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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis 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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1, 4-20, 60 and 70 in the reply filed on 19 August 2025 is acknowledged. The traversal is on the ground(s) that Deng does not teach the newly amend glass composition of claim 1. This is not found persuasive as shown below by the rejection of the claims over Maries et al.
The requirement is still deemed proper and is therefore made FINAL.
Currently, claims 21-47, 51, 52, 554-59, 62, 65, and 68 are considered withdrawn as being part of a non-elected invention.
The examiner will consider rejoinder of the withdrawn claims once the elected claims have been considered allowable.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted 28 August 2023, 28 August 2023, and 11 January 2024 have been considered by the Examiner.
Claim Comments
Claim 1 recites limitations that the glass “optionally one or more glass components selected from the group consisting of Na2O, K2O, and a phosphate source”, “optionally up to about 45 mol% of CaF2, SnF2, NaF, KF, Na2PO3F, or a combination thereof”, and “less than 0.1 mol% phosphate”. These limitations are read such that if an “optional phosphate source” or an optional Na2PO3F is contained in the glass composition the amount is less than 0.1 mol% as well as other components comprising phosphate.
Claims 1, 4, 6, 13, 15, 16, 17, 18, and 19, use the term “about” to modify a compositional range. The term “about” is defined in the specification in paragraph [0026] as being 2%. Therefore, the range in claim 1 of “from about 10 mol% to about 80 mol%” would be read as from 8 to 82 mol% and for the limitation in claim 13 “about 42” would be read as 40-44 mol%.
In claim 4, the claim recites six different limitation a), b), c), d), e), or f). These six limitation are separated by the conjunction “or” and therefore only one of the limitations needs to be met to read on the claim.
In claim 6, the claim recites four different limitation a), b), c), or d). These four limitation are separated by the conjunction “or” and therefore only one of the limitations needs to be met to read on the claim.
Claim 14 recites “wherein the glass composition comprises less than 30 mol% of CaF2 or SnF2; and less than 30 mol% of a combination of CaF2 and SnF2”. This is read to mean that the individual amounts of CaF2 and SnF2 can be in the range of 0 to less than 30 mol% but the total amount of CaF2 and SnF2 (CaF2+SnF2) must also be 0 to less than 30 mol%.
In claim 17, lines 9-10, the phrase “and optionally from about 8 mol% to about 15 mol% of NaF, KF, CaF2, or any combination thereof” is read as if NaF, KF, CaF2, or any combination of those components are present, the total amount of those components, whether individually present or present in combination is from about 8 mol% to about 15 mol%.
Claim Rejections - 35 USC § 112(a) or first paragraph
Claim 70 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 70 recites the negative limitation “wherein the glass composition comprises no ZrO2”. The specification as filed does not have expressed support for the negative limitation. See MPEP 2173.05(i) which reads:
Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining."). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). In describing alternative features, the applicant need not articulate advantages or disadvantages of each feature in order to later exclude the alternative features. See Inphi Corporation v. Netlist, Inc., 805 F.3d 1350, 1356-57, 116 USPQ2d 2006, 2010-11 (Fed. Cir. 2015). The mere absence of a positive recitation is not basis for an exclusion. However, a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993). "Rather, as with positive limitations, the disclosure must only 'reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.' ... While silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure." Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 2022 USPQ2d 569 (Fed. Cir. 2022) (quoting Ariad Pharm. Inc. v. Eli Lilly & Co., 589 F.3d 1336, 1351, 94 USPQ2d 1161, 1172).
Claim Rejections - 35 USC § 112(b) or second paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-10, 5-17, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 7 recites the broad recitation “the molar ratio of (B2O3+MgO): (CaO+Na2O+K2O) is greater than 1.0”, and the claim also recites “such as greater than 1.15 or greater than 1.30”, which is the narrower statement of the range/limitation.
Claim 8 recites the broad recitation “at least 54 mol%” of a combination of B2O3 and MgO and the claim also recites “such as at least 57 mol%”, which is the narrower statement of the range/limitation.
Claim 9 recites the broad recitation “at least 33 mol%” of a combination of CaO and MgO and the claim also recites “such as at least 40 mol% or at least 50 mol%”, which is the narrower statement of the range/limitation.
Claim 10 recites the broad recitation “at least 7 mol%” of a combination of Na2O and K2O and the claim also recites “such as at least 15 mol% or at least 30 mol%”, which is the narrower statement of the range/limitation.
Claim 15 recites the broad recitation “about 2 mol% to about 15 mol%” of CaF2, SnF2, NaF, KF, Na2PO3F or a combination thereof and the claim also recites “such as from about 5 mol% to about 15 mol%”, which is the narrower statement of the range/limitation.
Claim 16 recites the broad recitation “about 43 mol% of B2O3, about 21 mol% MgO, about 21 mol% CaO, and about 15 mol% Na2O” and the claim also recites “such as comprising 43.0 mol% of B2O3, 20.7 mol% MgO, 20.7 mol% CaO, and 15.6 mol% Na2O”, which is the narrower statement of the range/limitation.
Claim 17 recites the broad recitations: 1) “about 25 mol% to about 45 mol%” of B2O3 and the claim also recites “such as from about 41 mol% to about 45 mol%”, 2) “about 10 mol% to about 23 mol%” of CaO and the claim also recites “such as from about 13 mol% to about 23 mol%”, 3) “about 10 mol% to about 30 mol%” of MgO and the claim also recites “such as from about 18 mol% to about 23 mol%”, 4) “about 8 mol% to about 22 mol%” of Na2O and the claim also recites “such as from about 13 mol% to about 22 mol%”, which are the narrower statements of the ranges/limitations.
Claim 20 recites the broad recitation “less than 0.1 mol% of ZnO” and the claim also recites “such as substantially no ZnO”, which is the narrower statement of the range/limitation.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 112(d) or fourth paragraph.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13, 17, and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 includes a table of 31 embodiments of the glass composition and depends from claim 1. To reference the different embodiments the examiner will consider the first one, embodiment 1 and number the embodiments accordingly such that the last one is embodiment 31. Claim 1 recites that the amount of B2O3 in the glass composition is “from about 20 mol% to 45 mol%” and the specification defines the term “about “ in paragraph [0026] as being 2%. Therefore, effectively the B2O3 content of claim 1 falls within the range of 18 mol% to 45 mol%. Claim 13 list embodiments 2, 3, 5, 8-10, 15, 6, 8-20, 23, 26, 27, and 29 as comprising “about 45” mol% of B2O3. According to the reading of paragraph [0026], “about 45 mol%” would include values up to 47 mol%. Hence, the listed embodiments fail to further limit claim 1 since 47 mol% is outside the scope of claim 1.
Claim 17 recites the limitation “from about 25 mol% to about 45 mol%” of B2O3, and according to the reading of paragraph [0026], “about 45 mol%” would include values up to 47 mol%, therefore claim 17 fails to further limit the range for B2O3 as recited in instant claim 1 of “from about 20 mol% to 45 mol%”.
Claim 19 recites the limitation “from about 29 mol% to about 45 mol%” of B2O3, and according to the reading of paragraph [0026], “about 45 mol%” would include values up to 47 mol%, therefore claim 19 fails to further limit the range for B2O3 as recited in instant claim 1 of “from about 20 mol% to 45 mol%”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1, 4, 10, 14, 20, 60, and 70 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Maries et al., U.S. Patent Publication US 4,336,153.
Maries et al. discloses a glass comprising in terms of mole percentages, 40-75% of B2O3, 0-60% of ZnO, 0-50% of CaO, and 0-20% of Al2O3. The glass may also comprise small quantities of alkali metal oxides, alkaline earth metal oxides, transition metal oxides, and phosphorus pentoxide. See Abstract and the entire specification, specifically, column 2, lines 6-24. Aries et al. disclose that the glass is melted and then quenched to for a solid material. See column 2, lines 53-55. The compositional ranges of Maries et al. are sufficiently specific to anticipate the optical glass composition as recited in claims 1-18. See MPEP 2131.03.
Maries et al. discloses several examples in Table 2 which the Examiner has numbered from top to bottom as Examples 1-28. Examples 1-3, 5, and 20 are shown in the below table.
B2O3
Na2O
Al2O3
CaO
ZnO
Ex. 1
40.0
20.0
20.0
20.0
0
Ex. 2
30.0
20.0
20.0
30.0
0
Ex. 3
30.0
30.0
20.0
20.0
0
Ex. 5
25.0
40.0
20.0
15.0
0
Ex. 20
40.0
0
5.0
40.0
15.0
Specifically, as to claim 1, Maries discloses Examples 1-3, 5, and 20 (see Table 2), which reads on a glass comprising in terms of mole percentages, about 20 mol% to 45 mol% of B2O3, about 10 mol% to about 80 mol% of one or more glass components selected from the group consisting of CaO and MgO, optionally one or more glass components selected from the group consisting of Na2O, K2O, and a phosphate source, optionally up to about 45 mol% of CaF2, Snf2, NaF, KF, Na2PO3F, or combination thereof, wherein the glass comprises less than 0.1 mol% of CdO and less than 0.1 mol% of phosphate, as recited in instant claim 1.
As to claim 4, Maries et al. disclose Examples 1-3, 5, and 20 (see Table 2), which reads on a glass meeting at least limitation a) from about 10 mol% to about 80 mol% of CaO, as recited in instant claim 4.
As to claim 9, Maries et al. disclose Example 20 (see Table 2), which reads on a glass comprising at least 33 mol% of the combination of CaO and MgO, as recited in instant claim 39.
As to claim 10, Maries et al. disclose Examples 1-3 and 5 (see Table 2), which reads on a glass comprising at least 7 mol% of the combination of Na2O and K2O, as recited in instant claim 10.
As to claim 14, Maries et al. disclose Examples 1-3, 5, and 20 (see Table 2), which reads on a glass comprising less than 30 mol% of CaF2 or SnF2 and less than 30 mol% of CaF2+SnF2, as recited in instant claim 14. Maries et al. comprises no CaF2 or SnF2 which reads on less than 30 mol% since less than 30 mol% includes zero.
As to claim 20, Maries et al. disclose Examples 1-3 and 5 (see Table 2), which reads on a glass comprising less than 0.1 mol% of ZnO, less than 0.1 mol% of CuO, less than 0.1 mol% of Li2O, less than 0.1 mol% of Rb2O, less than 0.1 mol% of BaO, less than 0.1 mol% of SrO, and less than 0.1 mol% of SiO2, as recited in instant claim 20.
As to claim 60, Maries et al. disclose that the glass composition is melted and quenched into a solid material which is further crushed and ground into a fine powder (see column 2, lines 53-55), which reads on the glass being a bulk glass for preparing a particulate glass composition, as recited in instant claim 60.
As to claim 70, Maries et al. disclose Examples 1-3, 5, and 20 (see Table 2), which reads on a glass comprising no ZrO2, as recited in instant claim 70.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 4-15, 17-20, 60, and 70 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 52 of copending Application No. 17/909,247. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional ranges overlap. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05. The Examiner does note that there is only a single point of overlap for the B2O3 component. The claims of the instant application, 17/910,296 recite at their broadest that the B2O3 is in the range of about 20 mol% to 45 mol% and the claims of the copending application 17/909,247 recite at their broadest that the B2O3 is from 45 mol% to about 95 mol%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth A. Bolden whose telephone number is (571)272-1363. The examiner can normally be reached 10:00 am to 6:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
21 February 2026