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 .
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 1-19 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 was amended to include the limitations that the colored portion has a colored layer over a non-colored layer and the non-colored portion has a non-colored layer with no colored layer but the specification as filed does not clearly support these features.
Instead, the specification only ever clearly discusses forming a colored layer in non-colored glass but this is not enough to clearly support the features of a colored layer being “over” a non-colored layer nor does it support the non-colored portion having a non-colored layer with no colored layer.
Initially, it is noted for the record that the only recitation of “layer” in the specification is regarding that of the colored layer. The specification actually never discusses non-colored layers at all let alone, having a non-colored “layer” under a colored one as is now required by the claim, nor is there any mention at all that a non-colored portion is made of a non-colored “layer” and without a colored layer.
At best, the specification may mention the colored layer being a layer shape from a glass surface toward the inner side (see for instance published paragraph 0147) but this is again, not enough to clearly support the features of a colored layer being “over” a non-colored layer. Note that “inner side” is not defined in any manner and one of ordinary skill cannot assert that a non-colored portion in the form of a layer implicitly exists under a surface color layer. Instead, note that broadest reasonably interpretation, “inner side” could just as well mean the inner glass surface side (i.e. the glass surface that is opposite the surface in which the colored layer exists) and the colored layer could just as well exists in the entirety of the thickness from the glass surface in which it is added all the way to the other inner side of the glass.
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) 1-18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikenishi et al. (WO2020230649, rejection using corresponding English document USPub20230250016) or alternatively, in further view of Yamane et al. (USPN7,192,897).
Regarding claim 1: Ikenishi teaches glass comprising the following
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wherein the glass contains one or more glass components (0076-0142, Examples) which can include Ce ions (0134, 0140, 0142), Sn ions (0140, 0142) or Sb ions (0140-0141, Examples).
While Ikenishi may not explicitly teach the cation% of these specific ions, it is noted that Ikenishi does teach that the glass can have Sb2O3 contents being preferably less than 2mass% (0141) which would allow for Sb3+ contents overlapping the claimed range (MPEP 2144.05).
Further it is additionally noted that differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant case, given that Ikenishi teaches the inclusion of Ce may increase coloration, generate fluorescence (0134) or act as a clarifying agent (0140) and the inclusion of Sn and Sb acts as a clarifying agent (0140-0142), it would be well within the skill in the art to optimize the contents as desired depending on desired coloration, fluorescence or clarity of the glass.
Alternatively, Ikenishi’s glass is a phosphate glass (0077) used for optical elements such as CCDs, etc. (0052, 0163).
As Yamane et al, from the same field of endeavor of phosphate glass (entire document) used for optical elements such as CCDs, etc. (Col. 1), discloses that adding 0.001-1 cationic % Sb3+ and/or Ce4+ is useful in such glasses to enhance transmittance over the short wavelength range (see Col. 6, lines 57-67 bridged to Col. 7, lines 1-5), it would have been obvious to one having ordinary skill at the time of invention to modify Ikenishi to include 0.001-1 cationic % Sb3+ and/or Ce4+ to enhance transmittance over the short wavelength range. This range overlaps that claimed (MPEP 2144.05).
Further, given that Ikenishi discusses that their glass can have only part of it covered with their colored layer to provide for a high light transmitting glass portion devoid of the layer and a low transmittance portion having the layer (Fig. 1-4, 0007, 0037-0038, and note 6-1 where the solid line is the glass without the layer and the dotted line is the colored layer on glass) and suggests that the glass portion devoid of the layer should have high transmittance at the short wavelength range (see 6-1 solid line), including cations therein to further enhance transmittance over this short range would have been particularly obvious and deemed beneficial within Ikenishi by one skilled in the art.
Regarding claim 2 and 12: Ikenishi’s glass includes Bi ions in a content of 0.5 cationic % or more (0095).
Regarding claim 3: The glass has a refractive index of at least 1.7 (0067).
Regarding claim 4: As discussed above, Ikenishi’s glass has a high light transmitting glass portion devoid of the colored layer and a low transmittance portion having the colored layer and the difference between the transmittance of such portions will be more than 10% (note 6-1 where the solid line shows the glass devoid of the layer and the dotted line is the glass having colored layer).
Regarding claims 5-7: Ikenishi teaches a glass article, optical glass and optical element comprising their glass (see entire document).
Regarding claim 8: The thickness of the colored layer can be 30-150micron (0047).
Regarding claim 9: The glass has an OD of a portion having the colored layer at a wavelength of 1100nm of at least 1, an OD of a portion without the colored layer at a wavelength of 1100nm of 0.15 or less (0051) and the OD can decrease in combination with an increase of a wavelength in a wavelength region ranging from a visible region to a near-infrared region (0049).
Regarding claim 10: The glass is phosphate glass (0077).
Regarding claim 11: The glass has a cation ratio as claimed (see 0082).
Regarding claims 13-15: The glass has 1-45 cationic %Ti ions (0089), 1-45 cationic % Nb ions (0091), 0.5-30 cationic % W ions (0093), a total Ti+Nb+W ions being 1-60 cationic % (0097) and a total Ti+Nb+W+Bi of 1-80 cationic % (0098).
Regarding claim 16: The glass has a cation ratio as claimed (see 0099).
Regarding claim 17: Ikenishi teaches their glass having a cationic ratio of [(Ti+Nb+W+Bi)/(P5++B3++Si4+)] of 0.3-4 (0099).
Although Ikenishi’s taught ratio does not include Sb, as mentioned above, it was obvious to modify Ikenishi to include 0.001-1 cationic % Sb3+ which provides for ratios as claimed. For instance, including 1 cationic % Sb will provide the following (note that dividing by 1 will not alter the ratio taught by Ikenishi as the result will still be Ikenishi’s 0.3-4).
[(Ti+Nb+W+Bi)/ 1] /(P5++B3++Si4+)] of 0.3-4
Alternatively, Ikenishi teaches their glass having 1-80cationic% Ti+Nb+W+Bi, 10-60cationic % (P5++B3++Si4++Al3+) (0087) wherein Al3+ can be 0 (i.e. P5++B3++Si4+=10-60cationic%) (0085) and Ikenishi was modified to include 0.001-1 cationic % Sb3+. This will provide for ratios overlapping that claimed (MPEP 2144.05). For instance,
[(60cat% Ti+Nb+W+Bi)/ 1cat% Sb]/ (60cat% P5++B3++Si4+) =1
Regarding claim 18: The glass has cations as claimed at the amounts claimed (see 0100-0130).
Regarding claim 19: Ikenishi teaches cover glass comprising their glass above wherein the glass has the colored layer (see 0052, 0163).
Note that the recitation that the colored layer is to shield light obliquely incident to a light-receiving surface of an image sensor is intended use and it has been held by the courts that intended use does not hold patentable weight and as long as the prior art product is capable of such use, the claim will be met. In the instant case, as Ikenishi’s cover glass and colored layer are the same as claimed, the colored layer will be expected to have the same capabilities of use (MPEP 2112).
However, the Examiner does note for the record that Ikenishi does teach their cover glass comprising the colored layer being used to shield light diagonally (obliquely) incident to a light-receiving surface of an image sensor (see 0052, 0163).
Response to Arguments
Applicant's arguments filed September 19, 2025 have been fully considered but they are not persuasive.
In summary, Applicants argue that Ikenishi does not teach the claimed invention having one or more Sb, As, Sn or Ce ions in an amount of 0.1 cationic % or more as now claimed because not only does Ikenishi’s Examples 1-3 include less than 0.1 cationic% Sb ions but Ikenishi teaches Sb2O3 contents being preferably less than 2mass%, more preferably less than 1 mass%, etc. which would motivate ones skilled in the art to smaller Sb amounts.
This is not persuasive. Initially, the argument regarding Ikenishi’s Examples not teaching the now claimed cationic %, it has been held by the courts that a reference is not limited to their Examples but instead, what it teaches as a whole. In the instant case, while Ikenishi’s Examples may not teach the now claimed content, Ikenishi as a whole does teach, as pointed out by Applicants’, Sb2O3 contents being of less than 2mass% which would allow for Sb3+ contents overlapping the claimed range providing for a prima facie case of obviousness (MPEP 2144.05).
Further, it is additionally noted that differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant case, given that Ikenishi teaches the inclusion of Ce may increase coloration, generate fluorescence (0134) or act as a clarifying agent (0140) and the inclusion of Sn and Sb acts as a clarifying agent (0140-0142), it would be well within the skill in the art to optimize the contents as desired depending on desired coloration, fluorescence or clarity of the glass.
Alternatively, Ikenishi’s glass is a phosphate glass (0077) used for optical elements such as CCDs, etc. (0052, 0163).
As Yamane et al, from the same field of endeavor of phosphate glass (entire document) used for optical elements such as CCDs, etc. (Col. 1), discloses that adding 0.001-1 cationic % Sb3+ and/or Ce4+ is useful in such glasses to enhance transmittance over the short wavelength range (see Col. 6, lines 57-67 bridged to Col. 7, lines 1-5), it would have been obvious to one having ordinary skill at the time of invention to modify Ikenishi to include 0.001-1 cationic % Sb3+ and/or Ce4+ to enhance transmittance over the short wavelength range. This range overlaps that claimed (MPEP 2144.05).
Further, given that Ikenishi discusses that their glass can have only part of it covered with their colored layer to provide for a high light transmitting glass portion devoid of the layer and a low transmittance portion having the layer (Fig. 1-4, 0007, 0037-0038, and note 6-1 where the solid line is the glass without the layer and the dotted line is the colored layer on glass) and suggests that the glass portion devoid of the layer should have high transmittance at the short wavelength range (see 6-1 solid line), including cations therein to further enhance transmittance over this short range would have been particularly obvious and deemed beneficial within Ikenishi by one skilled in the art.
Regarding Applicants arguments that Ikenishi teaches Sb2O3 contents being preferably less than 2mass%, more preferably less than 1 mass%, etc. which would motivate ones skilled in the art to smaller Sb amounts, this is not persuasive. Initially, just as a reference is not limited by their Examples, a reference is also not limited by their “preferred” embodiments. Specifically, simply being Ikenishi may prefer smaller amounts does not mean that other amounts could not also be used nor would it be considered a teaching away from other amounts if other amounts were deemed desirable.
Additionally, even though Ikenishi may teach Sb2O3 contents being preferably less than 2mass%, etc., Sb2O3 contents being of less than 2mass% would allow for Sb3+ contents overlapping the claimed range providing for a prima facie case of obviousness (MPEP 2144.05). As Applicants have yet to provide any actual evidence of unexpected results for the claimed range, the rejection is proper.
Even further, as Ikenishi’s teaching is not taken to be limiting, as stated above, differences in concentration not enough to support patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. In the instant case, given that Ikenishi teaches the inclusion of Ce may increase coloration, generate fluorescence (0134) or act as a clarifying agent (0140) and the inclusion of Sn and Sb acts as a clarifying agent (0140-0142), it would be well within the skill in the art to optimize the contents as desired depending on desired coloration, fluorescence or clarity of the glass.
Further still, as also discussed above, Ikenishi’s glass is a phosphate glass (0077) used for optical elements such as CCDs, etc. (0052, 0163) and it would have been obvious to one having ordinary skill at the time of invention to modify Ikenishi to include 0.001-1 cationic % Sb3+ and/or Ce4+ as taught by Yamane to enhance transmittance over the short wavelength range. As this range overlaps that claimed (MPEP 2144.05) and Applicants have yet to provide any actual evidence of unexpected results for the claimed range, the rejection is proper.
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 LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784