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 .
This action is responsive to Applicant’s response to election/restriction filed 02/16/2026.
Claims 1-20 are currently pending.
Election/Restrictions
Applicant’s election without traverse of manganese oxide as the oxidizing agent species in the reply filed on 02/16/2026 is acknowledged. Applicant has identified claims 1-20 read on the elected species.
Claims 1-20 were searched and examined only to the extent that they read on the elected species, as the elected species was found not to be allowable.
The IDS statements filed 06/21/2023 and 06/26/2023 have been considered. Initialed copies accompany this action.
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 7 and 9 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 pre-AIA the applicant regards as the invention.
Claim 7 recites “the total amount of MgO and CaO is less than about 12 wt.%”. “Less than about 12 wt.%” is an open-ended range that includes zero wt.% as its lower boundary. However, note that parent claim 1 recites a total amount of MgO and CaO (RO) is “from about 8 wt.% to about 15 wt.%” of the composition, which requires a certain, non-zero amount of MgO+CaO. Accordingly, it is unclear (under an indefiniteness rationale rather than a clear-cut 112(d) rationale) whether claim 7 further limits and/or includes all the subject matter/limitations of its parent claim. Is claim 7 limited to about 8 wt.% to about 12 wt.% RO or does it permit values lower than about 8 wt.% RO? For further examination, the claim is construed as meaning RO (MgO+CaO) is about 8 wt.% to about 12 wt.% or else the limitation is non-limiting of the parent claim.
Claim 9 recites “wherein the thermal conductivity is from about 40 W/mK to about 150/mK at 1200°C”. The lower boundary “from about 40 W/mK” includes 40 inclusive and values near/approximate to it via the recitation of “about”. However, note that parent claim 1 recites the composition has “a thermal conductivity of greater than 40 W/mK at 1200°C”, which limits the thermal conductivity to greater than 40 exclusive. Accordingly, it is unclear (under an indefiniteness rationale rather than a clear-cut 112(d) rationale) whether claim 9 further limits and/or includes all the subject matter/limitations of its parent claim. Is claim 9 limited to thermal conductivities greater than 40 W/mK and up to about 150 W/mK at 1200°C or does it permit values lower than greater than 40 W/mK? For further examination, the claim is construed as meaning the thermal conductivity is greater than 40 W/mK and up to about 150 W/mK at 1200°C or else the limitation is non-limiting of the parent claim.
Appropriate correction/clarification is required.
Claim Rejections - 35 USC § 102 & 103
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.
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 1-7 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Battigelli et al. (US 4,203,774 A) as evidenced by or in view of Boulos et al. (US 5,962,356 A) or Shelestak et al. (US 2007/0099788 A1).
As to claims 1 and 5, Battigelli et al. teach exemplary glass compositions of:
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Several of these exemplary glass compositions have concentrations of SiO2, RO (MgO+CaO), R2O (Na2O+K2O), and oxidizing agent consisting of manganese oxide. They all also contain Fe2O3 as claimed and are clearly shown to be capable of achieving the claimed log 3 viscosity. Furthermore, Battigelli et al. teach a more broad glass composition comprising 59-67 wt.% SiO2, 15-18 wt.% R2O where R2O = Na2O + K2O, 0-4 wt.% MgO and 4.5-9 wt.% CaO, i.e., 4.5-13 wt.% RO where RO = MgO + CaO (however, note that Table II demonstrates a more preferred composition explicitly having 7-9.5 wt.% MgO+CaO), 0.1-5 wt.% Fe2O3, and 0-4 wt.% MnO that reads on the claimed oxidizing agent (see Table IV spanning col. 18-19) where the amounts of these components overlap the amounts of RO and oxidizing agent/MnO instantly claimed, meet the presence of Fe2O3 instantly claimed and fall within the amounts of SiO2 and R2O instantly claimed.
Battigelli et al. fails to teach the composition further comprises FeO.
However, Boulos et al. teach soda-lime-silica glass compositions comprising SiO2, CaO, MgO, Na2O, K2O, and Fe2O3 with low redox ratio (abstract and col. 4) where manganese oxide is present as an essential compound colorant (col. 5 line 32 to col. 6 line 51). Boulos et al. teach manganese oxide has an oxidizing property that leads to the composition achieving a low redox ratio (wt.% FeO/total iron as wt.% Fe2O3) of less than 0.26 (col. 8 lines 44-50). Boulos et al. elaborate the manganese oxide shifts the iron oxide towards its more colored oxidized form (Fe2O3) than its more colored reduced iron oxide form (FeO) (col. 4 lines 61-67). Boulos et al. effectively teach/suggest a technique of provision of manganese oxide functions as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) and that Fe2O3 glass components thereof comprise a mixture of FeO and Fe2O3.
Shelestak et al. teach a glass composition with a base composition comprising SiO2, Na2O, CaO, optionally MgO, optionally Al2O3, and optionally K2O and a low redox ratio (abstract). The presence of a low redox ratio (and any redox ratio) means the composition comprises Fe2O3 and FeO as the redox ratio is the amount of iron in the ferrous state expressed as FeO divided by the amount of total iron expressed as Fe2O3 (para. 0019). Shelestak et al. teach the glass composition comprises manganese oxide that is known in the art as an oxidizer to the iron oxide such that that redox equilibrium of the iron oxide is shifted toward its oxidized form (Fe.sub.2O.sub.3) and the redox ratio (Fe2+/Fe3+) of the glass composition is reduced (para. 0027). Shelestak et al. effectively teach/suggest a technique of provision of manganese oxide functions as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) and that Fe2O3 glass components thereof comprise a mixture of FeO and Fe2O3.
Accordingly, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art the teachings of Battigelli et al. intrinsically encompass the additional presence of FeO as claimed via the manganese oxide component known in the art to function as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) in glass compositions as evidenced by either Boulos et al. or Shelestak et al. Alternatively, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the technique of providing manganese oxide as an oxidizing agent for iron oxides to adjust the redox ratio in a glass composition as taught/suggested by Boulos et al. or Shelestak et al. in the teachings of Battigelli et al. in order to for the glass composition to further comprise FeO and adjust the redox ratio thereof (Fe2+/Fe3+ or FeO/Fe2O3, etc.) with a reasonable expectation of success.
The claimed ratio of Fe2+/Fe3+ of between 0.02 and 0.1 would flow naturally from the above cited teachings/rationale. The prior art teaches manganese oxide is an oxidizing agent for iron oxides to adjust the redox ratio in a glass composition (Id.). As Battigelli et al. teach Fe2O3 may be 0.1-5 wt.% of the glass and MnO may be 0-4 wt.% of the glass (Table IV), at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide/formulate workable or optimal concentrations of the iron oxide and manganese oxide components within the disclosed percentages in order to affect the redox ratio, or ratio of Fe2+/Fe3+, with a reasonable expectation of success. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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 Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution. In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990). See also Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
If the above cited Table achieving the claimed log 3 viscosity in every example is not enough to meet the claimed limitation because they do not necessarily anticipate the claimed composition, the claimed log 3 viscosity property would flow naturally from the teachings of the reference(s) as Battigelli et al. teaches substantially the same composition with the same components in overlapping concentrations and Boulos et al. and Shelestak et al. each teach a technique of similarly providing manganese oxide as an oxidizing agent for iron oxides (both present in Battigelli et al.) to adjust the redox ratio in a glass composition. Where the claimed and prior art products are identical or substantially identical in structure or composition, or 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). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to claim 2, the reference meets the claimed limitation that the composition is free of nitrates because it is completely silent to the provision of a nitrate.
As to claim 3, Example 0 in cited Table I indeed further comprises B2O3 in an amount within the claimed range of about 3-10 wt.%. Furthermore and/or alternatively, Table IV teach an amount of B2O3 overlapping that claimed.
As to claim 4, Example 0 in cited Table I indeed further comprises Al2O3 in an amount within the claimed range of less thana bout 4 wt.%. Furthermore and/or alternatively, Table IV teach an amount of Al2O3 overlapping that claimed and/or reading on its optionality.
As to claims 6 and 7, the working examples demonstrate the claimed composition generally comprises CaO in a larger amount than MgO and the amount of CaO+MgO generally overlaps or is within 8-12 wt.%. See also Table IV showing CaO (4.5-9 wt.%) is always greater than MgO (0-4 wt.%) and the sum of CaO+MgO is 4.5-13 wt.% which overlaps the claimed 8-12 wt.%.
As to claim 17, Battigelli et al. teach exemplary glass compositions of:
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Several of these exemplary glass compositions have concentrations of SiO2, RO (MgO+CaO), R2O (Na2O+K2O), and oxidizing agent consisting of manganese oxide. They all also contain Fe2O3 as claimed. Furthermore, Battigelli et al. teach a more broad glass composition comprising 59-67 wt.% SiO2, 15-18 wt.% R2O where R2O = Na2O + K2O, 0-4 wt.% MgO and 4.5-9 wt.% CaO, i.e., 4.5-13 wt.% RO where RO = MgO + CaO (however, note that Table II demonstrates a more preferred composition explicitly having 7-9.5 wt.% MgO+CaO), 0.1-5 wt.% Fe2O3, and 0-4 wt.% MnO that reads on the claimed oxidizing agent (see Table IV spanning col. 18-19) where the amounts of these components overlap the amounts of RO and oxidizing agent/MnO instantly claimed, meet the presence of Fe2O3 instantly claimed and fall within the amounts of SiO2 and R2O instantly claimed.
Battigelli et al. fails to teach the composition further comprises FeO.
However, Boulos et al. teach soda-lime-silica glass compositions comprising SiO2, CaO, MgO, Na2O, K2O, and Fe2O3 with low redox ratio (abstract and col. 4) where manganese oxide is present as an essential compound colorant (col. 5 line 32 to col. 6 line 51). Boulos et al. teach manganese oxide has an oxidizing property that leads to the composition achieving a low redox ratio (wt.% FeO/total iron as wt.% Fe2O3) of less than 0.26 (col. 8 lines 44-50). Boulos et al. elaborate the manganese oxide shifts the iron oxide towards its more colored oxidized form (Fe2O3) than its more colored reduced iron oxide form (FeO) (col. 4 lines 61-67). Boulos et al. effectively teach/suggest a technique of provision of manganese oxide functions as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) and that Fe2O3 glass components thereof comprise a mixture of FeO and Fe2O3.
Shelestak et al. teach a glass composition with a base composition comprising SiO2, Na2O, CaO, optionally MgO, optionally Al2O3, and optionally K2O and a low redox ratio (abstract). The presence of a low redox ratio (and any redox ratio) means the composition comprises Fe2O3 and FeO as the redox ratio is the amount of iron in the ferrous state expressed as FeO divided by the amount of total iron expressed as Fe2O3 (para. 0019). Shelestak et al. teach the glass composition comprises manganese oxide that is known in the art as an oxidizer to the iron oxide such that that redox equilibrium of the iron oxide is shifted toward its oxidized form (Fe.sub.2O.sub.3) and the redox ratio (Fe2+/Fe3+) of the glass composition is reduced (para. 0027). Shelestak et al. effectively teach/suggest a technique of provision of manganese oxide functions as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) and that Fe2O3 glass components thereof comprise a mixture of FeO and Fe2O3.
Accordingly, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art the teachings of Battigelli et al. intrinsically encompass the additional presence of FeO as claimed via the manganese oxide component known in the art to function as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) in glass compositions as evidenced by either Boulos et al. or Shelestak et al. Alternatively, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the technique of providing manganese oxide as an oxidizing agent for iron oxides to adjust the redox ratio in a glass composition as taught/suggested by Boulos et al. or Shelestak et al. in the teachings of Battigelli et al. in order to for the glass composition to further comprise FeO and adjust the redox ratio thereof (Fe2+/Fe3+ or FeO/Fe2O3, etc.) with a reasonable expectation of success.
The claimed ratio of Fe2+/Fe3+ of between 0.02 and 0.1 would flow naturally from the above cited teachings/rationale. The prior art teaches manganese oxide is an oxidizing agent for iron oxides to adjust the redox ratio in a glass composition (Id.). As Battigelli et al. teach Fe2O3 may be 0.1-5 wt.% of the glass and MnO may be 0-4 wt.% of the glass (Table IV), at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide/formulate workable or optimal concentrations of the iron oxide and manganese oxide components within the disclosed percentages in order to affect the redox ratio, or ratio of Fe2+/Fe3+, with a reasonable expectation of success. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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 Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution. In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990). See also Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
As to claims 18 and 19, regarding a log 3 viscosity, note that Battigelli et al. indeed further teach, in Table I, their exemplary compositions (cited above) achieve log 3 viscosities within/overlapping that claimed:
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Battigelli et al.’s glass composition is clearly shown to be capable of achieving the claimed log 3 viscosity.
Nevertheless, while the exemplary compositions are not necessarily anticipatory (due to the Fe2+/Fe3+ ratio, Id.), the claimed log 3 viscosity and thermal conductivity properties would flow naturally from the teachings of the reference(s) as Battigelli et al. teaches substantially the same composition with the same components in overlapping concentrations and Boulos et al. and Shelestak et al. each teach a technique of similarly providing manganese oxide as an oxidizing agent for iron oxides (both present in Battigelli et al.) to adjust the redox ratio in a glass composition. Where the claimed and prior art products are identical or substantially identical in structure or composition, or 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). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to claim 20, the disclosed amount of manganese oxide in Battigelli et al. overlaps the claimed concentration of 1.02-1.08 wt.% claimed. See also the additional rationale to adjusting/optimizing the amount of manganese oxide as set forth with regard to claim 17, above.
Claims 8, 9, and 12-16 are rejected under 35 U.S.C. 102(a)(1,2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Battigelli et al. (US 4,203,774 A).
As to claim 8, Battigelli et al. teach exemplary glass compositions of:
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Several of these exemplary glass compositions have concentrations of SiO2, RO (MgO+CaO), R2O (Na2O+K2O), oxidizing agent/manganese oxide, and Fe2O3 that fall within those instantly claimed.
Regarding the claimed limitation that glass fibers formed from this composition have a thermal conductivity greater than 40 W/mK at 1200°C, this is merely an intended use limitation that describes a property of a final product made from the intermediate glass composition and is extended little patentable weight. Alternatively, if glass fibers were indeed made out of the exemplary composition(s), the exemplary composition(s) are the same as that claimed such that the claimed property is presumed inherent from the same/identical compositions. Where the claimed and prior art products are identical or substantially identical in structure or composition, or 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). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id.
In the event the cited examples of Battigelli et al. somehow do not anticipate the claimed limitations, the reference meets the claimed composition under a prima facie case of obviousness. Battigelli et al. teach a more broad glass composition comprising 59-67 wt.% SiO2, 15-18 wt.% R2O where R2O = Na2O + K2O, 0-4 wt.% MgO and 4.5-9 wt.% CaO, i.e., 4.5-13 wt.% RO where RO = MgO + CaO (however, note that Table II demonstrates a more preferred composition explicitly having 7-9.5 wt.% MgO+CaO), 0.1-5 wt.% Fe2O3, and 0-4 wt.% MnO that reads on the claimed oxidizing agent (see Table IV spanning col. 18-19). The amounts of these components overlap the amounts of RO, oxidizing agent/MnO, and Fe2O3 instantly claimed and fall within the amounts of SiO2 and R2O instantly claimed. 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). Regarding the claimed limitation that glass fibers formed from this composition have a thermal conductivity greater than 40 W/mK at 1200°C, again, this is merely an intended use limitation that describes a property of a final product made from the intermediate glass composition and is extended little patentable weight. Alternatively, if glass fibers were indeed made out of the general composition taught in Battigelli et al., the composition(s) are the same as that claimed such that the claimed property would flow naturally from the same/overlapping compositions. See In re Best & In re Spada. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to claim 9, the thermal conductivity range is met for substantially the same reason(s) described above to claim 8.
As to claim 12, the reference meets the claimed limitation that the composition is free of nitrates because it is completely silent to the provision of a nitrate.
As claims 13 and 14, the reference’s MnO meets the limitation that the composition includes up to one oxidizing agent and consists of an oxide of manganese.
As to claim 15, Example 0 in cited Table I indeed further comprises B2O3 in an amount within the claimed range of about 3-10 wt.%. Furthermore and/or alternatively, Table IV teach an amount of B2O3 overlapping that claimed.
As to claim 16, Example 0 in cited Table I indeed further comprises Al2O3 in an amount within the claimed range of less thana bout 4 wt.%. Furthermore and/or alternatively, Table IV teach an amount of Al2O3 overlapping that claimed and/or reading on its optionality.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Battigelli et al. (US 4,203,774 A) as applied to claims 8, 9, and 12-16 above, and further as evidenced by or in view of Boulos et al. (US 5,962,356 A) or Shelestak et al. (US 2007/0099788 A1).
The disclosure of Battigelli et al. is relied upon as set forth above.
As to claim 10, Battigelli et al. teach a glass composition comprising SiO2, RO (MgO+CaO), R2O (Na2O+K2O), Fe2O3, and MnO within/overlapping the claimed ranges (Id.) but fails to teach the further presence of FeO.
However, Boulos et al. teach soda-lime-silica glass compositions comprising SiO2, CaO, MgO, Na2O, K2O, and Fe2O3 with low redox ratio (abstract and col. 4) where manganese oxide is present as an essential compound colorant (col. 5 line 32 to col. 6 line 51). Boulos et al. teach manganese oxide has an oxidizing property that leads to the composition achieving a low redox ratio (wt.% FeO/total iron as wt.% Fe2O3) of less than 0.26 (col. 8 lines 44-50). Boulos et al. elaborate the manganese oxide shifts the iron oxide towards its more colored oxidized form (Fe2O3) than its more colored reduced iron oxide form (FeO) (col. 4 lines 61-67). Boulos et al. effectively teach/suggest a technique of provision of manganese oxide functions as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) and that Fe2O3 glass components thereof comprise a mixture of FeO and Fe2O3.
Shelestak et al. teach a glass composition with a base composition comprising SiO2, Na2O, CaO, optionally MgO, optionally Al2O3, and optionally K2O and a low redox ratio (abstract). The presence of a low redox ratio (and any redox ratio) means the composition comprises Fe2O3 and FeO as the redox ratio is the amount of iron in the ferrous state expressed as FeO divided by the amount of total iron expressed as Fe2O3 (para. 0019). Shelestak et al. teach the glass composition comprises manganese oxide that is known in the art as an oxidizer to the iron oxide such that that redox equilibrium of the iron oxide is shifted toward its oxidized form (shifted toward Fe2O3 so that there is more Fe2O3 than FeO) and the redox ratio (Fe2+/Fe3+) of the glass composition is reduced (para. 0027). Shelestak et al. effectively teach/suggest a technique of provision of manganese oxide functions as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) and that Fe2O3 glass components thereof comprise a mixture of FeO and Fe2O3.
Accordingly, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art the teachings of Battigelli et al. intrinsically encompass the additional presence of FeO as claimed via the manganese oxide component known in the art to function as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) in glass compositions as evidenced by either Boulos et al. or Shelestak et al. Alternatively, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the technique of providing manganese oxide as an oxidizing agent for iron oxides to adjust the redox ratio in a glass composition as taught/suggested by Boulos et al. or Shelestak et al. in the teachings of Battigelli et al. in order to for the glass composition to further comprise FeO and adjust the redox ratio thereof (Fe2+/Fe3+ or FeO/Fe2O3, etc.) with a reasonable expectation of success.
As to claim 11, the claimed ratio of Fe2+/Fe3+ of between 0.02 and 0.1 would flow naturally from the above cited teachings/rationale. The prior art teaches manganese oxide is an oxidizing agent for iron oxides to adjust the redox ratio in a glass composition (Id.). As Battigelli et al. teach Fe2O3 may be 0.1-5 wt.% of the glass and MnO may be 0-4 wt.% of the glass (Table IV), at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide/formulate workable or optimal concentrations of the iron oxide and manganese oxide components within the disclosed percentages in order to affect the redox ratio, or ratio of Fe2+/Fe3+, with a reasonable expectation of success. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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 Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution. In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990). See also Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Claims 8-10, 12-14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Boulos et al. (US 6,596,660 B1).
As to claim 8, Boulos et al. teach a glass composition comprising, in wt.% 68-75 SiO2, 10-18 Na2O, 5-15 CaO, 0-10 MgO, 0-5 Al2O3, 0-5 K2O, where K2O is 6-15, and Na2O+K2O is 10-20 (abstract). The glass also comprises 0.3-0.8 wt.% Fe2O3 with a ratio of FeO/total Fe as Fe2O3 is 0.35 to 0.62 and 0.05-0.5 wt.% of a manganese compound as MnO2 (abstract).
While the disclosed composition is not anticipatory, it nevertheless overlaps the claimed composition under a prima facie case of obviousness. In wt.%, 68-75 SiO2 overlaps that claimed, 6-15 CaO+MgO is equivalent to the claimed RO and overlaps that claimed, 10-20 Na2O+K2O is equivalent to the claimed R2O and overlaps that claimed, 0.3-8 Fe2O3 (w/ or w/o the FeO/total Fe as Fe2O3 ratio) is either within or overlaps that claimed, and 0.05-0.5 manganese oxide reads on and is within the claimed amount of an oxidizing agent. 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).
Regarding the claimed limitation that glass fibers formed from this composition have a thermal conductivity greater than 40 W/mK at 1200°C, this is merely an intended use limitation that describes a property of a final product made from the intermediate glass composition and is extended little patentable weight. Alternatively, if glass fibers were indeed made out of the general composition taught in Boulos et al., the composition(s) are the same as that claimed such that the claimed property would flow naturally from the same/overlapping compositions. Where the claimed and prior art products are identical or substantially identical in structure or composition, or 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). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to claim 9, the thermal conductivity range is met for substantially the same reason(s) described above to claim 8.
As to claim 10, Boulos et al.’s composition further comprises FeO by way of the disclosed ratio of FeO/total Fe as Fe2O3 in the glass.
As to claim 12, the reference meets the claimed limitation that the composition is free of nitrates because it is completely silent to the provision of a nitrate.
As claims 13 and 14, the reference’s manganese oxide meets the limitation that the composition includes up to one oxidizing agent and consists of an oxide of manganese.
As to claim 16, the disclosed amount of 0-5 wt.% Al2O3 meets and overlaps that claimed.
As to claim 17, Boulos et al. teach a glass composition comprising, in wt.% 68-75 SiO2, 10-18 Na2O, 5-15 CaO, 0-10 MgO, 0-5 Al2O3, 0-5 K2O, where K2O is 6-15, and Na2O+K2O is 10-20 (abstract). The glass also comprises 0.3-0.8 wt.% Fe2O3 with a ratio of FeO/total Fe as Fe2O3 is 0.35 to 0.62 and 0.05-0.5 wt.% of a manganese compound as MnO2 (abstract).
While the disclosed composition is not anticipatory, it nevertheless overlaps the claimed composition under a prima facie case of obviousness. In wt.%, 68-75 SiO2 overlaps that claimed, 6-15 CaO+MgO is equivalent to the claimed RO and overlaps that claimed, 10-20 Na2O+K2O is equivalent to the claimed R2O and overlaps that claimed, 0.3-8 Fe2O3 (w/ the FeO/total Fe as Fe2O3 ratio) reads on and meets the presence of Fe2O3 and FeO, and 0.05-0.5 manganese oxide reads on and is within the claimed amount of an oxidizing agent. 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).
As to claims 18 and 19, regarding the claimed limitations that the composition has certain thermal conductivity and log 3 viscosity properties, the composition(s) are the same as that claimed such that the claimed properties would flow naturally from the same/overlapping compositions. Where the claimed and prior art products are identical or substantially identical in structure or composition, or 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). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Claims 1-7 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 106772791 A) as evidenced by or in view of Boulos et al. (US 5,962,356 A) or Shelestak et al. (US 2007/0099788 A1). An English language machine translation of Zhang et al. is attached to the Office’s supplied copy of the reference. Citations to Zhang et al. are with respect to the translation unless specified otherwise.
As to claims 1 and 5, Zhang et al. teach a glass composition comprising, in weight percentage, 60-70 SiO2, 0-10 B2O3, 10-20 Na2O+K2O, 5-15 MgO+CaO+BaO, 0-15 Fe2O3, 0-5 MnO2, and 0-2 Al2O3 (see top of p.3 and bottom of p.3 bridging p.4). The MnO2 component reads on the claimed oxidizing agent. The concentrations of SiO2, Na2O+K2O, MgO+CaO, and MnO2 overlap those claimed. The concentration of Fe2O3 meets the presence of Fe2O3 as claimed.
Zhang et al. fail to teach the composition further comprises FeO.
However, Boulos et al. teach soda-lime-silica glass compositions comprising SiO2, CaO, MgO, Na2O, K2O, and Fe2O3 with low redox ratio (abstract and col. 4) where manganese oxide is present as an essential compound colorant (col. 5 line 32 to col. 6 line 51). Boulos et al. teach manganese oxide has an oxidizing property that leads to the composition achieving a low redox ratio (wt.% FeO/total iron as wt.% Fe2O3) of less than 0.26 (col. 8 lines 44-50). Boulos et al. elaborate the manganese oxide shifts the iron oxide towards its more colored oxidized form (Fe2O3) than its more colored reduced iron oxide form (FeO) (col. 4 lines 61-67). Boulos et al. effectively teach/suggest a technique of provision of manganese oxide functions as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) and that Fe2O3 glass components thereof comprise a mixture of FeO and Fe2O3.
Shelestak et al. teach a glass composition with a base composition comprising SiO2, Na2O, CaO, optionally MgO, optionally Al2O3, and optionally K2O and a low redox ratio (abstract). The presence of a low redox ratio (and any redox ratio) means the composition comprises Fe2O3 and FeO as the redox ratio is the amount of iron in the ferrous state expressed as FeO divided by the amount of total iron expressed as Fe2O3 (para. 0019). Shelestak et al. teach the glass composition comprises manganese oxide that is known in the art as an oxidizer to the iron oxide such that that redox equilibrium of the iron oxide is shifted toward its oxidized form (Fe.sub.2O.sub.3) and the redox ratio (Fe2+/Fe3+) of the glass composition is reduced (para. 0027). Shelestak et al. effectively teach/suggest a technique of provision of manganese oxide functions as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) and that Fe2O3 glass components thereof comprise a mixture of FeO and Fe2O3.
Accordingly, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art the teachings of Zhang et al. intrinsically encompass the additional presence of FeO as claimed via the manganese oxide component known in the art to function as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) in glass compositions as evidenced by either Boulos et al. or Shelestak et al. Alternatively, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the technique of providing manganese oxide as an oxidizing agent for iron oxides to adjust the redox ratio in a glass composition as taught/suggested by Boulos et al. or Shelestak et al. in the teachings of Zhang et al. in order to for the glass composition to further comprise FeO and adjust the redox ratio thereof (Fe2+/Fe3+ or FeO/Fe2O3, etc.) with a reasonable expectation of success.
The claimed ratio of Fe2+/Fe3+ of between 0.02 and 0.1 would flow naturally from the above cited teachings/rationale. The prior art teaches manganese oxide is an oxidizing agent for iron oxides to adjust the redox ratio in a glass composition (Id.). As Zhang et al. teach Fe2O3 may be 0-15 wt.% of the glass and MnO2 may be 0-5 wt.% of the glass (Table IV), at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide/formulate workable or optimal concentrations of the iron oxide and manganese oxide components within the disclosed percentages in order to affect the redox ratio, or ratio of Fe2+/Fe3+, with a reasonable expectation of success. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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 Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution. In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990). See also Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
The claimed log 3 viscosity property would also flow naturally from the teachings of the reference(s) as Zhang et al. teaches substantially the same composition with the same components in overlapping concentrations and Boulos et al. and Shelestak et al. each teach a technique of similarly providing manganese oxide as an oxidizing agent for iron oxides (where both may be present in Zhang et al.) to adjust the redox ratio in a glass composition. Where the claimed and prior art products are identical or substantially identical in structure or composition, or 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). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to claim 2, the reference meets the claimed limitation that the composition is free of nitrates because it is completely silent to the provision of a nitrate.
As to claim 3, the disclosed amount of B2O3 overlaps that claimed.
As to claim 4, the disclosed amount of Al2O3 overlaps and is even within that claimed.
As to claims 6 and 7, the disclosed concentration of 5-15 wt.% MgO+CaO+BaO meets, overlaps, and encompasses the claimed total amount of MgO and CaO being 8-12 wt.% as the range of the reference amounts to teaching MgO, CaO, and BaO are independently provided in concentrations so long as their sum is 5-15 wt.%. This similarly meets the claimed relative amount of CaO>MgO as the amounts to teaching MgO, CaO, and BaO are independently provided in concentrations so long as their sum is 5-15 wt.% which encompasses the limitation that CaO>MgO.
As to claim 17, Zhang et al. teach a glass composition comprising, in weight percentage, 60-70 SiO2, 0-10 B2O3, 10-20 Na2O+K2O, 5-15 MgO+CaO+BaO, 0-15 Fe2O3, 0-5 MnO2, and 0-2 Al2O3 (see top of p.3 and bottom of p.3 bridging p.4). The MnO2 component reads on the claimed oxidizing agent. The concentrations of SiO2, Na2O+K2O, MgO+CaO, and MnO2 overlap those claimed. The concentration of Fe2O3 meets the presence of Fe2O3 as claimed.
Zhang et al. fail to teach the composition further comprises FeO.
However, Boulos et al. teach soda-lime-silica glass compositions comprising SiO2, CaO, MgO, Na2O, K2O, and Fe2O3 with low redox ratio (abstract and col. 4) where manganese oxide is present as an essential compound colorant (col. 5 line 32 to col. 6 line 51). Boulos et al. teach manganese oxide has an oxidizing property that leads to the composition achieving a low redox ratio (wt.% FeO/total iron as wt.% Fe2O3) of less than 0.26 (col. 8 lines 44-50). Boulos et al. elaborate the manganese oxide shifts the iron oxide towards its more colored oxidized form (Fe2O3) than its more colored reduced iron oxide form (FeO) (col. 4 lines 61-67). Boulos et al. effectively teach/suggest a technique of provision of manganese oxide functions as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) and that Fe2O3 glass components thereof comprise a mixture of FeO and Fe2O3.
Shelestak et al. teach a glass composition with a base composition comprising SiO2, Na2O, CaO, optionally MgO, optionally Al2O3, and optionally K2O and a low redox ratio (abstract). The presence of a low redox ratio (and any redox ratio) means the composition comprises Fe2O3 and FeO as the redox ratio is the amount of iron in the ferrous state expressed as FeO divided by the amount of total iron expressed as Fe2O3 (para. 0019). Shelestak et al. teach the glass composition comprises manganese oxide that is known in the art as an oxidizer to the iron oxide such that that redox equilibrium of the iron oxide is shifted toward its oxidized form (Fe.sub.2O.sub.3) and the redox ratio (Fe2+/Fe3+) of the glass composition is reduced (para. 0027). Shelestak et al. effectively teach/suggest a technique of provision of manganese oxide functions as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) and that Fe2O3 glass components thereof comprise a mixture of FeO and Fe2O3.
Accordingly, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art the teachings of Zhang et al. intrinsically encompass the additional presence of FeO as claimed via the manganese oxide component known in the art to function as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) in glass compositions as evidenced by either Boulos et al. or Shelestak et al. Alternatively, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the technique of providing manganese oxide as an oxidizing agent for iron oxides to adjust the redox ratio in a glass composition as taught/suggested by Boulos et al. or Shelestak et al. in the teachings of Zhang et al. in order to for the glass composition to further comprise FeO and adjust the redox ratio thereof (Fe2+/Fe3+ or FeO/Fe2O3, etc.) with a reasonable expectation of success.
As to claims 18 and 19, the claimed log 3 viscosity and thermal conductivity properties would flow naturally from the teachings of the reference(s) as Zhang et al. teaches substantially the same composition with the same components in overlapping concentrations and Boulos et al. and Shelestak et al. each teach a technique of similarly providing manganese oxide as an oxidizing agent for iron oxides (where both may be present in Zhang et al.) to adjust the redox ratio in a glass composition. Where the claimed and prior art products are identical or substantially identical in structure or composition, or 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). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to claim 20, the disclosed amount of manganese oxide in Zhang et al. overlaps the claimed concentration of 1.02-1.08 wt.% claimed. See also the additional rationale to adjusting/optimizing the amount of manganese oxide as set forth with regard to claim 17, above.
Claims 8, 9, and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 106772791 A). An English language machine translation of Zhang et al. is attached to the Office’s supplied copy of the reference. Citations to Zhang et al. are with respect to the translation unless specified otherwise.
As to claim 8, Zhang et al. teach a glass composition comprising, in weight percentage, 60-70 SiO2, 0-10 B2O3, 10-20 Na2O+K2O, 5-15 MgO+CaO+BaO, 0-15 Fe2O3, 0-5 MnO2, and 0-2 Al2O3 (see top of p.3 and bottom of p.3 bridging p.4). The MnO2 component reads on the claimed oxidizing agent. The concentrations of SiO2, Na2O+K2O, MgO+CaO, and MnO2 overlap those claimed. The concentration of Fe2O3 meets the presence of Fe2O3 as claimed.
While the disclosed composition is not anticipatory, it nevertheless overlaps the claimed composition under a prima facie case of obviousness. In wt.%, 60-05 SiO2 overlaps that claimed, 5-15 CaO+MgO+BaO is encompasses the claimed RO and overlaps that claimed, 10-20 Na2O+K2O is equivalent to the claimed R2O and overlaps that claimed, 0-15 Fe2O3 overlaps that claimed, and 0-5 MnO2 reads on the claimed oxidizing agent and overlaps the range claimed. 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).
Regarding the claimed limitation that glass fibers formed from this composition have a thermal conductivity greater than 40 W/mK at 1200°C, this is merely an intended use limitation that describes a property of a final product made from the intermediate glass composition and is extended little patentable weight. Alternatively, if glass fibers were indeed made out of the general composition taught in Zhang et al., the composition(s) are the same as that claimed such that the claimed property would flow naturally from the same/overlapping compositions. Where the claimed and prior art products are identical or substantially identical in structure or composition, or 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). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to claim 9, the thermal conductivity range is met for substantially the same reason(s) described above to claim 8.
As to claim 12, the reference meets the claimed limitation that the composition is free of nitrates because it is completely silent to the provision of a nitrate.
As claims 13 and 14, the reference’s manganese oxide meets the limitation that the composition includes up to one oxidizing agent and consists of an oxide of manganese.
As to claim 15, the disclosed amount of B2O3 overlaps that claimed.
As to claim 16, the disclosed amount of Al2O3 overlaps and is even within that claimed.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 106772791 A) as applied to claims 8, 9, and 12-16 above, and further as evidenced by or in view of Boulos et al. (US 5,962,356 A) or Shelestak et al. (US 2007/0099788 A1).
The disclosure of Zhang et al. is relied upon as set forth above.
As to claim 10, Zhang et al. teach a glass composition comprising SiO2, RO (MgO+CaO), R2O (Na2O+K2O), Fe2O3, and MnO2 overlapping the claimed ranges (Id.) but fails to teach the further presence of FeO.
However, Boulos et al. teach soda-lime-silica glass compositions comprising SiO2, CaO, MgO, Na2O, K2O, and Fe2O3 with low redox ratio (abstract and col. 4) where manganese oxide is present as an essential compound colorant (col. 5 line 32 to col. 6 line 51). Boulos et al. teach manganese oxide has an oxidizing property that leads to the composition achieving a low redox ratio (wt.% FeO/total iron as wt.% Fe2O3) of less than 0.26 (col. 8 lines 44-50). Boulos et al. elaborate the manganese oxide shifts the iron oxide towards its more colored oxidized form (Fe2O3) than its more colored reduced iron oxide form (FeO) (col. 4 lines 61-67). Boulos et al. effectively teach/suggest a technique of provision of manganese oxide functions as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) and that Fe2O3 glass components thereof comprise a mixture of FeO and Fe2O3.
Shelestak et al. teach a glass composition with a base composition comprising SiO2, Na2O, CaO, optionally MgO, optionally Al2O3, and optionally K2O and a low redox ratio (abstract). The presence of a low redox ratio (and any redox ratio) means the composition comprises Fe2O3 and FeO as the redox ratio is the amount of iron in the ferrous state expressed as FeO divided by the amount of total iron expressed as Fe2O3 (para. 0019). Shelestak et al. teach the glass composition comprises manganese oxide that is known in the art as an oxidizer to the iron oxide such that that redox equilibrium of the iron oxide is shifted toward its oxidized form (Fe.sub.2O.sub.3) and the redox ratio (Fe2+/Fe3+) of the glass composition is reduced (para. 0027). Shelestak et al. effectively teach/suggest a technique of provision of manganese oxide functions as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) and that Fe2O3 glass components thereof comprise a mixture of FeO and Fe2O3.
Accordingly, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art the teachings of Zhang et al. intrinsically encompass the additional presence of FeO as claimed via the manganese oxide component known in the art to function as an oxidizing agent that reduces the redox ratio (i.e., reduces a ratio of Fe2+/Fe3+) in glass compositions as evidenced by either Boulos et al. or Shelestak et al. Alternatively, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the technique of providing manganese oxide as an oxidizing agent for iron oxides to adjust the redox ratio in a glass composition as taught/suggested by Boulos et al. or Shelestak et al. in the teachings of Zhang et al. in order to for the glass composition to further comprise FeO and adjust the redox ratio thereof (Fe2+/Fe3+ or FeO/Fe2O3, etc.) with a reasonable expectation of success.
As to claim 11, the claimed ratio of Fe2+/Fe3+ of between 0.02 and 0.1 would flow naturally from the above cited teachings/rationale. The prior art teaches manganese oxide is an oxidizing agent for iron oxides to adjust the redox ratio in a glass composition (Id.). As Zhang et al. teach Fe2O3 may be 0-15 wt.% of the glass and MnO2 may be 0-5 wt.% of the glass (Table IV), at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide/formulate workable or optimal concentrations of the iron oxide and manganese oxide components within the disclosed percentages in order to affect the redox ratio, or ratio of Fe2+/Fe3+, with a reasonable expectation of success. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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 Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution. In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990). See also Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Art Cited But Not Applied
The Examiner would like to bring the following reference to Applicant’s attention. Cid-Aguilar (US 2024/0400084 A1) teaches a glass composition comprising, in wt.%, 65-75 CiO2, 10-20 Na2O, 5-15 CaO, 0-5 MgO, 0-5 Al2O3, 0-5 K2O, and greater than zero and up to 0.03 total iron as Fe2O3 and greater than zero and up to 0.003 FeO (abstract). The glass composition may comprise a redox ratio (FeO/Fe2O3) of up to 0.35 such as up to 0.10 (para. 0030). The glass composition may further comprise manganese oxide to oxidize the ferrous and/or ferric iron (para. 0033). However, the reference has a later filing date than the instant application and is unavailable as prior art.
The following prior art is made of record and not relied upon but is considered pertinent to Applicant's disclosure. Weiser et al. (US 6,037,286 A) teaches a glass composition with the composition:
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(col. 2). Weiser et al. also teach the manganese oxide component is added to oxidize the iron to the + state (col. 5 lines 64-67).
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
March 24, 2026
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