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.
Status of the Claims
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Claims 1-15 and 17-20 are currently pending.
Claim 16 has been cancelled.
Claims 1-15 and 17-20 are currently rejected.
Claim 20 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.
Claims 1-4, 8, 9, 13, 14, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Dejneka et al., U.S. Patent Application Publication US 2020/0189962 A1.
Claims 1-4, 8, 9, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Dejneka et al., U.S. Patent Application Publication US 2009/0215607A1.
Claims 1-15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Greulich et al., German Patent Publication, DE 102 23 889 A1, as evidenced by GlassOnline, Schott FIOLAX® clear and FIOLAX® amber.
Claims 1-5, 8-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tratzky et al., U.S. Patent Application Publication, US 2014/0323287 A1.
Drawings
The original drawings received on 28 September 2022 are accepted by the Examiner.
Claim Rejections - 35 USC § 112(a) or first paragraph
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.
Claim 20 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.
Newly added claim 20 recites “wherein the amount of the CeO2 in the glass composition is greater than the amount of the SnO2 in the glass composition.” This is considered new matter as the original specification does not discuss the relationship of the CeO2 to the SnO2. The relationship is equivalent to the ratio CeO2/SnO2 >1. While the examples of the table can be used to calculate an infinite number of compositional relationships and ratios, there is no evidence that the inventors considered the relationship or ratio as part of the invention at the time the application was filed. See MPEP 2163.05 (III) which reads:
See also Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1328, 56 USPQ2d 1481, 1487 (Fed. Cir. 2000) ("[T]he specification does not clearly disclose to the skilled artisan that the inventors... considered the... ratio to be part of their invention.... There is therefore no force to Purdue’s argument that the written description requirement was satisfied because the disclosure revealed a broad invention from which the [later-filed] claims carved out a patentable portion"). See also General Hosp. Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372, 126 USPQ2d 1556, 1560 (Fed. Cir. 2018) (written description support for the claimed concentration is lacking where the specification discloses a range of optical densities and several discrete values in the range with no explicitly defined maximum concentration; and even if the specification may be read to convert each disclosed value into a range, there is insufficient written description for the entire claimed range where the disclosed range minimally overlaps with the claimed range). Compare Union Oil of Cal. v. Atl. Richfield Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232-33 (Fed. Cir. 2000) (Description in terms of ranges of chemical properties which work in combination with ranges of other chemical properties to produce an automotive gasoline that reduces emissions was found to provide an adequate written description even though the exact chemical components of each combination were not disclosed and the specification did not disclose any distinct embodiments corresponding to any claim at 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 1-4, 8, 9, 13, 14, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Dejneka et al., U.S. Patent Application Publication US 2020/0189962 A1.
Dejneka et al. teach a glass comprising in terms of mol% 50-80% of SiO2, 4-10% of Li2O, 10-25% of Al2O3, 0-4% of Na2O, 0-0.5% of K2O, 0-5% of MgO, 0-4% of CaO, 0-5% of SrO+BaO, 0-3% of ZnO, 0-5% of P2O5, 0-8% of B2O3, 0-15% of rare earth metal oxide, 0-0.2% of SnO2. See Abstract and the entire specification, specifically, paragraphs [0091]-[0103], [0107], [0108], [0118], and [0120].
As to claim 1, Dejneka et al. teach a glass composition that comprises fining agents. See paragraph [0120]. Dejneka et al. teach the glass comprises 0-15% of a rare earth oxide that includes CeO2, and 0-0.2% of SnO2 (see paragraphs [0118] and [0120]), which reads on a glass comprising in terms of weight percentages, 0.08-0.5 wt% of CeO2 and 0.02-0.12 wt% of SnO2, as recited in instant claim 1.
As to claim 2, Dejneka et al. do not teach the inclusion of Cl to the glass composition, which reads on a glass comprising 0-0.03 wt% of chloride, as recited in instant claim 2.
As to claim 3, Dejneka et al. do not teach the inclusion of Cl to the glass composition, which reads on a Cl-free glass, as recited in instant claim 3.
As to claim 4, Dejneka et al. do not teach the inclusion of F to the glass composition, which reads on a F-free glass, as recited in instant claim 4.
As to claim 8, Dejneka et al. teach the glass comprises 50-80% of SiO2 and 0-8% of B2O3 (see paragraphs [0091] and [0107]), which reads on a borosilicate glass, as recited in instant claim 8.
As to claim 9, Dejneka et al. teach 50-80% of SiO2 and 10-25% of Al2O3 (see paragraphs [0091] and [0093], which reads on an aluminosilicate glass, as recited in instant claim 9.
As to claims 13 and 14, since the composition of the reference is the same as those claimed herein it one having ordinary skill in the art would expect that the glasses of Dejneka et al. would have the same the fining viscosity and TL softening point, as recited in claims 13 and 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 claim 20, Dejneka et al. teach 0-15% of rare earth metal oxides including CeO2 and 0-0.2% of SnO2 (see paragraphs [0118] and [0120], which reads on a glass having a higher content of CeO2 than SnO2, as recited in instant claim 20.
Claims 1-4, 8, 9, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Dejneka et al., U.S. Patent Application Publication US 2009/0215607A1.
Dejneka et al. teach a glass comprising in terms of mol% 60-70% of SiO2, 6-14% of Al2O3, 0-15% of B2O3, 0-15% of Li2O, 0-20% of Na2O, 0-10% of K2O, 0-8% of MgO, 0-10% of CaO, 0-5% of ZrO2, 0-1% of SnO2, 0-1% of CeO2, less than 50 ppm of As2O3, and less than 50 ppm of Sb2O3. See Abstract and the entire specification, specifically, paragraphs [0021], [0030], and [0031].
As to claim 1, Dejneka et al. teach a glass composition that comprises fining agents such as SnO2 and CeO2. See paragraph [00121]. Dejneka et al. teach 0-1 mol% of CeO2 and 0-1 mol% of SnO2, which reads on a glass comprising in terms of weight percentages, 0.08-0.5 wt% of CeO2 and 0.02-0.12 wt% of SnO2, as recited in instant claim 1.
As to claim 2, Dejneka et al. does not teach that the glass includes Cl, which reads on a glass comprising 0-0.03 wt% of chloride, as recited in instant claim 2.
As to claim 3, Dejneka et al. does not teach that the glass includes Cl, which reads on a Cl-free glass, as recited in instant claim 3.
As to claim 4, Dejneka et al. does not teach that the glass includes F, which reads on a F-free glass, as recited in instant claim 4.
As to claim 8, Dejneka et al. teach that the glass comprises 60-70 mol% of 0-15 mol% of B2O3 (see paragraphs [0030] and [0031]), which reads on a borosilicate glass, as recited in instant claim 8.
As to claim 9, Dejneka et al. teach that the glass comprises 60-70 mol% of SiO2 and 6-14 mol% of Al2O3 (see paragraphs [0030] and [0031]), which reads on an aluminosilicate glass, as recited in instant claim 9.
As to claims 13-15, since the composition of the reference is the same as those claimed herein it one having ordinary skill in the art would expect that the glasses of Dejneka et al. would have the same fining viscosity, TL softening point, and coefficient of thermal expansion, as recited in claims 13-15.
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 claim 20, Dejneka et al. teach Dejneka et al. teach 0-1 mol% of CeO2 and 0-1 mol% of SnO2 (see paragraph [0121]), which reads on a glass having a higher content of CeO2 than SnO2, as recited in instant claim 20.
Claims 1-15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Greulich et al., German Patent Publication, DE 102 23 889 A1, as evidenced by GlassOnline, Schott FIOLAX® clear and FIOLAX® amber.
A machine-generated translation of DE 102 23 889 A1 accompanies this action. In reciting this rejection, the examiner will cite this translation.
Greulich et al. teach a glass having the following composition in terms of weight percentages: 68-82% of SiO2, 6-15% of B2O3, 2-10% of Al2O3, 0-5% of MgO, 0-5% of CaO, 0-5% of SrO, 0-4% of BaO, 0-3% of Li2O, 3-12% of Na2O, 0-5% of K2O, 0-2% of TiO2, 0-3% of ZrO2, 0-2% of SnO2, and 0-2% of CeO2. See Abstract and the entire specification, specifically, paragraph [0026]. Greulich et al. further teach the glass includes refining agents to the glass melt during melting which can include As2O3, Sb2O3, SnO2, CeO2, TiO2, Fe2O3, sulfate, chloride, fluoride, and combinations thereof. See paragraph [0027]. Greulich et al. teach that the glass is known by the trademark FIOLAX®. See paragraph [0019].
Greulich et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 1-15 and 17-20
Specifically, as to claim 1 Greulich et al. teach the glass comprises 0-2 wt% of SnO2 and 0-2 wt% of CeO2 and further teach that CeO2 and SnO2 are refining agents (see paragraphs [0026] and [0027]), which reads on the fining package comprising 0.08-0.5 wt% of CeO2 and 0.02-0.12 wt% of SnO2 as recited in instant claim 1.
The weight percent ranges taught by Greulich et al. have overlapping compositional ranges with instant claim 1. 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 the reference 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 Greulich et al. 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 claim 2, Greulich et al. teach that the refining agents may comprise chloride (see paragraph [0027]), which reads on the fining package comprising chloride in the amount of 0-0.03 wt%, as recited in instant claim 2. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 3, Greulich et al. teach that the refining agents may comprise chloride but don’t require chloride (see paragraph [0027]), which reads on the fining package being Cl-free, as recited in instant claim 3. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 4, Greulich et al. teach that the refining agents may comprise fluoride but don’t require fluoride (see paragraph [0027]), which reads on the fining package being F-free, as recited in instant claim 4. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 5, Greulich et al. teach the glass comprises in terms of weight percentages: 68-82% of SiO2, 6-15% of B2O3, 2-10% of Al2O3, 0-5% of MgO, 0-5% of CaO, 0-5% of SrO, 0-4% of BaO, 0-3% of Li2O, 3-12% of Na2O, 0-5% of K2O, 0-2% of TiO2, 0-3% of ZrO2, 0-2% of SnO2, and 0-2% of CeO2, (see paragraph [0026]), which reads the glass composition comprising it terms of weight percentages, 70-76 wt% of SiO2, 9-13.5 % of B2O3, 4-8% of Al2O3, 0-0.1% of TiO2, 0-0.1% of Fe2O3, 0-0.1% of BaO, 0-3% of CaO, 5-8.5% of Na2O, 0.5-3% of K2O, 0-1% of MgO, 0-0.03% of Cl, 0-0.02% of F, 0.08-0.5% of CeO2, 0.02-0.12% of SnO2, and 0-0.08% of ZrO2, as recited in instant claim 5. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 6, Greulich et al. teach the glass comprises in terms of weight percentages: 68-82% of SiO2, 6-15% of B2O3, 2-10% of Al2O3, 0-5% of MgO, 0-5% of CaO, 0-5% of SrO, 0-4% of BaO, 0-3% of Li2O, 3-12% of Na2O, 0-5% of K2O, 0-2% of TiO2, 0-3% of ZrO2, 0-2% of SnO2, and 0-2% of CeO2, (see paragraph [0026]), which reads the glass composition comprising it terms of weight percentages, 70-74 wt% of SiO2, 10-13.5 % of B2O3, 5-7% of Al2O3, 0-0.03% of TiO2, 0-0.04% of Fe2O3, 0-0.04% of BaO, 0.5-2.3% of CaO, 6.5-7.5% of Na2O, 1-1.8% of K2O, 0-0.1% of MgO, 0.01-0.03% of Cl, 0-0.02% of F, 0.08-0.2% of CeO2, 0.02-0.12% of SnO2, and 0-0.08% of ZrO2, as recited in instant claim 6. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 7, Greulich et al. teach the glass comprises in terms of weight percentages: 68-82% of SiO2, 6-15% of B2O3, 2-10% of Al2O3, 0-5% of MgO, 0-5% of CaO, 0-5% of SrO, 0-4% of BaO, 0-3% of Li2O, 3-12% of Na2O, 0-5% of K2O, 0-2% of TiO2, 0-3% of ZrO2, 0-2% of SnO2, and 0-2% of CeO2, (see paragraph [0026]), which reads the glass composition comprising it terms of weight percentages, 70-73 wt% of SiO2, 10.5-13.2 % of B2O3, 5-7% of Al2O3, 0-0.03% of TiO2, 0-0.04% of Fe2O3, 0-0.04% of BaO, 1-2.3% of CaO, 6.5-7.3% of Na2O, 1-1.5% of K2O, 0-0.1% of MgO, 0.01-0.02% of Cl, 0-0.02% of F, 0.08-0.2% of CeO2, 0.02-0.12% of SnO2, and 0-0.08% of ZrO2, as recited in instant claim 7. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 8, Greulich et al. teach the glass comprises in terms of weight percentages: 68-82% of SiO2 and 6-15% of B2O3, (see paragraph [0026]), which reads the glass composition being a borosilicate glass, as recited in instant claim 8. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 9, Greulich et al. teach the glass comprises in terms of weight percentages: 68-82% of SiO2 and 2-10% of Al2O3, (see paragraph [0026]), which reads the glass composition being an aluminosilicate glass, as recited in instant claim 9. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 10, Greulich et al. teach that the glass is used in the making of FIOLAX® (see paragraph [0019]), which reads on the glass being used to form glass tubing as recited in instant claim 10, as evidenced by GlassOnline which teaches that FIOLAX® glass is glass tubing made by Schott AG.
As to claim 11, Greulich et al. teach that the glass is used in the making of FIOLAX® (see paragraph [0019]), which reads on the glass tubing being used to form pharmaceutical packaging as recited in instant claim 11, as evidenced by GlassOnline which teaches that FIOLAX® glass tubing made by Schott AG is used in the pharmaceutical industry.
As to claim 12, Greulich et al. teach that the glass is used in the making of FIOLAX® (see paragraph [0019]), which reads on the pharmaceutical glass tubing being used to form ampoules as recited in instant claim 12, as evidenced by GlassOnline which teaches that FIOLAX® glass tubing made by Schott AG is used to form ampoules.
As to claims 3-15, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the fining viscosity, TL softening point, and coefficient of thermal expansion properties as recited in claims 13-15.
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 claim 17, Greulich et al. teach a method of making glass which includes removing bubbles (or refining) from the glass melt, (see paragraph [0002]), the method includes adding refining agents the glass melt, (see paragraphs [0026] and [0027]), Greulich et al. teach the method is made to form FIOLAX® glasses (see paragraph [0019]) which reads on a method of fining glass being used to form glass tubing as recited in instant claim 17, as evidenced by GlassOnline which teaches that FIOLAX® glass is glass tubing made by Schott AG.
As to claim 18, Greulich et al. teach a method of making a glass used in the making of FIOLAX® (see paragraph [0019]), which reads on the glass tubing being used to form pharmaceutical packaging as recited in instant claim 18, as evidenced by GlassOnline which teaches that FIOLAX® glass tubing made by Schott AG is used in the pharmaceutical industry.
As to claim 19, Greulich et al. teach a method of making a glass used in the making of FIOLAX® (see paragraph [0019]), which reads on the pharmaceutical glass tubing being used to form ampoules as recited in instant claim 19, as evidenced by GlassOnline which teaches that FIOLAX® glass tubing made by Schott AG is used to form ampoules.
As to claim 20, Greulich et al. teach the glass comprises in terms of weight percentages: 0-2% of SnO2 and 0-2% of CeO2, (see paragraph [0026]), which reads on a glass having a higher content of CeO2 than SnO2, as recited in instant claim 20.
Claims 1-5, 8-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tratzky et al., U.S. Patent Application Publication, US 2014/0323287 A1.
Tratzky et al. teach a glass having the following composition in terms of weight percentages: 71-77% of SiO2, 9-12% of B2O3, 5.5-8% of Al2O3, 6-8% of Na2O, 0.1-0.9% of K2O, 0-0.3% of Li2O, 0-1.5% of CaO, 0-2% of ZrO2, 0-0.6% of ZnO, and refining agents: CeO2, Fe2O3, As2O3, Sb2O3, SnO2, chlorides, fluorides, and sulphates in the amount of 0.003-0.6%. See Abstract and the entire specification, specifically, paragraphs [0035] and [0045]-[0056]. Tratzky et al. teach that the glass is for pharmaceutical packaging. See paragraph [0005]. Tratzky et al. teach that the pharmaceutical packaging includes tubes and ampoules. See paragraphs [0056], [0058], [0062], and [0080].
Tratzky et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 1-5, 8-15, and 17-20.
Specifically, as to claim 1, Tratzky et al. teach the glass comprising refining agents: CeO2, Fe2O3, As2O3, Sb2O3, SnO2, chlorides, fluorides, and sulphates in the amount of 0.003-0.6wt% (see paragraph [0056]), which reads on the fining package comprising 0.08-0.5 wt% of CeO2 and 0.02-0.12 wt% of SnO2 as recited in instant claim 1.
The weight percent ranges taught by Tratzky et al. have overlapping compositional ranges with instant claim 1. 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 the reference 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 Tratzky et al. 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 claim 2, Tratzky et al. teach that the refining agents may comprise chloride (see paragraph [0056]), which reads on the fining package comprising chloride in the amount of 0-0.03 wt%, as recited in instant claim 2. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 3, Tratzky et al. teach that the refining agents may comprise chloride but don’t require chloride (see paragraph [0056]), which reads on the fining package being Cl-free, as recited in instant claim 3. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 4, Tratzky et al. teach that the refining agents may comprise fluoride but don’t require fluoride (see paragraph [0056]), which reads on the fining package being F-free, as recited in instant claim 4. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 5, Tratzky et al. teach the glass comprises in terms of weight percentages: 71-77% of SiO2, 9-12% of B2O3, 5.5-8% of Al2O3, 6-8% of Na2O, 0.1-0.9% of K2O, 0-0.3% of Li2O, 0-1.5% of CaO, 0-2% of ZrO2, 0-0.6% of ZnO, and refining agents: CeO2, Fe2O3, As2O3, Sb2O3, SnO2, chlorides, fluorides, and sulphates in the amount of 0.003-0.6%, (see paragraphs [0035] and [0045]-[0056]), which reads the glass composition comprising it terms of weight percentages, 70-76 wt% of SiO2, 9-13.5 % of B2O3, 4-8% of Al2O3, 0-0.1% of TiO2, 0-0.1% of Fe2O3, 0-0.1% of BaO, 0-3% of CaO, 5-8.5% of Na2O, 0.5-3% of K2O, 0-1% of MgO, 0-0.03% of Cl, 0-0.02% of F, 0.08-0.5% of CeO2, 0.02-0.23% of SnO2, and 0-0.08% of ZrO2, as recited in instant claim 5. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 8, Tratzky et al. teach the glass comprises in terms of weight percentages: 71-77% of SiO2 and 9-12% of B2O3, (see paragraphs [0045] and [0047]), which reads the glass composition being a borosilicate glass, as recited in instant claim 8. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 9, Tratzky et al. teach the glass comprises in terms of weight percentages: 68-82% of SiO2 and 5.5-8% of Al2O3, (see paragraphs [0045] and [0046]), which reads the glass composition being an aluminosilicate glass, as recited in instant claim 9. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 10, Tratzky et al. teach that the glass is used in the making of hollow bodies and tubes (see paragraphs [0058], [0062], and [0080]), which reads on the glass being used to form glass tubing as recited in instant claim 10.
As to claim 11, Tratzky et al. teach that the glass is used in pharmaceutical packaging (see paragraph [00005]), which reads on the glass tubing being used to form pharmaceutical packaging as recited in instant claim 11.
As to claim 12, Tratzky et al. teach that the glass is used in the making of ampoules (see paragraphs [0058] and [0060]), which reads on the pharmaceutical glass tubing being used to form ampoules as recited in instant claim 12.
As to claims 13 and 14, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the fining viscosity and TL softening point properties as recited in claims 13 and 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 claim 15, Tratzky et al. teach the glass has a coefficient of thermal expansion measured from 20°C to 300°C of 4.8x10-6/K to 5.6x10-6/K, (see paragraph [0061]), which reads on the glass having a coefficient of thermal expansion measured from 25°C to 300°C of 50-59.
As to claim 17, Tratzky et al. teach a method of making glass which includes removing bubbles (or refining) from the glass melt, includes adding refining agents the glass melt, (see paragraph [0056]), Tratzky et al. teach a method to form glass tubing (see paragraphs [0062]-[0065] and [0073]), which reads on a method of fining glass being used to form glass tubing as recited in instant claim 17.
As to claim 18, Tratzky et al. teach a method of making glass which includes removing bubbles (or refining) from the glass melt, includes adding refining agents the glass melt, (see paragraph [0056]), Tratzky et al. teach a method to form glass tubing for pharmaceutical packaging (see paragraphs [0062]-[0065] and [0073]), which reads on the glass tubing being used to form pharmaceutical packaging as recited in instant claim 18.
As to claim 19, Tratzky et al. teach method of making glass which includes removing bubbles (or refining) from the glass melt, includes adding refining agents the glass melt, (see paragraph [0056]), Tratzky et al. teach a method to form glass tubing (see paragraphs [0062]-[0065] and [0073]), Tratzky et al. teach that the pharmaceutical packaging includes ampoules (see paragraph [0058]), which reads on the pharmaceutical glass tubing being used to form ampoules as recited in instant claim 19.
As to claim 20, Tratzky et al. teach the glass comprises in terms of weight percentages: refining agents: CeO2, Fe2O3, As2O3, Sb2O3, SnO2, chlorides, fluorides, and sulphates in the amount of 0.003-0.6%, (see paragraphs [0035] and [0045]-[0056]), which reads on a glass having a higher content of CeO2 than SnO2, as recited in instant claim 20.
Response to Arguments
Applicant’s arguments, see pages 13-14, filed 22 June 2026, with respect to the rejection of claims 1-4, 8, 9, 13, and 14 under 35 U.S.C. 102(a)(1) as allegedly being anticipated by Dejneka et al., US 2020/0189962 A1 and the rejection of claims 1-4, 8, 9, and 13-16 under 35 U.S.C. 102(a)(1) as allegedly being anticipated by Dejneka et al., US 2009/0215607 A1 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of 35 U.S.C. 103 over Dejneka et al., US 2020/0189962 A1 and Dejneka et al., US 2009/0215607 A1.
Applicant's arguments filed 22 June 2026 on pages 15-19 have been fully considered but they are not persuasive.
Applicant argues that Greulich et al. as evidenced by GlassOnline, Schott FIOLAX® Clear and FIOLAX® Amber datasheets does not teach the fining package for a glass composition where in the fining package comprises “cerium dioxide (CeO2) in an amount from 0.08 to 0.5 wt% of the glass composition, and tin oxide (SnO2) in an amount of from 0.02 to 0.12 wt% of the glass composition.” The Applicant claims they have found unexpectedly that reducing the amount of SnO2 in the fining package in combination with the CeO2 content maintains the glass properties while enabling the reduction or elimination of chlorides, fluorides, or both. The Applicant point to the examples of the specification as evidence of the unexpected results. This is not found persuasive since the examples of the specification are not commensurate with the claimed invention, specifically, claim 1 claims that the fining package comprises 0.08-0.5 wt% of CeO2 and 0.02-0.12 wt% of SnO2 for fining a glass composition, however, the examples of the specification use the fining package for a specific glass composition and do not show that the fining package is effective for glasses other than those shown in the examples. See MPEP 716.02(d).
Applicant argues that while Tratzky et al. may teach overlapping ranges of CeO2 and SnO2 but does not teach the unexpected results as taught by the instant invention. This is not found persuasive since the results shown by the Applicant are not commensurate in scope with the instant claims.
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 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
11 July 2026
Prosecution Insights