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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 23, 2026 has been entered.
Priority
Note that Applicant cannot rely upon the certified copy of the foreign priority application to overcome any rejection herein because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Examiner’s Comments
Given that Applicants’ Affidavit indicates the previously applied reference of Ogasawara (WO2020179872) is commonly owned and it is noted that it is published within one year from Applicants’ effective filing date, Ogasawara has been withdrawn as prior art and is no longer applied herein.
Note that the amendments to the claims filed on September 12, 2025 introduced a content of Al2O3 being less than 15% and B2O3 content being 0.5% or more and it has come to the Examiner’s attention that the specification as originally filed does not have clear support for these open-ended ranges. As such, a new matter rejection is applied herein.
Claim Rejections - 35 USC § 112
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.
Claims 1-4, 6-9, 13-16 are 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.
Specifically, claim 1, as well as claims 2-4, 6-9, 13-16 which depend therefrom, recite a content of Al2O3 being less than 15.0% and B2O3 being 0.5% or more but the specification as originally filed does not provide adequate support for the entirety of these ranges.
In contrast, in reviewing the specification, every mention of Al2O3, the content limits are discussed as being 5% or more to less than 15% which not only does not support all the amounts of Al2O3 below 15% as is encompassed by the presently claimed range but specifically does not encompass any values below 5%. Similarly, every mention of B2O3, the content limits are discussed as being 0 to 10% which not only does not support all amounts of B2O3 above 0.5% as is encompassed by the presently open-ended claimed range but specifically does not encompass any values above 10%. Also, note for the record that Applicants’ Examples all include Al2O3 contents of between 5 and 15% and B2O3 of 0-10%. As such, it is clear that the scope of the invention as originally disclosed does not appear to encompass values of less than 5% Al2O3 or all B2O3 values above 10% let alone the unlimited entirety of the claimed ranges.
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, 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.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Goto (USPub20080248316) in view of any one of (WO2020161949 using USPub20210347682), (USPN 8,071,493) or (USPub20010056021).
Regarding claims 1-16: Goto teaches a reinforced crystallized glass comprising a compressive stress layer on a surface (abstract) and which can include alpha cristobalite solid solution as a main crystal phase (see Goto claim 2).
Goto’s glass has the following composition in mass% (see Goto claims 9-10).
SiO2
50-90
Al2O3
2-20
Li2O
4-15
P2O5
0-3
ZrO2
0-10
K2O
0-3
Na2O
0-2
MgO
0-3
CaO
0-7
SrO
0-7
BaO
0-7
ZnO
0-10
Sb2O3
0-2
TiO2
0-5
While Goto may not teach the presence of the B2O3 claimed, ‘316 does not appear to exclude such an oxide but instead, only generally teaches a crystallized glass wherein the crystallized glass.
As ‘691, ‘682, ‘493, and ‘021, who each similarly teach crystallized glass, disclose that B2O3 can be desirably added to such glasses in contents of 0.5-5% for improved chipping resistance for chemically strengthening and improved meltability (par 0102 in ‘682), less than 5mass% for realization of low viscosity and enhanced dissolution and moldability (see ‘493 Col. 8, lines 66-67 bridged to Col. 9, lines 1-8), 0.1-5mass% to act as a former and accelerating crystal deposition and growth while having improved melting characteristics (see 0036 in ‘021) or even 0-2% as desired (0102 in ‘691), it would have been obvious to one having ordinary skill at the time of invention to modify Goto to include 0.5-5% for improved chipping resistance for chemically strengthening and improved meltability, 5mass% or less for realization of low viscosity and enhanced dissolution and moldability, 0.1-5mass% to act as a former and accelerating crystal deposition and growth while having improved melting characteristics or even 0-2% as desired with a reasonable expectation of success.
The above modification will provide Goto with the following,
SiO2
50-90
Al2O3
2-20
Li2O
4-15
B2O3
0.5-5, <5, 0.1-5 or 0-2
P2O5
0-3
ZrO2
0-10
K2O
0-3
Na2O
0-2
MgO
0-3
CaO
0-7
SrO
0-7
BaO
0-7
ZnO
0-10
Sb2O3
0-2
TiO2
0-5
The above composition allows for overlap with that claimed providing a prima facie case of obviousness (MPEP 2144.05).
While Goto does disclose their glass’ stress profile characteristics, the following is noted.
Initially, Goto’s composition meets that of Applicants (see above compared to present claims), it includes α-cristobalite or α-cristobalite S.S. as a main crystal phase which is the same as Applicants (see Examples compared to present claims), it is crystallized with a similar two step method of first nucleating and then crystallizing using similar temperatures and durations (see Examples and 0126 compared to Applicants’ specification par. 0040), and it is reinforced using an ion exchange method which is how Applicants reinforce their claimed glass (See Examples compared to Applicants disclosure). While Goto may differ from Applicants in that their ion exchange method is a 1 step ion exchange instead of a two-step ion exchange using two different salts, two different temperatures and two different durations disclosed by Applicants, Goto does not place limits on their method being a 1 step and instead, only generally teaches a lithium containing glass ceramic wherein increased strength and impact resistance from drops, etc. are desired.
As it is well known and desired in the art of lithium containing glass ceramics to ion exchange with a two-step ion exchange method using two difference salts, two different temperatures and two different durations, which it is noted are each substantially similar to Applicants, for increased strength, increased compressive stress, increased impact resistance from drops, etc. (see for instance par 0119-0121 in ‘691 and 0072-0074 and 0131-0138 in ‘682), it would have been obvious to one having ordinary skill at the time of invention to modify Goto to include their ion exchange being that of a two-step ion exchange method using two difference salts, two different temperatures and two different durations according to ‘691 or ‘682, which are each substantially similar to Applicants, for increased strength, increased compressive stress, increased impact resistance from drops, etc.
Given the similarities between that of the modified Goto and Applicants’ invention, one skilled in the art would reasonably conclude the same resulting stress profile features (i.e. same CS50, same DOLzero, CS etc.) absent a showing to the contrary (MPEP 2112).
Additionally, or alternatively, it is noted that as mentioned above, Goto is teaching a lithium containing glass ceramic which is ion exchanged to provide increased strength and impact resistance from drops, etc.
As it is well known and desired in the art of ion exchanged lithium containing glass ceramic wherein increased strength and impact resistance from drops, etc. is desired to make a stress profile with a DOLzero of 80micron or more to reduce the apt for cracking even if the surface is scratched, to make the CS50 140MPa or more to increase drop strength and to make the CS0 of 600MPa or more to lower the apt to crack when deformed (0072-0074 in ‘682), it would have been obvious to one having ordinary skill at the time of invention to modify Goto to include ion exchanging their glass ceramic to have a stress profile with a DOLzero of 80micron or more to reduce the apt for cracking even if the surface is scratched, to make the CS50 140MPa or more to increase drop strength and to make the CS0 of 600MPa or more to lower the apt to crack when deformed.
Goto including the above profile features will allow for formulas falling within or overlapping that of claim 1 and to have DOLzero, CS50 and CS values overlapping the individual ranges recited throughout the rest of the present claims (MPEP 2144.05).
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 8, 10-11 of copending Application No. 18/834606 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/994658 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/994649 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 19/144511 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/475428 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/024490 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/024491 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,807,568. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Response to Arguments
Applicant's arguments filed January 23, 2026 have been fully considered but they are not persuasive.
Initially, Applicants argue that Goto’s Example compositions D to I do not meet the invention claimed.
This is not persuasive as it has been held by the courts that a reference is not limited to their Examples but instead what it teaches as a whole. In the instant case, as a whole Goto does teach reinforced crystallized glass having a crystal phase as claimed with a composition substantially overlapping that claimed expect for the presence of B2O3. However, for reasons in the Office Action, including B2O3 in amounts overlapping that claimed would have been obvious to add to Goto. As Applicants have yet to provide any sufficient showing of unexpected results for the composition, the rejection is still proper and maintained.
Further, Applicants argue that the claimed glass is subjected to a chemical strengthening treatment with certain conditions as described in their disclosure to achieving reduced glass transition temperature, excellent formability as well as the CS features claimed and none of these effects are taught in Goto.
This is not persuasive. Initially, as discussed in the Office Action, given that Goto’s glass and method appear to be the same as Applicants’, one skilled in the art would reasonably conclude the same CS features as claimed to result. As Applicants have yet to provide any sufficient evidence that the CS features claimed would not result, the rejection is still proper and maintained. Additionally, regarding the effects of glass transition temperature and excellent formability, the Examiner notes that the prior art does not have to teach these non-claimed effects. 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).
Applicants also appear to argue that their Examples 30-42 demonstrate advantageous results of glasses having B2O3 of 0.5% or more with Al2O3+ZrO2 of 16.32% or more as they exhibit the CS features claimed whereas Comparative Example 1 not satisfying the claimed composition has a significantly lower CS feature than that claimed. This is not persuasive for the following reasons.
Initially, it appears that Applicants are arguing unexpected results and by noting their Examples are using data within their Tables for evidentiary support. However, it is noted for the record that Applicants’ Tables in the specification as filed are not clear enough for review to make any definitive determination of unexpected results. In fact, the Examiner points out that even in reviewing the published specification, it appears that given the lack of clarity from the as filed specification, that some of the data in the published Tables were not properly scanned. The Examiner suggests that if Applicants intend to continue arguing unexpected results with the reliance on their Tables and Examples, that a supplemental copy of the Tables be filed for review.
However, in as much as the data in the Tables as filed can be reasonably interpreted, the following is noted.
While Applicants point to their Examples 30-42 to argue advantageous results that having B2O3 of 0.5% or more with Al2O3+ZrO2 of 16.32% or more provides the CS features claimed, the Examiner notes for the record that other inventive Examples in their Tables which do not have B2O3 still provide for the CS features claimed. As such, there does not appear to be anything critical about the presence of at least the B2O3 being 0.5% or more in arriving at the argued results.
Additionally, while Applicants’ may argue that the Comparative Example 1 not having B2O3 and Al2O3+ZrO2 within the claimed ranges does not provide the CS features, the Examiner notes for the record that it is not clear that it is the composition itself being what is critical for the argued CS results. Note that Comparative Example 1, although having a different composition, also has completely different chemical strengthening conditions than that of Applicants’ relied upon Examples 30-42. Given that chemical strengthening conditions are very well known to drastically impact final CS properties, it can not yet be determined that the composition is what is actually critical for arriving at the argued results or are other things such as specific strengthening conditions, etc. required. In the instance Applicants intend to continue arguing unexpected results for the composition itself, Applicants need to compare enough Examples with the chemical strengthening conditions between each remaining constant.
Further, while Applicants may point to their Examples 30-42 and a single Comparative Example to argue unexpected results, note that the Examples are not commensurate in scope with the claimed invention as they each include additional oxides and amounts which are not presently recited in claim 1. Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.
Also, while Applicants may point to their Examples 30-42, the Examples are not enough to support unexpected results for the entirety of the ranges claimed (Al2O3 being less than 15.0%, B2O3 being 0.5% or more and Al2O3+ZrO2 being 16.32% or more). Specifically, note that the smallest Al2O3 content in the Examples is 10.74% (Example 40) and highest is 12.74% (Example 38) which is not enough to support the entirety of the claimed range of “less than 15.0.0%”. Regarding B2O3, the smallest content is 0.5% (Example 11) with the highest being 3% (Example 36) which is not enough to support the entirety of the open-ended range of “0.5% or more” claimed. Regarding the Al2O3+ZrO2 total, the smallest content is 16.32% (Example 41) with the highest being 19.42% (Example 40) which is not enough to support the entirety of the open-ended range of “16.32% or more” claimed. Showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Finally, Applicants only include a single comparative Example which includes 18% Al2O3, 0% B2O3 and 18% Al2O3+ZrO2 which is not enough to support a showing of unexpected results for the entirety of the claimed ranges. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). In the instant case, although Applicants may provide a single comparative Example, Applicants have not yet shown criticality for the claimed end points as there are no comparative Examples closer to the 15% Al2O3 or 16.32% total or even a single inventive Example meeting each of the end points to determine whether there is anything truly critical about these end points.
Applicants finally argue that one skilled in the art would not have been motivated to increase the B2O3 while increasing the Al2O3 and/or ZrO2 in Goto because each of ‘949, ‘493 and ‘021 teach that B2O3 content should not exceed 5% and Goto teaches increasing Al2O3 and ZrO2 beyond certain limits is disadvantageous but this is not persuasive.
Initially, regardless of whether or not ‘949, ‘493 and ‘021 teach that B2O3 content should not exceed 5%, they each still teach motivation to add up to 5% B2O3 within Goto and that range still overlaps that claimed. Additionally, even if Goto does suggest increasing Al2O3 and ZrO2 beyond certain limits may be disadvantageous, Goto’s taught and desired Al2O3 and ZrO2 content ranges still allow for overlap with the total claimed. There is simply nothing in any of the references that would teach or suggest to one skilled in the art a teaching away from the claimed composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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, Humera Sheikh can be reached at 571-272-0604. 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.
LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784