DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
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.
Claims 7 and 10-15 are 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 7 is claims the limitation “a BaO content of 7% or more”, which does not appear to be supported by the written description as originally filed. While [0020] of the instant PGPub recites a lower limit of the content percentage is preferably 7%”, this is only in reference to the lower limit. The same paragraph also recites “BaO is 0% to 30%” and “an upper limit of the content percentage is preferably 26%”. As such, the instant application does not provide support for the full scope of a BaO content of 7% or more because the upper limit is constrained to 30%.
All claims not specifically addressed are rejected due to their dependence on a rejected claim.
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 36-37 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 36 recites the broad recitation “a ZnO content percentage of 0% to 30%”, and the claim also recites “wherein the glass does not contain ZnO” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
All claims not specifically addressed are rejected due to their dependence on a rejected claim.
Allowable Subject Matter
Claims 2-6 and 16-17 are allowed.
Claim 2 is directed towards a glass comprising; by mass%: a TeO2 content percentage of 50% to 80%; a WO3 content percentage of 0% to 30%; a ZnO content percentage of 0% to 30%; a BaO content percentage of 0% to 30%; a GeO2 content percentage of 0% to 30%; and a Ga2O3 content percentage of 0% to 30%, wherein the glass contains an element different from Te, Bi, W, Zn, Ba, Ge, and Ga, by 1 mg/kg to 1,500 mg/kg per one element, and wherein the glass does not contain Bi2O3.
The closest prior art is Park et al. (US20160013331, hereinafter referred to as Park). Park is directed towards a glass comprising 74.9 wt.% TeO2, 5.0 wt.% Bi2O3, 10.0 wt.% WO3, 10.0 wt.% ZnO, 0% BaO, 0% GeO2, 0% Ga2O3, and 0.1 wt.% Li2O (see Park at Table 1, Example 2). However, Park at the Abstract, the glass comprises 5 wt % to 20 wt % of bismuth oxide, which is outside the range of instant claim 2. As such, the cited prior art neither teaches nor fairly suggests the glass as claimed in independent claim 2.
All claims not specifically addressed are allowed due to their dependence on an allowed claim.
Response to Arguments
Applicant’s arguments, see page 11 of the Remarks, filed 03/17/2026, with respect to the rejection(s) of claim(s) 2 under 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Examiner notes per page 10 of the Remarks, the objections of claims 1, 2, 7, and 17 have been overcome in view of the amendments filed 03/17/2026.
Examiner notes per page 10 of the Remarks, the rejection of claim 16 over 112(b) has been overcome in view of the amendments filed 03/17/2026.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (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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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
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