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 .
Election/Restrictions
Applicant's election with traverse of Group I and monosilicate, claims 75-83, 86-95, 98 and 99, in the reply filed on January 21, 2026 is acknowledged. The traversal is on the ground(s) that the finding of lack of unity is premature because a full search of the prior art has yet to have been conducted. This is not found persuasive because PCT Rule 13.1 and 13.2 do not require a full search to be conducted prior to determining lack of unity. Further, given the technical feature linking the inventions of Groups I-IV does not provide a contribution over the prior art, see below discussion, and no single general inventive concept exits, there is a lack of unity among the stated groups. As such, the restriction is proper under PCT Rule 13.1 and 13.2.
The requirement is still deemed proper and is therefore made FINAL.
Claims 84, 85, 96, 97 and 100-113 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species and method, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 21, 2026.
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 75-83, 86-95, 98 and 99 are rejected under 35 U.S.C. 103 as being unpatentable over Beall et al. (US 2016/0102010).
Regarding claim 75, 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.
Regarding claim 76, the reference discloses the composition comprises, in wt %: B2O3: 0-10%; Na2O: 0-5%; and ZnO: 0-10%, which overlap the claimed ranges [0010-0018]; see MPEP 2144.05 I.
Regarding claim 77, 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 2 of Table 1, which satisfies one or more of the claimed situations, see Beall [0010-0024].
Regarding claim 78, 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 2 of Table 1, which satisfies one or more of the claimed situations, see Beall [0010-0024].
Regarding claim 79, 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.
Regarding claim 80, the reference renders obvious a composition that does not include any of the claimed components [0010-0024].
Regarding claims 81-83, 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 86, the reference discloses the glass-ceramic has an ion exchange depth of layer of 40 microns of greater [0188].
Regarding claim 87, 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.
Regarding claim 88, the reference discloses the composition comprises, in wt %: B2O3: 0-10%; Na2O: 0-5%; and ZnO: 0-10%, which overlap the claimed ranges [0010-0018]; see MPEP 2144.05 I.
Regarding claim 89, 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 2 of Table 1, which satisfies one or more of the claimed situations, see Beall [0010-0024].
Regarding claim 90, 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 2 of Table 1, which satisfies one or more of the claimed situations, see Beall [0010-0024].
Regarding claim 91, 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.
Regarding claim 92, the reference renders obvious a composition that does not include any of the claimed components [0010-0024].
Regarding claims 93-95, 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 98, the reference discloses the glass-ceramic has an ion exchange depth of layer of 40 microns of greater [0188].
Regarding claim 99, the reference discloses a microcrystalline glass article with the claimed composition [0008-0024].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 75-84, 86-96 and 98-103 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 75-83, 85-95, 97, 98 and 105-107 of copending Application No. 18/103,974 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claims a microcrystalline glass with similar compositions and crystalline phases.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/LAURA A AUER/ Primary Examiner, Art Unit 1783