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 .
The amendments filed 7/6/26 do not overcome the rejection set forth in the office action mailed 2/6/26, which is maintained below. The discussion of the rejection has been updated to limit the discussion to optical glass II of Negishi, as necessitated by the amendment limiting the TiO2 concentration in the glass. Newly added claim 20 is also rejected below.
Claim Rejections - 35 USC § 103
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Negishi (U.S. PG Pub. No. 2016/0194237).
In paragraphs 138-180 Negishi discloses an optical glass (“Optical Glass II”). The optical glass II of Negishi has a Ti content of 22.5 to 60% (paragraph 156), overlapping the range recited in amended claim 1 and newly added claim 20. In paragraph 154 Negishi discloses that the concentration of Ti, Nb, Ta, and W is preferably 24 to 60%, and in paragraph 78 discloses that the concentration of Zr is preferably 1 to 15% (noting that Negishi discloses in paragraph 153 that aspects not specifically described for Optical Glass II are the same as for Optical Glass I, and Negishi does not specifically disclose a different Zr concentration for Optical Glass II) leading to a preferable Ti-eq calculated according to the definition set forth in the current specification of 25 to 75%. In paragraph 144 Negishi discloses that the concentration of La is 10 to 50%, and in paragraph 159 discloses that the total content of Gd, Y, and Yb is further more preferably 3.5 to 7%, leading to a total La-eq of 13.5 to 57%. Negishi does not specifically disclose preferred Si and B concentrations for Optical Glass II, but as noted above Negishi indicates that the values for the Optical Glass I described earlier in the reference can be used. In paragraphs 54-55 Negishi discloses more specific concentrations in terms of cation percent, where Si is preferably present in an amount of 2 to 25%, further preferably 4 to 18%, B is preferably present in 3 to 40%, further preferably 7 to 30%. (Ti-eq + SiO2 + (BO1.5)/2), which individually fall within the ranges recited in claims 1 and 20 and leading to a preferred concentration of SiO2 and B2O3 encompassing the ranges recited in claims 1 and 20.
When the further preferred ranges of Si and B are used, the ratio of (Ti-eq + SiO2 + (BO1.5)/2) / (La-eq) (“cation parameter”) ranges from about 0.63 (36/57) to about 6.4 (86.5/13.5), encompassing the range recited in amended claims 1 and 10-11, as well as newly added claim 20.
The sum of the Ti and La contents discussed above will overlap the range recited in claim 5. In paragraph 68 Negishi discloses that the cation percent of Nb is preferably 1 to 30%, further preferably 4 to 15%, overlapping the range recited in claim 6, and leading to a total of La, Ti, and Nb overlapping the range recited in claim 7. The Ti-eq and La-eq ranges discussed above for Optical Glass II of Negishi overlap or encompass the ranges recited in claims 8-9.
The compositions of Optical Glass II of Negishi therefore comprise all the components in amounts overlapping or encompassing the ranges recited in claims 12-14, as well as the Ti content range recited in claim 15. In paragraphs 87-88 Negishi discloses that Ba is preferably not present, meeting the limitations of claim 15 where the Ba content is zero. Negishi further discloses in the cited paragraphs that when alkaline earth metals are present, they are preferably present in ranges implying a Ba content within the range recited in claim 15.
In paragraph 168 Negishi discloses that the Abbe number of optical glass II preferably is in ranges overlapping or falling within ranges recited in claims 16-17, and in paragraph 171 Negishi discloses that optical glass II has a refractive index in a range overlapping the range recited in claim 1. In paragraph 175 Negishi discloses that optical glass II preferably has a density (specific gravity of 5.5 or less, encompassing the range recited in claim 4, and still more preferably less than 5.3, matching the range recited in claim 4.
The glass of Negishi does not require all the metals recited in claim 18, and is therefore essentially free of one or more of them, meeting the limitations of claim 18.
In paragraphs 38, 193, 210 and 212 Negishi discloses that the glass can be formed into an optical element which can be a lens or a prism, as recited in claim 19.
The differences between Negishi and the currently presented claims are that Negishi does not specifically disclose the Tmax of the glass composition or the internal transmission (which relates only to claims 2-3), and that some of the ranges of Negishi overlap or encompass the claimed ranges rather than falling within them. Since Negishi discloses glass compositions where the concentrations of all the components fall within, overlap, or encompass the claimed range, and lead to ratios overlapping the claimed ratios, the Tmax and internal transmission of the glass of Negishi will at least overlap the ranges recited in claims 1-3 and 19. It is particularly noted that paragraph 32 of the current specification indicates that the Tmax and internal transmission are correlated with the cation parameter, and as discussed above, the glass compositions of Negishi have a cation parameter in a range encompassing the claimed range. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claims 1-20 are therefore rendered obvious by Negishi.
Response to Arguments
Applicant argues that the claims have been amended to require that the proportion of TiO2 in the glass is at least 32 cat%. The examiner agrees that Optical Glass I of Negishi teaches a Ti concentration range that falls outside the range recited in the amended claims, but Optical Glass II teaches a Ti concentration range overlapping the range recited in the amended claims. The rejection set forth above has been updated to discuss only Optical Glass II, although as noted in the rejection, Negishi teaches in paragraph 153 that various teachings regarding Optical Glass I are carried over to Optical Glass II when Negishi does not provide a specific teaching for Optical Glass II.
Applicant argues that only certain examples of Negishi have a refractive index within the claimed range, and that those examples fall outside other ranges recited in the amended claims. However, the specific examples of Negishi are not a teaching away from the broader teachings of Negishi, and in paragraph 171 Negishi teaches that a preferred refractive index range has an upper bound of 2.40, overlapping the claimed range. Negishi also discloses in paragraph 91 that Si and B are network-forming components for maintaining glass stability, rather than components that lead to a high refractive index. There is therefore no reason to conclude that the glass composition of Negishi requires a SiO2 + B2O3 concentration above the upper bound of the claimed range to achieve a refractive index within the claimed range; Examples 16 and 18 of Negishi in fact have a lower SiO2 + B2O3 concentration that the examples of Negishi which have a lower refractive index, and one of ordinary skill in the art would expect based on the disclosure of Negishi that lowering the SiO2 + B2O3 concentration within the broad range implied by the teachings in paragraphs 54-55 of Negishi would increase the refractive index.
Regarding the calculation of the cation parameter from the teachings of Negishi, applicant alleges that the office action does not elaborate what values the preferred and further preferred ranges are derived from. However, Negishi discloses, and the rejection discusses, preferred and sometimes further preferred ranges for the components of the glass composition; the preferred and further preferred ranges for the sums used in the cation parameter are simply the sums of the lower bounds of the preferred or further preferred ranges and the sums of the upper bounds of the preferred or further preferred ranges of the various components, and the cation parameter range is calculated by dividing the lower bound of the preferred or further preferred range for the numerator by the upper bound of the preferred or further preferred range for the denominator to calculate the lower bound of the cation parameter, and then dividing the upper bound of the preferred or further preferred range for the numerator by the lower bound of the preferred or further preferred range of the denominator (with the proviso that the total amount of the numerator and denominator cannot be more than 100%) to calculate the upper bound of the cation parameter. In the above rejection, the calculations have been modified to reflect the concentrations taught by Negishi for Optical Glass II.
Applicant argues that Negishi is silent regarding the cation parameter, but Negishi teaches concentration ranges for all the components used to calculate the cation parameter, and therefore implicitly discloses a range for the cation parameter, without any need for hindsight reasoning. While this range of Negishi is broader than the claimed range, this is sufficient to render the claimed range obvious in accordance with Peterson and Wertheim, cited in the rejection.
Applicant could overcome this rejection by demonstrating that the claimed composition having the claimed parameters produces unexpectedly superior results, and points to the data provided in the specification to support such an argument. However, the data is still insufficient to demonstrate superior results commensurate in scope with the claims, which allow for a vast range of concentrations as long as the ratios and sums fall within broad ranges, and the Ti and La concentrations only vary within narrow ranges; applicant has not demonstrated that the claimed cation parameter would be critical when the Ti and/or La concentrations are varied more broadly. Furthermore, examples 73-79 in Table 10 of the specification, which have cation parameters falling outside the range recited in the amended claims, all have Tmax values of less than 1330° C, indicating that the claimed cation parameter range is not critical. Comparative example G in Table 4 has a cation parameter value of 2.62, within the claimed range, but a high Tmax value of 1350° C, again indicating that the cation parameter is not critical; while Comparative Example G has a Ti concentration outside the range recited in the amended claims, one of ordinary skill in the art would not be able to determine whether the Tmax value would fall within the superior range of the Ti concentration were increased to 32 cat% and the other components recited in the numerator of the cation parameter were decreased accordingly.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
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