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 .
Status of the Claims
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Claims 9, 11-16, 19, and 20 are currently pending.
Claims 1-8, 10, 17, and 18 have been cancelled.
Claims 9, 11-16, 19, and 20 are currently rejected.
Claims 9, 11-16, 19, and 20 are rejected under 35 U.S.C. 112(b) or second paragraph.
Claims 9, 11-16, 19, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Uehara, U.S. Patent Application Publication US 2009/0062101 A1.
Claims 9, 11-16, 19, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Shimizu, U.S. Patent Application Publication US 2009/0131240 A1.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 19 March 2026 has been entered.
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 9, 11-16, 19, 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.
Claim 9 recites a content of SiO2 of 2-8%, a content of B2O3 of 8-27%, a content of P2O5 of 0-30% and a total content of SiO2+B2O3+P2O5 of 15-30%. This renders the claim indefinite since it is unclear how the glass can comprise from 20-30% of P2O5, when the glass requires at least 2% of SiO2 and at least 8% of B2O3 while having a total content of SiO2+B2O3+P2O5 of at most 30%.
Claims 11-16, 19, and 20 are rejected as indefinite since they depend either directly or indirectly from claim 9 without correcting the issue.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 9, 11-16, 19, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Uehara, U.S. Patent Application Publication US 2009/0062101 A1.
Uehara teaches a glass in terms of mass% comprising 6-10% of SiO2, 12-24% of B2O3, 26-42% of La2O3, 1.5-10% of ZrO2, 1-10% of Nb2O5, 1-15% of Ta2O5, 1-10% of WO3, 16-26% of ZnO, 0.6-4% of Li2O, 0-10% of Gd2O3, 0-5% of GeO2, 0-10% of Al2O3, 0-10% of TiO2, 0-10% of MgO+CaO+SrO+BaO, and 0-1% of Sb2O3. See paragraphs [0016]-[0018]. Uehara teaches the glass can be used for various articles including spherical and aspherical lenses for optical systems. See paragraphs [0002]-[0005] and [0024].
Uehara fails to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 9, 11-16, 9, and 20. However, the weight percent ranges taught by Uehara have overlapping compositional ranges with a glass comprising in mass % 2-8% of SiO2, 8-27% of B2O3, 0-30% of P2O5, 15-30% of SiO2+B2O3+P2O5, 3-15% of Al2O3, 0-2% of Li2O, 0-10% of Na2O, 0-10% of K2O, 0-5% of Rb2O, 0-5% of Cs2O, 0-15% of Li2O+Na2O+K2O+Rb2O+Cs2O, 0-20% of MgO, 0-25% of CaO, 0-25% of SrO, 0-30% of BaO, 3-55% of ZnO, 10-50% of La2O3, 0-15% of Y2O3, 0-25% of Gd2O3, 0-10% of Yb2O3, 0-10% of CeO2, 2-8% of ZrO2, 4-20% of TiO2, 0-10% of SnO2, 0-30% of Nb2O5, 0-15% of t2o5, 0-15% of WO3, 0-20% of Bi2O3, 0-5% of Ga2O3, 0-5% of In2O3, 0-5% of GeO2, 0-1% of Sb2O3, 65-85% of ZnO+MgO+CaO+SrO+BaO+Y2O3+La2O3+Gd2O3+ZrO2+TiO2+Al2O3+Nb2O5+Ta2O5+WO3+Bi2O3, 0-10% of Fe2O3, and 0-3% of V2O5+Cr2O3+MnO2+Co2O3+NiO+CuO+MoO+Au2O3+Ag2O as recited in instant claim 9. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Uehara because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Uehara overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
As to the wetting angle to water of 60° or more as recited in claim 1, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the wetting angle property as recited in claim 1.
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).
Uehara teaches the glass can be used for various articles including spherical and aspherical lenses for optical systems. See paragraph [0002]-[0005] and [0024]. The lenses of Uehara read on the glass article as recited in claim 1. Specifically, a lenses reads on articles such as, a cover glasses, a mirror having a glass-containing layer as a surface layer, a laboratory equipment, an accessory, and a handicraft, as recited in instant claim 1.
As to claim 11, Uehara teaches that the glass in terms of mass% comprising 12-24% of B2O3, 16-26% of ZnO, and 26-42% of La2O3 (see paragraph [0016]), which reads on a glass in terms of mass% comprising 8-25% of B2O3, 3-35% of ZnO, and 15-45% of La2O3 as recited in instant claim 11.
As to the wetting angle to water of 80° or more as recited in claim 12, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the wetting angle property as recited in claim 12.
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).
As to the water resistance Dw of grade 1 as recited in claim 13, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the water resistance Dw property as recited in claim 13.
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).
As to the Knoop hardness Hk of 450 or more as recited in claim 14, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the Knoop hardness Hk property as recited in claim 14.
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).
As to the Knoop hardness Hk of 550 or more as recited in claim 15, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the Knoop hardness Hk property as recited in claim 15.
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).
As to the mass reduction rate of the glass in a powder method alkali resistance test is 0.10 mass% or less as recited in claim 16, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the mass reduction rate property as recited in claim 16.
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).
As to claim 19, Uehara teaches that the glass in terms of mass% comprising 12-24% of B2O3, 16-26% of ZnO, and 26-42% of La2O3 (see paragraph [0016]), which reads on a glass in terms of mass% comprising 8-25% of B2O3, 3-35% of ZnO, and 15-45% of La2O3 as recited in instant claim 19.
As to the Knoop hardness Hk of 450 or more and a mass reduction rate of 0.10 mass% or less as recited in claim 19, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the Knoop hardness Hk and mass reduction rate properties as recited in claim 19.
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).
As to the Knoop hardness Hk of 550 or more as recited in claim 20, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the Knoop hardness Hk property as recited in claim 20.
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).
Claims 9, 11-16, 19, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Shimizu, U.S. Patent Application Publication US 2009/0131240 A1.
Shimizu teaches a glass in terms of mass% comprising 4-15% of SiO2, 15-28% of B2O3, 0.1-6% of Li2O, 13-35% of La2O3, 2-8% of ZrO2, 1-10% of Ta2O5, 1-20% of ZnO, 0-30% of Gd2O3, 0-15% of Y2O3, 0-5% of TiO2, 0-5% of Nb2O5, 0-5% of WO3, 0-5% of MgO, 0-10% of CaO, 0-10% of SrO, 0-10% of BaO, 0-10% of GeO2, 0-5% of Al2O3, 0-10% of Yb2O3, 0-10% of Na2O, 0-10% of K2O, 0-10% of Sb2O3. See paragraphs [0031]-[0054]. Shimizu teaches the glass can be used as an optical element such as lenes for digital cameras and portable equipment, optical systems. See paragraphs [0002] and [0003]. Shimizu teaches the lenses can be used in astrometric telescopes, digital cameras, cellular phones. See paragraphs [0008] and [0009]. Shimizu teaches the glasses are used in industrial optical equipment used in imaging apparatuses. See paragraph [0127].
Shimizu fails to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 9, 11-16, 9, and 20. However, the weight percent ranges taught by Shimizu have overlapping compositional ranges with a glass comprising in mass % 2-8% of SiO2, 8-27% of B2O3, 0-30% of P2O5, 15-30% of SiO2+B2O3+P2O5, 3-15% of Al2O3, 0-2% of Li2O, 0-10% of Na2O, 0-10% of K2O, 0-5% of Rb2O, 0-5% of Cs2O, 0-15% of Li2O+Na2O+K2O+Rb2O+Cs2O, 0-20% of MgO, 0-25% of CaO, 0-25% of SrO, 0-30% of BaO, 3-55% of ZnO, 10-50% of La2O3, 0-15% of Y2O3, 0-25% of Gd2O3, 0-10% of Yb2O3, 0-10% of CeO2, 2-8% of ZrO2, 4-20% of TiO2, 0-10% of SnO2, 0-30% of Nb2O5, 0-15% of t2o5, 0-15% of WO3, 0-20% of Bi2O3, 0-5% of Ga2O3, 0-5% of In2O3, 0-5% of GeO2, 0-1% of Sb2O3, 65-85% of ZnO+MgO+CaO+SrO+BaO+Y2O3+La2O3+Gd2O3+ZrO2+TiO2+Al2O3+Nb2O5+Ta2O5+WO3+Bi2O3, 0-10% of Fe2O3, and 0-3% of V2O5+Cr2O3+MnO2+Co2O3+NiO+CuO+MoO+Au2O3+Ag2O as recited in instant claim 9. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Shimizu because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Shimizu overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
As to the wetting angle to water of 60° or more as recited in claim 1, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the wetting angle property as recited in claim 1.
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).
Shimizu teaches the glass can be used as an optical element such as lenes for digital cameras and portable equipment, optical systems. See paragraphs [0002] and [0003]. Shimizu teaches the lenses can be used in astrometric telescopes, digital cameras, cellular phones. See paragraphs [0008] and [0009]. Shimizu teaches the glasses are used in industrial optical equipment used in imaging apparatuses. See paragraph [0127].
The lenses of Shimizu read on the glass article as recited in claim 1. Specifically, a lenses reads on articles such as, a cover glasses, a mirror having a glass-containing layer as a surface layer, a laboratory equipment, an accessory, and a handicraft, as recited in instant claim 1.
As to claim 11, Shimizu teaches that the glass in terms of mass% comprising 15-28% of B2O3, 1-20% of ZnO, and 13-35% of La2O3 (see paragraphs [0033], [0035], [0038]), which reads on a glass in terms of mass% comprising 8-25% of B2O3, 3-35% of ZnO, and 15-45% of La2O3 as recited in instant claim 11.
As to the wetting angle to water of 80° or more as recited in claim 12, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the wetting angle property as recited in claim 12.
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).
As to the water resistance Dw of grade 1 as recited in claim 13, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the water resistance Dw property as recited in claim 13.
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).
As to the Knoop hardness Hk of 450 or more as recited in claim 14, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the Knoop hardness Hk property as recited in claim 14.
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).
As to the Knoop hardness Hk of 550 or more as recited in claim 15, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the Knoop hardness Hk property as recited in claim 15.
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).
As to the mass reduction rate of the glass in a powder method alkali resistance test is 0.10 mass% or less as recited in claim 16, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the mass reduction rate property as recited in claim 16.
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).
As to claim 19, Shimizu teaches that the glass in terms of mass% comprising 15-28% of B2O3, 1-20% of ZnO, and 13-35% of La2O3 (see paragraphs [0033], [0035], [0038]), which reads on a glass in terms of mass% comprising 8-25% of B2O3, 3-35% of ZnO, and 15-45% of La2O3 as recited in instant claim 19.
As to the Knoop hardness Hk of 450 or more and a mass reduction rate of 0.10 mass% or less as recited in claim 19, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the Knoop hardness Hk and mass reduction rate properties as recited in claim 19.
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).
As to the Knoop hardness Hk of 550 or more as recited in claim 20, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the Knoop hardness Hk property as recited in claim 20.
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).
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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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
1 May 2026
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