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 .
Claim Rejections - 35 USC § 112
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 1-6 and 8-9 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.
Concerning claim 1, 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 1 recites the broad recitation 2% or more ZrO2+TiO2+Al2O3+BeO+Cr2O3+Ga2O3+CeO2, and the claim also recites 2 to 30% ZrO2, which is the narrower statement of the range/limitation. The claim(s) 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.
All claims not specifically addressed are rejected due to their dependence on a rejected claim.
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.
Claim 2 is 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.
Concerning claim 2, the limitation “over 0% by mass ZrO2+TiO2+Al2O3” does not further limit claim 1 because claim 1 recites “2 to 30% ZrO2”.
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.
Claim(s) 1-5 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bockmeyer et al. (US20130273320, hereinafter referred to as Bockmeyer).
Regarding claim 1, Bockmeyer discloses a porous glass member (see Bockmeyer at [0097], disclosing a glass ... with pores) containing, in terms of % by mass, 50 to 98% SiO2 (see Bockmeyer at Table 4, Glass C, disclosing an example of a glass comprising 57-62 wt.% SiO2, which is within the claimed range), 2 to 30% ZrO2 (see Bockmeyer at Table 4, Glass C, disclosing an example of a glass comprising 2-5 wt.% ZrO2, which is within the claimed range), 0 to 20% Al2O3 (see Bockmeyer at Table 4, Glass C, disclosing an example of a glass comprising 5-8 wt.% Al2O3, which is within the claimed range), 2% or more ZrO2+TiO2+Al2O3+BeO+Cr2O3+Ga2O3+CeO2 (see Bockmeyer at Table 4, Glass C, disclosing an example of a glass comprising 2-5 wt.% ZrO2, 0-2 wt.% TiO2, 5-8 wt.% Al2O3, 0% BeO, 0% Cr2O3, 0% Ga2O3, and 0% CeO2, which provides a range of ZrO2+TiO2+Al2O3+BeO+Cr2O3+Ga2O3+CeO2 from 7-15%, which is within the claimed range.).
While Bockmeyer does not explicitly disclose a light transmittance of over 1% at any one of wavelengths from 200 to 2600 nm at a thickness of 0.5 mm, the transmittance at a thickness of 0.5mm is a function of the composition of the glass as evidenced by the instant specification at [0031] which states if the content of TiO2 is too large, the glass is likely to be colored and therefore decrease the visible light transmittance. In the instant case, the glass of Bockmeyer has a composition substantially identical to the instantly claimed composition as detailed in the rejections above and below, and therefore, the glass of Bockmeyer would inherently possess the claimed transmittance at a thickness. To further support the inherency of this property, Bockmeyer discloses the transmittance at 550 nm ranges from 75 to 85% (see Bockmeyer at [0040]). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 2, Bockmeyer discloses over 0% by mass ZrO2+TiO2+Al2O3 (see Bockmeyer at Table 4, Glass C, disclosing an example of a glass comprising 2-5 wt.% ZrO2, 0-2 wt.% TiO2, 5-8 wt.% Al2O3, which provides for 7-15% ZrO2+TiO2+Al2O3, which is within the claimed range.).
Regarding claim 3, while Bockmeyer does not explicitly disclose a light transmittance of over 1% at any one of wavelengths from 350 to 800 nm at a thickness of 0.5 mm, the transmittance at a thickness of 0.5mm is a function of the composition of the glass as evidenced by the instant specification at [0031] which states if the content of TiO2 is too large, the glass is likely to be colored and therefore decrease the visible light transmittance. In the instant case, the glass of Bockmeyer has a composition substantially identical to the instantly claimed composition as detailed in the rejections above and below, and therefore, the glass of Bockmeyer would inherently possess the claimed transmittance at a thickness. To further support the inherency of this property, Bockmeyer discloses the transmittance at 550 nm ranges from 75 to 85% (see Bockmeyer at [0040]). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 4, while Bockmeyer does not explicitly disclose a light transmittance of over 1% at any one of wavelengths from 350 to 450 nm at a thickness of 0.5 mm, the transmittance at a thickness of 0.5mm is a function of the composition of the glass as evidenced by the instant specification at [0031] which states if the content of TiO2 is too large, the glass is likely to be colored and therefore decrease the visible light transmittance. In the instant case, the glass of Bockmeyer has a composition substantially identical to the instantly claimed composition as detailed in the rejections above and below, and therefore, the glass of Bockmeyer would inherently possess the claimed transmittance at a thickness. To further support the inherency of this property, Bockmeyer discloses the transmittance at 550 nm ranges from 75 to 85% (see Bockmeyer at [0040]). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 5, while Bockmeyer does not explicitly disclose a light transmittance of 0.1% or more at a wavelength of 400 nm at a thickness of 0.5 mm, the transmittance at a thickness of 0.5mm is a function of the composition of the glass as evidenced by the instant specification at [0031] which states if the content of TiO2 is too large, the glass is likely to be colored and therefore decrease the visible light transmittance. In the instant case, the glass of Bockmeyer has a composition substantially identical to the instantly claimed composition as detailed in the rejections above and below, and therefore, the glass of Bockmeyer would inherently possess the claimed transmittance at a thickness. To further support the inherency of this property, Bockmeyer discloses the transmittance at 550 nm ranges from 75 to 85% (see Bockmeyer at [0040]). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 9, while Bockmeyer does not explicitly disclose the porous glass being applied for sensing using an absorbance change at a wavelength of 350 to 450 nm, Examiner notes a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (See MPEP 2114(II)). In the instant case of claim 9, being applied for sensing using an absorbance change at a wavelength of 350 to 450 nm does not differentiate the claimed glass from the glass of Bockmeyer because the glass of Bockmeyer teaches all of the structural limitations of the claim.
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.
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) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bockmeyer.
Regarding claim 8, Bockmeyer makes obvious having a pore diameter of 1 to 50 nm (see Bockmeyer at [0097], disclosing pore radii in a range from 20 to 1000 nm, which overlaps with the claimed range.) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-9 over Shoji have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber 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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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
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