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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 submissions filed on 29 April 2026 and 19 May 2026 have been entered.
Priority
Receipt is acknowledged of the International Application PCT/US2021/060755. A Notice of Acceptance of Application under 35 U.S.C. 371 and 37 CFR 1.495 was mailed 26 September 2023.
Terminal Disclaimer
The terminal disclaimer filed on 9 December 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent 11,897,808 B2 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112(a) or First paragraph
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, 3, 4, and 8-21 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.
Claim 1 as currently recited in lines 4-7, reads “greater than or equal to 5.8 mol% to less than or equal to 15.9 mol% B2O3; greater than or equal to 1 mol% to less than or equal to 40 mol% MgO; at least one of greater than or equal to 5.8 mol% to less than or equal to 36 mol% MgO or greater than or equal to 8 mol% to less than or equal to 15.9 mol% B2O3”. The portion of the limitation “at least one of greater than or equal to 5.8 mol% to less than or equal to 36 mol% MgO or greater than or equal to 8 mol% to less than or equal to 15.9 mol% B2O3” is considered to be a new relationship which lacks literal descriptive support in the specification as originally filed. The individual ranges of MgO and B2O3 are clearly disclosed, and the ranges for the individual components can be amended within the disclosed ranges of 1-40 mol% of MgO and 0-16 mol% of B2O3 as recited in paragraphs [0009] and [0013]. The new relationship is not supported by the original 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 inventors, at the time the application was filed, had possession of the claimed invention.
Claim 1, further recites in lines 10-11, “wherein a sum of Al2O3 and MgO is greater than or equal to 22.6 mol% to less than or equal to 40.3 mol%”. The limitation is considered to be a new relationship which lacks literal descriptive support in the original specification. The individual ranges of MgO and Al2O3 are clearly disclosed, and the ranges for the individual ranges can be amended within the disclosed ranges of 1-40 mol% of MgO and 2-25 mol% of Al2O3 as recited in paragraph [0009]. The new relationship is not supported by the original 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 inventors, at the time the application was filed, had possession of the claimed invention.
Claim 1, further recites in lines 11-12, “wherein a sum of B2O3, Al2O3, and MgO is greater than or equal to 32.7 mol% to less than or equal to 51.7 mol%”. The limitation is considered to be a new relationship which lacks literal descriptive support in the original specification. The individual ranges of MgO, B2O3, and Al2O3 are clearly disclosed, and the ranges for the individual components can be amended within the disclosed ranges of 1-40 mol% of MgO, 0-16 mol% of B2O3, and 2-25 mol% of Al2O3 as recited in paragraphs [0009] and [0013]. The new relationship is not supported by the original 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 inventors, at the time the application was filed, had possession of the claimed invention.
Furthermore, the addition of these three separate limitations in claim 1 individually, the combination of the three above limitations in claim 1 are considered to be a new relationship in itself, which lacks literal descriptive support in the original specification. As stated above, the individual components of MgO, B2O3, and Al2O3 have clearly defined individual ranges, which can be amended within the original ranges. However, the new relationship, of the combination of the three above limitations is not supported by the original 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 inventors, at the time the application was filed, had possession of the claimed invention.
Claims 3, 4, and 8-21 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, since they depend either directly or indirectly from claim 1.
Claim Rejections - 35 USC § 112(b) or second paragraph
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, 3, 4, and 8-21 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.
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 the broad recitation “greater than or equal to 1 mol% to less than or equal to 40 mol% MgO”, and the claim also recites “a sum of Al2O3 and MgO is greater than or equal to 22.6 mol% to less than or equal to 40.3 40.3 mol%”, which is the narrower statement of the range/limitation. Based on the range of the sum of Al2O3+MgO and the lower limit of Al2O3, the highest the MgO can be individually is 38.3 mol%.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such 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 3, 4, and 8-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to particularly point out and distinctly claim the subject matter, since they depend either directly or indirectly from claim 1.
Response to Arguments
Applicants arguments, filed 29 April 2026, on pages 5-7, state “The Office further indicates on page 3 of the present Office Action that the claim 1 features, "at least one of greater than or equal to 5.8 mol% to less than or equal to 36 mol% MgO or greater than or equal to 8 mol% to less than or equal to 15.9 mol% B2O3," "a sum of Al2O3 and MgO," and "a sum of B2O3, Al2O3, and MgO" lack literal descriptive support in the specification as recited. Applicant respectfully disagrees and submits that these claims features, at the very least, are implicitly described in Applicant's specification, as evidenced by reduction to practice.”
Applicants point to MPEP §2163, and state that the “claim amendments may find support in the specification "through express, implicit, or inherent disclosure."” And point to the section that states "If a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met." MPEP §2163, citing Vas-Cath, 935 F.2d at 1563, 19 USPQ2d at 1116 and Martin v. Johnson, 454 F.2d 746, 751, 172 USPQ 391, 395 (CCPA 1972). Moreover, "where no explicit description of a generic invention is to be found in the specification[,] ... mention of representative compounds may provide an implicit description upon which to base generic claim language." In re Robins, 429 F.2d 452, 456-57, 166 USPQ 552, 555 (CCPA 1970). Likewise, "[p]ossession may be shown in a variety of ways including description of an actual reduction to practice". MPEP §2163. (emphasis added).””
“Examples 1-3, 9, 11, 14, 16-19, 21, 24, 26, 28-29, 31, 33, and 35-70 in Table II of Applicant's specification comprise "at least one of greater than or equal to 5.8 mol% to less than or equal to 36 mol% MgO or greater than or equal to 8 mol% to less than or equal to 15.9 mol% B2O3” as recited in claim 1. Examples 1-3, 8-25, 27-29, 32-38, and 57-70 in Table II of Applicant's specification comprise "a sum of Al2O3 and MgO is greater than or equal to 22.6 mol% to less than or equal to 40.3 mol%" as recited in claim 1. Examples 21, 24-26, 28-29, 31, 33-38, 51, 54, and 57-70 in Table II of Applications specification comprise "a sum of B2O3, Al2O3, and MgO is greater than or equal to 32.7 mol% to less than or equal to 51.7 mol%" as recited in claim 1.
Accordingly, because the combination of MgO and B2O3, the sum of Al2O3 and MgO, and the sum of B2O3, Al2O3, and MgO recited in claim 1 are based on the combinations and the sums of these compounds within the examples provided in Table II of the present application, the Applicant's possession of these sums at the time of filing has been shown. One skilled in the art would understand that the Applicant has possession of a glass comprising "at least one of greater than or equal to 5.8 mol% to less than or equal to 36 mol% MgO or greater than or equal to 8 mol% to less than or equal to 15.9 mol% B2O3," "a sum of A1203 and MgO is greater than or equal to 22.6 mol% to less than or equal to 40.3 mol%, wherein a sum of B2O3, Al2O3, and MgO is greater than or equal to 32.7 mol% to less than or equal to 51.7 mol%." In essence, the combinations and sums, at the very least, have been inherently and implicitly disclosed through the Applicant's disclosure of examples including compositions of B2O3, Al2O3, and MgO that, in combination, fall within and, indeed, form the composition ranges of the combination of MgO and B2O3, the sum of Al2O3 and MgO, and the sum of B2O3, Al2O3, and MgO, as claimed.”
These arguments are not found persuasive. While it is known in the glass compositional art, that glasses are described by the recitation of ranges of the components, ranges of properties, and ranges of compositional and property relationships, the original specification as filed does not have literal descriptive support for the limitations: 1)“at least one of greater than or equal to 5.8 mol% to less than or equal to 36 mol% MgO or greater than or equal to 8 mol% to less than or equal to 15.9 mol% B2O3", 2) “wherein a sum of Al2O3 and MgO is greater than or equal to 22.6 mol% to less than or equal to 40.3 mol%”, 3)”wherein a sum of B2O3, Al2O3, and MgO is greater than or equal to 32.7 mol% to less than or equal to 51.7 mol%”, and 4) the combination of the limitations. The original disclosure recites individual ranges for MgO, B2O3, and Al2O3, but does not specifically mention the compositional relationships rejected above or the importance of these relationships, which is why they are rejected above as being new matter. While the original disclosure includes Tables of examples, the tables do not explicitly define in the rows: the MgO and B2O3 relationship, the total of MgO and Al2O3 relationship, and the total of MgO, B2O3, and Al2O3 relationship. The number of compositional relationships that can be derived from a composition having numerous components is extensive, from relationships of sums of two components, three components and more components to ratio relationships as simple as a ratio relationship of two components to complex ratios of multiple components. The specification does not disclose the above claimed relationships, and the specification does not reasonably lead one to or have blaze marks indicating the above limitations were considered as part of the invention at the time the application was filed.
See MPEP 2163 I (B) which states:
The proscription against the introduction of new matter in a patent application (35 U.S.C. 132 and 251 ) serves to prevent an applicant from adding information that goes beyond the subject matter originally filed. See In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 326 (CCPA 1981); see also MPEP §§ 2163.06 through 2163.07 for a more detailed discussion of the written description requirement and its relationship to new matter. The claims as filed in the original specification are part of the disclosure and, therefore, if an application as originally filed contains a claim disclosing material not found in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985). Thus, the written description requirement prevents an applicant from claiming subject matter that was not adequately described in the specification as filed. New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).
See MPEP 2163 II(A) which states:
To make a prima facie case, it is necessary to identify the claim limitations that are not adequately supported, and explain why the claim is not fully supported by the disclosure. For example, in Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007), the examiner made a prima facie case by clearly and specifically explaining why applicant’s specification did not support the particular claimed combination of elements, even though applicant’s specification listed each and every element in the claimed combination. The court found the "examiner was explicit that while each element may be individually described in the specification, the deficiency was lack of adequate description of their combination" and, thus, "[t]he burden was then properly shifted to [inventor] to cite to the examiner where adequate written description could be found or to make an amendment to address the deficiency." Id.; see also Stored Value Solutions, Inc. v. Card Activation Techs., 499 Fed.App’x 5, 13-14 (Fed. Cir. 2012) (non-precedential) (Finding inadequate written support for claims drawn to a method of processing debit purchase transactions requiring three separate authorization codes because "the written description [did] not contain a method that include[d] all three codes" and "[e]ach authorization code is an important claim limitation, and the presence of multiple authorization codes in [the claim] was essential".).
See MPEP 2163.05 II which states:
The introduction of claim changes which involve narrowing the claims by introducing elements or limitations which are not supported by the as-filed disclosure is a violation of the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559, 1571, 39 USPQ2d 1895, 1905 (Fed. Cir. 1996) (a "laundry list" disclosure of every possible moiety for every possible position does not constitute a written description of every species in a genus because it would not "reasonably lead" those skilled in the art to any particular species); and Regents of the Univ. of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1356-58, 2023 USQ2d 269 (Fed. Cir. 2023).
In re Ruschig, 379 F.2d 990, 995, 154 USPQ 118, 123 (CCPA 1967) ("If n-propylamine had been used in making the compound instead of n-butylamine, the compound of claim 13 would have resulted. Appellants submit to us, as they did to the board, an imaginary specific example patterned on specific example 6 by which the above butyl compound is made so that we can see what a simple change would have resulted in a specific supporting disclosure being present in the present specification. The trouble is that there is no such disclosure, easy though it is to imagine it.") (emphasis in original); In Ex parte Ohshiro, 14 USPQ2d 1750 (Bd. Pat. App. & Inter. 1989), the Board affirmed the rejection under 35 U.S.C. 112, first paragraph, of claims to an internal combustion engine which recited "at least one of said piston and said cylinder (head) having a recessed channel." The Board held that the application which disclosed a cylinder head with a recessed channel and a piston without a recessed channel did not specifically disclose the "species" of a channeled piston.
And see MPEP 2163.05 III which states:
See also Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1328, 56 USPQ2d 1481, 1487 (Fed. Cir. 2000) ("[T]he specification does not clearly disclose to the skilled artisan that the inventors... considered the... ratio to be part of their invention.... There is therefore no force to Purdue’s argument that the written description requirement was satisfied because the disclosure revealed a broad invention from which the [later-filed] claims carved out a patentable portion"). See also General Hosp. Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372, 126 USPQ2d 1556, 1560 (Fed. Cir. 2018) (written description support for the claimed concentration is lacking where the specification discloses a range of optical densities and several discrete values in the range with no explicitly defined maximum concentration; and even if the specification may be read to convert each disclosed value into a range, there is insufficient written description for the entire claimed range where the disclosed range minimally overlaps with the claimed range). Compare Union Oil of Cal. v. Atl. Richfield Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232-33 (Fed. Cir. 2000) (Description in terms of ranges of chemical properties which work in combination with ranges of other chemical properties to produce an automotive gasoline that reduces emissions was found to provide an adequate written description even though the exact chemical components of each combination were not disclosed and the specification did not disclose any distinct embodiments corresponding to any claim at issue. "[T]he Patent Act and this court’s case law require only sufficient description to show one of skill in the . . . art that the inventor possessed the claimed invention at the time of filing.").
It is noted should the claims be amended to address the current rejection 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 office may reinstate a rejection over Guo et al. , US 2019/0300422 A1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth A. Bolden whose telephone number is (571)272-1363. The examiner can normally be reached 10:00 am to 6:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
5 September 2026
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