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 Comment
The “Hv” claimed is defined as the Vicker’s Hardness, “Hvafter” is defined as the Vicker’s Hardness after chemical strengthening and “Hvbefore” is defined as the Vicker’s Hardness before chemical strengthening (see Applicants’ publication par 0119-0121).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-4 and 7 are 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.
Specifically, claim 1, as well as claims 3-4 and 7 depending therefrom, now recites the optical glass being “substantially free” of P2O5 which is not clearly described in the specification as originally filed. While the Office does acknowledge that Applicants’ Examples may include glasses completely free of P2O5 (0%) and the specification does recite the following (see published par 0063-0064 below),
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which paragraph 0063 is considered to also provide clear support for the glass being completely free of P2O5 (note the language “optional” in par 0063 would support both being free of (i.e.0%) as well as the presence of (i.e. >0%)) and paragraph 0064 is considered to provide support for ≤ 5% P2O5, there is absolutely nothing in the specification that clearly teaches “substantially” free nor does the specification clearly define what is even meant by “substantially” free.
Note that the term “substantially” is a broad term and by its definition, can be interpreted as simply a great extent/large amount (i.e. >50%). As such, a recitation of a glass being “substantially free” of something is reasonably interpreted as simply a glass in which that something is just not present in a large amount (i.e. <50%). However, as mentioned above, the specification only provides clear support for being completely free of P2O5 and at most 5wt% P2O5 which is much narrower in scope.
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 1, 3-4 and 7 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “substantially” free in claim 1 is a relative term which renders the claim indefinite. The term “substantially” free is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Specifically, the specification does not clearly teach “substantially” free nor does the specification clearly define what is even meant by “substantially” free. Note that the term “substantially” is a broad term and it is unclear whether being “substantially” free is requiring the glass to simply not have P2O5 in a large amount (i.e. >50%), is it requiring P2O5 to not be intentionally added, is it allowing for trace amounts to be present and if so, how much? Additionally, the specification does not appear to provide any further guidance on what is meant by “substantially free” to determine what is meant by this phrase.
As discussed previously, the specification only provides teachings for the glass being completely free of P2O5 (0%) and for the glass having at most 5wt% P2O5. Given that there is no way to accurately determine the scope of the recited “substantially”, in view of the specification and for the sake of applying prior art, if the prior art teaches P2O5 in a range of 0-5wt%, the “substantially free” limitation will be considered to be met.
Claims 3-4 and 7 are rejected for being dependent on claim 1 above.
Claim Rejections - 35 USC § 103
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.
1. Claim(s) 1, 3-4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiroaki (JPS598637) cited by Applicants in view of either one of USPub20180251395 or WO2018051754.
Regarding claims 1 and 3: Hiroaki teaches an optical glass having a composition, in mass%, shown below (see abstract).
Oxide
Mass%
SiO2
20-38
TiO2
25-35
Na2O
0-15
Nb2O5
0-15
B2O3
0-5
La2O3
None disclosed (0%)
CaO
0-5
K2O
5-20
Li2O
0-5 (this allows for 0% both in mass and mol)
Al2O3
0-5
ZrO2
0-8
BaO
10-25
Sb2O3
0-1
P2O5
0.5-6
The above composition not only provides overlap with the individual ranges and “substantially free” (i.e. 0-5wt%) limitations claimed but allows for SiO2+Na2O totals also overlapping that claimed providing a prima facie case of obviousness (MPEP 2144.05).
Further, regarding the SiO2+Na2O total specifically, it is additionally noted for the record that given that Hiroaki does clearly suggest SiO2+Na2O totals suitable for their inventive compositions being that which falls within the claimed range (see for instance Example 8 in Hiroaki’s Table which has a SiO2+Na2O total of 44mass% and Example 9 which has a SiO2+Na2O total of 40mass%), using a total amount within the range claimed would have been particularly obvious within Hiroaki’s overlapping composition above.
While Hiroaki may not teach their optical glass being chemically strengthened comprising a CS layer on the surface, Hiroaki also does not exclude such features. Instead, Hiroaki only generally teaches an optical glass.
As ‘395 and ‘754, who each similarly teach optical glasses (see 0003-0004 in ‘395 and entirety of ‘754), suggest it being desirable in art to chemically strengthen optical glass producing a CS layer in the surface thereof for enhanced strength (see abstract and 0053 in ‘395 and 0042-0043 in ‘754), it would have been obvious to one having ordinary skill at the time of invention to modify Hiroaki to include chemically strengthening their optical glass producing a CS layer in the surface according to ‘395 or ‘754 in order to enhance strength.
While Hiroaki may not explicitly discuss an Hv change as claimed, the following is noted.
Initially, the glass of Hiroaki has a composition overlapping that claimed. Additionally, Hiroaki was modified above to include chemically strengthening their optical glass according to the teachings of ‘395 or ‘754. Given that chemically strengthening according to ‘395 will be single step using a Na:K salt bath with a ratio of 1:0 at 400oC for 30 min (see Ex 10 and 11 in Table 2 and 0197) which is substantially similar to Applicants’ chemical strengthening method (see Applicants’ discussion in published par 0103 and 0105 of a single step using a sodium NaNO3 salt, potassium KNO3 salt or mixed salt thereof at 370-550oC for 1-1440min) and chemically strengthening according to ‘754 will be done with salts, durations and temperatures also substantially similar to Applicants’ chemical strengthening method (see Applicants’ discussion in published par 0103-0105 compared with for instance that shown in Table 7 of ‘754), one skilled in the art would reasonably conclude the same properties to be achieved (MPEP 2112).
Regarding claims 4 and 7: Hiroaki’s glass has a refractive index of 1.71-1.85 and an Abbe number of 23-30 (Abstract).
2. Claim(s) 1, 3-4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over (JP2013543832, using original document and corresponding English document US2013276880A1) cited by Applicants in view of either one of USPub20180251395 or WO2018051754.
Regarding claims 1 and 3: ‘832 teaches an optical glass having a composition, in mass% such as that shown below.
Oxide
Mass% (see par 0137 in original document and 0138 in English document)
SiO2
25-50
TiO2
15-30
Na2O
3-13
Y2O3+Yb2O3+GdO3+Ta2O5+Nb2O5
0-15
B2O3
0-8
La2O3
None disclosed (0%)
CaO
0-3
K2O
0.5-8
Li2O
0-2 (allows for 0%)
Al2O3
0-3
ZrO2
0-5
BaO
4-18
P2O5
None disclosed (0%)
The above composition not only provides overlap with the individual SiO2, TiO2, Na2O, B2O3, La2O3, CaO, K2O, and Li2O ranges claimed but also allows for Nb2O5 amounts and SiO2+Na2O totals overlapping that claimed providing a prima facie case of obviousness (MPEP 2144.05).
Further, regarding the Nb2O5 content and SiO2+Na2O total, it is additionally noted for the record that given that ‘832 does clearly suggest Nb2O5 individual content as well as SiO2+Na2O totals suitable for their inventive compositions being that which falls within the claimed ranges (see for instance Examples in Tables), using such a Nb2O5 amount and SiO2+Na2O total amount within the ranges claimed would have been particularly obvious within ‘832’s overlapping composition above.
Additionally, although not shown above and ‘832 teaches that while not preferred, ‘832 does teach that their glass may contain antimony oxide (Sb2O3) for refining in conventional amounts up to 1wt% (see 0046, 0140) overlapping the claimed range (MPEP 2144.05).
While ‘832 may not teach their optical glass being chemically strengthened comprising a CS layer on the surface, ‘832 also does not exclude such features. Instead, ‘832 only generally teaches an optical glass.
As ‘395 and ‘754, who each similarly teach optical glasses (see 0003-0004 in ‘395 and entirety of ‘754), suggest it being desirable in art to chemically strengthen optical glass producing a CS layer in the surface thereof for enhanced strength (see abstract and 0053 in ‘395 and 0042-0043 in ‘754), it would have been obvious to one having ordinary skill at the time of invention to modify ‘832 to chemically strengthen their optical glass producing a CS layer in the surface according to ‘395 or ‘754 in order to enhance strength.
While ‘832 may not explicitly discuss an Hv change as claimed, the following is noted.
Initially, the glass of ‘832 has a composition overlapping that claimed. Additionally, ‘832 was modified above to include chemically strengthening their optical glass according to the teachings of ‘395 or ‘754. Given that chemically strengthening according to ‘395 will be single step using a Na:K salt bath with a ratio of 1:0 at 400oC for 30 min (see Ex 10 and 11 in Table 2 and 0197) which is substantially similar to Applicants’ chemical strengthening method (see Applicants’ discussion in published par 0103 and 0105 of a single step using a sodium NaNO3 salt, potassium KNO3 salt or mixed salt thereof at 370-550oC for 1-1440min) and chemically strengthening according to ‘754 will be done with salts, durations and temperatures also substantially similar to Applicants’ chemical strengthening method (see Applicants’ discussion in published par 0103-0105 compared with for instance that shown in Table 7 of ‘754), one skilled in the art would reasonably conclude the same properties to be achieved (MPEP 2112).
Regarding claims 4 and 7: ‘832’s glass has a refractive index of greater than 1.6-1.85 (par 0139 in English document) and Abbe number greater than or equal to 20 (0044 in English document).
3. Claim(s) 1, 3-4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over (CN110316958) cited by Applicants in view of either one of USPub20180251395 or WO2018051754.
Regarding claims 1 and 3: ‘958 teaches an optical glass that can have a composition, in mass%, as described and shown in Table below (see entire disclosure and citation from ‘958 below which is clarified with the provided table).
“(6)The optical glass according to any one of (1) to (5), wherein the composition is expressed by weight percent, comprising: SiO 2 : 33 to 42%; and/or TiO 2 : 22 to 32%; and/or Na 2 O: 10 ～20%; and/or BaO: 5 to 15%; and/or Nb2O5: 3 to 14%; and/or K2O: 0 to 4.5%; and/or B2O3: 0 to 5%; and/or SrO: 0 ～5%; and/or CaO: 0 to 5%; and/or MgO: 0 to 5%; and/or Ln2O3: 0 to 5%; and/or ZrO2: 0 to 3%; and/or Li2O: 0 ～4%; and/or Al2O3: 0 to 3%; and/or ZnO: 0 to 3%; and/or Sb2O3: 0 to 0.5%, wherein the Ln2O3 is one of La2O3, Gd2O3, Y2O3, Yb2O3 Or a variety.”
Oxide
Mass%
SiO2
33-42
TiO2
22-32
Na2O
10-20
Nb2O5
3-14
B2O3
0-5
La2O3 (Ln2O3)
0-5
CaO
0-5
K2O
0-4.5
Li2O
0-4 (allows for 0%)
Al2O3
0-3
ZrO2
0-3
BaO
5-15
Sb2O3
0-0.5
P2O5
None disclosed (0%)
The above composition not only provides overlap with the individual ranges claimed but allows for SiO2+Na2O totals also overlapping that claimed providing a prima facie case of obviousness (MPEP 2144.05).
Further, regarding the SiO2+Na2O total specifically, note that at minimum the above composition would require at least 33% SiO2 and at least 10% Na2O which necessarily provides for a total of at least 43% falling within the range claimed.
While ‘958 may not teach their optical glass being chemically strengthened comprising a CS layer on the surface, ‘958 also does not exclude such features. Instead, ‘958 only generally teaches an optical glass.
As ‘395 and ‘754, who each similarly teach optical glasses (see 0003-0004 in ‘395 and entirety of ‘754), suggest it being desirable in art to chemically strengthen optical glass producing a CS layer in the surface thereof for enhanced strength (see abstract and 0053 in ‘395 and 0042-0043 in ‘754), it would have been obvious to one having ordinary skill at the time of invention to modify ‘958 to include chemically strengthening their optical glass producing a CS layer in the surface according to ‘395 or ‘754 in order to enhance strength.
While ‘958 may not explicitly discuss an Hv change as claimed, the following is noted.
Initially, the glass of ‘958 has a composition overlapping that claimed. Additionally, ‘958 was modified above to include chemically strengthening their optical glass according to the teachings of ‘395 or ‘754. Given that chemically strengthening according to ‘395 will be single step using a Na:K salt bath with a ratio of 1:0 at 400oC for 30 min (see Ex 10 and 11 in Table 2 and 0197) which is substantially similar to Applicants’ chemical strengthening method (see Applicants’ discussion in published par 0103 and 0105 of a single step using a sodium NaNO3 salt, potassium KNO3 salt or mixed salt thereof at 370-550oC for 1-1440min) and chemically strengthening according to ‘754 will be done with salts, durations and temperatures also substantially similar to Applicants’ chemical strengthening method (see Applicants’ discussion in published par 0103-0105 compared with for instance that shown in Table 7 of ‘754), one skilled in the art would reasonably conclude the same properties to be achieved (MPEP 2112).
Regarding claims 4 and 7: ‘958’s glass has a refractive index of 1.72-8.8 and Abbe number of 22-30 (see citation below).
“(11) The optical glass according to any one of (1) to (10) has a refractive index nd of 1.72 to 1.80, preferably 1.73 to 1.79, more preferably 1.74 to 1.78, and an Abbe number νd of 22 to 30, preferably 23 ～29, more preferably 24 to 28.”
Response to Arguments
Applicant’s arguments filed January 5, 2026 with respect to Yoichi (JP2010083703) have been considered but are moot because the new ground of rejection no longer relies on Yoichi.
Applicant's arguments filed January 5, 2026 regarding the rest of the cited references have been fully considered but they are not persuasive. Applicants’ arguments are summarized below.
Applicants argue against Hiroaki (JPS598637) teaching or rendering obvious the invention as now claimed because the claim now requires the glass to be substantially free of P2O5 as by excluding P2O5, an increase in partial dispersion ratio can be reduced (Applicants cite their disclosure par 0030), and Hiroaki requires 0.5 to 6.5wt% P2O5.
This is not persuasive. Initially, Applicants appear to be arguing that their “substantially free” of P2O5 limitation means exclusion (i.e. 0% P2O5) and the Examiner notes that exclusion is not actually being claimed.
Note first that although claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Additionally, while Applicants appear to be arguing that “substantially free” of P2O5 means exclusion of P2O5, as discussed in the Office Action, the specification never actually teaches or defines the claimed limitation “substantially free” to mean exclusion. Instead, the specification only provides teachings for the glass being completely free of P2O5 (0%) to at most 5wt% P2O5. As such, for the sake of applying prior art, the “substantially free” limitation was interpreted as P2O5 being in a range of 0-5wt%. In the instant case, as Hiroaki teaches P2O5 of 0.5-6.5% which overlaps 0-5wt%, Hiroaki is considered to render obvious Applicants’ limitation
Even further, although Applicants cite their disclosure, par 0030, to assert that by excluding P2O5, an increase in partial dispersion ratio can be reduced, it is noted for the record that paragraph 0030 does not actually say P2O5 must be excluded to arrive at this argued feature. Instead, the paragraph states that “if the content of the P2O5 is 5.0% or less, an increase of the partial dispersion ratio due to an excessive content of the P2O5 component can be reduced.” This teaching is only suggesting that P2O5 content should be 5% or less for such an effect. In the instant case, as mentioned above, Hiroaki teaches P2O5 of 0.5-6.5% which overlaps 5wt% or less. While Hiroaki may not mention Applicants’ effect for limiting the P2O5 content, Hiroaki does not have to. Note that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants argue that the cited art of ‘832 does not teach or render obvious the invention as now claimed because the claim requires Sb2O3 of 0.02% or more for specific effects and ‘832 teaches away from the inclusion of Sb2O3 as they teach it preferably not being contained.
This is not persuasive. Initially, while the Office does acknowledge that ‘832 teaches that the addition of Sb2O3 may not be preferred, note that preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971) and a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989).
In the instant case, although ‘832 may teach not preferring the addition of Sb2O3, ‘832’s broader disclosure actually teaches that their glass may contain in less preferred embodiments antimony oxide (Sb2O3) for refining in conventional amounts up to 1wt% (see 0046, 0140) and this amount overlaps the claimed range (MPEP 2144.05).
Applicants argue against the cited art of CN110316958 (‘958) teaching the claimed invention because all of ‘958’s Examples contain K2O in an amount of 2.5% or less, Applicants assert that having K2O of 2.6% or more and Nb2O5 of 6.5-11.62% as now claimed allows for certain effects and while ‘958 may disclose broad Nb2O5 ranges of 2-16, 3-14 and 6-12%, they provide no motivation to select the specific range of 6.5-11.62% claimed nor the effects it provides.
This is not persuasive. Initially, although ‘958’s Examples may not meet the claimed invention, it has been held by the courts that a reference is not limited to their Examples and preferred embodiments but instead, what it teaches as a whole. In the instant case, as discussed in the Office Action, ‘958 as a whole does teach a composition overlapping that claimed (MPEP 2144.05) thereby rendering it obvious.
Additionally, although Applicants appear to be arguing effects for their K2O of 2.6% or more and Nb2O5 of 6.5-11.62%, applicants’ arguments are not persuasive because reviewing Applicants’ Examples there does not appear to be anything critical about having these ranges. Specifically, note that Applicants Examples 7, 21, 25 and 27, although having Nb2O5 higher than 11.62%, still obtain Applicants’ argued properties and Examples 2, 20 and 28, although having K2O less than 2.6%, also still have the argued properties. There is nothing in Applicants Examples that shows that having the claimed ranges specifically in combination is critical nor that such combination provides anything truly unexpected.
Further, while Applicants argue that ‘958 teaches broad Nb2O5 ranges of 2-16, 3-14 and 6-12%, note that these ranges are not so broad as to not render obvious the claimed 6.5-11.62% range. In contrast, note that ‘958’s teaching of 6-12% is almost the exact same as the 6.5-11.62% range claimed. As overlapping ranges has been held by the courts to provide for a prima facie case of obviousness absent a showing of unexpected results and Applicants have yet to provide such results, the rejection is proper and maintained.
Even further, although Applicants argue that ‘958 does not teach the effects the specific range of 6.5-11.62% provides, this is not persuasive because they do not have to. Again, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784