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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 9, 2026 has been entered.
Examiner’s Comment
Applicants’ Declaration has successfully removed Ogasawara as prior art.
Priority
Note that Applicant cannot rely upon the certified copy of the foreign priority application JP2020149312, and more specifically the filing date of said 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.
However, note that even with the filing of a translation, Ogasawara can still be applied as it names another invention and its priority date of March 6, 2019 precedes Applicants’ foreign priority date of September 4, 2020.
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) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goto (USPub20080248316).
Regarding claims 1-7: Goto teaches a crystallized glass (inorganic composition article) which can include alpha cristobalite solid solution as a main crystal phase (see Goto claim 2) and comprise the following in mass% (see Goto claims 9-10) overlapping with that claimed providing a prima facie case of obviousness (MPEP 2144.05).
.
SiO2
50-90
Li2O
4-15
Al2O3
2-20
ZrO2
0-10
K2O
0-3
P2O5
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
Note that Goto does not disclose the presence of B2O3, Nb2O5 or Ta2O5 which thereby corresponds to 0% of these oxides meeting the ranges of claims 2 and 6.
Regarding the claimed coloring degree and hardness properties, as shown above Goto’s composition overlaps with Applicants. Additionally, Applicants disclose that their article can be formed by the following 2-stage method (spec par 0036-0037).
Temperature (oC)
Duration (min)
1st stage
450-750, 500-720 or even 550-680
30-2000min or even 180-1440min
2nd stage
550-850 or even 600-800
30-600min or even 60-400min
Goto similarly discloses their article being formed by a 2-stage method shown below (0064, 0126).
Temperature (oC)
Duration (hr)
1st stage
450-620, or even 520-620
1-20hr (i.e. 60-1,200min)
2nd stage
620-800
0.5-10hrs (i.e. 30-600min)
Given the similarities with the composition and method, one skilled in the art would reasonably conclude the same properties to result (MPEP 2112).
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 1-7 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 would have been rendered 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 1-7 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 would have been rendered 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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/713168 (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 would have been rendered 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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 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 would have been rendered 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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 17/735055 (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 would have been rendered 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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 19/114540 (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 would have been rendered 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 1-7 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 would have been rendered 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.
Response to Arguments
Applicant’s arguments regarding the U.S.C 103 rejections over Goto filed April 9, 2026 have been considered but not persuasive.
Applicants initially argue that Goto fails to disclose the claimed glass composition because Goto’s compositions A-L include less than 10.74% Al2O3 and Goto’s composition M exceeds 15% Al2O3.
This is not persuasive. While Goto’s example compositions A-M may not teach the claimed composition, it has been held by the courts that a reference is not limited to their Examples or preferred embodiments. Instead, a reference is limited by what it teaches as a whole (MPEP 2123). In the instant case, although Goto’s examples may not meet the claimed invention, as discussed in the Office Action Goto as a whole does teach the following composition which overlaps the composition claimed providing for a prima facie case of obviousness (MPEP 2144.05).
SiO2
50-90
Li2O
4-15
Al2O3
2-20
ZrO2
0-10
K2O
0-3
P2O5
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
Applicants appear to argue that their claimed invention having 55.0-75.0mass% SiO2 and 10.74-less than 15.0% Al2O3 provides unexpected results as supported by Applicants’ Examples 1-29, 31-32, 34, and 36-38 which exhibit lower values of coloring degree λ80 (333-567) in comparison to Comparative Example 1 which exhibits higher value of coloring λ80 (598). This is not persuasive for the following reasons.
Note that Applicants’ relied upon Examples are not commensurate in scope with the claimed invention as the relied upon Examples include additional metal oxides at contents which are not presently recited in claim 1. The Courts have held that 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." (MPEP 716.02(d)).
Applicants’ Examples do not cover the entirety of the ranges claimed. Specifically, the claimed invention has 55.0-75.0mass% SiO2 and 10.74-less than 15.0% Al2O3. Initially note that the lowest SiO2 content Applicants’ relied upon Examples 1-29, 31-32, 34, and 36-38 provide for is 60% SiO2 with a Al2O3 content of 12.1% (see Ex 32) and the maximum SiO2 content is 69% SiO2 with an Al2O3 content of 12.8% (see Ex 31). There are absolutely no Examples having SiO2 at the minimum end point of 55% nor the maximum of 75% to indicate whether there is anything truly critical about these end points. Similarly, the lowest Al2O3 content Applicants’ relied upon Examples 1-29, 31-32, 34, and 36-38 provide for is 10.74% Al2O3 with a SiO2 content of 64.86% (see Ex 34) and the maximum Al2O3 content is 12.8% with a SiO2 content of 69% (see Ex 31). There are absolutely no Examples having Al2O3 at the maximum of “less than 15%” (i.e. 14.9) or even an Example showing 15% to indicate whether there is anything truly critical about the end point. It has been held by the court that a “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)”.
Applicants’ relied upon evidence only provides a single comparative Example which is not sufficient to establish unexpected results. “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, note that the only comparative Example includes a SiO2 content of 54.6% slightly under the claimed SiO2 minimum end point with an Al2O3 content of 18% which is at least 3% higher than the claimed Al2O3 maximum end point. There are absolutely no comparative Examples showing what negative coloring results would occur when SiO2 is outside the upper maximum 75% end point nor any comparative Examples showing what negative results may happen when Al2O3 is less than the claimed 10.74% minimum end point. Further, while the comparative Example may include a SiO2 content of 54.6% with an Al2O3 content of 18% and these ranges may fall slightly outside the presently claimed end points, again note that as there are no inventive Examples at the claimed end points to determine whether the range is even critical.
While Applicants assert that having 55.0-75.0mass% SiO2 and 10.74-less than 15.0% Al2O3 provide unexpected results of exhibiting lower values of coloring degree λ80 (333-567), note that at least as it relates to the Al2O3 content, in view of Applicants Examples there does not appear to be anything critical about the claimed Al2O3 content in arriving lower coloring degree. For instance, it is noted for the record that Applicants’ Examples 30, 33 and 35 all have Al2O3 outside of the claimed range but yet, are still able to provide for a lower coloring degree λ80. As such, Applicants’ Examples as a whole appear to actually be indicating that the specific end points of the Al2O3 range claimed are not critical at arriving at the argued properties.
Finally, note that in comparing Applicants’ comparative Example with that of Applicants’ relied upon Examples 1-29, 31-32, 34, and 36-38 there are numerous things changing so it is not even clear that the SiO2 and Al2O3 content alone is what is critical for arriving or not arriving at Applicants’ argued results. For instance, although the comparative Example may have a higher coloring degree from that of Examples 1-29, 31-32, 34, and 36-38, note that the comparative Example has much higher Na2O, K2O and MgO content compared to the Examples, the comparative Example includes TiO2 whereas none of the inventive Examples do and even the method of crystallizing the glass differs as that of the comparative Example does not include a nucleation heating step whereas the rest of the inventive Example do.
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.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/ Primary Examiner, Art Unit 1784
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