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 amendment filed 10/30/25 overcomes the rejections set forth under 35 USC 112(d) in the office action mailed 7/30/25. The amended claims remain rejected over Negishi, but the office action is made non-final in order to update the calculation of the Ti-eq to incorporate the concentration of the zirconium component.
Claim Rejections - 35 USC § 103
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Negishi (U.S. PG Pub. No. 2016/0194237).
In paragraph 2 Negishi discloses an optical glass having a high refractive index. In paragraphs 12-24 Negishi discloses that the glass is an oxide glass having a comprising Si and B cations in a cation percent of 5 to 55%; the mole percent of SiO2 and B2O3 will be lower than the cation percent since B2O3 contains two cations per mole, but the range of SiO2 and B2O3 will clearly still overlap or encompass the range recited in claim 1. In paragraphs 16-17 and 78 Negishi discloses that the Ti-eq in terms of cat% is 23 to 70% and the La-eq is 70 cat% or less, where Ti-eq and La-eq are defined according to paragraph 29 of the current application, noting that Ti-eq includes both the cations disclosed in paragraph 17 of Negishi and Zr4+, disclosed in paragraph 78 of Negishi. In paragraphs 93 and 95 Negishi discloses that Al and Sb are preferably absent or present in very low concentrations, and Negishi does not disclose the inclusion of As.
In paragraphs 53-55, 58, 65, and 78 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%, , La-eq is preferably 11 to 60%, further preferably 23 to 40%, and Ti-eq is preferably 24 to 60%, further preferably 30 to 40%, taking into account the concentrations disclosed in both paragraph 65 and 78. When the preferred ranges are used, the ratio of (Ti-eq + SiO2 + (BO1.5)/2) / (La-eq) (“cation parameter”) ranges from about 0.48 (29/60) to about 8.1 (89/11), and when the further preferred ranges are used, the ratio ranges from about 1.03 (41/40) to about 3.3 (77/23), both ranges encompassing the ranges recited in claims 1 and 10-11.
In paragraph 57 Negishi discloses that the cation percent of La is preferably 15 to 45%, further preferably 22 to 35%, and in paragraph 67 Negishi discloses that the cation percent of Ti is preferably 10 to 21.9%, further preferably 16 to 21.6%, leading to a preferred total of La and Ti of 25 to 66.9% and a further preferred total of 38 to 56.6%, both overlapping 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 broad ranges and the preferred ranges disclosed by Negishi for La-eq and Ti-eq overlap the ranges recited in claims 8-9.
In claims 104-105 Negishi discloses that the Abbe number of the glass is preferably 24.0 to 32.00. Based on the preferred expressions (1-1) and (1-6) in paragraphs 109-110, the refractive index of the glass of Negishi further more preferably ranges from about 2.01 (expression 1-1 with Abbe number of 32) to about 2.17 (expression 1-6 with Abbe number of 24), overlapping the range recited in claim 1.
In paragraph 128 Negishi discloses that the specific gravity of the glass is preferably less than 5.60, further preferably less than 5.30, overlapping or falling within the ranges recited in claim 4.
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.
The ranges of preferred Abbe numbers in paragraphs 109-110 fall within or overlap the ranges recited in claims 16-17.
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.
In paragraphs 138-180 Negishi discloses a similar optical glass (“Optical Glass II”) having a higher Ti content. The optical glass II of Negishi has a Ti content of 22.5 to 60%, and Ti-eq is preferably 25 to 75% (paragraphs 78 and 154-156, 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) meeting the limitations of all the claims discussed above, and further leading to glass compositions comprising 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 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 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 1-19 are therefore rendered obvious by Negishi.
Response to Arguments
Applicant argues that the rejection set forth over Negishi in the office action mailed 7/30/25 does not properly define the Ti-eq term in the claims, since Ti-eq as defined in the current application includes additional cations to those disclosed in the cited paragraphs of Negishi. The modified rejection set forth above demonstrates that even when the additional cations are taken into account, Negishi still renders the claims prima facie obvious. The office action has been made non-final because of the updated grounds of rejection.
Applicant also argues that Negishi does not recognize the criticality of the cation parameter K, citing the disclosure in paragraph 32 of the current specification. Applicant does not cite any data in their remarks, but applicant does provide data in Tables 1-12 and the figures. It is noted, however, that comparative example G in Table 14 has a cation parameter of 2.62, within the claimed range, but a Tmax of 1350, outside the range desired by applicant. The data therefore does not support the criticality of the cation parameter. Furthermore, in order to demonstrate unexpected results, applicant must demonstrate superior results commensurate in scope with the claims. See MPEP 716.02(d). The claims allow for a vast range of concentrations of the individual cations, as long as the ratios and sums fall within broad ranges. While applicant has supplied many inventive examples, the Ti and La concentrations in the inventive examples only vary within narrow ranges, and the claims allow for unlimited ranges as long as the cation parameter falls within the claimed range; applicant has not demonstrated that the claimed cation parameter would be critical when the Ti and/or La concentrations are varied more broadly.
Conclusion
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771