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
Claim 1 is amended and claims 12-13 are cancelled.
Response to Arguments
Applicant's arguments filed 03/04/2026 have been fully considered but they are not persuasive.
First Applicant argues on page 6, that Yamazaki does not disclose the amended limitation of claim 1, “ a total of 0.1% to 10% by weight of magnesium, calcium, and zinc”, because the additional components including Si, Al, Mg, Ca and Zn are not claimed in the compositional ranges.
Examiner disagrees and has cited Yamazaki paragraph [0043] to show that “other optional components, for example, Zn, Ca, and Mg” can be included in the fluorophosphate glass, and case law to show that it would be obvious to uses a range of known materials.
It is a well-established proposition that the selection of a known material based on
its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co.
v. lnterchemical Corp., 325 U.S. 327, 65 USPQ297 (1945) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the
invention was held to be obvious). MPEP §2144.07.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date
of the claimed invention to choose silicon, magnesium, calcium and zinc as materials for fluorophosphate glass as taught by Yamazaki since it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.lnterchemical Corp., 325 U.S. 327, 65 USPQ297 (1945) See also In re Leshin, 277 F.2d 197,125 USPQ416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
It would have been obvious to one of ordinary skill in the art before the effective filing date to
use a range of 0.1% to 10% by weight of silicon and 0.1% to 10% by weight of magnesium, calcium and zinc, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Second Applicant argues on page 6, that Yamazaki does not disclose the amended limitation of claim 1, “ a total of 0.1% to 10% by weight of magnesium, calcium, and zinc”, because Yamazaki does not disclose simultaneously excluding alkali metals.
Examiner disagrees and has cited Yamazaki paragraph [0062] to show that LI, Na, K, and Cs are optional components and states that none of alkali metals LI, Na, K, Rb, Cs and Fr are listed as essential components of the fluorophosphate glass.
Third Applicant argues on page 6, that Yamazaki does not disclose the limitation “wherein a molar ratio of the phosphorus to the iron of the near-infrared absorbing glass is between 1.75 and 5” of claim 1, because Yamazaki does not disclose controlling the P/Fe molar ratio between 1.75 and 5 for the purpose of stabilizing Fe2+ at high iron content.
Examiner disagrees and has cited Yamazaki to disclose values of P and Fe withing the claimed ranges, “weight of phosphorus (P205 is 0-90% mass paragraph [0045] and the molar mass of P2 is 61.948 g/mol in P205 with a molar mass of 141.943 g/mol results in fraction of P of 0.4364 from a range O-39.28% weight of P); and
weight of iron (FeO is 0-20% mass paragraph [0046] and the molar mass of Fe is 55.845 g/mol in FeO with a molar mass of 71.844 g/mol results in fraction of Fe of0.774 from a range 0 -15.55% weight of Fe)”. Asahara is cited to disclose “wherein a molar ratio of the phosphorus (the mol% of P205 is 50% table 2A and there are 2 P atoms resulting in 100 mol of P) to the iron (the mol% of Fe203 is 15% table 2A and there are 2 Fe atoms resulting in 30 mol of FE) of the near-infrared absorbing glass is between 1.75 and 5 (as a result of the values above the molar ratio is 100/33 = 3.03)” which shows an example of those values used in the range of the molar ratio claimed. There is no limitation for stabilizing Fe2+ in claim 1.
Fourth Applicant argues on page 7, that Yamazaki does not disclose the amended limitation of claim 1, “ a total of 0.1% to 10% by weight of magnesium, calcium, and zinc”, because Yamazaki does not recognize, appreciate, or suggest that the specific combination of Si, AI, Mg, Ca, and Zn within the claimed total amount of 0.1% to 10% by weight functions cooperatively to stabilize Fe in the divalent state while maintaining glass transparency.
Examiner disagrees and has cited Yamazaki fig. 3 to teach the transmittance of the glass is disclosed in fig. 3 as less than 10% at 850 nm, an average transmittance of the near-infrared absorbing glass to light with wavelengths ranging from 930 nm to 950 nm is less than 10% current application pg. 2 lines 7-8. The transmittance of the near-infrared absorbing glass would include optional elements such as Zn, Ca, and Mg listed in paragraph [0062]. Asahara is cited to disclose “wherein a molar ratio of the phosphorus (the mol% of P205 is 50% table 2A and there are 2 P atoms resulting in 100 mol of P) to the iron (the mol% of Fe203 is 15% table 2A and there are 2 Fe atoms resulting in 30 mol of FE) of the near-infrared absorbing glass is between 1.75 and 5 (as a result of the values above the molar ratio is 100/33 = 3.03)” which shows an example of those values used in the range of the molar ratio claimed. There is no limitation for stabilizing Fe2+ in claim 1.
Fifth Applicant argues on page 7, that Yamazaki does not disclose the amended limitation of claim 1, “ a total of 0.1% to 10% by weight of magnesium, calcium, and zinc”, because Yamazaki is silent regarding the such compositional interdependence and therefore cannot render the claimed invention obvious.
Examiner disagrees and has cited Yamazaki paragraph [0062] to show that LI, Na, K, and Cs are optional components and states that none of alkali metals LI, Na, K, Rb, Cs and Fr are listed as essential components of the fluorophosphate glass and can be excluded, paragraph [0043] to show that “other optional components, for example, Zn, Ca, and Mg” can be included in the fluorophosphate glass, and case law to show that it would be obvious to use a range of known materials, and Asahara to disclose “wherein a molar ratio of the phosphorus (the mol% of P205 is 50% table 2A and there are 2 P atoms resulting in 100 mol of P) to the iron (the mol% of Fe203 is 15% table 2A and there are 2 Fe atoms resulting in 30 mol of FE) of the near-infrared absorbing glass is between 1.75 and 5 (as a result of the values above the molar ratio is 100/33 = 3.03)” which shows an example of those values used in the range of the molar ratio claimed. There is no limitation for stabilizing Fe2+ in claim 1. It would be obvious
to use the exact glass composition of Asahara within the range of the composition of Yamazaki. The composition of the glass can be adjusted to optimize the transmission of light at different
wavelengths.
Sixth Applicant argues on page 7, that the Asahara does not cure the deficiencies of Yamazaki regarding claim 1, because the elements SI, Al, Mg, Ca, and Zn are not disclosed to an Fe containing phosphate glass.
Examiner disagrees and has cited Yamazaki for disclosing the weights of SI, Al, Mg, Ca, and Zn, as optional components as described above and relies on Asahara to disclose the molar ratio of phosphorus to Iron.
Finally Applicant argues that Yamazaki discloses a thickness of 0.9 mm in fig. 3 which is thicker than the claimed invention the shielding within the 930nm to 950 nm range would be reduced.
Examiner disagrees and has cited paragraph [0115] “In addition, in Example 1, although phosphate glass having a thickness of 0.9 mm was used as the glass substrate 101, the present disclosure is not limited to such a configuration. By appropriately adjusting a doping amount of Fe in glass, the glass substrate 101 having a desired thickness (e.g., 0.21 mm) may be obtained while having the same spectral transmittance characteristics” to show the thickness of 0.21 has the same spectral transmittance.
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.
Claims 1-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over
Yamazaki (US 20210165145) in view of Asahara et al. (US 3885974 A).
Regarding claim 1, Yamazaki discloses in at least figures 2-3, A near-infrared absorbing glass
(glass substrate 101 fig. 2 with transmittance less than 10% at 850 nm, an average transmittance of the near-infrared absorbing glass to light with wavelengths ranging from 930 nm to 950 nm is less than 10% current application pg. 2 lines 7-8), comprising:
weight of phosphorus (P205 is 0-90% mass paragraph [0045] and the molar mass of P2 is 61.948
g/mol in P205 with a molar mass of 141.943 g/mol results in fraction of P of 0.4364 from a range O -
39.28% weight of P); and
weight of iron (FeO is 0-20% mass paragraph [0046] and the molar mass of Fe is 55.845 g/mol in
FeO with a molar mass of71.844 g/mol results in fraction of Fe of0.774 from a range 0 -15.55% weight
of Fe);
weight of silicon (SI is an optional component paragraph [0043]);
weight of aluminum (the weight percent of Al203 can be 0-40% paragraph [0047] and the molar
mass of Al2 is 53.963 g/mol in Al203 with a molar mass of 101.960 g/mol results in fraction of Al of
0.5292 from a range 0-21.17% weight of Al); and
a total of by weight of magnesium (Mg is an optional component paragraph [0043]), calcium (Ca is an optional component paragraph [0043]), and zinc (Zn is an optional component paragraph [0043]),
wherein the near-infrared absorbing glass is substantially free of alkali metals (Na, LI, K and Cs
are optional paragraph [0043] and Rb and Fr are not listed as components paragraphs [0043-0061]),
an average transmittance (transmittance fig. 3) of the near-infrared absorbing glass (glass substrate 101 fig. 2) to light with wavelengths ranging from 930 nm to 950 nm is less than 10% (the average transmittance of is below 10% from 930-950nm fig. 3).
Yamazaki does not explicitly disclose,
10% to 40% by weight of phosphorus; and
10% to 25% by weight of iron;
0.1 % to 10% by weight of silicon;
1% to 20% by weight of aluminum; and
a total of 0.1% to 10% by weight of magnesium, calcium, and zinc,
wherein a molar ratio of the phosphorus to the iron of the near-infrared absorbing glass is
between 1.75 and 5.
However It has been held that "[A] prior art reference that discloses a range encompassing a
somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re
Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP §2144.05(1).
In the current instance Yamazaki discloses ranged of 0 - 21.17% weight of A1 which encompass the narrower claimed ranges of 1% to 20% by weight of aluminum.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose a value of weight of aluminum within the narrower claimed ranges, because it has been held that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP §2144.05(1).
Additionally, It is a well-established proposition that the selection of a known material based on
its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co.
v. lnterchemical Corp., 325 U.S. 327, 65 USPQ297 (1945) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the
invention was held to be obvious). MPEP §2144.07.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date
of the claimed invention to choose silicon, magnesium, calcium and zinc as materials for fluorophosphate glass as taught by Yamazaki since it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.lnterchemical Corp., 325 U.S. 327, 65 USPQ297 (1945) See also In re Leshin, 277 F.2d 197,125 USPQ416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
It would have been obvious to one of ordinary skill in the art before the effective filing date to
use a range of 0.1% to 10% by weight of silicon and 0.1% to 10% by weight of magnesium, calcium and zinc, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Further, Asahara discloses in at least table 2A, a near-infrared absorbing glass (glass specimen 8
table 2A), comprising:
10% to 40% by weight of phosphorus (the mol% of P205 is 50% table 2A specimen 8, the
molecular weight of P205 Is known to be 141.94 g/mol multiplied by the 50 mol% results in a weight of
7079 g, the atomic weight of P is 30.974 g/mol and 1 mole P205 contains 61.948g of P which is 43.6% weight of P205, the weight of P is 7079*0.436 = 3097g and the total weight of specimen 8 is 178168, the
percent weight of phosphorus is 17.39% as a result of the values above); and
weight of iron (the mol% of Fe203 is 15% table 2A, the molecular weight of Fe203 is known to
be 159.69 g/mol multiplied by the 50 mol% results in a weight of 2395g, the atomic weight of Fe is
55.845 g/mol and 1 mole Fe203 contains 111.69 g of Fe which is 69.95% weight of Fe203, the weight of Fe is 2395*0.6995 = 1675 g and the total weight of specimen 8 is 17816g, the percent weight of Iron is 9.4% as a result of the values above),
wherein a molar ratio of the phosphorus (the mol% of P205 is 50% table 2A and there are 2 P
atoms resulting in 100 mol of P) to the iron (the mol% of Fe203 is 15% table 2A and there are 2 Fe atoms
resulting in 30 mol of FE) of the near-infrared absorbing glass is between 1.75 and 5 (as a result of the
values above the molar ratio is 100/33 = 3.03).
Therefore it would be obvious for one skilled in the art before the effective filling date of the
claimed invention to use the exact glass composition of Asahara within the range of the composition of
Yamazaki. The composition of the glass can be adjusted to optimize the transmission of light at different
wavelengths.
Further, It is a well-established proposition that a prima facie case of obviousness exists where
the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals
Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper
a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron,
balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum,
balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close
that prima facie one skilled in the art would have expected them to have the same properties."). See
In the instant case, Asahara teaches a value of 9.4% which is so close to the claimed range of
10% to 25% that prima facie one skilled in the art would have expected them to have the same properties. Thus it would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention to choose the percent weight of Iron such that is 10% to 25% since it has
been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not
overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d
775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an
alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a
reference disclosing alloys of0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel,
0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the
art would have expected them to have the same properties."). See MPEP §2144.05.
Regarding claim 2, the combination of Yamazaki and Asahara discloses all the limitations of
claim 1 and Yamazaki further discloses, wherein the near-infrared absorbing glass has a thickness of 0.3
mm or less (the glass substrate 101 is 0.01-0.03mm paragraph [0042]).
Regarding claim 3, the combination of Yamazaki and Asahara discloses all the limitations of
claim 2 and Yamazaki further discloses, wherein the thickness of the near-infrared absorbing glass (the
glass substrate 101 is 0.0l-0.3mm paragraph [0042]).
Yamazaki does not explicitly disclose, wherein the thickness of the near-infrared absorbing glass
is 0.2 mm or less.
However, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the
prior art" a prima facie case of obviousness exists. (the thickness of the near-infrared absorbing glass is
0.2 mm or less required by the claim lies inside the ranges disclosed by Yamazaki (the glass substrate
101 is 0.01 - 0.3mm). 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) (The prior art taught carbon monoxide concentrations of "about
1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for
concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43
USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a
range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching
that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm
[i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the
protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a
thickness within [applicant's] claimed range."). See also In re Bergen, 120 F.2d 329,332, 49 USPQ 749,
751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range
was sufficient to support an obviousness rejection, particularly when there was no showing of criticality
of the claimed range).
Regarding claim 4, the combination of Yamazaki and Asahara discloses all the limitations of
claim 1 and Yamazaki further discloses, wherein the average transmittance of the near-infrared
absorbing glass to light with wavelengths ranging from 420 nm to 650 nm (the average transmittance
from 420 nm to 650 nm is between 75%-85% fig. 3).
Yamazaki does not explicitly disclose, wherein the average transmittance of the near-infrared
absorbing glass to light with wavelengths ranging from 420 nm to 650 nm is greater than 80%.
However, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (average transmittance of the near-infrared absorbing
glass to light with wavelengths ranging from 420 nm to 650 nm is greater than 80% required by the
claim lies inside the ranges disclosed by Yamazaki (the average transmittance from 420 nm to 650 nm is
between 75%-85%). 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) (The prior art taught carbon monoxide concentrations of "about
1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for
concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43
USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a
range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching
that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm
[i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the
protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a
thickness within [applicant's] claimed range."). See also In re Bergen, 120 F.2d 329,332, 49 USPQ 749,
751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range
was sufficient to support an obviousness rejection, particularly when there was no showing of criticality
of the claimed range).
Regarding claim 5, the combination of Yamazaki and Asahara discloses all the limitations of
claim 3 and Yamazaki further discloses, wherein the average transmittance of the near-infrared
absorbing glass to light with wavelengths ranging from 420 nm to 650 nm (the average transmittance
from 420 nm to 650 nm is between 75%-85% fig. 3).
Yamazaki does not explicitly disclose, wherein the average transmittance of the near-infrared
absorbing glass to light with wavelengths ranging from 420 nm to 650 nm is greater than 85%.
However, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the
prior art" a prima facie case of obviousness exists. (average transmittance of the near-infrared absorbing
glass to light with wavelengths ranging from 420 nm to 650 nm is greater than 80% required by the
claim lies inside the ranges disclosed by Yamazaki (the average transmittance from 420 nm to 650 nm is
between 75%-85%). 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) (The prior art taught carbon monoxide concentrations of "about
1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for
concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43
USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a
range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching
that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm
[i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the
protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a
thickness within [applicant's] claimed range."). See also In re Bergen, 120 F.2d 329,332, 49 USPQ 749,
751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range
was sufficient to support an obviousness rejection, particularly when there was no showing of criticality
of the claimed range).
Regarding claim 6, the combination of Yamazaki and Asahara discloses all the limitations of
claim 1.
Yamazaki does not explicitly disclose, wherein the molar ratio of the phosphorus to the iron is
between 2 and 4.
However Asahara further discloses, wherein the molar ratio of the phosphorus to the iron is
between 2 and 4 (as a result of the values above the molar ratio is 100/33 = 3.03).
Therefore it would be obvious for one skilled in the art before the effective filling date of the
claimed invention to use the exact glass composition of Asahara within the range of the composition of
Yamazaki. The composition of the glass can be adjusted to optimize the transmission of light at different wavelengths.
Regarding claim 7, the combination of combination of Yamazaki and Asahara discloses all the
limitations of claim 6.
Yamazaki does not explicitly disclose, wherein the molar ratio of the phosphorus to the iron is
between 2.5 and 3.54
However Asahara further discloses, wherein the molar ratio of the phosphorus to the iron is
between 2.5 and 3.54 (as a result of the values above the molar ratio is 100/33 = 3.03).
Therefore it would be obvious for one skilled in the art before the effective filling date of the
claimed invention to use the exact glass composition of Asahara within the range of the composition of
Yamazaki. The composition of the glass can be adjusted to optimize the transmission of light at different
wavelengths.
Regarding claim 9, the combination of Yamazaki and Asahara discloses all the limitations of
claim 1 and Yamazaki further discloses, wherein the near-infrared absorbing glass (glass substrate 101
fig. 2) has a semi-penetration wavelength (NIR_S0 fig. 3, the semi-penetration wavelength (TSO%)
means the wavelength value (unit is in nm) when the transmittance of light in the near-infrared region
to the glass or filter is SO% current application paragraph pg. 3 lines 6-7) of 700 nm or more (NIR_SO is
about 731nm paragraph [0090]).
Regarding claim 10, the combination of Yamazaki and Asahara discloses all the limitations of
claim 9 and Yamazaki further discloses, wherein the semi-penetration wavelength (NIR_S0 fig. 3, the
semi-penetration wavelength (TSO%) means the wavelength value (unit is in nm) when the transmittance of light in the near-infrared region to the glass or filter is SO% current application
paragraph pg. 3 lines 6-7) of the near-infrared absorbing glass (glass substrate 101 fig. 2) is between 730
nm and 800 nm (NIR_S0 is about 731nm paragraph [0090]).
Claims 14-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Asahara
et al. (US 3885974 A) in view of Yamazaki (US 20210165145) as applied to claim 1 above and in further
view of Konishi et al. (US 20150146057 Al).
Regarding claim 14, the combination of Yamazaki and Asahara discloses all the limitations of
claim 1 and Yamazaki further discloses, a near-infrared cut-off filter (near-infrared cut-off filter 100A
fig. 8), comprising the near-infrared absorbing glass (glass substrate 101 fig. 8) of claim 1 (see claim 1
rejection above),
and a multi-layer film structure (multilayer dielectric films 103 and 104 are antireflection films
paragraph [0123]),
wherein the multi-layer film structure (multilayer dielectric films 103 and 104 fig. 8) is at least
one selected from a group consisting of a near-infrared absorbing film (multilayer dielectric films are
anti-reflection films 103 and 104 fig. 8), an absorbing dye layer, an anti-reflection film and an infrared
reflective film, and wherein the near-infrared cut-off filter (near-infrared cut-off filter 100A fig. 8) has a
thickness (the glass substrate 101 is 0.01-0.3 mm paragraph [0042], the multilayer film 103 and 104 is
less than 500nm paragraph [0123)).
Yamazaki does not explicitly disclose, wherein the near-infrared cut-off filter has a thickness of
0.3 mm or less.
However Konishi discloses in at least figure 1, a multi-layer film structure (the NIR filter lOA
includes glass substrate 1 and near-infrared absorbing layer 2 as a dielectric multilayer film 2 paragraph
[0148]), wherein the multi-layer film structure is at least one selected from a group consisting of a near infrared absorbing film (the multi-layer film includes a near-infrared absorbing layer 2 [0148]), and
wherein the near-infrared cut-off filter has a thickness of 0.3 mm or less (in example 6 the thickness of the substrate is 0.23mm and the thickness of the near-infrared absorbing layer is 1 um resulting in a total thickness of0.231 mm paragraph [0186]).
Therefore It would be obvious for one skilled in the art before the effective filling date of the claimed invention to construct the filter of Yamazaki with a thickness of less than 0.3mm as taught by
Konishi. A difference in film thickness between the dielectric multilayered films formed on the respective surfaces is preferably as small as possible, provided that the dielectric multilayered films are
formed so as to have desired selective wavelength shielding properties (paragraph [0161]).
Regarding claim 15, the combination of Yamazaki, Asahara and Konishi discloses all the
limitations of claim 14 and Konishi further discloses the near-infrared cut-off filter of claim 14, wherein
the thickness of the near-infrared cut-off filter (total thickness of0.231 mm paragraph [0186]).
Konishi does not disclose the near-infrared cut-off filter of claim 14, wherein the thickness of the
near-infrared cut-off filter is less than 0.2mm.
However it is a well-established proposition that a prima facie case of obviousness exists where
the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals
Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper
a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron,
balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum,
balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close
that prima facie one skilled in the art would have expected them to have the same properties."). See
M PEP §2144.05.
In the instant case, the prior art teaches a value of 0.23mm which is so close to the claimed
range of 0.2mm that prima facie one skilled in the art would have expected them to have the same
properties. Thus it would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention to choose the thickness such that it is less thanO.2mm since it has been
held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap
with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783,
227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of
"having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference
disclosing alloys of0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31%
molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art
would have expected them to have the same properties."). See MPEP §2144.05.
Regarding claim 16, the combination of Yamazaki, Asahara and Konishi discloses all the
limitations of claim 14 and Yamazaki further discloses wherein the near-infrared cut-off filter (cut off
filter 100 A fig. 8) has a semi-penetration wavelength of 630 nm or more (NIR_S0 = 637 paragraph
[0128], the semi-penetration wavelength (TSO%) means the wavelength value (unit is in nm) when the
transmittance of light in the near-infrared region to the glass or filter is 50% current application
paragraph pg. 3 lines 6-7).
Regarding claim 17, the combination of Yamazaki, Asahara and Konishi discloses all the
limitations of claim 16 and Yamazaki further discloses, wherein the semi-penetration wavelength
(NIR_SO fig. 9, the semi-penetration wavelength (TSO%) means the wavelength value (unit is in nm)
when the transmittance of light in the near-infrared region to the glass or filter is 50% current
application paragraph pg. 3 lines 6-7) of the near-infrared cut-off filter (cut off filter 100 A fig. 8) is
(NIR_S0 = 637 paragraph [0128]).
Yamazaki does not disclose, wherein the semi-penetration wavelength of the near-infrared cutoff filter is between 640 nm and 660 nm.
However It is a well-established proposition that a prima facie case of obviousness exists where
the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals
Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper
a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron,
balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum,
balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close
that prima facie one skilled in the art would have expected them to have the same properties."). See
M PEP §2144.05.
In the instant case, the prior art teaches a value of 637 nm which is so close to the claimed range
of 640-660nm that prima facie one skilled in the art would have expected them to have the same
properties. Thus it would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention to choose the semi-penetration wavelength such that it is 640nm -660nm
since it has been held that a prima facie case of obviousness exists where the claimed ranges or
amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v.
Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a
claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium"
as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and
0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one
skilled in the art would have expected them to have the same properties."). See MPEP §2144.05.
Regarding claim 19, the combination of Yamazaki, Asahara and Konishi discloses all the
limitations of claim 14 and Yamazaki further discloses, wherein a transmittance of the near-infrared cutoff filter (cut off filter 100 A fig. 8) to light with a wavelength of 700 nm is less than 5% (the
transmittance at 700nm is 5% fig. 9).
Regarding claim 20, the combination of Yamazaki, Asahara and Konishi discloses all the
limitations of claim 14.
Yamazaki does not explicitly disclose in the second embodiment (figs. 8-9)discloses, wherein the
average transmittance of the near-infrared cut-off filter to light with wavelengths from 420 nm to 650
nm is greater than 85%.
However Yamazaki discloses in embodiment 3 (figs. 10-12) wherein the average transmittance
of the near-infrared cut-off filter (cut off filter 100 fig. 2) to light with wavelengths from 420 nm to 650
nm is greater than 85% (the average transmission from 420nm to 650nm is above 85% fig. 12).
Therefore it would be obvious for one skilled in the art before the effective filling date of the
claimed invention to have an average transmission from 420nm to 650nm is above 85% as taught in
embodiment 1 for the cut off filter in embodiment 2. The transmission is affected by the composition of
the glass.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Asahara et al. (US
3885974 A) in view of Yamazaki (US 20210165145) and Konishi et al. (US 20150146057 Al) as applied
to claim 14 above and in further view of Ishikawa et al. (US 20190359825 A1).
Regarding claim 18, the combination of Yamazaki, Asahara and Konishi discloses all the
limitations of claim 14.
Yamazaki does not explicitly disclose, wherein an optical blocking density value of the near infrared cut-off filter for light with a wavelength of 940 nm is greater than 5.
However, Ishikawa discloses a curable film for use in an optical filter (paragraph [0432]),
wherein an optical blocking density value of the near-infrared cut-off filter for light with a wavelength of
940 nm is greater than 4 (the optical density of the obtained cured film at a wavelength of 320 to 1,200
nm was measured where A isa minimum of 4 paragraph [0425] examples 1-2, 4-12, and 14-31 all have a
minimum OD of 4).
Therefore It would be obvious for one skilled in the art before the effective filling date of the
claimed invention to construct the glass of Yamazaki with the curable layer as taught by Ishikawa. In
view of obtaining better light blocking properties, an optical density of the cured film per film thickness
of 1.0 um in a wavelength range of 320 to 1,200 nm is even more preferably equal to or higher than 4.0
and the upper limit of OD is not particularly limited paragraph [00425)).
Additionally In the case where the claimed ranges "overlap or lie inside ranges disclosed by the
prior art" a prima facie case of obviousness exists. (OD greater than 5 required by the claim lies inside
the ranges disclosed by the prior (OD greater than 4). In re Wertheim, 541 F.2d 257, 191 USPQ 90
(CCPA1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught
carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The
court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.
); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting
thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior a rt reference] directly teaches the use of a thickness within [applicant's] claimed range."). See also In re Bergen, 120 F.2d 329,332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness
rejection, particularly when there was no showing of criticality of the claimed range).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shimomura et al. (US 20130134396 A1) discloses a glass with phosphorus, magnesium silicon iron and aluminum.
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.
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/ANDREW R WRIGHT/Examiner, Art Unit 2872 /PINPING SUN/Supervisory Patent Examiner, Art Unit 2872
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