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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is rejected for including both 1.0% to 18.0% MgO and 2.7% or more MgO. Note that a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites both 1.0% to 18.0% MgO and 2.7% or more MgO. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by the narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-8 are rejected for being dependent on claim 1 above.
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over (USPub20150239772) in view of either one of (USPub20150274581) or USPN9,409,815.
Regarding claims 1 and 4: ‘772 teaches crystallized glass (abstract and ‘772’s claims) which can have the following composition in mol% (see 0012) which allows for compositions such as that shown below providing substantial overlap with that claimed (MPEP 2144.05).
Mol%
Mol%
Wt% (approx.) conversion
SiO2
62-68
64.9
55.28
Al2O3
10-14
14
20.92
B2O3
3-10
3
3.08
Li2O
0-5
0
0
Na2O
5-18
10
10.90
MgO
1-3
3
1.76
CaO
0-2
1
0.82
SnO2
0-0.2
0.1
0.22
TiO2
0.25-5
2
2.34
Fe2O3
0.25-5
2
4.69
K2O
None required in par 0012 (0%)
0
0
ZnO
None required in par 0012 (i.e. 0%)
0
0
P2O3
None required in par 0012 (i.e. 0%)
0
0
CoO
None disclosed (i.e. 0%)
0
0
Co3O4
None disclosed (i.e. 0%)
0
0
While ‘772 may not discuss the presence of Sb2O3 in the amount now recited in claim 1, ‘772 does not exclude such an addition either and instead only generally teaches opaque glass ceramic.
As ‘581 and ‘815, who each similarly disclose opaque glass ceramics, suggests that not only are SnO2 and Sb2O3 functionally equivalent in terms of use as fining agents in glass ceramics but that fining agents of SnO2, Sb2O3, etc can be added to such glass ceramics in amounts of 0-3wt% (see 0114 in ‘581) or less than 1mol% (Col. 5, lines 57-59 in ‘815) as desired for fining, it would have been obvious to one having ordinary skill at the time of invention to either replace the SnO2 in ‘772 with Sb2O3 to act as a fining agent or alternately, include additional Sb2O3 in amounts within 0-3wt% or less than 1mol% for fining (MPEP 2144.06) and these ranges provide overlap with that claimed (MPEP2144.05).
‘772’s glass is black (see entire document).
Regarding claims 2 and 3: 772’s crystallized glass can have the following composition in mol% (see 0011) which allows for compositions such as that shown below overlapping that claimed (MPEP 2144.05).
Mol%
Mol%
Wt% (approx.) conversion
SiO2
58-72
60.9
53.54
Al2O3
8-20
14
20.92
B2O3
0-12
1
1.03
R2O (can be Li2O, K2O, and/or Na2O, see 0072)
0-20
Li2O (0072)
0-5
0
0
K2O (0072)
0-5
1
1.38
Na2O (0072)
5-18
14
12.72
RO (can be MgO and/or CaO, see 0073)
0-10
MgO (0073)
0-10
4
2.34
CaO (0073)
0-10
1
0.82
SnO2
0-0.5
0.1
0.22
TiO2
0.25-5
2
2.34
Fe2O3
0.25-5
2
4.69
P2O3
None required in par 0011 (i.e. 0%)
0
0
CoO
None disclosed (i.e. 0%)
0
0
Co3O4
None disclosed (i.e. 0%)
0
0
While ‘772 may not discuss the presence of Sb2O3 in the amount now recited in claim 1, for reasons previously discussed, it would have been obvious to one having ordinary skill at the time of invention to either replace the SnO2 in ‘772 with Sb2O3 to act as a fining agent or alternately, include additional Sb2O3 in amounts within 0-3wt% or less than 1mol% for fining (MPEP 2144.06) and these ranges provide overlap with that claimed (MPEP2144.05).
Regarding clams 5 and 6: Initially, note that claims 5 and 6 do not require the glass to have a thickness of 1mm but instead, the claims only require the glass to have the recited properties at such a thickness (i.e. conditional limitation).
In the instant case, given that the composition overlaps that claimed, the glass is made by a similar crystallization method as Applicants’ (see par 0104 compared to Applicants’ published specification par 0095-0100) and is reinforced similarly to Applicants’ (see 0108-0109 compared to Applicants’ par 0103-0104), the properties would be expected to occur when at the recited thickness and under the same conditions (MPEP 2112).
Regarding clam 7: Similarly, note that claim 7 does not require the glass to have a thickness of 1mm but instead, the claim only require the glass to have the recited properties at the conditions of 1mm thickness and without a white plate on a rear surface.
In the instant case, given that the composition overlaps that claimed, the glass is made by a similar crystallization method as Applicants’ (see par 0104 compared to Applicants’ published specification par 0095-0100) and is reinforced similarly to Applicants’ (see 0108-0109 compared to Applicants’ par 0103-0104), the properties would be expected to occur when at the recited thickness and under the same conditions (MPEP 2112).
However, it is noted for the record that ‘772 does teach the desire for CIE values of L*14 to 30, a* -1 to +3 and b* -7 to +3 (0009) which all overlap the ranges claimed (MPEP 2144.05).
Regarding claim 8: ‘772 teaches that the crystallized glass can be reinforced by ion exchange to have a compressive stress layer formed in the surface (0013).
Response to Arguments
Applicant's arguments filed May 15, 2026 have been fully considered but they are not persuasive.
In summary, Applicants initially argue that it would not have been obvious to modify ‘772 with fining agents as taught in ‘581 because ‘772 teaches away from including β-spodumene in their glass while ‘581 requires β-spodumene and one skilled in the art would recognize that β-spodumene glasses of ‘581 are unsuitable for achieving objectives of ‘772.
This is not persuasive.
Initially, it is noted for the record that while ‘772 may not include β-spodumene in their glass, for clarity of record, the rejection was not modifying ‘772 to include β-spodumene.
Further, regarding Applicants argument that one skilled in the art would recognize that β-spodumene glasses of ‘581 are unsuitable for achieving objectives of ‘772, this is not persuasive because the rejection was not based on adding ‘581’s β-spodumene glasses to ‘772 but instead, the rejection was only based on mere substitution and addition of fining agents and there is nothing in either of the references, nor have Applicants adequately shown, that fining agents of ‘581 should not or cannot be used in a glasses not having β-spodumene as in ‘772
Specifically, note that ‘772 is a glass ceramic wherein they clearly recognize the inclusion of fining agents of SnO2, etc. (see Table in the rejection as well as par 0097). Although ‘772 may not mention Sb2O3 being used as a fining agent, not only are fining agents known but as ‘581, from the same field of endeavor of glass ceramics, not only suggests SnO2 and Sb2O3 being functionally equivalent in terms of fining agents in glass ceramics but that fining agents of SnO2, Sb2O3, etc. can be added in amounts of 0-3wt%, one skilled in the art would reasonably conclude and find it obvious to substitute the SnO2 in ‘772 with Sb2O3 or alternatively, merely include additional Sb2O3 in amounts of 0-3wt% as desired for fining.
While the Office acknowledges that ‘772’s glass ceramic may not include β-spodumene while ‘581 includes β-spodumene, they are still both glass ceramics wherein functionally equivalent fining agents are added and there is nothing in either reference to indicate that a Sb2O3 fining agent can only be included in β-spodumene glass nor is there anything in either reference to conclude that it cannot be added or still function as a fining agent in other glass such as a non β-spodumene glass ceramic as in ‘772. Applicants have also not given any evidence to support that such a fining agent cannot be used or function as a fining agent in a non β-spodumene glass ceramic as in ‘772.
Applicants also argue in summary that it would not have been obvious to modify ‘772 with fining agents as taught in ‘815 because ‘772 is directed to black glass ceramic wherein ‘815 is directed to colorful glass ceramics beyond the conventional black products.
This is not persuasive.
Initially, it is noted for the record that while ‘772 may be black glass ceramic while that of ‘815 are colorful, the rejection was only based on mere substitution and addition of fining agents and there is nothing in either of the references, nor have Applicants adequately shown, that fining agents of ‘815 should not or cannot be used in a black glass as in ‘772
Specifically, note that ‘772 is a glass ceramic wherein they clearly recognize the inclusion of fining agents of SnO2, etc. (see Table in the rejection as well as par 0097). Although ‘772 may not mention Sb2O3 being used as a fining agent, not only are fining agents known but as ‘815, from the same field of endeavor of glass ceramics, not only suggests SnO2 and Sb2O3 being functionally equivalent in terms of fining agents in glass ceramics but that fining agents of SnO2, Sb2O3, etc. can be added in amounts of less than 1mol%, one skilled in the art would reasonably conclude and find it obvious to substitute the SnO2 in ‘772 with Sb2O3 or alternatively, merely include additional Sb2O3 in amounts of less than 1 mol% as desired for fining.
While the Office acknowledges that ‘772’s glass ceramic may be black while ‘815 is colorful, they are still both glass ceramics wherein fining agents can be added and there is nothing in either reference to indicate that a Sb2O3 fining agent can only be included in colorful glass nor is there anything in either reference to conclude that it cannot be added or still function as a fining agent in other glass such as the black glass ceramic of ‘772. Applicants have also not given any evidence to support that such a fining agent cannot be used or function as a fining agent in a black glass ceramic as in ‘772.
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.
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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