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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 5, 2026 has been entered.
Examiner’s Comments
Note that the amendments to the claims filed on October 2, 2025 introduced a content of MgO being 2.7% or more and it has come to the Examiner’s attention that the specification as originally filed does not have clear support for this open-ended range. 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 1-8 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 2-8 which depend therefrom,
recite a content of MgO being 2.7mol% or more and Sb2O3 being 0.08wt% 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 MgO, the content
limits are discussed as being 1% to 18wt% or 2 to 15wt% which not only does not support all amounts of MgO above 2.7mol% as is encompassed by the presently open-ended claimed range but specifically does not encompass any values above 18wt%. Similarly, every mention of Sb2O3, the content limits are discussed as being 0 to 3wt% which not only does not support all amounts of Sb2O3 above 0.08wt% as is encompassed by the presently open-ended claimed range but specifically does not encompass any values above 3wt%. Also, note for the record that Applicants’ Examples also do not support any MgO content above 7.79wt% nor any Sb2O3 content above 0.08wt%. As such, it is clear that the scope of the invention as originally disclosed does not appear to encompass the 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) 1-8 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).
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 February 5, 2026 with respect to ‘964 have been considered but are moot because the present rejection no longer relies on ‘964 in view of the current amendment to the claims.
Applicant's arguments filed February 5, 2026 with respect to ‘772 have been fully considered but they are not persuasive.
Applicants argue that their claimed content of B2O3+P2O5 being 3.5mol% or less, MgO being 2.7mol% or more, MgO+ZnO being 7.78wt% or more and the absence of Co provides unexpected results of higher degree of blackness (*L value being 25.93 or less) and suppressed devitrification and point to their Tables 1-2 as evidence.
This is not persuasive.
Initially, while Applicants may point to their Tables, which include two inventive Examples and a single Comparative Example, to argue unexpected results the Examiner notes that the Examples are not enough to support unexpected results for the entirety of the ranges claimed. Specifically, note that the Examples include very specific compositions and contents but the composition ranges claimed are much broader. Showing of unexpected results must be reviewed to see if the results occur over the entire claimed ranges. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Additionally, while Applicants’ argue that their two inventive Examples shows improvements over that of Comparative Example 1, the Examiner notes for the record that it is not clear that it is the compositional ranges of B2O3+P2O5 being 3.5mol% or less, MgO being 2.7mol% or more, and MgO+ZnO being 7.78wt% or more themselves being what is critical for the argued results. Note that Comparative Example 1, although may not have the MgO+ZnO being 7.78wt% or more, also has different TiO2 contents, has C03O4, etc.. Given that multiple things are changing, it cannot yet be said with any degree of certainty that it is the MgO+ZnO sum itself being 7.78% or more in combination with B2O3+P2O5 being 3.5mol% or less and MgO being 2.7mol% or more being what is critical for the improvements.
Finally, Applicants relied upon Tables only including two inventive Examples of very specific compositions and a single comparative Example is not enough to support a showing of unexpected results for the entirety of the claimed ranges. To establish unexpected results over claimed ranges, applicants should compare a sufficient number of tests both inside and outside the claimed ranges to show the criticality of the claimed ranges. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Applicants argue that ‘772 provides no teaching regarding the relationship of the content range of each component and the realization of black color in the absence of Co, and in view of ‘772’s Examples and entire document, there is no reasonable motivation for one skilled in the art to adjust MgO+ZnO to 7.78wt% or more as having the possibility of achieving black color without Co.
This is not persuasive because initially, ‘772 does not have to teach the relationship between the content ranges and black color. 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). Additionally, regarding the argument that there is no reasonable motivation for one skilled in the art to adjust MgO+ZnO to 7.78wt% or more as having the possibility of achieving black color without Co, this is not persuasive. Initially, as discussed in the Office Action, the contents of MgO and ZnO taught within ‘772 allow for totals overlapping that claimed which is all that is needed to provide a prima facie case of obviousness (MPEP 2144.05) and does not make the inclusion of Co necessary. Also, ‘772 does separately teach the desire for black color. While ‘772 may not explicitly discuss the sum of MgO and ZnO obtaining the black color without Co, again ‘772 does not have to. 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).
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