.S.C. § 103.
Applicant argues, “First, it is not apparent why the Examiner compared the composition disclosed by Momono to Applicant’s disclosed Example 2-1, instead of the composition recited in Applicant’s claim 1 in the rejection of Applicant’s claim 1 over Momono. The Examiner should note that Applicant’s presently recited composition does not correspond to or overlap with the composition disclosed in Applicant’s Example 2-1. For example, Applicant’s Example 2-1 discloses 22.1% of Ln2O3 (where Ln represents La), whereas Applicant’s claim 1 as amended herein recites 26.0% or more of Ln2O3 (where Ln represents La). Moreover, Momono does not disclose that La2O3 should or could be 26.0% or more by mole” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. T
First, the Examiner noted that Momono teaches the content of the glass components is measured in units of wt.% and Applicant’s content is measured in units of mol.%. A person of ordinary skill in the art would easily recognize that a comparison between mol% and wt.% can be done by mathematically converting the mol.% of each component in a single embodiment into wt.%. The Examiner compared Applicant’s Example 2-1 because the easiest way to demonstrate the limitations of Applicant’s claim 1 were inherently present in the teachings of Monomo was to demonstrate the mathematical calculations for converting mol% to wt.%, then compare said wt.% calculations with the teachings of the cited prior art reference. The table in the rejection proves that Applicant’s Example 2-1, which meets all the limitations of claim 1, are inherently taught by Momono.
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.
Second, Applicant’s claim 1 does not limit Ln2O3 to Ln = La. Applicant’s claim 1 recites “26.0% or more of Ln2O3, where Ln represents at least one selected from La, Gd, Y, and Yb.” In other words, claim 1 allows for Ln2O3 to be the sum of La2O3, Gd2O3, Y2O3, and Yb2O3. As such, contrary to Applicant’s assertion, Applicant’s example 2-1 contains 26.8 mol%. of Ln2O3, which is within Applicant’s claimed range of 26.0 mol%.
Applicant argues, “the Examiner has failed to show that Momono discloses Applicant’s recited ranges with sufficient specificity in order to anticipate or even render obvious Applicant’s claim 1. MPEP 2144.05 states:
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552
752
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280
732
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Greyscale
“In the present case, the Examiner has failed to explain why one of ordinary skill in the art would have selected certain oxides disclosed by Momono to be within a narrower range of a disclosed broad range, while other oxides are selected to be within narrower ranges of other disclosed broad ranges. In other words, the Examiner has failed to show why one of ordinary skill in the art would have picked certain oxides disclosed by Momono to be within certain ranges in order to render obvious, let alone anticipate, Applicant’s claim 1” (Remarks, Pgs. 7 – 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, matters of “sufficient specificity in order to anticipate” the recited claims are not pertinent to the rejection of the current claims over Momono for obviousness under 35 U.S.C. §103.
Second, contrary to Applicant’s assertion, the Examiner provided sufficient facts and reasoning to reject Applicant’s claimed Abbe’s number based on Momono’s teachings of variables for discovering optimum value of a result effective variable via routine experimentation.
Third, in order for Applicant’s recited narrower range to be patentable compared to a broader range taught by the cited prior art, the burden falls on Applicant to demonstrate unexpected results for the claimed narrower range. 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).
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 or overlapping with 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 argues, “Instead of basing the conclusion of obviousness on actual teachings or suggestions of the prior art and the knowledge of one of ordinary skill in the art at the time the invention was made, the Examiner has improperly used Applicant’s own invention as a guide. It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious. The Federal Circuit has previously stated that one cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention. In re Fritch, 972 F.2d 1260, 23 USPQ 2d 1780, 1784 (Fed. Cir. 1992)” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Applicant’s specification was cited to demonstrate inherency of Applicant’s claim limitations based on the teachings of a single reference, not by piecing together the teachings of a combination of multiple references. Therefore, Applicant’s assertion of hindsight reconstruction is not pertinent to the current prior art rejections.
Conclusion
THIS ACTION IS MADE FINAL. 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 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
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