DETAILED ACTION
The claims 1-13 are pending and presented for the examination.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/23/2023 is being considered by the examiner.
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 5-6 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 states tat the transmittance has an average value of at least 70% “examined with a flat plate having a thickness of 1 mm. This terminology is not clear in indicating if this is the transmittance through the 1 mm thickness, and unambiguously stating this in the claim limitation is necessary for setting the metes and bounds of the claim coverage.
Claim 6 recites that the glass is “being for use in at least one of […] – it is unclear if the intended meaning of the limitations is that the glass is capable of use in the following methods, is capable of shaping by the following methods, or if the claim is meant to be a process claim drawn to said methods per se. Because of this ambiguity, the metes and bound of the claim are unclear, and the claim is indefinite under USC 112. For purposes of examination on merits, the claim is interpreted to mean that the glass is capable of shaping by the aforementioned methods.
Claim 13 states an average value minimum for transmittance in a wavelength of 400-700 nm. However, no thickness is given through which said transmittance is measured. It is therefore not possible to ascertain the intended scope of the claim, because transmittance clearly changes with sample thickness. For this reason, the metes and bounds of claim 13 are unclear and the claim is indefinite under USC 112.
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.
Claims 1-2, 4, 6-7, 9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aitken et al (US 7615506).
Regarding claim 1, Aitken et al teaches a tin-fluorophosphate glass comprising 55-75 wt% Sn, 4-14 wt% P, 6-24 wt% O, 4-22 wt% F, and 0.15-15 wt% W. Aiken et al teaches embodiments wherein the Sn, P, O, and F amounts all fall within the corresponding ranges of the instant claim (see i.e. Table 1A, sample #9, containing 40 mol% SnO, 37.5 mol% SnF2, 2.5 mol% WO3, 20 mol% P2O5, which can be converted to 22.6 mol% Sn, 43.1 mol% O, 21.9 mol% F, 0.73 mol% W, 11.7 mol% P). The Tg of the Aitken et al glasses is less than 300 °C (see Table 1B).
Aitken et al does not specify A3240 or A3100 according to the definitions of the instant claim. However, the tin-fluorophosphate glass taught therein is equivalent to that of the instant claims in terms of composition and structure. This equivalent glass would therefore inherently have equivalent absorbance properties to the claimed glass. 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).
As such, the equivalent Aitken et al glass inherently has a A3240/A3100 value falling within the 0.6-1.2 range of the instant claim, and the further limitations of claim 1 are met by the teachings of the prior art of record. The claim is anticipated by the prior art.
Regarding claim 2, as discussed above, Aitken et al does not specify the absorption through a 1 mm thickness at wavenumbers of 3100 cm-1 and 3240 cm-1, however, the equivalently composed glasses taught by Aitken et al inherently have equivalent absorption properties in this infrared spectrum range. MPEP 2112.01 states "A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present." The further absorption property limitations of claim 2 are therefore met by the teachings of the prior art of record.
Regarding claim 4, Aitken et al does not specify weight change after a 1-hour heat treatment at Tg+150 °C. Low weight change values are taught for treatments at lower temperature and for longer times. As discussed above, Aitken et al teaches a glass that is compositionally and structurally equivalent to that of the instant claims, and as such this glass is also considered to have equivalent properties, per MPEP 2112.01. Thus the Aitken et al glasses would have a weight change after the heat treatment of the instant claims of -2% to +0.5%, and the further limitations of claim 4 are met by the teachings of the prior art of record.
Regarding claim 6, as discussed above, the claim limitations herein are interpreted as indicating that the claimed glass is capable of use in the processes of the instant claim. The equivalent Aitken et al glass that has an equivalent low Tg would be capable of such processing, and as such the further limitations of claim 6 are met by the prior art of record.
Regarding claim 7, Aitken et al teaches that the inventive glass is in the form of discs (pellets) with a thickness (major axis length) of 3 mm.
Regarding claim 9, the Aitken et al disc (pellet) is a glass pellet.
Regarding claim 11, Aitken et al teaches shaping by molding (see column 3, lines 35-40) to form a molded object of the inventive glass.
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.
Claims 8, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Aitken et al (US 7615506) in view of Algar et al (US 7323160 B2).
Regarding claim 8, the claim differs from Aitken et al as applied above because while Aitken et al teaches forming discs (pellets) with thicknesses of 3 mm, and thus having a primary axis falling within the range of instant claim 7, Aitken does not specify disc diameter. However, it would have been obvious to one of ordinary skill in the art to modify Aitken in view of Algar et al in order to use the pellet dimensions taught therein. Algar et al teaches a fluorophosphate glass and teaches preparing pellets therefrom for testing purposes. This is the same purpose for which Aitken teaches the formation of pellets. Algar et al teaches a pellet diameter of 4 mm and a thickness of up to 6 mm (as the pellets are formed in mold cavities with a depth of 6 mm, see column 6, lines 20-25). This Algar teaching shows that a major axis / minor axis ratio of up to 1 was known in the art at the time of the instant filing. One would have had motivation to use the Algar depth and diameter values to form a pellet with the Aitken glass that has a diameter and thickness of the 3 mm taught in said Aitken because the lack of specific teaching in Aitken would lead a skilled artisan to consult other teachings for appropriate dimensions. Algar provides such a teaching, and one would have had a reasonable expectation of success in the modification because Aitken and Algar are both drawn to producing testing pellets from fluorophosphate glasses. Each limitation of claim 8 is therefore met by the teachings of the prior art of record, and the claim is obvious and not patentably distinct.
Regarding claim 10, Algar et al teaches that the inventive glass may be used in combination with a resin (see column 16, lines 30-35). As such, a testing pellet having this composition would have been obvious from the teachings of the prior art of record.
Regarding claim 12, Aitken et al and Algar et al teach shaping by molding to form a molded object of the inventive glass. As discussed above, Algar et al teaches that the inventive glass may be combined with a resin. As such, a molded body comprising said mixture of glass and resin would have been obvious to one of ordinary skill in the art from the teachings of the prior art of record.
Allowable Subject Matter
Claim 3 and is 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. Claims 5 and 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The prior art fails to teach or suggest a glass meeting each compositional limitation of instant claim 1 and wherein the further property limitations of claim 3 or 5 are also satisfied.
Conclusion
14. Claims 1-2, 4, and 6-13 are rejected. Claims 3 and 5 are objected to.
15. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH S WIESE whose telephone number is (571)270-3596. The examiner can normally be reached on Monday-Friday, 7:30am-4:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on 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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/NOAH S WIESE/Primary Examiner, Art Unit 1731
NSW6 January