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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 8/27/25 is acknowledged. The traversal is on the ground(s) that claim 13, which depends from claim 1 is not encompassed by the restriction requirement but is directed to the group I invention.
Claim 13 will be examined along with elected group I.
In light of this correction, the requirement is deemed proper and is therefore made FINAL.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse regarding Group I-Group II in the reply filed on 8/27/25.
Claim Objections
Claim 1 is objected to because of the following informalities:
At the end of claim 1, the units “K]min-1” appears to be incorrect.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-11 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weiss et al. 2019/0062201.
Weiss et al. discloses a lithium aluminum silicate glass ceramic that is free from As2O3 and Sb203 with keatite as a primary crystal phase [0074].
Note that the keatite peak temperature appears to be a material property. The method by which the property is measured has no bearing on the claimed material. Since the composition of the reference is the same as those claimed herein it follows that the material discussed above would inherently possess the properties recited in the claims. See MPEP 2112. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
With respect to claims 2,8,9,10,11 Weiss et al. discloses the glass comprises the following components in the following proportions (in wt % based on oxide): See Glass A1
Li20 3.91
A1203 20.5
SiO2 65.1
SnO2 0.27
MgO 0.32
ZnO 1.54
Nd2O3 0
P2O5 0.029
With respect to claim 7, Weiss et al. discloses the keatite containing glass ceramic has a coefficient of mean linear thermal expansion α (20°C; 700°C) of 0.8 to 1.5 x 10-6/K and may be translucent or opaque via customary conversion [0074].
With respect to claims 3-6 and 13, regarding the claimed quotient, color, brightness and associated values, these are material properties. Since the composition of the reference is the same as those claimed herein it follows that the material discussed above would inherently possess the properties recited in the claims. See MPEP 2112. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weiss et al. 2019/0062201 in view of EP 1,236,695 A2 and ES 2804277 T3.
Weiss et al. discloses a lithium aluminum silicate glass ceramic that is free from As2O3 and Sb203 with keatite as a primary crystal phase [0074].
Note that the keatite peak temperature appears to be a material property. The method by which the property is measured has no bearing on the claimed material. Since the composition of the reference is the same as those claimed herein it follows that the material discussed above would inherently possess the properties recited in the claims. See MPEP 2112. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
Further, EP 1,236,695 A2 discloses that the temperature for transformation to the keatite phase can be measured by DTA measurements. Examples of such values are shown in Table 1. It would have been obvious to one of ordinary skill in the art at the time of the invention to determine keatite peak temperatures utilizing such measurements. Note the particular measurement technique is of no patentable significance as the claims are drawn to a composition.
With respect to claims 2,8,9,10,11 Weiss et al. discloses the glass comprises the following components in the following proportions (in wt % based on oxide): See Glass A1
Li20 3.91
A1203 20.5
SiO2 65.1
SnO2 0.27
MgO 0.32
ZnO 1.54
Nd2O3 0
P2O5 0.029
With respect to claim 7, Weiss et al. discloses the keatite containing glass ceramic has a coefficient of mean linear thermal expansion α (20°C; 700°C) of 0.8 to 1.5 x 10-6/K and may be translucent or opaque via customary conversion [0074].
With respect to claims 3-6 and 13, regarding the claimed quotient, color, brightness and associated values, these are material properties. Since the composition of the reference is the same as those claimed herein it follows that the material discussed above would inherently possess the properties recited in the claims. See MPEP 2112. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
Further, ES 2804277 T3 discloses lithium-aluminum-silicate glass ceramics can contain coloring oxides to produce a colored glass ceramic. It would have been obvious to one of ordinary skill in the art at the time of the invention to use these coloring oxides such as those claimed to obtained the desired color properties.
With respect to claim 12, Weiss et al. further discloses
Na2O 0.6
K2O 0.24
Na2O + K2O 0.84
CaO 0.42
SrO 0.018
BaO 2.31
SrO + BaO 2.328
B2O3 0
ZrO2 1.42
While Weiss et al. does not disclose the exact claimed amounts of the following components, 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). MPEP 2144.05 I.
TiO2 3.19 vs claimed 2.8 max
SnO2 0.27 vs claimed <0.25
TiO2/ZrO2/SnO2 4.88 vs claimed 4.8 max
Fe2O3 882 ppm vs claimed wt%
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER A FIORILLA whose telephone number is (571)272-1187. The examiner can normally be reached M-TH 6am-4pm.
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/CHRISTOPHER A FIORILLA/Primary Examiner, Art Unit 1731