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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14-15 and 18-19 remain objected as failing to omitting essential steps amounting to a gap in the method claims. Claims 1 and 7 claim methods of chemically strengthening glass-ceramic articles with a particular ion exchange medium that results in specific properties. The only active step is chemically strengthening. In further clarification Claims 1 and 7 only involve a single chemical strengthening medium that result in the claimed properties.
Claims 16-19 only indicate properties resulting from claim 7 and thus there are no active steps thus they do not add active steps to the process of claim 7.
Claim 22 recites the limitation of "the second ion exchange" in line 4. There is insufficient antecedent basis for this limitation in the claim. Claim 22 depends from claim 1. Claim 1 recites “applying an ion exchange” however fails to discuss “a second ion exchange” thus it is unclear what ion exchange step is being referred to. Best U.S practice is appreciated and thus maintaining the same language being referred to in claims so antecedent basis is maintained properly. For the purpose of this examination the ion exchange treatment in claim 1 is considered equivalent to “the second ion exchange medium” claimed in claim 22.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 22 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 22 states:
the ion exchange medium is a second ion exchange medium, and the method further comprises: applying a first ion exchange medium to the glass ceramic article wherein the first ion exchange medium comprises NaNO3, KNO3, and from 0.01 wt% to 0.5 wt% LiNO3, and wherein applying the second ion exchange medium is performed after applying the first ion exchange medium.
Which depends from claim 1 which states:
1. (Previously Presented) A method of strengthening a glass ceramic article having a crystal phase selected from the group consisting of petalite (LiAlSi4010), lithium disilicate (Li2Si2O5), and combinations thereof comprises:
applying an ion exchange medium to the glass ceramic article, wherein the ion exchange medium comprises greater than 0 wt% and less than or equal to 20 wt% NaNO3, from 80 wt% to less than 100 wt%KNO3, and from 0.04 wt% to 0.5 wt% LiNO3 thereby forming an ion-exchanged glass ceramic article,
wherein the ion-exchanged glass ceramic article comprises:
a stress that decreases with increasing distance according to a linear function from a depth of about 0.07t to a depth of about 0.26t from the outer surface of the ion-exchanged glass ceramic article toward a centerline, wherein the stress transitions from the compressive stress to the tensile stress at a depth of from about 0.18t to about 0.25t from the outer surface of the ion-exchanged glass ceramic article; and an absolute value of a maximum compressive stress at the outer surface of the ion- exchanged glass ceramic article is from 200 MPa to 350 MPa and an absolute value of a maximum central tension is greater than or equal to 80 MPa to less than or equal to 160 MPa.
The properties listed in claim 1 are indicated in [0133]-[0135] in the published specification.
However; claim 22 appears to only have the resulting properties of claim 1 with a specific composition, “Composition A” as indicated in [0146] of the published specification of the present application vaguely. Therefore the resulting properties of claim 22 which is dependent from claim 1 do not clearly have support. [0153]-[0156] of the published specification of the present application indicates the two ion-exchange treatments however don’t indicate a thickness and it is unclear what the thickness is of these examples thus unclear claim 22 has support to result in the properties of claim 1/22. Applicant has not pointed out support.
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 1-10, 13-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Beall (US 20170144921) and Fukada et al. (US 20180346376).
Regarding claims 1-10, 15 and 20, Beall discloses a transparent of glass ceramic consisting of petalite, lithium silicate [0006]/ [0148] specifically lithium disilicate [0147] with a thickness of 0.8mm [0179]
and ion-exchanging the glass ceramic article to create a compressive stress and strengthen the glass [0113]/ the ion exchange comprising immersion in a molten salt bath or multiple salt baths [0186]. Ion exchange disclosed 410 deg. Celsius for 2 hours (claims 2-3) and exchanging li ions with sodium ions and sodium ions with potassium ion to achieve the ion exchanged glass-ceramic of 30 microns or greater and 100 microns or greater [0186] Beall discloses t=0.8mm [0179] thus Beall discloses .0375t to .26t with overlapping compressive stresses [0187] and a central tension of at least 10 MPa [0186]
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997)
[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005)
W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
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 Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Beall discloses the ion exchange works by replacement of smaller ions with larger ions however does not limit the composition of multiple ion exchange baths.
In an analogous art of chemical strengthening aluminosilicate glass Fukuda discloses two chemical ion exchange steps, the first step having a LiNO3 1% mass or less [0083], 50-85 % KNO3 [0085], and 20-40 % NaNO3 [0086] At a temperature of 413-500 Deg. Celsius [0088] for 5-20 hours [0089]. Fukuda specifies a second ion exchange of 94-100% potassium nitrate [0095].
Beall was silent as to the composition of each of the strengthening baths. It would be obvious to one of ordinary skill in the art to look to the available art to modify the method of Beall with known salt bath compositions of Fukuda as motivated to strengthen the alkali containing aluminosilicate glass through ion exchange and achieve the desired compressive stress and depth of layer indicated by Beall.
It would be further obvious to optimize the time, temperature, and amount of potassium nitrate and sodium nitrate of the salt baths within the ranges taught by Fukuda as taught by MPEP 2144.05.
Furthermore, a skilled artisan has reason to believe that the combined disclosures of Beall and Fukuda yield a stress transition as indicated in claim 1, claim 7.
MPEP 2112.01 states Where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Applicant has the burden of showing unexpected results uncommensurate in scope with the claims. Regarding claims 14-15 and 18-20 that the same ceramic article would be expected by a skilled artisan in view of Beall and Fukuda to have the claimed properties for the reasons as indicated above. Specifically regarding claims 14 and 18, Beall discloses a fracture toughness of 1MPa√m [0182]
Regarding claims 15 and 19, Beall discloses 70 wt % petalite crystal [0148] and 20-60 %crystalline phase [0149] thus remainder glass
Regarding claims 16 and 21, Beall discloses Lithium disilicate is a tetrahedral state and orthorhombic crystal with symmetry to the SiO5.tetrahedral arrays [0149].
Regarding claim 22, Beall discloses a glass ceramic consisting of petalite, lithium silicate [0006]/ [0148] specifically lithium disilicate [0147] with a thickness of 0.8mm [0179]
and ion-exchanging the glass ceramic article to create a compressive stress and strengthen the glass [0113]/ the ion exchange comprising immersion in a molten salt bath or multiple salt baths [0186]. Ion exchange disclosed 410 deg. Celsius for 2 hours yielding an ion exchanged glass-ceramic of 30 microns or greater and 100 microns or greater [0186] Beall discloses t=0.8mm [0179] thus Beall discloses .0375t to .26t with overlapping compressive stresses [0187] and a central tension of at least 10 MPa [0186]
Beall discloses the ion exchange works by replacement of smaller ions with larger ions however does not limit the composition of multiple ion exchange baths.
In an analogous art of chemical strengthening aluminosilicate glass Fukuda discloses two chemical ion exchange steps, with a chemical exchange comprises
a first ion exchange, or chemical tempering, step with a molten alkali nitrate ion exchange liquid comprising:
LiNO3 1% mass or less [0083]-[0084], 50-85 % KNO3 [0085], and 20-40 % NaNO3 [0086] At a temperature of 413-500 Deg. Celsius [0088] for 5-20 hours [0089].
Fukuda specifies a second ion exchange, or chemical tempering, with a molten alkali nitrate ion exchange liquid comprising:
94-100% potassium nitrate [0095] and 1 wt% LiNO3 or less [0084]
Beall discloses the glass ceramic may undergo ion exchange in single or multiple strengthening baths [0186], [0191]. Beall suggests multiple ion exchanges however; does not indicate the first and second ion exchange mediums required by claim 22.
It would be obvious to one of ordinary skill in the art to modify the method of Beall with known salt bath compositions taught by Fukuda motivated to strengthen, or temper the alkali containing aluminosilicate glass suitable for use as a display or cover glass.
Examiner has established the method of skilled artisan has reason to believe that the combined disclosures of Beall and Fukuda yield a stress transition as indicated in claim 1.
W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
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 Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
MPEP 2112.01 states Where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Examiner has indicated all the active steps of the full method of claim 22 is obvious in view of Beall and Fukada as indicated above. Applicant has the burden of showing unexpected results uncommensurate in scope with the claims.
Response to Arguments
Applicant's arguments filed 08/22/2025 have been fully considered but they are not persuasive they are moot in view of the present rejections as required by the present amendments.
Beall yields the claimed ion exchanged article. The only difference between prior art Beall and the claim is the indication of the salt composition. As depicted by Fukuda the claimed salt bath composition is known.
A skilled artisan has reason to use a known ion exchange step(s) on a known ion exchangeable glass with the predictable results of a resulting ion exchanged article. Furthermore, as indicated in MPEP 2144.05 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 Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., . . . [t]he two [pre-existing elements] in combination did no more than they would in separate, sequential operation." Id. at 416-17, 82 USPQ2d at 1395. (3) "[I]n Sakraida v. AG Pro, Inc., the Court derived . . . the conclusion that when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 417, 82 USPQ2d at 1395-96 (Internal quotations omitted.). The principles underlining these cases are instructive when the question is whether a patent application claiming the combination of elements of prior art would have been obvious. The Supreme Court further stated that:
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. at 417, 82 USPQ2d at 1396.
When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id.
The Supreme Court’s flexible approach to the obviousness inquiry is reflected in numerous pre-KSR decisions; see MPEP § 2144. That section provides many lines of reasoning to support a determination of obviousness based upon earlier legal precedent that had condoned the use of particular examples of what may be considered common sense or ordinary routine practice (e.g., making integral, changes in shape, making adjustable). Thus, the type of reasoning sanctioned by the opinion in KSR has long been part of the patent examination process.
In the present instance the present application desires to improve chemical durability and quality of ion exchange of glass ceramics [0005] with increased fracture toughness and non-frangible of the originally filed specification of the present application. Beall desires to yield an ion-exchanged glass ceramic that has increased fracture toughness and non-frangible, at least [0004], [0060]. Fukada seeks to temper glass and reduce fracture [0013] a technique of ion exchange has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.
Applicant argues Fukada is nonanalogous prior art. Applicant indicates in order for a reference to be available to be used in a rejection under 35 U.S.C. § 103, the reference must be analogous art to the claimed invention. (MPEP §2141.01(a); and a reference is considered an analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). (MIPEP§2141.01(a)(I)).
Applicant indicates Beall and claim 1 of the present invention are directed to glass-ceramics. (Beall, Title) on remarks filed 01/26/2026, page 9; last paragraph and further indicates the glass-ceramic of Beall has lithium silicate and petalite crystalline phases. Applicant argues Lithium is an essential component of a lithium silicate crystalline phase, and Beall discloses compositions having at least 5 wt% Li2O. (Beall, [0011]). In response to this Examiner agrees Beall discloses ion exchange of a lithium containing glass as indicated in the rejections of claim 1 and 7 above.
Applicant further argues Fukada is directed to making chemically tempered glass. (Fukada, Abstract) however Fukada and is not a glass-ceramic and the amorphous glass compositions of Fukada have less than 2 wt% Li2O. (Fukada, [0055]).
Examiner maintains none of this indicates that Beall and Fukuda are non-analogous art.
Examiner maintains that Beall is directed to ion-exchange of a lithium crystal containing glass (abstract) and Fukuda also is directed to ion-exchange of a lithium silicate glass [0049]. Furthermore, Beall discloses an ion exchanged glass as a cover of electronic devices (at least title of Beall) and Fukada discloses an ion-exchanged glass for a cover glass or display ([0001] Fukada) and the presently claimed invention is an ion-exchanged cover glass or display (specification [0036], [00197]) thus: the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem) and the reference is reasonably pertinent to the problem faced by the inventor
Applicant argues Beall is directed to glass-ceramics while Fukada is directed to amorphous glass articles. This is a mere attorney argument without evidence. A skilled artisan recognizes both the compositions of Beall and Fukada can be crystallized or melted to an amorphous material.
Applicant argues Beall discloses at least 5 wt% Lithium oxide and Fukuda has less than 2 wt. % lithium oxide. Applicant has not indicated how the composition difference of lithium oxide has made the art of Beall and Fukada non analogous and in a different field of endeavor according to MPEP 2141.01.
Applicant argues that evaluating unexpected results and benefits is determined by unexpected results and benefits in a single disclosure and not a combination of references (remarks filed 10/26/2026; page 10). The present rejections are based on Beall and Fukada and the combination yielding a method that yields produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) as stated in MPEP 2112.01. Examiner has established the combination of Beall and Fukada result in a substantially identical process thus resulting a substantially identical product and the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Examiner did cite MPEP 2112.01 again. Where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The demonstration of unexpected results is described in MPEP 716.02(d) and they must be commensurate in scope with the claims. In the present application, Applicant must show the derived resulting properties in claims 1 and 7 that the ion exchange of claims 1 and 7 that solely require:
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138
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84
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ALWAYS result in an ion-exchanged glass ceramic article of
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Otherwise the unexpected results are NOT commensurate in scope with the claim. For example: if these claimed results only occur in a specific composition or thickness, temperature and time of ion exchange all of this must be within the claim for the unexpected results to be commensurate in scope with the claim and evidence of said unexpected results is the applicant’s burden to prove.
Applicant is simply arguing that a stress that decreases with increasing distance according to a linear function from a depth of about 0.07t to a depth of about 0.26t without showing evidence, is an unexpected result must result from the method steps of the claim.
Applicant has not done that. There is no evidence, affidavit, declaration or evidence pointed out in the specification to indicate the combination of Beall and Fukada in the rejection do not arrive at an identical or substantially identical process that would have the resulting properties in the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20110092353 [0022]-[0023] ceramic dual ion exchange
US 5705273 Col 6; lines9-33 less Li in Li ceramic
US 4849002 Col 6; lines 10-25, 40-49
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 JODI COHEN FRANKLIN whose telephone number is (571)270-3966. The examiner can normally be reached Monday-Friday 8 am-4 pm.
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JODI COHEN FRANKLIN
Primary Examiner
Art Unit 1741
/JODI C FRANKLIN/Primary Examiner, Art Unit 1741