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 .
Response to Amendment
The reply filed on March 20, 2026 has been entered into the prosecution for the application. Currently, claims 1-20 are pending, with claims 12-19 having been withdrawn in response to a restriction requirement. Claims 1-4, 8, and 11 have been amended.
The previous rejection of claims 2, 3, and 11 under 35 U.S.C. 112(b) is withdrawn as moot in light of the amendments to the claims.
The previous rejection of claim 4 under 35 U.S.C. 112(d) is withdrawn as moot in light of the amendment to that claim.
All prior art grounds of rejection are withdrawn.
Applicant’s amendments necessitated the new ground(s) of rejection.
Claim Rejections - 35 USC § 102
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 8, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Pat. No. 5,332,699 to Olds et al. (hereinafter “Olds”).
Regarding claim 1, Olds teaches a glass composition (i.e., composition for inorganic glass fibers, see Col. 8, line 9) comprising 50–70 weight % SiO2, 0–30 weight % MgO, 0–6 weight % Al2O3, and the balance CaO (see claim 1). In particular, Olds teaches particular compositions (Sample No. 54 and Sample No. 59) that have weight percentage proportions of CaO, MgO, SiO2, and Al2O3 that fall within the claimed ranges of the amended claim 1, as summarized in Table A below (values taken from Table 4 of Olds; the value for “impurities” is taken from the total amount of amphoteric oxides in column 4 of Table 4):
Table A
Component
Claim 1
Olds Sample Numbers (Table 4)
(wt.%)
54
59
CaO
29 – 34
32.3
32.6
MgO
0 – 10
6.36
5.19
SiO2
60 – 65
60.3
61.7
Al2O3
Less than 0.2
0.17
0.02
Impurities
balance
0.19
0.04
Further, Olds teaches wherein the glass composition comprises “0-1.5 wt % of either Al2O3, ZrO2, TiO2, B2O3, iron oxides, or mixtures thereof” (Col. 3, lines 18-19); therefore, Olds teaches that ZrO2 is not a necessary component of the glass composition, and Olds clearly contemplates glass compositions in which the amount of ZrO2 is zero, which is within the recited range of “less than 0.005 weight %” in claim 1 as amended.
Thus, Olds discloses glass compositions that read on every limitation of claim 1.
Regarding claim 2, Sample Nos. 54 and 59 in Olds comprise amounts of MgO that lie within the recited range of 1 to 10 weight %, as shown in Table A above.
Regarding claim 8, Sample Nos. 54 and 59 in Olds list no BaO or SrO as components (see Table 4), leading one of ordinary skill in the art reasonably to conclude that the amount of BaO and SrO in those glass compositions is zero and thus within the claimed ranges for those oxides as recited in claim 8.
Regarding claim 10, each of Sample Nos. 54 and 59 in Olds comprises less than 65 weight % SiO2, as shown in Table A above.
Regarding claim 20, Olds teaches the glass composition of claim 1, as set forth above. Given the substantially identical composition of the Olds glass composition compared to the claimed invention, one of ordinary skill in the art reasonably would expect that the glass composition of Olds also necessarily satisfies the colorimetric parameters recited in claim 20, since products of identical composition are presumed not to have mutually exclusive properties (MPEP 2112.01(II)). 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).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 5, 7-10, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. No. 5,948,129 to Nonami et al. (hereinafter “Nonami”).
Regarding claim 1, Nonami teaches a glass composition (glass material, Col. 8, line 7; Abstract) comprising 20–50 weight % CaO, 8–30 weight % MgO, and 40–70 weight % SiO2 (Col. 8, lines 18-20). These ranges overlap the recited ranges for CaO, MgO, and SiO2 in claim 1 as amended. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05). Nonami teaches multiple embodiments that are silent as to Al2O3 (see Table 1), reasonably indicating that the amount of Al2O3 in those glass compositions is substantially zero and thus within the recited range of the amended claim 1. Nonami teaches some embodiments wherein the glass composition comprises small amounts of ZrO2 (see Table 1); however, Nonami teaches other embodiments that list none of those oxides being present, reasonably indicating that the amount of ZrO2 in those glass compositions is substantially zero. Moreover, Nonami teaches that ZrO2 is an optional component (see Col. 9, lines 4-18). Therefore, Nonami teaches wherein the amount of ZrO2 in those glass compositions is substantially zero and thus within the recited range of the amended claim 1.
Regarding claim 2, Nonami teaches wherein the amount of MgO ranges from 8 to 30 weight % (Col. 8, line 20), a range that overlaps the range recited in claim 2. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 5, Nonami teaches, for instance, that the glass composition Example E 7 possesses 0% crystallinity after molding (Table 1), indicating that the glass composition is greater than 95% by weight amorphous.
Regarding claim 7, Nonami discloses the glass composition of claim 1, as set forth above. Moreover, Nonami discloses that, for example, example embodiment glass compositions which, after undergoing heat treatment, comprised diopside (see Col. 21, lines 22-24, and Table 2). Nonami also teaches that the degree of crystallization in the glass composition may be adjusted by altering the duration (“holding time”) of the crystallization heat treatment (see Col. 16, lines 41-46 and 62-63). Therefore, one of ordinary skill in the art, guided by the teachings of Nonami, would have found it obvious through routine optimization to adjust the glass preparation process by optimizing the duration of the crystallization heat treatment such that diopside would be present in the glass composition in trace amounts. See MPEP 2144.05(II)(A).
Regarding claim 8, Nonami teaches some embodiments wherein the glass composition comprises small amounts of Fe2O3, TiO2, and/or ZrO2 (see Table 1); however, Nonami teaches other embodiments that list none of those oxides being present, reasonably indicating that the amount of each of those oxides in glass composition is substantially zero, and thus within the recited ranges of claim 8.
Regarding claim 9, Nonami teaches wherein the glass composition is white or near white in color (see Table 2, Examples E11 and E12).
Regarding claim 10, Nonami teaches wherein the glass composition comprises 40–70 weight % SiO2 (Col. 8, line 18), a range which overlaps the recited range of less than 65 weight % in claim 10. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05). Moreover, most of the listed example glass compositions in Nonami disclose an amount of SiO2 that is less than 65 weight % (see Table 1).
Regarding claim 20, Nonami teaches the glass composition of claim 1, as set forth above. Given the substantially identical composition of the Nonami glass composition compared to the claimed invention, one of ordinary skill in the art reasonably would expect that the glass composition of Nonami also necessarily satisfies the colorimetric parameters recited in claim 20, since products of identical composition are presumed not to have mutually exclusive properties (MPEP 2112.01(II)). 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).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Olds.
Regarding claim 3, Olds discloses the glass composition of claim 1, as set forth above (see p. 3). Moreover, Olds teaches a glass composition comprising 50–70 weight % SiO2, 0.25–30 weight % MgO, 0.06–1.5 weight % Al2O3, and the balance consisting essentially of CaO (see claims 4 and 5). These ranges overlap the recited ranges in claim 3. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 4, Olds discloses the glass composition of claim 1, as set forth above. Moreover, Olds teaches a glass composition comprising 50–70 weight % SiO2, 0–30 weight % MgO, 0–1.5 weight % Al2O3, and the balance consisting essentially of CaO (see claim 1). These ranges overlap the recited values in claim 4. In a case where claimed values “lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Olds or, in the alternative, over Olds in view of U.S. Pat. Pub. 2019/0062197 to Otter et al. (hereinafter “Otter”).
Regarding claim 11, Olds discloses the glass composition of claim 1, as set forth above. Further, Olds teaches that the “various pure oxides or less pure raw materials are granulated to a size commonly used for electric melting or they may be purchased already so granulated” (Col. 4, lines 38-41). Given the teachings of Olds, it would have been obvious to one of ordinary skill in the art, in preparing the glass composition, to use raw materials having particle size distribution with a minimum particle size of 100 μm and a maximum particle size of 500 μm (in the form of a grit), or having a particle size distribution with a maximum particle size of 45 μm (in the form of a flour). Where the prior art discloses a claimed composition, it is generally not inventive to discover the optimum or workable ranges of component sizes by routine experimentation, absent evidence of the criticality of the claimed ranges. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05(II)(A); see also MPEP 2144.04(IV)(A) (changes in size are not sufficient to distinguish over prior art).
Alternatively, although Olds does not explicitly teach wherein the glass composition has a particle size distribution with a minimum particle size of 100 μm and a maximum particle size of 500 μm (in the form of a grit), or has a particle size distribution with a maximum particle size of 45 μm (in the form of a flour), Otter, in the closely related field of endeavor of quartz glass body preparation, teaches a process for preparing a glass body from silicon dioxide granulate, wherein the process involves screening out particles of silicon dioxide granulate less than 90 μm in size and sieving out particles of silicon dioxide granulate more than 500 μm in size (see ¶¶ 0350-0351; claim 32). Otter thus teaches a particle size distribution with a minimum particle size of 90 μm and a maximum particle size of 500 μm (in the form of a grit); this range substantially overlaps the first alternate claimed range in claim 11. Design incentives—such as the desire for raw material particles with good handlability and a low content of fine dust (which can be damaging to equipment and to human lungs), a desire for raw material particles that are easily stored and transported, and a desire to form a glass that is substantially free of bubbles (see Otter at ¶¶ 0033–0036)—would have prompted one of ordinary skill in the art to look to Otter and to adapt the teachings of Otter to the glass composition of Olds. One of ordinary skill in the art would have found it obvious to modify Olds by employing glass composition raw materials with a particle size distribution as taught by Otter, with predictable results and a reasonable expectation of success. See MPEP 2143(I)(F).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Nonami or, in the alternative, over Nonami in view of Otter.
Regarding claim 11, Nonami discloses the glass composition of claim 1, as set forth above. Given the teachings of Nonami, it would have been obvious to one of ordinary skill in the art, in preparing the glass composition, to use raw materials having particle size distribution with a minimum particle size of 100 μm and a maximum particle size of 500 μm (in the form of a grit), or having a particle size distribution with a maximum particle size of 45 μm (in the form of a flour). Where the prior art discloses a claimed composition, it is generally not inventive to discover the optimum or workable ranges of component sizes by routine experimentation, absent evidence of the criticality of the claimed ranges. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05(II)(A); see also MPEP 2144.04(IV)(A) (changes in size are not sufficient to distinguish over prior art).
Alternatively, although Nonami does not explicitly teach wherein the glass composition has a particle size distribution with a minimum particle size of 100 μm and a maximum particle size of 500 μm (in the form of a grit), or has a particle size distribution with a maximum particle size of 45 μm (in the form of a flour), Otter, in the closely related field of endeavor of quartz glass body preparation, teaches a process for preparing a glass body from silicon dioxide granulate, wherein the process involves screening out particles of silicon dioxide granulate less than 90 μm in size and sieving out particles of silicon dioxide granulate more than 500 μm in size (see ¶¶ 0350-0351; claim 32). Otter thus teaches a particle size distribution with a minimum particle size of 90 μm and a maximum particle size of 500 μm (in the form of a grit); this range substantially overlaps the first alternate claimed range in claim 11. Design incentives—such as the desire for raw material particles with good handlability and a low content of fine dust (which can be damaging to equipment and to human lungs), a desire for raw material particles that are easily stored and transported, and a desire to form a glass that is substantially free of bubbles (see Otter at ¶¶ 0033–0036)—would have prompted one of ordinary skill in the art to look to Otter and to adapt the teachings of Otter to the glass composition of Nonami. One of ordinary skill in the art would have found it obvious to modify Nonami by employing glass composition raw materials with a particle size distribution as taught by Otter, with predictable results and a reasonable expectation of success. See MPEP 2143(I)(F).
Allowable Subject Matter
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 6, the closest prior art references are Olds and Nonami, both of which teach the glass composition of claim 1, as set forth above (see pp. 3, 5). However, neither Olds nor Nonami teaches wherein the glass composition comprises cristobalite, quartz, or cristobalite and quartz, at less than 5 weight %. Thus, the specific combination of required components set forth in claim 6 is neither taught nor rendered obvious by the prior art of record.
Response to Arguments
Applicant’s arguments, filed March 20, 2026, with respect to the rejection of claim(s) 1-6, 8-10, and 20 under 35 U.S.C. 103 as being obvious in view of U.S. Pat. Pub. 2020/0115278 to Toncelli (hereinafter “Toncelli”) have been fully considered and, in view of the amendments to the claims, are persuasive. Therefore, the rejection in view of Toncelli has been withdrawn.
Applicant’s arguments with respect to the rejections based on Olds and Nonami have been fully considered but they are not persuasive. In particular, the recitation that the glass composition comprises less than 0.005 weight % ZrO2 does not distinguish over Olds or Nonami, since both of those references teach glass compositions that have zero ZrO2, as explained above in the discussion of the new grounds of rejection under Sections 102 and 103 (see pp. 3 and 5). Similarly, The limitation that the glass composition comprises less than 0.2 weight % Al2O3 fail to distinguish over Olds or Nonami, for reasons explained above. The amended ranges for CaO, MgO, and SiO2 in claims 1-3 likewise fail to distinguish over specific examples and general ranges taught by Olds and fail to distinguish over general ranges taught by Nonami, as explained above.
Applicant’s remaining arguments with respect to the pending claim(s) 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
EP 621858 B1 to Jubb et al. (hereinafter “Jubb”) teaches vitreous fibers comprising SiO2 and either one or both of CaO or MgO (Abstract); in particular, Jubb teaches glass compositions comprising 20.5–34.0 wt% CaO, 4.4–15.5 wt% MgO, 59.3–66.9 wt% SiO2, and 0.8–3.3 wt% Al2O3 (see Table 1). Jubb teaches that a glass composition (SW-B3) comprising 34.0 wt% CaO, 4.4 wt% MgO, 60.0 wt% SiO2, and 1.0 wt% Al2O3 includes pseudowollastonite and wollastonite (¶ 0051).
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.
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/P.A.F./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731
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