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
Claims 10-13 and 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 10 is directed towards the composition of claim 9, wherein the cerammed silicate-based composition has at least one of: fracture toughness ranging from 0.9-2.5 MPa.m05, Young's modulus ranging from 90-200 GPa, or transparency exceeding 70%.
Claim 11 is directed towards the composition of claim 9, wherein the cerammed silicate-based composition comprises a major combeite crystallite phase.
Claim 12 is directed towards the composition of claim 11, wherein the major combeite crystallite phase has a crystal size in a range of 100-300 µm.
Claim 13 is directed towards the composition of claim 9, wherein the cerammed silicate-based composition comprises at least one minor phase including carnegieite, albite, nepheline, or combinations thereof.
Claim 21 is directed towards the composition of claim 9, wherein the cerammed silicate-based composition comprises at least one minor phase including carnegieite, albite, or a combination thereof.
The closest prior art is Zimmer et al. (US20050119105, hereinafter referred to as Zimmer). Per instant claim 10, Zimmer does not disclose or make obvious the cerammed silicate-based composition has at least one of: fracture toughness ranging from 0.9-2.5 MPa.m05, Young's modulus ranging from 90-200 GPa, or transparency exceeding 70%. Per instant claim 11, Zimmer does not disclose or make obvious the cerammed silicate-based composition comprises a major combeite crystallite phase. Per instant claim 12, Zimmer does not disclose or make obvious the major combeite crystallite phase has a crystal size in a range of 100-300 µm. Per instant claim 13, Zimmer does not disclose or make obvious the cerammed silicate-based composition comprises at least one minor phase including carnegieite, albite, nepheline, or combinations thereof. Per instant claim 21, Zimmer does not disclose or make obvious the cerammed silicate-based composition comprises at least one minor phase including carnegieite, albite, or a combination thereof.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zimmer et al. (US20050119105, hereinafter referred to as Zimmer).
Regarding claim 1, Zimmer makes obvious a silicate-based composition, comprising, in mol.%: 35-65% SiO2, 20-40% CaO, 10-30% Na2O, >0-15% TiO2, >0-15% Al2O3, 0-10% P2O5, 0-15% ZrO2, and 0-3% SnO2 (see Zimmer at claim 1, claiming a glass or glass ceramic phase having SiO2 30 to 80 weight percent, Na2O 5 to 40 weight percent, K2O 0 to 40 weight percent, Li2O 0 to 40 weight percent, CaO 5 to 40 weight percent, MgO 0 to 40 weight percent, Al2O3 0 to 15 weight percent, P2O5 0 to 20 weight percent, B2O3 0 to 20 weight percent, TiO2 0 to 5 weight percent, and ZnO 0 to 5 weight percent. While it is mathematically impossible to directly convert wt.% ranges to mol% ranges, it is possible to demonstrate that a weight percent range overlaps with a mol percent range by selecting a point within the disclosed wt.% range, converting that point to mol%, and demonstrating that point is within the claimed range. In the instant case, the point 50 wt.% SiO2, 1 wt.% Al2O3, 15 wt.% Na2O, 30 wt.% CaO, 1 wt.% ZrO2, 1 wt.% TiO2, 1 wt.% SnO2, and 1 wt.% P2O5 is within the range disclosed by Zimmer and converts to approximately 50.33 mol% SiO2, 0.59 mol% Al2O3, 14.63 mol% Na2O, 32.36 mol% CaO, 0.49 mol% ZrO2, 0.76 mol% TiO2, 0.40 mol% SnO2, and 0.43% P2O5, which is within the claimed range. Therefore, the wt.% ranges disclosed by Zimmer overlaps with the claimed range.) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 2, Zimmer makes obvious wherein the composition comprises, in mol.%: 40-55% SiO2, 25-40% CaO, 10-25% Na2O, and 0.5-15% Al2O3 (the ranges of claim 1 of Zimmer overlap with the instantly claimed ranges as detailed in the rejection of claim 1 above.).
Regarding claim 3, Zimmer makes obvious wherein the composition comprises, in mol.%: 0.5-10% Al2O3 (the ranges of claim 1 of Zimmer overlap with the instantly claimed ranges as detailed in the rejection of claim 1 above.).
Regarding claim 4, Zimmer makes obvious wherein the composition comprises, in mol.%: >0-10% TiO2 (the ranges of claim 1 of Zimmer overlap with the instantly claimed ranges as detailed in the rejection of claim 1 above.).
Regarding claim 5, Zimmer makes obvious wherein the composition comprises, in mol.%: >0-10% ZrO2 (the ranges of claim 1 of Zimmer overlap with the instantly claimed ranges as detailed in the rejection of claim 1 above.).
Regarding claim 6, Zimmer makes obvious wherein the composition comprises, in mol.%: >0-5% P2O5 (the ranges of claim 1 of Zimmer overlap with the instantly claimed ranges as detailed in the rejection of claim 1 above.).
Regarding claim 7, Zimmer makes obvious wherein the composition comprises, in mol.%: >0-3% SnO2 (the ranges of claim 1 of Zimmer overlap with the instantly claimed ranges as detailed in the rejection of claim 1 above.).
Regarding claim 8, Zimmer makes obvious wherein a totality of other oxides is, in mol.%, less than 1% (the ranges of claim 1 of Zimmer overlap with the instantly claimed ranges as detailed in the rejection of claim 1 above.).
Regarding claim 9, Zimmer makes obvious wherein the composition is a cerammed silicate-based composition (See Zimmer at the Abstract, disclosing a glass ceramic.).
Response to Arguments
Applicant’s arguments, see the second full paragraph of page 7 of the Remarks concerning Zimmer and Lopez, filed 02/12/2026, with respect to the 102 rejection of claim 1 have been fully considered and are persuasive. The 102 rejections of claim 1 have been withdrawn.
Applicant's arguments filed 02/12/2026 concerning the 103 rejection in view of Zimmer have been fully considered but they are not persuasive. At the last three paragraphs of page 7 of the Remarks, Applicant argues that a point was arbitrarily chose to convert from the wt.% ranges of Zimmer to demonstrate the wt.% ranges of Zimmer overlap with the claimed mol.% ranges, and that per Ex parte Mitchell, this point was created by the Examiner and is not prior art. Examiner respectfully disagrees with this conclusion, and notes the point selected is within the ranges disclosed by Zimmer, and is therefore part of the prior art of Zimmer along with all points within the ranges disclosed by Zimmer. The single point selected is merely a mathematical artifact used to demonstrate that the wt.% ranges of Zimmer overlaps with the claimed mol% range, forming the basis of a prima facie 103 obviousness rejection based on overlapping ranges as detailed above. Examiner additionally notes Ex parte Mitchell is not precedential, and that each application is considered de novo.
At the first paragraph of page 8 of the Remarks, Applicant argues that the Board cited in re Warner and states that a 103 rejection clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art. At the next paragraph, Applicant argues that Zimmer does not disclose a specific embodiment within the claimed ranges, and that the Office created a hypothetical composition by selecting arbitrary point values within Zimmer’s broad wt.% ranges and converted those values to mol%, however, the hypothetical value is not prior art because it relies on hindsight knowledge of the claimed invention.
Examiner notes disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123(II)). The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain (see MPEP 2123(I)). In the instant case, Zimmer is not limited to the specific examples disclosed by Zimmer. All parts of Zimmer may be used to form the basis of a rejection, such as the ranges disclosed by Zimmer.
Examiner notes that examination is not conducted “in the blind”. Put another way, all examination requires some level of hindsight because examination is the process of comparing the claimed invention to prior art. The legally relevant question is whether that hindsight is proper, or improper. While Examiner agrees that the point selected is an arbitrary mathematical artifact used to demonstrate two ranges overlap, Examiner respectfully disagrees that this is improper hindsight choosing an undisclosed value. The value selected is disclosed by Zimmer because it is within the ranges disclosed by Zimmer, as are all values within the range disclosed by Zimmer.
Examiner additionally notes that demonstrating two ranges overlap by performing a mathematical conversion of one point within the two ranges is not impermissible hindsight. Examiner that the MPEP discusses hindsight reasoning in six separate sections.
As first cited, MPEP 2141.01(III) states the content of the prior art is determined at the relevant time to avoid hindsight. In the instant case, the content of the prior art of Zimmer is determined before the effective filing date of the claimed invention, and therefore no impermissible hindsight may be possible when considering the claimed subject matter in view of Zimmer.
As cited second, MPEP 707.07(f) form paragraph 7.37.03 in response to unpersuasive arguments of hindsight reasoning recites “In response to Applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).” In the instant case, Examiner notes the above form paragraph is relevant to Applicant’s arguments of impermissible hindsight reasoning. Examiner notes that examination is not performed “in the blind”, and that the reasoning used was appropriate per form paragraph 7.37.03 above.
As cited third, MPEP 2142 recites “the tendency to resort to "hindsight" based upon applicant's disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.”. Examiner notes this section draws a distinction between “hindsight” and “impermissible hindsight”, and defines permissible hindsight as legal conclusions which must be reached on the basis of the facts gleaned from the prior art. In the instant case, the legal conclusion is that the instant claims are obvious over Zimmer, and the facts in the prior art relied upon are the ranges of Zimmer which overlap with the claimed ranges. Therefore, no impermissible hindsight is applied.
As cited fourth, MPEP 2145(X) discusses impermissible hindsight as it relates to improper rationales for combining references. Examiner notes the claims are not rejected over a combination of references, but Zimmer alone, and thus this section is not relevant to the instant arguments concerning impermissible hindsight.
As cited fifth, MPEP 2143.01 is directed towards suggestions or motivations to modify the references. Examiner notes the instant rejection is not based upon modification of references, but are based upon the disclosed ranges of a single reference, and thus this section is not relevant to the instant arguments concerning impermissible hindsight.
As cited sixth, MPEP 2141(I) notes the Federal Court has erred by applying the teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic way… by overemphasizing "the risk of courts and patent examiners falling prey to hindsight bias" and as a result applying "[r]igid preventative rules that deny factfinders recourse to common sense". Examiner notes that “common sense” has been applied as detailed above.
As such, Examiner contends that arguments of impermissible hindsight reasoning are not reasonable.
To Applicant’s arguments that Zimmer does not disclose a specific embodiment within the claimed ranges, and that the Office created a hypothetical composition by selecting arbitrary point values within Zimmer’s broad wt.% ranges and converted those values to mol%, however, the hypothetical value is not prior art, Examiner respectfully disagrees. All of the point within Zimmer’s range are prior art because they are disclosed as a range within the Zimmer publication. The point selected is an arbitrary value, but the rejection is not based upon that arbitrary value; the rejection is solely based upon the fact that the wt.% range of Zimmer overlaps with the claimed mol% range, forming the basis of a prima facie obviousness rejection. The arbitrary point selected is merely a mathematical artifact used to actually prove that the two ranges do overlap.
Examiner notes that none of the arguments presented by Applicant argue that any of the claimed ranges are critical for achieving an unexpected result. Examiner notes this is further evidence that the properties of the prior art glass are substantially identical to the instantly claimed glass. The glasses of the prior art and the instant claims are essentially the same; were it otherwise, arguments concerning the criticality of some limitation towards achieving unexpected results would have been raised at some point in the prosecution history in order to overcome the overlapping range rejections. Examiner notes MPEP 2144.05(I) states the court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range. Examiner notes, in the absence of arguments showing criticality of the claimed range, that an overlapping range rejection is proper even if the overlap is only at a single point.
Examiner concludes by noting Applicant’s arguments raise a specific policy concern. Applicant argues that when the prior art provides a range in one unit, while the instant claims are in a different unit, examination should be restricted to comparing the specific examples of the prior art to the instant claims while ignoring any broader disclosures of ranges. Such a narrow interpretation would unduly limit applications of prior art to only ranges which use the exact same units, or to specific examples. This would inspire future applicants to invent new and obscure units merely to claim compositions in units that are not disclosed within the ranges of prior art in an attempt to avoid otherwise relevant prior art. For example, were an inventor to declare "one avocado % is equal to 1.2 mol%", such a narrow interpretation would limit all prior art to specific examples within the library of known art, as to this date, no glass compositions have ever been defined in ranges of "avocado %". Patentability of a chemical product is a determination that should made based upon the chemical composition of the claimed product as compared to the chemical composition of the prior art, and not the scientific units used to describe the quantities claimed.
As such, Applicant’s arguments are not found convincing and the 103 rejection in view of Zimmer is maintained.
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 CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
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