DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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 .
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 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.
Claims 6-9, 24 and 26-31 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. (US 2014/0106174).
Regarding claim 6, Yamaguchi discloses an optical glass, which comprises, denoted as weight percent, 2 to 37% of SiO2, 0 to 30% CaO, 0 to 15% La2O3, 2 to 47% BaO, 0 to 25 percent of B2O3, 9 to 35% TiO2, 2 to 36% Nb2O5, 0 to 5% WO3, see abstract and [0068, 0073, 0074, 0075, 0077]. Additionally, the reference discloses the amount of ZrO2 from 0 to 12% and of SrO from 0% or greater than 0% [0068, 0079]. The reference further discloses that the composition does include MgO, ZnO, Y2O3, Gd2O3, Ta2O5 and Bi2O3, see entire document.
Note that based on the value disclosed for La2O3 and the absence of Y2O3 and Gd2O3, the reference is considered to render obvious a total content of the three components as 2.96% or more; see above discussion and MPEP 2144.05 I: in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Similarly, based on the values disclose for BaO and La2O3 and the absence of Y2O3 and Gd2O3, the reference is considered to render obvious a total content of the four components as 30% or less; see above discussion and MPEP 2144.05 I. While the reference does not specifically disclose the claimed mass ratios, the composition disclosed by the reference renders obvious the claimed values, see above discussion.
The reference further discloses the refractive index as 1.860 to 1.990 and the Abbe number as 21 to 29, both of which overlap the claimed range, see abstract and MPEP 2144.05 I.
Regarding claims 7 and 8, the reference discloses 0 to 15% La2O3 and 0 to 25 percent of B2O3, which renders obvious the claimed ratio, see above discussion. For example, the reference renders obvious the values for La2O3 and of B2O3 for Applicant’s example 1, which satisfies the claimed ratios; see above discussion and Applicant’s Specification Table 1 Ex. 1 and Table 2.
Regarding claim 9, while the reference does not specifically disclose the claimed mass ratio, the composition disclosed by the reference renders obvious the claimed value, see above discussion. For example, the reference renders obvious the values for La2O3, B2O3, Y2O3 and Gd2O3 for Applicant’s example 1, which satisfies the claimed ratio; see above discussion and Applicant’s Specification Table 1 Ex. 1.
Regarding claim 24, the reference discloses the optical glass has a refractive index of 1.86 to 1.99 and an Abbe number of 21 to 29, which overlaps the claimed ranges; see abstract and MPEP 2144.05 I. Additionally, the reference discloses the optical glass has a specific gravity of 4.1 or less [0114]. Note that based on the values disclosed for specific gravity and refractive index, the reference is considered to render obvious the claimed ratio; see MPEP 2144.05 I.
Regarding claim 26, the reference discloses the BaO content as 2 to 47%, which overlaps the claimed range [0068].
Regarding claim 27, the reference discloses the ZrO content as 0 to 12%, which overlaps the claimed range [0079].
Regarding claim 28, the reference discloses the TiO2 content as 9 to 35%, which overlaps the claimed range [0075].
Regarding claims 29-31, while the reference does not specifically disclose the claimed mass ratios, the composition disclosed by the reference renders obvious the claimed values, see above discussion.
Response to Arguments
Applicant's arguments filed December 22, 2025 have been fully considered but they are not persuasive.
Applicant argues that Yamaguchi neither discloses or suggests the optical glass with the glass composition, relative constituent ratios and resulting glass properties. According to Applicant, even if the ranges of Yamaguchi overlap the claimed ranges, asserting broad content ranges would render specific content ranges and ratios obvious is improper and would rely on hindsight. As such, Applicant submits claim 6 and its dependents are patentably distinguished from the cited art. Examiner respectfully disagrees.
As discussed above and previously, 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 I. Note that Applicant can rebut a prima facie case of obviousness by showing criticality of the claimed range, generally by showing unexpected results achieved to the prior art range; see MPEP 2144.05 III A. In order to show criticality of the claimed range, "objective evidence of nonobviousness must be commensurate in scope with the claims"; see MPEP 716.02(d). Additionally, Examiner notes that Applicant should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range, see MPEP 716.02(c)(II). Further, Applicant must show the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage, see MPEP 716.02(a). In the instant case, Applicant has not provided arguments to rebut the prima facie case of obviousness. Further, given the ranges for the individual constituents are rendered obvious, the reference is also considered to render obvious the claimed mass ratios.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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 LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at (571)272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA A AUER/Primary Examiner, Art Unit 1783
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