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Any rejections made in a previous Office action and not repeated below are hereby withdrawn.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 114-122, 125-134, 137 and 138 are rejected under 35 U.S.C. 103 as being unpatentable over Beall et al. (US 2016/0102010).
Regarding claim 114, Beall teaches a microcrystalline glass-ceramic comprising SiO2, Al2O3, Li2O, ZrO2 and P2O5, see abstract, Table 1 and [0010 & 0170]. In some embodiments, the glass-ceramic has a composition comprising, in wt %: SiO2: 55-80%; Al2O3: 2-20%; Li2O: 5-20%; P2O5: 0.5-6%; and ZrO2: 0.2-15% [0010-0018]. Note that 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, based on the ranges disclosed for the claimed components, the reference is considered to render obvious the claimed ratio of (SiO2 + Al2O3)/ZrO2 [0010-0018]. For example, the reference renders obvious Applicant’s example 33 of Table 5, which satisfies one or more of the claimed situations, see Beall [0010-0024].
Regarding claim 115, the reference discloses the composition comprises the claimed components with overlapping ranges for K2O, MgO, ZnO, Na2O, TiO2, B2O3, Y2O3 and the fining agent [0010-0024 and 0177]; see MPEP 2144.05 I. Note that SrO, BaO and CaO are not included in the composition and are considered to overlap the zero amount of the claimed range, see entire document.
Regarding claim 116, based on the ranges disclosed for the claimed components, the reference is considered to render obvious one or more of the claimed situations [0010-0018]. For example, the reference renders obvious Applicant’s example 33 of Table 5, which satisfies one or more of the claimed situations, see Beall [0010-0024].
Regarding claim 117, based on the ranges disclosed for the claimed components, the reference is considered to render obvious one or more of the claimed situations [0010-0018]. For example, the reference renders obvious Applicant’s example 33 of Table 5, which satisfies one or more of the claimed situations, see Beall [0010-0024].
Regarding claim 118, the reference discloses the composition comprises, in wt %: SiO2: 55-80%; Al2O3: 2-20%; Li2O: 5-20%; P2O5: 0.5-6%; ZrO2: 0.2-15%; B2O3: 0-10%; Na2O: 0-5%; and ZnO: 0-10%, which overlap one or more of the claimed ranges [0010-0018]; see MPEP 2144.05 I. The reference further discloses the composition comprises the claimed components with overlapping ranges for K2O, MgO, TiO2, Y2O3 and the fining agent [0010-0024 and 0177]; see MPEP 2144.05 I. Note that SrO, BaO and CaO are not included in the composition and are considered to overlap the zero amount of the claimed range, see entire document.
Regarding claim 119, the reference renders obvious a composition that does not include any of the claimed components [0010-0024].
Regarding claims 120-122, the reference discloses the glass-ceramic contains a lithium silicate crystalline phase of lithium disilicate or lithium metasilicate, which corresponds to lithium monosilicate, in range amounts that are the same as the claimed ranges and with examples within the claimed ranges [0149 & 0151]; see MPEP 2131.03 I. Additionally, the reference discloses lithium silicate as the crystalline phase with a higher weight percentage than any other crystalline phase [0063, 0118 and 0149-0151].
Regarding claim 125, the reference discloses the glass-ceramic has an ion exchange depth of layer of 40 microns of greater, a fracture toughness of 1 MPa·m1/2 or greater, a Vickers harness of 600 kgf/mm2 or greater, a crystallinity of greater than 70 wt%, grains with a longest dimension of 100 or less and a light transmittance of at least 85% for light in a wavelength from 400 nm to 1000 nm, all of which overlap the claimed ranges [0009, 0062, 0153 and 0188]; see MPEP 2144.05 I. Note that while the reference does not disclose the claimed bending strength, drop ball test height, dielectric constant, haze or average light value, given the similar glass composition, type of and amount of crystalline phase as well as the depth of ion exchange between the disclosed glass and the claimed glass, it is expected the disclosed glass will have the claimed properties; see MPEP 2112.01 II “Products of identical composition can not have mutually exclusive properties.”
Regarding claim 126, Beall teaches a microcrystalline glass-ceramic comprising SiO2, Al2O3, Li2O, ZrO2 and P2O5, see abstract, Table 1 and [0010 & 0170]. In some embodiments, the glass-ceramic has a composition comprising, in wt %: SiO2: 55-80%; Al2O3: 2-20%; Li2O: 5-20%; P2O5: 0.5-6%; and ZrO2: 0.2-15% [0010-0018]. Note that 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, based on the ranges disclosed for the claimed components, the reference is considered to render obvious the claimed ratio of (SiO2 + Al2O3)/ZrO2 [0010-0018]. For example, the reference renders obvious Applicant’s example 33 of Table 5, which satisfies one or more of the claimed situations, see Beall [0010-0024].
Regarding claim 127, the reference discloses the composition comprises the claimed components with overlapping ranges for K2O, MgO, ZnO, Na2O, TiO2, B2O3, Y2O3 and the fining agent [0010-0024 and 0177]; see MPEP 2144.05 I. Note that SrO, BaO and CaO are not included in the composition and are considered to overlap the zero amount of the claimed range, see entire document.
Regarding claims 128 and 129, based on the ranges disclosed for the claimed components, the reference is considered to render obvious one or more of the claimed situations [0010-0018]. For example, the reference renders obvious Applicant’s example 33 of Table 5, which satisfies one or more of the claimed situations, see Beall [0010-0024].
Regarding claim 130, the reference discloses the composition comprises, in wt %: SiO2: 55-80%; Al2O3: 2-20%; Li2O: 5-20%; P2O5: 0.5-6%; ZrO2: 0.2-15%; B2O3: 0-10%; Na2O: 0-5%; and ZnO: 0-10%, which overlap one or more of the claimed ranges [0010-0018]; see MPEP 2144.05 I. The reference further discloses the composition comprises the claimed components with overlapping ranges for K2O, MgO, TiO2, Y2O3 and the fining agent [0010-0024 and 0177]; see MPEP 2144.05 I. Note that SrO, BaO and CaO are not included in the composition and are considered to overlap the zero amount of the claimed range, see entire document.
Regarding claim 131, the reference renders obvious a composition that does not include any of the claimed components [0010-0024].
Regarding claims 132-134, the reference discloses the glass-ceramic contains a lithium silicate crystalline phase of lithium disilicate or lithium metasilicate, which corresponds to lithium monosilicate, in range amounts that are the same as the claimed ranges and with examples within the claimed ranges [0149 & 0151]; see MPEP 2131.03 I. Additionally, the reference discloses lithium silicate as the crystalline phase with a higher weight percentage than any other crystalline phase [0063, 0118 and 0149-0151].
Regarding claim 137, the reference discloses the glass-ceramic has an ion exchange depth of layer of 40 microns of greater, a fracture toughness of 1 MPa·m1/2 or greater, a Vickers harness of 600 kgf/mm2 or greater, a crystallinity of greater than 70 wt%, grains with a longest dimension of 100 or less, and a light transmittance of at least 85% for light in a wavelength from 400 nm to 1000 nm, all of which overlap the claimed ranges [0009, 0062, 0153 and 0188]; see MPEP 2144.05 I. Note that while the reference does not disclose the claimed bending strength, drop ball test height, dielectric constant, haze or average light value, given the similar glass composition, type of and amount of crystalline phase as well as the depth of ion exchange between the disclosed glass and the claimed glass, it is expected the disclosed glass will have the claimed properties; see MPEP 2112.01 II “Products of identical composition can not have mutually exclusive properties.”
Regarding claim 138, the reference discloses a microcrystalline glass article with the claimed composition [0008-0024].
Response to Arguments
Applicant's arguments filed June 26, 2026 have been fully considered but they are not persuasive.
Applicant argues that Beall fails to describe or suggest the claimed ratio of (SiO2 + Al2O3)/ZrO2. According to Applicant, the function of controlling (SiO2 + Al2O3)/ZrO2 is to control the surface resistance and the size of the microcrystalline glass. Applicant notes that Beall provides no suggestion of controlling these amounts together nor the above-mentioned effects. Further, Applicant notes that Beall fails to describe or suggest the unexpected result of a grain size of 80 nm or less and a surface resistance of 1 x109 Ω·cm. As such, Applicant concludes Beall fails to describe or suggest the claimed subject matter. Examiner respectfully disagrees.
As discussed above, the ranges disclosed by Beall render obvious Applicant’s Example 33 from Table, which satisfies the claimed ratio. While Applicant is correct that the reference does not specifically disclose controlling SiO2, Al2O3 and ZrO2 together to control the surface resistance and size of the microcrystalline glass, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Lastly, to the extent Applicant argues unexpected results, in order to show criticality of the claimed range, as discussed above and previously, Beall renders obvious the composition of at least one example in Applicant’s specification that satisfies the claimed ratio. Note that Applicant can rebut a prima facie case of obviousness by showing criticality of the claimed range, generally by showing unexpected results achieved to the prior art range; see MPEP 2144.05 III A. In order to show criticality of the claimed range, "objective evidence of nonobviousness must be commensurate in scope with the claims"; see MPEP 716.02(d). The examples cited from Applicant’s specification are for glass compositions containing specific metal oxides and for a glass made using a specific method, all of which are not claimed. Given the claims do not include these limitations, Applicant’s argument of criticality is not commensurate in scope with the claims. Additionally, any assertion of unexpected results must be compared with the closest prior art, see MPEP 716.02(e). Applicant has failed to provide a comparison between the claimed range and the closest prior art. Given Applicant has failed to provide a sufficient number of tests both inside and outside the claimed ranges, the evidence of nonobviousness is not commensurate in scope with the claims and there is no comparison to the closest prior art, 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.
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/LAURA A AUER/Primary Examiner, Art Unit 1783
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