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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis 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.
Allowable Subject Matter
Applicant is advised that the Notice of Allowance mailed 22 October 2025 is vacated. If the issue fee has already been paid, applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied. If abandoned, applicant may request refund or credit to a specified Deposit Account.
The indicated allowability of claims 1-17 is withdrawn in view of the newly discovered reference(s) to Sun, Chinese Patent Publication CN 10191797 A and Aitken, U.S. Patent Application Publication US 2019/0322571 A1. Rejections based on the newly cited reference(s) follow.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The original drawings received on 1 March 2023 are accepted by the Examiner.
Claim Rejections - 35 USC § 112(d) or fourth paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 6 recites the limitation [BaO/(MgO+CaO+ZnO+SrO+BaO)] is o or more. This fails to further limit claim 1 since the recited range for the mass ratio encompasses all the possible values, which does not further limit claim 1. For example, if BaO is zero the ratio is zero. If only BaO is present the ratio is 1. If other alkaline earth metal oxides are included with BaO the ratio is between greater than zero to less than 1. Therefore, all possible values are recited in claim 6 and would not further limit claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-17 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Sun, Chinese Patent Publication CN 10191797 A.
A machine-generated translation of CN 10191797 A accompanied the IDS filed 11 November 2025. In reciting this rejection, the examiner will cite this translation.
Sun discloses an optical glass comprising in terms of weight percentages, 16-40% of P2O5, 40-60% of Nb2O5, 8-25% of TiO2, 0.5-10% of BaO, 0-5% of SiO2, 0-15% of Na2O+K2O, 0-5% of MgO+CaO+SrO, 0-5% of B2O3, and 0-5% of Bi2O3. See Abstract and the entire specification, specifically, paragraphs [0010]-[0016] and [0041]-[0051]. Sun discloses that the optical glass has a refractive index 1.91-1.98. See paragraph [0060]. Sun discloses that the optical glass has an Abbe number of 1-20. See paragraph [0060]. Sun discloses that the optical glass is used to make an optical element. See paragraphs [0002], [0004], and [0060]. The compositional ranges of Sun are sufficiently specific to anticipate the optical glass composition as recited in claims 1-17. See MPEP 2131.03.
Specifically, as to claim 1, Sun discloses Example 4 (see Table in paragraphs [0066] and [0067]), which reads on an optical glass comprising in terms of weight percentages, 10-40% of P2O5, 5-40% of TiO2, at least 0.01% of K2O, and 20-60% of Nb2O5, wherein the optical glass has a sum of Li2O+Na2O+K2O+MgO+CaO+ZnO+SrO+BaO of at most 20%, a sum of TiO2+Nb2O5 of at least 55%, a mass ratio of K2O/(Li2O+Na2O+K2O) of at least 0.5, a mass ratio of (MgO+CaO+ZnO+SrO+BaO)/(Li2O+Na2O+K2O) of 0.3-10, a mass ratio of TiO2/K2O of at least 3, and a mass ratio of (Li2O+Na2O+MgO+CaO+ZnO+SrO)/(K2O+BaO) of at most 0.8, as recited in instant claim 1.
As to claim 2, Sun discloses Example 4 (see Table in paragraphs [0066] and [0067]), which reads on an optical glass having a mass ratio of (TiO2+Nb2O5)/(SiO2+B2O3+Li2O+Na2O+K2O+MgO+CaO+ZnO+SrO+BaO) of at least 2.65, as recited in instant claim 2.
As to claim 3, Sun discloses Example 4 (see Table in paragraphs [0066] and [0067]), which reads on an optical glass comprising in terms of weight percentages, 40-80% of TiO2+Nb2O5+WO3+Bi2O3, as recited in instant claim 3.
As to claim 4, Sun discloses Example 4 (see Table in paragraphs [0066] and [0067]), which reads on an optical glass having a mass ratio of P2O5/(P2O5+TiO2+Nb2O5) of 0.15-0.40, as recited in instant claim 4.
As to claim 5, Sun discloses Example 4 (see Table in paragraphs [0066] and [0067]), which reads on an optical glass having a mass ratio of TiO2/(Li2O+Na2O+K2O) of 1-30, as recited in instant claim 5.
As to claim 6, Sun discloses Example 4 (see Table in paragraphs [0066] and [0067]), which reads on an optical glass having a mass ratio of BaO/(MgO+CaO+ZnO+SrO+BaO) is greater than or equal to 0, as recited in instant claim 6.
As to claim 7, Sun discloses Example 4 (see Table in paragraphs [0066] and [0067]), which reads on an optical glass having a mass ratio of TiO2/(MgO+CaO+ZnO+SrO+BaO), as recited in instant claim 7.
As to claim 8, Sun discloses Example 4 (see Table in paragraphs [0066] and [0067]), which reads on an optical glass having a mass ratio TiO2/(TiO2+Nb2O5+WO3+Bi2O3), as recited in instant claim 8.
As to claim 9, Sun discloses the optical glass has a refractive index of 1.91-1.98 (see paragraph [0060]), which reads on an optical glass having a refractive index of 1.950 or more, as recited in instant claim 9.
As to claim 10, Sun discloses the optical glass has an Abbe number of 14-20 (see paragraph [0060]), which reads on an optical glass having an Abbe number of 150-20.0, as recited in instant claim 10.
As to claim 11, since the composition of the reference is the same as those claimed herein it follows that the glasses of Sun would inherently possess a specific gravity of at most 4.20, as recited in claim 11. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 12, since the composition of the reference is the same as those claimed herein it follows that the glasses of Sun would inherently possess a ratio of the refractive index to the specific gravity (nd/d) of a0.48-0.60, as recited in claim 12. See MPEP 2112.
As to claim 13, , since the composition of the reference is the same as those claimed herein it follows that the glasses of Sun would inherently possess a glass transition temperature Tg of 380-800°C, as recited in claim 13. See MPEP 2112.
As to claim 14, Sun discloses the optical glass is used to make an optical element (see paragraphs [0002], [0004], and [0060]), which reads on an optical element blank, as recited in instant claim 14.
As to claim 15, Sun discloses the optical glass is used to make an optical element (see paragraphs [0002], [0004], and [0060]), which reads on an optical element blank, as recited in instant claim 15.
As to claim 16, Sun discloses the optical glass is an optical element (see paragraphs [0002], [0004], and [0060]), which reads on an optical element, as recited in instant claim 16.
As to claim 17, Sun discloses the optical glass is an optical element (see paragraphs [0002], [0004], and [0060]), which reads on an optical element, as recited in instant claim 17.
Claims 1-17 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Aitken, U.S. Patent Application Publication US 2019/0322571 A1.
Aitken discloses an optical glass comprising in terms of mole percentages, 1-70% of TiO2, 1-40% of Nb2O5, 20-45% of P2O5, 0-15% of Na2O, 0-45% of BaO, 0-45% of ZnO, 0-10% B2O3, 0-10% of SnO2, and 0-20% of K2O. See Abstract and the entire specification, specifically, paragraphs [0031]-[0043]. Aitken discloses that the optical glass has a refractive index 1.75-2.05. See paragraph [0049]. Aitken discloses that the optical glass is used to make an optical articles. See paragraphs [0053]-[0056]. The compositional ranges of Aitken are sufficiently specific to anticipate the optical glass composition as recited in claims 1-17. See MPEP 2131.03.
Specifically, as to claim 1, Aitken discloses Example 25 (see Table 4), which reads on an optical glass comprising in terms of weight percentages, 10-40% of P2O5, 5-40% of TiO2, at least 0.01% of K2O, and 20-60% of Nb2O5, wherein the optical glass has a sum of Li2O+Na2O+K2O+MgO+CaO+ZnO+SrO+BaO of at most 20%, a sum of TiO2+Nb2O5 of at least 55%, a mass ratio of K2O/(Li2O+Na2O+K2O) of at least 0.5, a mass ratio of (MgO+CaO+ZnO+SrO+BaO)/(Li2O+Na2O+K2O) of 0.3-10, a mass ratio of TiO2/K2O of at least 3, and a mass ratio of (Li2O+Na2O+MgO+CaO+ZnO+SrO)/(K2O+BaO) of at most 0.8, as recited in instant claim 1.
As to claim 2, Aitken discloses Example 25 (see Table 4), which reads on an optical glass having a mass ratio of (TiO2+Nb2O5)/(SiO2+B2O3+Li2O+Na2O+K2O+MgO+CaO+ZnO+SrO+BaO) of at least 2.65, as recited in instant claim 2.
As to claim 3, Aitken discloses Example 25 (see Table 4), which reads on an optical glass comprising in terms of weight percentages, 40-80% of TiO2+Nb2O5+WO3+Bi2O3, as recited in instant claim 3.
As to claim 4, Aitken discloses Example 25 (see Table 4), which reads on an optical glass having a mass ratio of P2O5/(P2O5+TiO2+Nb2O5) of 0.15-0.40, as recited in instant claim 4.
As to claim 5, Aitken discloses Example 25 (see Table 4), which reads on an optical glass having a mass ratio of TiO2/(Li2O+Na2O+K2O) of 1-30, as recited in instant claim 5.
As to claim 6, Aitken discloses Example 25 (see Table 4), which reads on an optical glass having a mass ratio of BaO/(MgO+CaO+ZnO+SrO+BaO) is greater than or equal to 0, as recited in instant claim 6.
As to claim 7, Aitken discloses Example 25 (see Table 4), which reads on an optical glass having a mass ratio of TiO2/(MgO+CaO+ZnO+SrO+BaO), as recited in instant claim 7.
As to claim 8, Aitken discloses Example 25 (see Table 4), which reads on an optical glass having a mass ratio TiO2/(TiO2+Nb2O5+WO3+Bi2O3), as recited in instant claim 8.
As to claim 9, Aitken discloses the optical glass has a refractive index of 1.75-2.05 (see paragraph [0049]), which reads on an optical glass having a refractive index of 1.950 or more, as recited in instant claim 9.
As to claim 10, since the composition of the reference is the same as those claimed herein it follows that the glasses of Aitken would inherently possess an Abbe number of 15-20, as recited in claim 10. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 11, since the composition of the reference is the same as those claimed herein it follows that the glasses of Aitken would inherently possess a specific gravity of at most 4.20, as recited in claim 11. See MPEP 2112.
As to claim 12, since the composition of the reference is the same as those claimed herein it follows that the glasses of Aitken would inherently possess a ratio of the refractive index to the specific gravity (nd/d) of a0.48-0.60, as recited in claim 12. See MPEP 2112.
As to claim 13, , since the composition of the reference is the same as those claimed herein it follows that the glasses of Aitken would inherently possess a glass transition temperature Tg of 380-800°C, as recited in claim 13. See MPEP 2112.
As to claim 14, Aitken discloses the optical glass is used to make an optical element (see paragraphs [0053]-[0056]), which reads on an optical element blank, as recited in instant claim 14.
As to claim 15, Aitken discloses the optical glass is used to make an optical element (see paragraphs [0053]-[0056]), which reads on an optical element blank, as recited in instant claim 15.
As to claim 16, Aitken discloses the optical glass is an optical element (see paragraphs [0053]-[0056]), which reads on an optical element, as recited in instant claim 16.
As to claim 17, Aitken discloses the optical glass is an optical element (see paragraphs [0053]-[0056]), which reads on an optical element, as recited in instant claim 17.
Conclusion
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
14 January 2026