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 Objections
Claim 80 is objected to because of the following informalities: claim 80 includes a copy of claim 81. Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 75-83, 85, 87-95, 97 and 105-107 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beall et al. (US 2016/0102010).
Regarding claim 75, Beall teaches a microcrystalline glass-ceramic comprising SiO2, Al2O3, Li2O, ZrO2 and P2O5, see abstract, Table 1 and [0010 & 0170].
Regarding claim 76, Beall teaches examples of the glass-ceramic with components that fall within the claimed percentages, see Table 1. For example, Table 1 Composition 1 has SiO2, Al2O3, Li2O, P2O5, K2O, ZnO, Na2O and B2O3 all within the claimed ranges. Note that a specific example in the prior art which is within the claimed range anticipates the range; see MPEP 2131.03 I.
Regarding claim 77, the reference teaches examples that satisfy the one or more of the 12 claimed situations. For example, Table 1 Composition 1 has an P2O5 + ZrO2 value of 6, which satisfies situation 3; see MPEP 2131.03 I.
Regarding claim 78, the reference teaches examples that satisfy one or more of the 12 claimed situations. For example, Table 1 Composition 3 has an Li2O / (ZrO2 + P2O5) value of 1.77, which satisfies situation 10; see MPEP 2131.03 I.
Regarding claim 79, the reference teaches examples that satisfy the one or more of the 12 claimed situations. For example, Table 1 Composition 1 has an (MgO + ZnO) / ZrO2 value of 0, which satisfies situation 8; see MPEP 2131.03 I.
Regarding claim 80, Beall teaches examples of the glass-ceramic with components that fall within the claimed percentages, see Table 1. For example, Table 1 Composition 1 has Li2O, P2O5, K2O, ZnO, Na2O and B2O3 all within the claimed ranges; see MPEP 2131.03 I.
Regarding claims 81-83, the reference discloses the glass-ceramic contains a lithium silicate crystalline phase of lithium disilicate or lithium metasilicate, which corresponds to lithium monosilicate, in range amounts that are the same as the claimed ranges and with examples within the claimed ranges [0149 & 0151]; see MPEP 2131.03 I.
Regarding claim 85, Beall teaches examples of the glass-ceramic with properties that fall within the claimed ranges, see Table 1. For example, Table 1 Composition 2 has a fracture toughness of 1.13 MPa·m1/2, which is within the claimed range [0201]; see MPEP 2131.03 I.
Regarding claim 87, Beall teaches a microcrystalline glass-ceramic comprising SiO2, Al2O3, Li2O, ZrO2 and P2O5, see abstract, Table 1 and [0010 & 0170].
Regarding claim 88, Beall teaches examples of the glass-ceramic with components that fall within the claimed percentages, see Table 1. For example, Table 1 Composition 1 has SiO2, Al2O3, Li2O, P2O5, K2O, ZnO, Na2O and B2O3 all within the claimed ranges. Note that a specific example in the prior art which is within the claimed range anticipates the range; see MPEP 2131.03 I.
Regarding claim 89, the reference teaches examples that satisfy the one or more of the 12 claimed situations. For example, Table 1 Composition 1 has an P2O5 + ZrO2 value of 6, which satisfies situation 3; see MPEP 2131.03 I.
Regarding claim 90, the reference teaches examples that satisfy one or more of the 12 claimed situations. For example, Table 1 Composition 3 has an Li2O / (ZrO2 + P2O5) value of 1.77, which satisfies situation 10; see MPEP 2131.03 I.
Regarding claim 91, the reference teaches examples that satisfy the one or more of the 12 claimed situations. For example, Table 1 Composition 1 has an (MgO + ZnO) / ZrO2 value of 0, which satisfies situation 8; see MPEP 2131.03 I.
Regarding claim 92, Beall teaches examples of the glass-ceramic with components that fall within the claimed percentages, see Table 1. For example, Table 1 Composition 1 has Li2O, P2O5, K2O, ZnO, Na2O and B2O3 all within the claimed ranges; see MPEP 2131.03 I.
Regarding claims 93-95, the reference discloses the glass-ceramic contains a lithium silicate crystalline phase of lithium disilicate or lithium metasilicate, which corresponds to lithium monosilicate, in range amounts that are the same as the claimed ranges and with examples within the claimed ranges [0149 & 0151]; see MPEP 2131.03 I.
Regarding claim 97, the reference teaches examples of glass-ceramics with crystallinity amount that is within the claimed range [0150-0151] see MPEP 2131.03 I.
Regarding claims 105-107, the reference discloses the glass-ceramic as useful for display applications and hand-held, desk-top and wall-mounted consumer device coverings [0007 & 0149].
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.
Claims 84, 86, 96 and 98-104 are rejected under 35 U.S.C. 103 as being unpatentable over Beall et al. (US 2016/0102010).
Regarding claim 84, the reference discloses the glass ceramic contains petalite in about 20%, which is considered to overlap the claimed range [0150]; see MPEP 2144.05 I: a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
Regarding claim 86, the reference discloses Cu2O as from 0 to about 3%, which overlaps the claimed [0173]; see MPEP 2144.05 I.
Regarding claim 96, the reference discloses the glass ceramic contains petalite in about 20%, which is considered to overlap the claimed range [0150]; see MPEP 2144.05 I: a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
Regarding claim 98, the reference discloses Cu2O as from 0 to about 3%, which overlaps the claimed [0173]; see MPEP 2144.05 I.
Regarding claim 99, the reference discloses a glass composition comprising, in wt %: SiO2: 55-80%; Al2O3: 2-20%; Li2O: 5-20%; B2O3: 0-10%; Na2O: 0-5%; ZnO: 0-10%; P2O5: 0.5-6%; and ZrO2: 0.2 2-15%, which overlap the claimed ranges [0063-0071]; see MPEP 2144.05 I.
Regarding claim 100, the reference discloses the glass composition comprising, in wt%: Na2O: 0-5% and ZnO: 0-10%, which overlap the claimed range [0068 & 0069]; see MPEP 2144.05 I.
Regarding claims 101-103, the reference renders obvious a glass composition that satisfies situation 8 with a value of 0 when MgO and ZnO are 0, see above discussion.
Regarding claim 104, the reference discloses a glass composition comprising, in wt %: SiO2: 55-80%; Al2O3: 2-20%; Li2O: 5-20%; B2O3: 0-10%; Na2O: 0-5%; ZnO: 0-10%; P2O5: 0.5-6%; and ZrO2: 0.2 2-15%, which overlap the claimed ranges [0063-0071]; see MPEP 2144.05 I.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 75-83, 85-95, 97, 98 and 105-107 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 75-84, 86-96 and 98-103 of copending Application No. 18/019,053 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claims a microcrystalline glass with similar compositions and crystalline phases.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/LAURA A AUER/ Primary Examiner, Art Unit 1783