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.
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.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted 17 August 2023, 16 September 2024, 7 April 2025, and 12 June 2025 have been considered by the Examiner.
Drawings
The original drawings received on 30 May 2023 are accepted by the Examiner.
Claim Comment
Claims 1, 6, 9, 12, and 14-18 use the phrase “substantially free” of a component. This is read in view of the specification paragraph [0051], which states that “substantially free” of the component means the component can be present in amounts less than 0.01 mol%.
Claim Rejections - 35 USC § 102 and 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5, 7, 8, and 11-20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Guo et al., U.S. Patent Application Publication US 2019/0300422 A1
Guo et al. disclose a glass comprising in terms of mole percentages 50-69% of SiO2, 12.5-25% of Al2O3, 0-8% of B2O3, >0-4% of CaO, >0-17.5% of MgO, 0.5-8% of Na2O, 0-2.5% of La2O3, >8-18% of Li2O, 0-2.5% of ZrO2, 0-1% of SrO, 0-2% of Y2O3, 0-1% of K2O, and 0-0.2% of SnO2. See Abstract and the entire specification, specifically, paragraphs [0012] and [0063]-[0075]. Guo et al. disclose the glass has a Poisson’s ratio of 0.2-0.26, a Young’s modulus (E) of 75-100 GPa, and a shear modulus (G) of 30-40 GPa. See paragraphs [0087]-[0089]. The compositional ranges of Guo et al. are sufficiently specific to anticipate the glass composition as recited in claims 1-5, 7, 8, and 11-20. See MPEP 2131.03.
Specifically, as to claim 1, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass comprising in terms of mole percentages, 34-65% of SiO2, 2-25% of Al2O3, 1-40% of MgO, 1-10% of Na2O, 3-17% of Li2O, and being substantially free of La2O3 and Y2O3 and having a Poisson’s ratio of 0.24 or greater, as recited in instant claim 1.
As to claim 2, Guo et al. disclose Examples AS, AU, BA, and BB, (see Table 1), which reads on the glass having a Poisson’s ratio of 0.25 or greater, as recited in instant claim 2.
As to claim 3, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass having a Poisson’s ratio of 0.30 or lower, as recited in instant claim 3.
As to claim 4, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass having a Poisson’s ratio of 0.27 or lower, as recited in instant claim 4.
As to claim 5, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass comprising 0-16 mol% of B2O3, as recited in instant claim 5.
As to claim 7, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass comprising 2-16 mol% of B2O3, as recited in instant claim 7.
As to claim 8, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass comprising 0-7 mol% of CaO, as recited in instant claim 8.
As to claim 11, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass comprising 0-1 mol% of K2O, as recited in instant claim 11.
As to claim 12, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass being substantially free of K2O, as recited in instant claim 12.
As to claim 13, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass comprising 0-0.2 mol% of SnO2, as recited in instant claim 13.
As to claim 14, Guo et al. disclose Examples AS-AV, (see Table 1), which reads on the glass substantially free of SnO2, as recited in instant claim 14.
As to claim 15, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass being substantially free of SrO, as recited in instant claim 15.
As to claim 16, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass being substantially free of BaO, as recited in instant claim 16.
As to claim 17, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass being substantially free of HfO2, as recited in instant claim 17.
As to claim 18, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass being substantially free of ZrO2, as recited in instant claim 18.
As to claim 19, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass having a Young’s modulus of 75-105 GPa, as recited in instant claim 19.
As to claim 20, Guo et al. disclose Examples Y, AA-AD, AF, AI-AL, AS-AV, BA-BD, and BF, (see Table 1), which reads on the glass having a shear modulus of 30-40 GPa, as recited in instant claim 20.
Claims 6, 9,and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Guo et al., U.S. Patent Application Publication US 2019/0300422 A1
Guo et al. disclose a glass comprising in terms of mole percentages 50-69% of SiO2, 12.5-25% of Al2O3, 0-8% of B2O3, >0-4% of CaO, >0-17.5% of MgO, 0.5-8% of Na2O, 0-2.5% of La2O3, >8-18% of Li2O, 0-2.5% of ZrO2, 0-1% of SrO, 0-2% of Y2O3, 0-1% of K2O, and 0-0.2% of SnO2. See Abstract and the entire specification, specifically, paragraphs [0012] and [0063]-[0075]. Guo et al. disclose the glass has a Poisson’s ratio of 0.2-0.26, a Young’s modulus (E) of 75-100 GPa, and a shear modulus (G) of 30-40 GPa. See paragraphs [0087]-[0089].
As to claim 6, Guo et al. fail to teach any examples that are sufficiently specific to anticipate that the glass is substantially free of B2O3 as recited in instant claim 6. However, Guo et al. teach that the glass comprises 0-8 mol% B2O3 (see paragraph [0065]), which reads on the glass being substantially free of B2O3. As such, the mole percent ranges taught by Guo et al. have overlapping compositional ranges with instant claim 6. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Guo et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Guo et al. et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
As to claim 9, Guo et al. fail to teach any examples that are sufficiently specific to anticipate that the glass is substantially free of CaO as recited in instant claim 9. However, Guo et al. teach that the glass comprises >0-4 mol% CaO (see paragraph [0070]), which reads on the glass being substantially free of CaO. As such, the mole percent ranges taught by Guo et al. have overlapping compositional ranges with instant claim 9. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 10, Guo et al. fail to teach any examples that are sufficiently specific to anticipate that the glass comprises 1-6 mol% of CaO as recited in instant claim 10. However, Guo et al. teach that the glass comprises >0-4 mol% CaO (see paragraph [0070]), which reads on the glass comprising1-6 mol% of CaO. As such, the mole percent ranges taught by Guo et al. have overlapping compositional ranges with instant claim 10. Overlapping ranges have been held to establish prima facie obviousness. See 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-20 of U.S. Patent No. 11,897,808 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional ranges overlap. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Conclusion
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
17 September 2025