DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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 § 103
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 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 1-4, 6-11, 13-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mikami et al. (US 2016/0214881).
Regarding claim 1, Mikami discloses an optical glass with the following composition (note the content M is the content [%] of P2O5) in mol % [0137]:
The content of P2O5 ranges from 7 to 40% [0143];
The content of B2O3 is 0% or more and is less than M [%] [0145];
The content of SiO2 is 0% to 0.8×M [%] [0144];
The content of GeO2 is preferably in the range of 0 to 10% [0157];
The content of Bi2O3 preferably ranges from 0 to 35% [0150];
The content of F is preferably in the range of 0 to 3% [0164];
The content of TiO2 is from 0 to 40% [0147];
The content of Nb2O5 is from 0 to 45% [0148];
The total content of Li2O, Na2O and K2O is preferably in the range of 0 to 40% [0154]; and
The total content of BaO, SrO, CaO, MgO and ZnO is preferably in the range of 0 to 40% [0152].
Note that the disclosed ranges overlap the claimed ranges and that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”; see MPEP 2144.05 I. Based on the values disclosed for P2O5 and the percentages of P2O5 disclosed for B2O3 and SiO2, the reference renders obvious the claimed ranges for B2O3 and SiO2. Further, based on the values of P2O5, B2O3 and SiO2, the reference renders obvious the claimed sum of the three components [0143-0145]. Similarly, based on the values of TiO2 and Nb2O5, the reference renders obvious the claimed sum of the two components [0147-0148]. Lastly, based on the total content of the divalent metal compounds (BaO, SrO, CaO, MgO and ZnO) and the alkali metal oxides (Li2O, Na2O and K2O), the reference renders obvious the claimed sum of R2O + RO [0152 & 0154].
Regarding claim 2, the reference further discloses the glass composition includes, in terms of mol % [0137]:
The content of ZrO.sub.2 is preferably in the range of 0 to 16% [0156];
The content of B2O3 is 0% or more and is less than M [%] where M is the content [%] of P2O5 and P2O5 ranges from 7 to 40% [0143 & 0145];
The content of TiO2 is from 0 to 40% [0147];
The content of WO3 preferably ranges from 0 to 30% [0149];
The content of La2O3 is in the range of 0 to 10%, note the other components listed can be zero [0163];
The content of Nb2O5 is from 0 to 45% [0148];
The content of SiO2 is 0% to 0.8×M [%] where M is the content [%] of P2O5 and P2O5 ranges from 7 to 40% [0143-0144];
The content of GeO2 is preferably in the range of 0 to 10% [0157];
The content of F is preferably in the range of 0 to 3% [0164];
The content of Yb2O3 is in the range of 0 to 10%, note the other components listed can be zero [0163]; and
The content of Gd2O3 is in the range of 0 to 10%, note the other components listed can be zero [0163].
Note that the disclosed ranges overlap the claimed ranges and that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”; see MPEP 2144.05 I. Based on the values disclosed for P2O5 and the percentages of P2O5 disclosed for B2O3 and SiO2, the reference renders obvious the claimed ranges for B2O3 and SiO2. Further, based on the values of P2O5, B2O3 and SiO2, the reference renders obvious the claimed equation of the three components [0143-0145]. Similarly, based on the values of Yb2O3 and Gd2O3, the reference renders obvious the claimed sum of the two components [0163]. Lastly, the reference discloses the refractive index of the optical glass is preferably 1.90 or more, which overlaps the claimed [0280]; see MPEP 2144.05 I.
Regarding claim 3, the reference discloses the glass composition includes, in terms of mol % [0137]:
The content of Bi2O3 preferably ranges from 0 to 35% [0150]; and
The content of WO3 preferably ranges from 0 to 30% [0149].
Based on the values of WO3 and Bi2O3, the reference renders obvious the claimed sum of the two components [0147-0148].
Regarding claim 4, the reference discloses the glass composition includes, in terms of mol % [0137]:
The content of Ta2O5 is in the range of 0 to 10%, note the other components listed can be zero [0163];
The content of TeO2 is preferably in the range of 0 to 10% [0159];
The content of GeO2 is preferably in the range of 0 to 10% [0157];
Pb and As are not substantially contained [0165];
The content of Sb2O3 is 0 ppm or more and less than 1000 ppm [0160];
F is not substantially contained or zero [0164 & 0168]; and
V is not substantially contained [0166 & 0168].
Regarding claims 6 and 7, based on the ranges disclosed for the components of the glass composition, the reference renders obvious at least Applicant’s example 63, see above discussion, Mikami [0136-0168]. As such, the reference is considered to render obvious a composition with the claimed Pd and Pn values as well as one that does not crystallize during the claimed test; see MPEP 2112.01 II “if the composition is physically the same, it must have the same properties.”
Regarding claim 8, based on the ranges disclosed for the components of the glass composition, the reference renders obvious the claimed ranges, conditions and at least Applicant’s example 63, see above discussion, Mikami [0136-0168]. As such, the reference is considered to render obvious the claimed composition and the claimed Pn value; see MPEP 2144.05 I regarding overlapping ranges and MPEP 2112.01 II “if the composition is physically the same, it must have the same properties.”
Regarding claim 9, the reference discloses the refractive index of the optical glass is preferably 1.90 or more, which overlaps the claimed [0280]; see MPEP 2144.05 I. Additionally, the reference renders obvious at least Applicant’s example 63, see above discussion, Mikami [0136-0168]. As such, the reference is considered to render obvious the claimed refractive index value; see MPEP 2112.01 II “if the composition is physically the same, it must have the same properties.”
Regarding claim 10, the reference further discloses the glass composition includes, in terms of mol % [0137]:
The content of ZrO.sub.2 is preferably in the range of 0 to 16% [0156];
The content of B2O3 is 0% or more and is less than M [%] where M is the content [%] of P2O5 and P2O5 ranges from 7 to 40% [0143 & 0145];
The content of TiO2 is from 0 to 40% [0147];
The content of WO3 preferably ranges from 0 to 30% [0149];
The content of La2O3 is in the range of 0 to 10%, note the other components listed can be zero [0163];
The content of Nb2O5 is from 0 to 45% [0148];
The content of SiO2 is 0% to 0.8×M [%] where M is the content [%] of P2O5 and P2O5 ranges from 7 to 40% [0143-0144];
The content of GeO2 is preferably in the range of 0 to 10% [0157];
The content of F is preferably in the range of 0 to 3% [0164];
The content of Yb2O3 is in the range of 0 to 10%, note the other components listed can be zero [0163]; and
The content of Gd2O3 is in the range of 0 to 10%, note the other components listed can be zero [0163].
Note that the disclosed ranges overlap the claimed ranges and that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”; see MPEP 2144.05 I. Based on the values disclosed for P2O5 and the percentages of P2O5 disclosed for B2O3 and SiO2, the reference renders obvious the claimed ranges for B2O3 and SiO2. Further, based on the values of P2O5, B2O3 and SiO2, the reference renders obvious the claimed equation of the three components [0143-0145]. Similarly, based on the values of Yb2O3 and Gd2O3, the reference renders obvious the claimed sum of the two components [0163].
Regarding claim 11, the reference discloses the glass composition includes, in terms of mol % [0137]:
The content of Ta2O5 is in the range of 0 to 10%, note the other components listed can be zero [0163];
The content of TeO2 is preferably in the range of 0 to 10% [0159];
The content of GeO2 is preferably in the range of 0 to 10% [0157];
Pb and As are not substantially contained [0165];
The content of Sb2O3 is 0 ppm or more and less than 1000 ppm [0160];
F is not substantially contained or zero [0164 & 0168]; and
V is not substantially contained [0166 & 0168].
Regarding claims 13 and 14, based on the ranges disclosed for the components of the glass composition, the reference renders obvious at least Applicant’s example 63, see above discussion, Mikami [0136-0168]. As such, the reference is considered to render obvious a composition with the claimed Pd and Pn values as well as one that does not crystallize during the claimed test; see MPEP 2112.01 II “if the composition is physically the same, it must have the same properties.”
Regarding claim 15, Mikami discloses an optical glass with the following composition (note the content M is the content [%] of P2O5) in mol % [0137]:
The content of P2O5 ranges from 7 to 40% [0143];
The content of B2O3 is 0% or more and is less than M [%] [0145];
The content of SiO2 is 0% to 0.8×M [%] [0144];
The content of WO3 preferably ranges from 0 to 30% [0149];
The content of La2O3 is in the range of 0 to 10%, note the other components listed can be zero [0163];
The content of TeO2 is preferably in the range of 0 to 10% [0159];
The content of GeO2 is preferably in the range of 0 to 10% [0157];
The content of Bi2O3 preferably ranges from 0 to 35% [0150];
The content of F is preferably in the range of 0 to 3% [0164];
The content of TiO2 is from 0 to 40% [0147];
The content of Nb2O5 is from 0 to 45% [0148];
Pb is not substantially contained [0165];
The content of Ga2O3 is in the range of 0 to 10%, note the other components listed can be zero [0163];
The total content of Li2O, Na2O and K2O is preferably in the range of 0 to 40% [0154]; and
The total content of BaO, SrO, CaO, MgO and ZnO is preferably in the range of 0 to 40% [0152]; and
One or more of the claimed components [0136-0168].
Note that the disclosed ranges overlap the claimed ranges and that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”; see MPEP 2144.05 I. Based on the values disclosed for P2O5 and the percentages of P2O5 disclosed for B2O3 and SiO2, the reference renders obvious the claimed ranges for B2O3 and SiO2. Additionally, based on the ranges disclosed for the components of the glass composition, the reference renders obvious at least Applicant’s example 63, see above discussion, Mikami [0136-0168]. As such, the reference is considered to render obvious a composition with the claimed Pd and Pn values as well as one that does not crystallize during the claimed test; see MPEP 2112.01 II “if the composition is physically the same, it must have the same properties.”
Regarding claim 16, it is expected that the disclosed composition renders obvious a glass with the claimed density and one that satisfies the claimed condition given the disclosed ranges overlap the claimed ranges and the reference renders obvious at least Applicant’s example 63; see above discussion, MPEP 2144.05 I and MPEP 2112.01 II.
Regarding claim 17, the reference further discloses the glass composition includes, in terms of mol % [0137]:
The content of ZrO.sub.2 is preferably in the range of 0 to 16% [0156];
The content of B2O3 is 0% or more and is less than M [%] where M is the content [%] of P2O5 and P2O5 ranges from 7 to 40% [0143 & 0145];
The content of TiO2 is from 0 to 40% [0147];
The content of WO3 preferably ranges from 0 to 30% [0149];
The content of La2O3 is in the range of 0 to 10%, note the other components listed can be zero [0163];
The content of Nb2O5 is from 0 to 45% [0148];
The content of SiO2 is 0% to 0.8×M [%] where M is the content [%] of P2O5 and P2O5 ranges from 7 to 40% [0143-0144];
The content of GeO2 is preferably in the range of 0 to 10% [0157];
The content of F is preferably in the range of 0 to 3% [0164]; and
The content of Yb2O3 is in the range of 0 to 10%, note the other components listed can be zero [0163];
The content of Gd2O3 is in the range of 0 to 10%, note the other components listed can be zero [0163];
The total content of Li2O, Na2O and K2O is preferably in the range of 0 to 40% [0154]; and
The total content of BaO, SrO, CaO, MgO and ZnO is preferably in the range of 0 to 40% [0152].
Note that the disclosed ranges overlap the claimed ranges and that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”; see MPEP 2144.05 I. Based on the values disclosed for P2O5 and the percentages of P2O5 disclosed for B2O3 and SiO2, the reference renders obvious the claimed ranges for B2O3 and SiO2. Further, based on the values of P2O5, B2O3 and SiO2, the reference renders obvious the claimed equation of the three components [0143-0145]. Similarly, based on the values of Yb2O3 and Gd2O3, the reference renders obvious the claimed sum of the two components [0163]. Based on the total content of the divalent metal compounds (BaO, SrO, CaO, MgO and ZnO) and the alkali metal oxides (Li2O, Na2O and K2O), the reference renders obvious the claimed sum of R2O + RO [0152 & 0154]. Lastly, the reference discloses the refractive index of the optical glass is preferably 1.90 or more, which overlaps the claimed [0280]; see MPEP 2144.05 I.
Regarding claim 18, the reference discloses the glass composition includes, in terms of mol % [0137]:
The content of Ta2O5 is in the range of 0 to 10%, note the other components listed can be zero [0163];
The content of TeO2 is preferably in the range of 0 to 10% [0159];
The content of GeO2 is preferably in the range of 0 to 10% [0157];
Pb and As are not substantially contained [0165];
The content of Sb2O3 is 0 ppm or more and less than 1000 ppm [0160];
F is not substantially contained or zero [0164 & 0168]; and
V is not substantially contained [0166 & 0168].
Regarding claim 20, based on the ranges disclosed for the components of the glass composition, the reference renders obvious at least Applicant’s example 63, see above discussion, Mikami [0136-0168]. As such, the reference is considered to render obvious a composition that does not crystallize during the claimed test; see MPEP 2112.01 II “if the composition is physically the same, it must have the same properties.”
Claims 1, 5, 8, 12, 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Zou et al. (US 2011/0028300).
Regarding claim 1, Zou discloses an optical glass comprising, by mol %:
0.1 to 40% of SiO2,
10 to 50% of B2O3,
0 to 10% of total of Li2O, Na2O and K2O,
0 to 10% of total of MgO, CaO, SrO and BaO,
0.5 to 22% of ZnO,
5 to 50% of La2O3,
0.1 to 25% of Gd2O3,
0.1 to 20% of Y2O3,
0 to 20% of Yb2O3,
0 to 25% of ZrO2,
0 to 25% of TiO2,
0 to 20% of Nb2O5,
0 to 10% of Ta2O5,
over 0.1% but not more than 20% of WO3,
0 to less than 3% of GeO2,
0 to 10% of Bi2O3,
and 0 to 10% of Al2O3, see abstract.
Note that the disclosed ranges overlap the claimed ranges and that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”; see MPEP 2144.05 I. Based on the values of P2O5, B2O3 and SiO2, the reference renders obvious the claimed sum of the three components [0143-0145]. Similarly, based on the values of TiO2 and Nb2O5, the reference renders obvious the claimed sum of the two components [0147-0148]. Lastly, based on the total content of the divalent metal compounds (BaO, SrO, CaO, MgO and ZnO) and the alkali metal oxides (Li2O, Na2O and K2O), the reference renders obvious the claimed sum of R2O + RO [0152 & 0154].
Regarding claim 5, the ranges disclosed by Zou render obvious the claimed ranges, see abstract and above discussion; see also MPEP 2144.05 I.
Regarding claim 8, based on the ranges disclosed for the components of the glass composition, the reference renders obvious the claimed ranges and conditions, see above discussion and Zou abstract. While the reference does not specifically disclose the claimed Pn value, given the reference renders obvious the claimed glass composition, it is expected to render obvious a composition with the claimed property; see MPEP 2144.05 I regarding overlapping ranges and MPEP 2112.01 II “if the composition is physically the same, it must have the same properties.”
Regarding claim 12, the ranges disclosed by Zou render obvious the claimed ranges, see abstract and above discussion; see also MPEP 2144.05 I.
Regarding claim 15, based on the ranges disclosed for the components of the glass composition, the reference renders obvious the claimed ranges and conditions, see above discussion and Zou abstract. While the reference does not specifically disclose the claimed Pn and Pd values, given the reference renders obvious the claimed glass composition, it is expected to render obvious a composition with the claimed properties; see MPEP 2144.05 I regarding overlapping ranges and MPEP 2112.01 II “if the composition is physically the same, it must have the same properties.”
Regarding claim 19, the ranges disclosed by Zou render obvious the claimed ranges, see abstract and above discussion; see also MPEP 2144.05 I.
Response to Arguments
Applicant's arguments filed April 28, 2026 have been fully considered but they are not persuasive.
Applicant argues that Mikami fails to disclose overlapping compositional ranges or, in the alternative, the compositional ranges are so broad as not to invite optimization. Similarly, Applicant argues that Zou fails to disclose overlapping compositional ranges or, in the alternative, the compositional ranges are so broad so as not to invite optimization. In support of these arguments, Applicant provides a detailed comparison between the ranges disclosed in the references and the ranges of instant claim 1. Based on the ranges being so broad and the large number of possible combinations, Applicant requests withdrawal the rejections under 35 U.S.C. 103.
Examiner notes that all of the ranges disclosed in the references overlap the ranges of the components in the claimed glass composition, see above discussion. As such, as discussed above and previously, a prima facie case of obviousness exists; see MPEP 2144.05 I. Applicant may rebut a prima facie case of obviousness by showing the criticality of the claimed range or that the prior art teaches away from the claimed invention; see MPEP 2144.05 III A. & B. Note that Applicant has not provided any arguments showing criticality and/or a teaching away from the claimed invention. While Applicant argues that the disclosures provide a large number of combinations, the rejection is not based on optimization of a variable; see MPEP 2144.05 II A. Note that when the rejection is based on optimization, one factor that may weigh against maintaining the rejection is where applicant establishes that the prior art disclosures of the variable is within a range so broad in light of the dissimilar characteristics of the members of the range as to not invite optimization by one of skill in the art; see MPEP 2144.05 III D.
Given the disclosed ranges overlap the claimed ranges, that Applicant has not provided evidence of criticality or arguments of teaching away and that the rejection is not based on optimization (i.e. broadness of the range is not a consideration in determining if the rejection is proper), Examiner respectfully maintains the rejections under 35 U.S.C. 103 over Mikami and over Zou.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/LAURA A AUER/Primary Examiner, Art Unit 1783
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