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 § 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) 20-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (US20120219792, hereinafter referred to as Yamamoto).
Regarding claim 20, Yamamoto discloses a glass material (See Yamamoto at the Abstract, disclosing a glass), comprising the following components by weight percentage: 50-70% of SiO2 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 70.6 mol% SiO2, which corresponds to approximately 64.82 wt.% SiO2, which is within the claimed range.); 3-15% of B2O3 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 7.7 mol% B2O3, which corresponds to approximately 8.19 wt.% B2O3, which is within the claimed range.); 4.1-10% of TiO2 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 3.2 mol% TiO2, which corresponds to approximately 3.91 wt.% TiO2, which is close to touching the claimed range.) A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (see MPEP 2144.05(I), second paragraph); 4.3-12% of ZnO (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 4.4 mol% ZnO, which corresponds to approximately 5.47 wt.% ZnO, which is within the claimed range.); 0.5-10% of Al2O3 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 2.6 mol% Al2O3, which corresponds to approximately 4.05 wt.% Al2O3, which is within the claimed range.); and 5-22% of Na2O+K2O (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 6.7 mol% Na2O and 4.7 mol% K2O, which corresponds to approximately 6.35 wt.% Na2O and 6.77 wt.% K2O, for a sum total of 6.35+6.77= 13.12 wt.% which is within the claimed range.), wherein B2O3/SiO2 is 0.06-0.26 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising approximately 8.19 wt.% B2O3 and 64.82 wt.% SiO2 as detailed above, which provides a ratio of B2O3/SiO2 of approximately 8.19/64.82= 0.126, which is within the claimed range.), (TiO2+ZnO)/Al2O3 is 0.5- 8.0 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising approximately 3.91 wt.% TiO2, 5.47 wt.% ZnO, and 4.05 wt.% Al2O3 which provides a ratio of (TiO2+ZnO)/Al2O3 of (3.91+5.47)/4.05= 2.32, which is within the claimed range.), and (SiO2+TiO2)/(Na2O+ZnO) is 3.0-5.76 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising approximately 64.82 wt.% SiO2, 3.91 wt.% TiO2, 6.35 wt.% Na2O, and 5.47 wt.% ZnO. Examiner notes this provides a ratio of (SiO2+TiO2)/(Na2O+ZnO) of (64.82+3.91)/(6.35+5.47)= 5.81 which is close to touching the claimed range.) A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (see MPEP 2144.05(I), second paragraph).
Regarding claim 21, Yamamoto discloses further comprising the following components by weight percentage: 0-10% of MgO+CaO+SrO+BaO; and/or 0-5% of Li2O; and/or 0-5% of P2O5; and/or 0-5% of ZrO2; and/or 0-5% of La2O3; and/or 0-5% of Y2O3; and/or 0-5% of Gd2O3; and/or 0-5% of Nb2O5; and/or 0-5% of WO3; and/or 0-1% of clarifying agent (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 0% Li2O, which is within the claimed range.).
Regarding claim 22, Yamamoto discloses 50-70% of SiO2 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 70.6 mol% SiO2, which corresponds to approximately 64.82 wt.% SiO2, which is within the claimed range.); 3-15% of B2O3 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 7.7 mol% B2O3, which corresponds to approximately 8.19 wt.% B2O3, which is within the claimed range.); 0.5-10% of TiO2 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 3.2 mol% TiO2, which corresponds to approximately 3.91 wt.% TiO2, which is close to touching the claimed range.); 4.3-12% of ZnO (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 4.4 mol% ZnO, which corresponds to approximately 5.47 wt.% ZnO, which is within the claimed range.); 0.5-10% of Al2O3 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 2.6 mol% Al2O3, which corresponds to approximately 4.05 wt.% Al2O3, which is within the claimed range.); 5-22% of Na2O+K2O (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 6.7 mol% Na2O and 4.7 mol% K2O, which corresponds to approximately 6.35 wt.% Na2O and 6.77 wt.% K2O, for a sum total of 6.35+6.77= 13.12 wt.% which is within the claimed range.); 0-10% of MgO+CaO+SrO+BaO (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 0% MgO, 0% CaO, 0% SrO, and 0% BaO, which provides a sum total of 0%, which is within the claimed range.); 0-5% of Li2O (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 0% Li2O, which is within the claimed range.); 0-5% of P2O5 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 0% P2O5); 0-5% of ZrO2 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 0% ZrO2); 0-5% of La2O3 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 0% La2O3); 0-5% of Y2O3 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 0% Y2O3); 0-5% of Gd2O3 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 0% Gd2O3); 0-5% of Nb2O5 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 0% Nb2O5); 0-5% of WO3 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 0% WO3); and 0-1% of clarifying agent (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 0% clarifying agent), wherein B2O3/SiO2 is 0.06-0.26 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising approximately 8.19 wt.% B2O3 and 64.82 wt.% SiO2 as detailed above, which provides a ratio of B2O3/SiO2 of approximately 8.19/64.82= 0.126, which is within the claimed range.), (TiO2+ZnO)/Al2O3 is 0.5-8.0 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising approximately 3.91 wt.% TiO2, 5.47 wt.% ZnO, and 4.05 wt.% Al2O3 which provides a ratio of (TiO2+ZnO)/Al2O3 of (3.91+5.47)/4.05= 2.32, which is within the claimed range.) and (SiO2+TiO2)/(Na2O+ZnO) is 3.0-5.76 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising approximately 64.82 wt.% SiO2, 3.91 wt.% TiO2, 6.35 wt.% Na2O, and 5.47 wt.% ZnO. Examiner notes this provides a ratio of (SiO2+TiO2)/(Na2O+ZnO) of (64.82+3.91)/(6.35+5.47)= 5.81 which is close to touching the claimed range.) A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (see MPEP 2144.05(I), second paragraph).
Regarding claim 23, Yamamoto discloses the components by weight percentage, wherein B2O3/SiO2 is 0.08-0.2; and/or (TiO2+ZnO)/Al2O3 is 0.7-7.0; and/or ZnO/B2O3 is 0.2-1.8; and/or (Na2O+K2O)/Al2O3 is 0.8-8.0; and/or (Na2O+K2O)/(B2O3+ZnO) is 0.2-2.5; and/or (B2O3+K2O)/Al2O3 is 1.0-10.0 ; and/or(MgO+CaO+SrO+BaO)/ZnO is below 1.0; and/or (MgO+CaO+SrO+BaO)/Al2O3 is below 1.0; and/or (MgO+CaO+SrO+BaO)/(Na2O+K2O) is below 1.0 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising approximately 8.19 wt.% B2O3 and 64.82 wt.% SiO2 as detailed above, which provides a ratio of B2O3/SiO2 of approximately 8.19/64.82= 0.126, which is within the claimed range.).
Regarding claim 24, Yamamoto discloses the following components by weight percentage: 55-68% of SiO2; and/or more than 5% but less than or equal to 13% of B2O3; and/or 4.1-8% of TiO2; and/or 4.3-10% of ZnO; and/or 1-8% of Al2O3; and/or 6-20% of Na2O+K2O; and/or 0-5% of MgO+CaO+SrO+BaO; and/or 0-3% of Li2O; and/or 0-3% of P2O5; and/or 0-3% of ZrO2; and/or 0-3% of La2O3; and/or 0-3% of Y2O3; and/or 0-3% of Gd2O3; and/or 0-3% of Nb2O5; and/or 0-3% of WO3; and/or 0-0.5% of clarifying agent (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 70.6 mol% SiO2, which corresponds to approximately 64.82 wt.% SiO2, which is within the claimed range.).
Regarding claim 25, Yamamoto discloses comprising the components by weight percentage, wherein B2O3/SiO2 is 0.1-0.18; and/or (TiO2+ZnO)/Al2O3 is 1.0-5.0; and/or ZnO/B2O3 is 0.3-1.0; and/or (Na2O+K2O)/Al2O3 is 1.0-6.0; and/or (Na2O+K2O)/(B2O3+ZnO) is 0.3-2.0; and/or (B2O3+K2O)/Al2O3 is 1.5-8.0 ; (MgO+CaO+SrO+BaO)/ZnO is below 0.5; and/or (MgO+CaO+SrO+BaO)/Al2O3 is below 0.5; and/or (MgO+CaO+SrO+BaO)/(Na2O+K2O) is below 0.5 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising approximately 8.19 wt.% B2O3 and 64.82 wt.% SiO2 as detailed above, which provides a ratio of B2O3/SiO2 of approximately 8.19/64.82= 0.126, which is within the claimed range.).
Regarding claim 26, Yamamoto discloses comprising the following components by weight percentage: 60-68% of SiO2; and/or 6-12% of B2O3; and/or 4.1-7% of TiO2; and/or 4.3-8% of ZnO; and/or 2-7% of Al2O3; and/or 8-18% of Na2O+K2O; and/or 0-1% of La2O3; and/or 0-1% of Y2O3; and/or 0-1% of Gd2O3; and/or 0-1% of Nb2O5; and/or 0-1% of WO3 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 70.6 mol% SiO2, which corresponds to approximately 64.82 wt.% SiO2, which is within the claimed range.).
Regarding claim 27, Yamamoto discloses comprising the components by weight percentage, wherein (SiO2+TiO2)/(Na2O+ZnO) is 4.0-8.0; and/or ZnO/B2O3 is 0.4- 0.8; and/or (Na2O+K2O)/Al2O3 is 1.5-5.0; and/or (Na2O+K2O)/(B2O3+ZnO) is 0.5-1.5; and/or (B2O3+K2O)/Al2O3 is 2.0-6.0 ; (MgO+CaO+SrO+BaO)/ZnO is below 0.2; and/or (MgO+CaO+SrO+BaO)/Al2O3 is below 0.2; and/or (MgO+CaO+SrO+BaO)/(Na2O+K2O) is below 0.2 (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 64.82 wt.% SiO2, 3.91 wt.% TiO2, 6.35 wt.% Na2O, and 5.47 wt.% ZnO as detailed in the rejection of claim 1 above. Examiner notes this provides a (SiO2+TiO2)/(Na2O+ZnO) ratio of (64.82+3.91)/(6.35+5.47)= 5.82 which is close to touching the claimed range.).
Regarding claim 28, Yamamoto discloses comprising the following components by weight percentage: 2-12% of Na2O; and/or 2-12% of K2O; and/or 0-5% of MgO; and/or 0-5% of CaO; and/or 0-5% of SrO; and/or 0-5% of BaO (see the rejection of claim 1 above, showing Yamamoto discloses at Table 1 Example Glass D has an Na2O content of approximately 6.35 wt.% Na2O, which is within the claimed range.).
Regarding claim 29, Yamamoto discloses comprising the following components by weight percentage: 4-9% of Na2O; and/or 4-9% of K2O; and/or 0-2% of MgO; and/or 0-2% of CaO; and/or 0-2% of SrO; and/or 0-2% of BaO; and/or do not contain F; and/or do not contain Ta2O5; and/or do not contain Li2O; and/or do not contain P2O5; and/or do not contain ZrO2 (see the rejection of claim 1 above, showing Yamamoto discloses at Table 1 Example Glass D has an Na2O content of approximately 6.35 wt.% Na2O, which is within the claimed range.).
Regarding claim 30, Yamamoto discloses comprising the components by weight percentage, wherein the total content of La2O3, Y2O3, Gd2O3, Nb2O5 and WO3 is below 3% (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 0% La2O3, 0% Y2O3, 0% Gd2O3, 0% Nb2O5, and 0% WO3 which provides a sum total of 0% which is within the claimed range.).
Regarding claim 31, while Yamamoto does not explicitly disclose a light transmittance Z360nm is above 78%, this is inherent to the composition of the glass as evidenced by the instant specification at [0031], [0033], [0035], [0037], and [0045]. 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). This inherency is further evidenced by the Abstract of Yamamoto, disclosing a transmittance at a wavelength of 428 nm of at least 86% when the thickness of the glass substrate is from 0.1 to 3.0 mm.
Regarding claim 32, while Yamamoto does not explicitly disclose a light transmittance Z360nm is above 85%, this is inherent to the composition of the glass as evidenced by the instant specification at [0031], [0033], [0035], [0037], and [0045]. 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). This inherency is further evidenced by the Abstract of Yamamoto, disclosing a transmittance at a wavelength of 428 nm of at least 86% when the thickness of the glass substrate is from 0.1 to 3.0 mm.
Regarding claim 33, Examiner notes being a packaging for housing a photosensitive device does not carry patentable weight. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) "[A]pparatus claims cover what a device is, not what a device does." see MPEP 2114(II). However, Yamamoto discloses a cover glass for display devices (See Yamamoto at [0001]) which Examiner notes corresponds to packaging for housing a photosensitive device per the instant specification at [0101] which discloses imaging devices.
Regarding claim 34, Examiner notes being a glass element, made of the glass material does not carry patentable weight. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) "[A]pparatus claims cover what a device is, not what a device does." see MPEP 2114(II). However, Yamamoto discloses a cover glass for display devices (See Yamamoto at [0001]) which Examiner notes corresponds to a glass element, made of the glass material per the instant specification at [0101] which discloses imaging devices.
Regarding claim 35, Examiner notes being a device, comprising the glass material or comprising the glass element made of the glass material does not carry patentable weight. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) "[A]pparatus claims cover what a device is, not what a device does." see MPEP 2114(II). However, Yamamoto discloses a cover glass for display devices (See Yamamoto at [0001]) which Examiner notes corresponds to a device, comprising the glass material or comprising the glass element made of the glass material per the instant specification at [0101] which discloses imaging devices.
Regarding claim 36, Yamamoto discloses the glass material contains 4.9-12% of ZnO (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 4.4 mol% ZnO, which corresponds to approximately 5.47 wt.% ZnO, which is within the claimed range.).
Regarding claim 37, Yamamoto discloses the glass material contains 4.9-12% of ZnO (see Yamamoto at Table 1, Example Glass D, disclosing a glass comprising 4.4 mol% ZnO, which corresponds to approximately 5.47 wt.% ZnO, which is within the claimed range.).
Response to Arguments
Applicant's arguments filed 07/23/2026 have been fully considered but they are not persuasive. At the bottom of page 7, Applicant argues that nothing in Yamamoto could or would have led one to have altered the glass of Example Glass D in a manner to result in the claimed TiO2 range of 4.1-10 weight% TiO2 because Example D comprises 3.2 mol% TiO2. First, as a matter of record keeping, Examiner notes Example D comprises 3.2 mol% TiO2, which converts to approximately 3.91 wt.% TiO2, which is significant because 3.91 is numerically closer to 4.1 than 3.2. Additionally, Examiner respectfully disagrees with the conclusion that the claimed TiO2 range is not obvious in view of Example D because Yamamoto does not provide a teaching for modifying the value of TiO2 in Example D to precisely match a value within the claimed range. In the instant case, the claimed range is obvious in view of Example D because the TiO2 value of Example D is close to touching the claimed range per MPEP 2144.05.
Examiner notes the underlying logic of MPEP 2144.05 is not necessarily of mathematical proximity by some arbitrary percentage, but that “[t]he proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.” (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)). In the instant case, one skilled in the art would have expected Example D from Yamamoto to have the same properties as the glass of claim 1. This conclusion is evidenced by the examples within the instant specification at Table 1. For example, Example D of Yamamoto has a TiO2 content of 3.91 wt.%, which is more close to the claimed range than examples 6 and 9 of Table 1 of the instant specification, which have TiO2 values of 3.6 wt.% and 2.2 wt.% respectively. As such, because Example D is even more close than these inventive examples, it would be expected to have the same properties. Therefore, the TiO2 range of claim 1 is obvious in view of Example D of Yamamoto because the TiO2 content of Yamamoto is close to touching the claimed range.
At page 5 of the Remarks, Applicant argues that the (SiO2+TiO2)/(Na2O+ZnO) range of 3.0-5.66 controls bubble degree, Stripe degree, and the thermal expansion coefficient of the glass, and that because Yamamoto does not provide motivation to adjust the relationship of (SiO2+TiO2)/(Na2O+ZnO) to control these properties, the claimed (SiO2+TiO2)/(Na2O+ZnO) range is not obvious over Yamamoto.
First, Examiner notes this argument is not convincing because the range of (SiO2+TiO2)/(Na2O+ZnO) of claim 1 is 3.0-5.76, not 3.0-5.66. Because the range of claim 1 is more broad than the allegedly critical range as argued, the claimed range is not commensurate in scope with what is alleged to be critical, and this argument cannot be found to be convincing. See MPEP 2145, which states the evidence must be reasonably commensurate in scope with the claimed invention.
As evidence to support the argument that the range of (SiO2+TiO2)/(Na2O+ZnO) in claim 1 is critical, Applicant appears to quote [0052] from the instant PGPub. Examiner notes [0052] of the instant PGPub states when the value of (SiO2+TiO2)/(Na2O+ZnO) is more than 12.0, the glass becomes difficult to melt and clarify, and it is difficult to remove bubbles and inclusions inside the glass. Thus, it is difficult to obtain the glass with bubble degree above Grade A0, and inner stripes of the glass are serious. If the value of (SiO2+TiO2)/(Na2O+ZnO) is less than 3.0, the thermal expansion coefficient of the glass decreases rapidly, which is beyond the design requirements. Therefore, the value of (SiO2+TiO2)/(Na2O+ZnO) is preferably controlled to be 3.0-12.0, more preferably 3.0-10.0, further preferably 4.0-8.0.
Therefore, per [0052] of the instant PGPub, it does not appear that the claimed range of 3.0-5.76 is critical to achieving the improved bubble degree, Stripe degree, and thermal expansion coefficient of the glass; [0052] would lead one of ordinary skill in the art to believe these properties can be achieved within the range of 3.0-12.0. Example D of Yamamoto is within this range, and would naturally be expected to have the same properties. As such, the claimed (SiO2+TiO2)/(Na2O+ZnO) range is obvious because the (SiO2+TiO2)/(Na2O+ZnO) value of Example D of Yamamoto is close to touching the claimed range. As further supporting evidence, Examiner points to Example 15 of Table 2 of the instant specification, which has a (SiO2+TiO2)/(Na2O+ZnO) outside of the claimed range, and therefore is further evidence that the (SiO2+TiO2)/(Na2O+ZnO) range of claim 1 is not critical to achieving the improved properties argued.
Examiner further notes that while Yamamoto does not explicitly teach the (SiO2+TiO2)/(Na2O+ZnO) ratio can control bubble degree, Stripe degree, and the thermal expansion coefficient of the glass, the discovery of a new property from a previously known composition cannot be the basis of patentability. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (see MPEP 2112(I)).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
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