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.
Status of the Claims
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Claims 1-8 and 11-18 are currently pending.
Claims 16-18 have been withdrawn.
Claims 9 and 10 have been cancelled.
Claims 1-6, 8-12, 18-24, and 30-34 are currently rejected.
Claims 1-8 and 11-15 are rejected under 35 U.S.C. § 103 as being unpatentable over Sun, Chinese Patent Publication CN 110194589 A.
Claims 1-8 and 11-15 are rejected under 35 U.S.C. § 103 as being unpatentable over Schreder et al., German Patent Publication DE 10 2012 210 552 A1.
Claim Comment
Claims 12 and 13 recite a range in the format of “between X and Y”. the term “between” is read such that the range does not include the endpoints. As in claim 12, the phrase “between 610 nm and 640 nm” is numerically as 610 nm>T50>640 nm. As to claim 13, the phrase “between 620 nm and 632 nm” is numerically as 620 nm>T50>632 nm. See response to arguments below.
Claim 14 recites “at least one of the following is satisfied: a coefficient of thermal expansion (a20-300) of the glass is not more than 13 x 10-6/K; a coefficient of thermal expansion (a20-300) of the glass is at least 9.5 x 10-6/K; or a transformation temperature of the glass is more than 350°C.” This is read that as long as one of the limitations is met, the claim met. The Examiner notes that the first limitation, “a coefficient of thermal expansion (a20-300) of the glass is not more than 13 x 10-6/K”, is read as 0 to 13 x 10-6/K and the limitation “a coefficient of thermal expansion (a20-300) of the glass is at least 9.5 x 10-6/K”, is read as 9.5 x 10-6/K to infinity. Therefore, the range the coefficient of thermal expansion can be to meet the claim limitations is 0 to infinity.
Claim 15 recites “wherein the coefficient of thermal expansion (a20-300) of the glass is not more than 12.5 x 10-6/K AND/OR at least 9.8 x 10-6/K.” This is read that as long as one of the limitations is met, the claim met. The Examiner notes that the first limitation, “the coefficient of thermal expansion (a20-300) of the glass is not more than 12.5 x 10-6/K”, is read as 0 to 12.5 x 10-6/K and the limitation “at least 9.8 x 10-6/K”, is read as 9.8 x 10-6/K to infinity. Therefore, the range the coefficient of thermal expansion can be to meet the claim limitations is 0 to infinity.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-8 and 11-15 are rejected under 35 U.S.C. § 103 as being unpatentable over Sun, Chinese Patent Publication CN 110194589 A.
A machine-generated translation of CN 110194589 A accompanied the Information Disclosure Statement filed 16 May 2023. In reciting this rejection, the examiner will cite this translation.
Sun teaches a glass comprising in terms of weight percentages 60-72% of P2O5, 3-12% of Al2O3, 8-18% of CuO, 1.5-15% of Li2O, 0.02-3% of V2O5, 0-10% of MgO, 0-10% of BaO, 0-8% of Na2O, 0-8% of K2O, 0-6% of CaO, and 0-6% of SrO. See Abstract and the entire specification, specifically, paragraph [0011]. Sun discloses the glass does not include SiO2, B2O3, ZnO, F, and Fe2O3. See paragraph [0014]. Sun teaches the glass comprises one or more of La2O3, Gd2O3, Y2O3, and Yb2O3 in the amount of 0-5 wt%. See paragraph [0061] Sun teaches the T50 wavelength is from 620 nm to 650 nm, the Tg of the glass is at least 400°C, and the coefficient of thermal expansion is at most 95 x 10-7/K. See paragraph [0016].
Sun fails to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 1-8 and 11-15. However, the weight percent ranges taught by Sun have overlapping compositional ranges with instant claims 1-8 and 11-15. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Sun because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Sun overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
As to claim 1, Sun teaches a glass having 60-72% of P2O5, 3-12% of Al2O3, 1.5-15% of Li2O, 0-8% of Na2O, 0-8% of K2O, 0-10% of MgO, 0-6% of CaO, 0-6% of SrO, 0-10% of BaO, 8-18% of CuO, and 0.02-3% of V2O5 and no SiO2, B2O3, ZnO, F, and Fe2O3, (see paragraphs [0011] and [0014]), which reads on a glass comprising in terms of weight percentages >1.1-6% of Li2O, at least one of Na2O and K2O, 55.0-75.0% of P2O5, 4.1-8.0% of Al2O3, 8.0-18.0% of CuO, 0-<0.8% of V2O5, 0-2.0% of SiO2, 0-2.0% of F, and 0-1% of B2O3, where the total amount of R’O is 0-10.5 and the total amount of R2O is 3.0-17.0%,as recited in instant claim 1.
As to the at least one of an average transmittance Tavg in a range of 430-565 nm of at least 83% or a transmittance at 700nm of not more than 12%, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the properties as recited in claim 1.
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 2, Sun teaches a glass having, 0-8% of Na2O and 0-8% of K2O, (see paragraph [0011]), which reads on the glass comprising at least one of Na2O and K2O with a content of at least 0.3%, as recited in instant claim 2.
As to claim 3, Sun teaches a glass having 0-10% of MgO, 0-6% of CaO, 0-6% of SrO, 0-10% of BaO, (see paragraph [0011]), which reads on the glass comprising a maximum of two component selected from the group of R’O or only one component selected from the group of R’O, as recited in instant claim 3.
As to claim 4, Sun teaches a glass having 8-18% of CuO and 0.02-3% of V2O5, (see paragraph [0011]), which reads on the limitations the CuO content being at most 17.0 wt% and/or at least 8.5 wt% and/or V2O5 content being present in an amount of not more than 0.6 wt%, as recited in instant claim 4.
As to claim 5, Sun teaches a glass having 60-72% of P2O5, 3-12% of Al2O3, 1.5-15% of Li2O, 0-8% of Na2O, 0-8% of K2O, 0-10% of MgO, 0-6% of CaO, 0-6% of SrO, 0-10% of BaO, 8-18% of CuO, and 0.02-3% of V2O5 and no SiO2, B2O3, ZnO, F, and Fe2O3, Sun does not mention the inclusion of La2O3 or Y2O3, (see paragraphs [0011] and [0014]), which reads on the glass comprising at most 4.0 wt% of La2O3 and/or at most 4.0 wt% of Y2O3.
As to claim 6, Sun teaches that the glass is free of B2O3 (see paragraph [0014]), which reads on the glass being free of at least one of B2O3, ZrO2, Nb2O5, Yb2O3, Gd2O3, WO3, Fe2O3, PbO and/or CoO, as recited in instant claim 6.
As to claim 7, Sun does not mention the inclusion of Cr, Mn, and Ni, which reads on a glass being free of Cr, Mn, and/or Ni, as recited in instant claim 7.
As to claim 8, Sun does not mention the inclusion of Pr, Nd, Sm, Eu, Tb, Dy, Ho, Er, and Tm, which reads on a glass being free of Pr, Nd, Sm, Eu, Tb, Dy, Ho, Er, and/or Tm, as recited in instant claim 8.
As to the glass having a thickness of 0.205 mm, the Tavg in a range of 430-565 nm of at least 86% or transmittance at 700 nm of not more than 11%, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the properties as recited in instant claim 11.
As to claim 12, Sun teaches that the glass has a transmittance of 50% at a wavelength in the range of 620-650 nm, (see paragraph [0016]), which reads on the glass having a T50 in the range of between 610 nm and 640 nm as recited in instant claim 12.
As to claim 13, Sun teaches that the glass has a transmittance of 50% at a wavelength in the range of 620-650 nm, (see paragraph [0016]), which reads on the glass having a T50 in the range of between 620 nm and 632 nm as recited in instant claim 13.
As to claim 14, Sun teaches the glass has a coefficient of thermal expansion of 95 x10-7/K and a glass transformation temperature of at least 400°C, (see paragraph [0015]), which reads on at least one of a coefficient of thermal expansion of not more than 13 x 10-6/K, a coefficient of thermal expansion of at least 9.5 x 10-6/K, or a transformation temperature of the glass is more than 350°C, as recited in instant claim 14.
As to claim 15, Sun teaches the glass has a coefficient of thermal expansion of 95 x10-7/K and a glass transformation temperature of at least 400°C, (see paragraph [0015]), which reads on the limitation a coefficient of thermal expansion of not more than 12.5 x 10-6/K and/or at least 9.8 x 10-6/K as recited in instant claim 15.
Claims 1-8 and 11-15 are rejected under 35 U.S.C. § 103 as being unpatentable over Schreder et al., German Patent Publication DE 10 2012 210 552 A1.
A machine-generated translation of DE 10 2012 210 552 A1 accompanied the previous action. In reciting this rejection, the examiner will cite this translation.
Schreder et al. teach a glass comprising in terms of weight percentages 25-75% of P2O5, 0.5-15% of Al2O3, 0-10% of MgO, 0-10% of CaO, 0-35% of BaO, 0-16% of SrO, 0-12% of Li2O, 0-12% of Na2O, 0-12% of K2O, 1-20% of CuO, 0-20% of F, wherein RO is 0-40% and R2O is 0.5-20%. See Abstract and the entire specification, specifically, paragraph [0007].
Schreder et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 1-8 and 11-15. However, the weight percent ranges taught by Schreder et al. have overlapping compositional ranges with instant claims 1-8 and 11-15. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Schreder et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Schreder et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
As to claim 1, Schreder et al. teach a glass having 25-75% of P2O5, 0.5-15% of Al2O3, 0-12% of Li2O, 0-12% of Na2O, 0-12% of K2O, 0-10% of MgO, 0-10% of CaO, 0-16% of SrO, 0-35% of BaO, 1-20% of CuO, 0-20% of F, and 0-1% of B2O3, 0-40% of MgO+CaO+SrO+BaO, and 0.5-20% of Li2O+Na2O+K2O, (see paragraphs [0007] and [0041]), which reads on a glass comprising in terms of weight percentages >1.1-6% of Li2O, at least one of Na2O and K2O, 55.0-75.0% of P2O5, 4.1-8.0% of Al2O3, 8.0-18.0% of CuO, 0-<0.8% of V2O5, 0-2.0% of SiO2, 0-2.0% of F, and 0-1% of B2O3, where the total amount of R’O is 0-10.5 and the total amount of R2O is 3.0-17.0%,as recited in instant claim 1.
As to the at least one of an average transmittance Tavg in a range of 430-565 nm of at least 83% or a transmittance at 700nm of not more than 12%, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the properties as recited in claim 1.
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 2, Schreder et al. teach a glass having 0-12% of Na2O and 0-12% of K2O, (see paragraph [0007]), which reads on the glass comprising at least one of Na2O and K2O with a content of at least 0.3%, as recited in instant claim 2.
As to claim 3, Schreder et al. teach a glass having 0-10% of MgO, 0-10% of CaO, 0-16% of SrO, and 0-35% of BaO, (see paragraph [0007]), which reads on the glass comprising a maximum of two component selected from the group of R’O or only one component selected from the group of R’O is at most 10.5 wt%, as recited in instant claim 3.
As to claim 4, Schreder et al. teach a glass having 1-20% of CuO, (see paragraph [0007]), which reads on the limitations the CuO content being at most 17.0 wt% and/or at least 8.5 wt% and/or V2O5 content being present in an amount of not more than 0.6 wt%, as recited in instant claim 4.
As to claim 5, Schreder et al. does not mention the inclusion of La2O3 and Y2O3, which reads on the glass comprising at most 4.0 wt% of La2O3 and/or at most 4.0 wt% of Y2O3.
As to claim 6, Schreder et al. teach that the glass comprises 0-1 wt% of B2O3, (see paragraph [0041]) and Schreder et al. does not mention the inclusion of ZrO2, Nb2O5, Yb2O3, Gd2O3,WO3, Fe2O3, PbO, and CoO, which reads on the glass being free of at least one of B2O3, ZrO2, Nb2O5, Yb2O3, Gd2O3, WO3, Fe2O3, PbO and/or CoO, as recited in instant claim 6.
As to claim 7, Schreder et al. does not mention the inclusion of Cr, Mn, and Ni, which reads on a glass being free of Cr, Mn, and/or Ni, as recited in instant claim 7.
As to claim 8, Schreder et al. does not mention the inclusion of Pr, Nd, Sm, Eu, Tb, Dy, Ho, Er, and Tm, which reads on a glass being free of Pr, Nd, Sm, Eu, Tb, Dy, Ho, Er, and/or Tm, as recited in instant claim 8.
As to the glass having a thickness of 0.205 mm, the Tavg in a range of 430-565 nm of at least 86% or transmittance at 700 nm of not more than 11%, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the properties as recited in instant claim 11.
As to the glass having a T50 in the range of between 610 nm and 640 nm, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the properties as recited in instant claim 12.
As to the glass having a T50 in the range of between 620 nm and 632 nm, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the properties as recited in instant claim 13.
As to the glass having at least one of a coefficient of thermal expansion of not more than 13 x 10-6/K, a coefficient of thermal expansion of at least 9.5 x 10-6/K, or a transformation temperature of the glass is more than 350°C, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the properties as recited in instant claim 14.
As to the glass having a coefficient of thermal expansion of not more than 12.5 x 10-6/K or a coefficient of thermal expansion of at least 9.8 x 10-6/K, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the properties as recited in instant claim 15.
Response to Arguments
Applicant’s response to the claim comment about claim 12 and 13, has been fully considered but not found persuasive. Applicant states that the term “between” is intended to be inclusive of the endpoints and points to paragraph [0087]. Paragraph [0087] is reproduced below.
“[0087] T50 is the wavelength at which transmittance of a filter glass in the near IR region (NIR) is exactly 50%. Filter glasses with a composition according to the invention may have a steep NIR edge and permit stable adjustment of the NIR edge even in the case of continuous manufacture, such that it is possible to comply with the T50 tolerance for the finished filter that is permitted for the respective field of use. Exemplary embodiments may have a T50 in the range of 610 nm to 640 nm at a reference thickness of 0.205 mm. In some embodiments, T50 may be in the range between 618 nm and 634 nm, optionally in the range between 620 and 632 nm, optionally in the range between 622 nm and 630 nm.”
While the specification does teach that the T50 is “in the range of 610 nm to 640 nm”, this phrase does not show that the term “between” is intended to be read as “to”. The specification further states that in some embodiments “may be in the range between 618 nm and 634 nm, optionally in the range between 620 and 632 nm, optionally in the range between 622 nm and 630 nm”. The first recitation uses the phrase “in the range of X to Y” and the further recitations use the phrase “in the range between X and Y”. The specification does provide support for the range in claim 12 to include the endpoints if amended to read “in a range of 610 nm to 640 nm” and for the range in claim 13 to include the endpoints if amended to read “in a range of 620 nm to 632 nm”, since the full range of the T50 disclosed in paragraph [0087] is 610 nm to 640 nm.
Applicant’s arguments, see pages 7-10, filed 22 April 2026, with respect to the rejections of claims 1-8 and 11-15 under 35 U.S.C. 102 over Schreder et al., DE 102012210552 and Sun, CN 110194589 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of 35 U.S.C. 103 over Sun, CN 110194589 and Schreder et al., DE 102012210552.
Applicant argues that the glass of Sun does not teach, disclose, or otherwise suggest the glass composition comprising at most 10.5 wt% of R’O. This is not found persuasive since the compositional ranges overlap. Specifically, the glass of Sun teaches that the glass comprises 0-10 wt% of MgO, 0-6 wt% of CaO, 0-6 wt% of SrO, and 0-10 wt% of BaO, see paragraph [0011] of Sun. These compositional ranges overlap the limitation 0-10.5 wt% of R’O as recited in claim 1. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Applicant argues that the glass of Schreder et al. does not disclose, teach, or otherwise suggest the subject matter of claim 1, specifically, that the glass does not disclose at most 1 wt% of B2O3. This is not found persuasive since Schreder et al. teach that the glass comprises at most 1 wt% of B2O3 in paragraph [0041]. Applicant further argues that the glass of Schreder et al. would not have the transmittance as recited in claim 1. This is not found persuasive since the compositional ranges of Schreder et al. have overlapping ranges with the instant claims. One of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the properties as recited in claim 1. 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).
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 Elizabeth A. Bolden whose telephone number is (571)272-1363. The examiner can normally be reached 10:00 am to 6:30 pm M-F.
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
5 June 2026
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