DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-9 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Borrelli et al. (US 2017/0355636).
Regarding claim 1, Borelli discloses a glass-based substrate comprising: 40-85 mol % SiO2; 0-30 mol % Al2O3; 0-20 mol % B2O3; 0-30 mol % Li2O+Na2O+K2O+Rb2O; 0-30 mol % MgO+CaO+SrO+BaO; 0-10 mol % Y2O3; and 0-10 mol % La2O3 [0006]. Note that the disclosed ranges overlap the claimed ranges for the individual components as well as for the sum of La2O2 and Y2O3 and the claimed ratio. 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 I. Further note that the reference renders obvious at least Applicant’s Example E1, which satisfies the claimed sum and ratio.
Regarding claim 2, given the reference discloses that the glass comprises 0-30 mol % Li2O+Na2O+K2O+Rb2O, the reference is considered to render obvious the claimed range of Na2O, see above discussion and MPEP 2144.05 I.
Regarding claim 3, given the reference discloses that the glass comprises 0-10 mol % Y2O3 and 0-10 mol % La2O3, the reference is considered to render obvious the claimed sum, see above discussion and MPEP 2144.05 I.
Regarding claim 4, based on the ranges disclosed for La2O2, Y2O3, R2O, RO and Al2O3, the reference is considered to render obvious the claimed ratio, see above discussion and MPEP 2144.05 I. Further note that the reference renders obvious at least Applicant’s Example E1, which satisfies the claimed ratio.
Regarding claim 5, given the reference discloses that the glass comprises 0-30 mol % MgO+CaO+SrO+BaO, the reference is considered to render obvious the claimed range of MgO, see above discussion and MPEP 2144.05 I.
Regarding claim 6, the reference discloses the glass comprises 0-10 mol % La2O3, which overlaps the claimed range [0006]; see MPEP 2144.05 I regarding overlapping ranges.
Regarding claim 7, the reference discloses the glass comprises 0-10 mol % Y2O3, which overlaps the claimed range [0006]; see MPEP 2144.05 I regarding overlapping ranges.
Regarding claims 8 and 9, while the reference does not specifically disclose the claimed properties, given the reference renders obvious the claimed composition including at least Applicant’s Example E1, the reference is considered to render obvious a glass article with the claimed properties, see above discussion. Products of identical chemical composition can not have mutually exclusive properties; see MPEP 2112.01 II.
Regarding claim 17, Borelli discloses a glass-based substrate comprising: 40-85 mol % SiO2; 0-30 mol % Al2O3; 0-20 mol % B2O3; 0-30 mol % Li2O+Na2O+K2O+Rb2O; 0-30 mol % MgO+CaO+SrO+BaO; 0-10 mol % Y2O3; and 0-10 mol % La2O3 [0006]. Note that the disclosed ranges overlap the claimed ranges for the individual components as well as for the sum of La2O2 and Y2O3 and the claimed ratio. 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 I. Further note that the reference renders obvious at least Applicant’s Example E1, which satisfies the claimed sum and ratio. Note that the limitations regarding modifying and balancing the sums of concentrations are considered process limitations that do not further limit the composition; see MPEP 2113.
Regarding claim 18, given the reference discloses that the glass comprises 0-30 mol % Li2O+Na2O+K2O+Rb2O, the reference is considered to render obvious the claimed range of Na2O, see above discussion and MPEP 2144.05 I.
Regarding claim 19, given the reference discloses that the glass comprises 0-10 mol % Y2O3 and 0-10 mol % La2O3, the reference is considered to render obvious the claimed sum, see above discussion and MPEP 2144.05 I.
Regarding claim 20, based on the ranges disclosed for La2O2, Y2O3, R2O, RO and Al2O3, the reference is considered to render obvious the claimed ratio, see above discussion and MPEP 2144.05 I. Further note that the reference renders obvious at least Applicant’s Example E1, which satisfies the claimed ratio.
Response to Arguments
Applicant's arguments filed May 27, 2026 have been fully considered but they are not persuasive.
Applicant argues that the claims are not direct to a mere selection of compositional ranges but to a coordinated compositional relationship that is neither taught or suggested by Borelli. Specifically, Applicant argues that the claimed ratio requires the claimed compositions to be selected based on the relative proportions of groups of oxides rather than independently selected concentrations of individual components. Additionally, Applicant notes that these grouped oxide quantities are adjusted together to provide a glass composition exhibiting both a target coefficient of thermal expansion and an increased Young’s modulus. Applicant further notes that Borrelli discloses only broad compositional ranges for individual oxide components and does not identify or emphasize any relationship among groups of oxides as a basis for selecting compositions, nor does it recognize the claimed ration as a parameter of significance.
Without conceding to the rejection, Applicant amended the claims to include thermal expansion and Young’s modulus. According to Applicant, even assuming that Borelli’s broad disclosure may encompass compositions that numerically overlap with Applicant’s examples, there is no teaching that such compositions would inherently exhibit the specific combination of properties. Additionally, Applicant argues that claim 17 has been amended to recite concentration sums modified and balanced to reflect that these oxides are adjusted together. By contrast, Borelli discloses only ranges for individual components and does not emphasize any relationship among those components in the form of the claimed ratio, nor does it describe selecting compositions based on such as relationship. For the above reasons, Applicant request the withdrawal the rejections under 35 U.S.C. 103 over Borelli. Examiner respectfully disagrees.
While Applicant is correct that Borelli does not disclose or suggest selecting or adjusting oxides relative to each other, Examiner notes that the selection of composition based on a desired relationship and/or material property is considered a method limitation that does not affect the final structure of the product; see MPEP 2113. As discussed above and previously, Borelli discloses ranges for the individual components that render obvious at least Applicant’s example E1. Note that Applicant’s example E1 has the claimed properties regarding coefficient of thermal expansion and Young’s modulus. As such, it is expected that the range disclosed by Borelli renders obvious a composition with the claimed properties; see MPEP 2112 II “if the composition is physically the same, it must have the same properties.” For the above reasons, the rejections under 35 U.S.C. 103 are respectfully maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
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/LAURA A AUER/Primary Examiner, Art Unit 1783
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