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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/14/2026 has been entered.
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.
Claim(s) 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grabowski et al.
Regarding claim 1, Grabowski makes obvious an optical glass, wherein components thereof are represented by weight percentage (see Grabowski at the Abstract, disclosing an optical glass), comprising: 1-12% of SiO2 (see Grabowski at the Abstract, disclosing 0-10 wt.% SiO2, which overlaps with the claimed range.) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05); 3-18% of B2O3 (see Grabowski at the Abstract, disclosing 2-20 wt.% B2O3, which overlaps with the claimed range.); 45-65% of La2O3 (see Grabowski at the Abstract, disclosing 35-55 wt.% La2O3, which overlaps with the claimed range.); 1-13% of Y2O3 (see Grabowski at the Abstract, disclosing 0.5-10 wt.% Y2O3, which overlaps with the claimed range.); 1-13% of ZrO2 (see Grabowski at the Abstract, disclosing 0-10 wt.% ZrO2, which overlaps with the claimed range.); 3-18% of Nb2O5 (see Grabowski at the Abstract, disclosing 0.5-15 wt.% Nb2O5, which overlaps with the claimed range.); 5-20% of TiO2 (see Grabowski at the Abstract, disclosing 1-16 wt.% TiO2, which overlaps with the claimed range.); 0-4% of Gd2O3 (see Grabowski at the Abstract, disclosing 0-10 wt.% Gd2O3, which overlaps with the claimed range.); 0-8% of ZnO (see Grabowski at claim 6, claiming 0 to 15 wt.% ... ZnO, which overlaps with the claimed range.),
While Grabowski does not explicitly disclose (Gd2O3+ZnO)/Y2O3 is below 0.5, Grabowski discloses a range of Gd2O3, ZnO, and Y2O3 values as detailed above which overlaps with the claimed (Gd2O3+ZnO)/Y2O3. It is possible to demonstrate mathematically that the ranges of Gd2O3, ZnO, and Y2O3 values overlap with the claimed (Gd2O3+ZnO)/Y2O3 by selecting a point within the Gd2O3, ZnO, and Y2O3 ranges, performing the (Gd2O3+ZnO)/Y2O3 function, and demonstrating that point is within the claimed range. In the instant case, the point 0% Gd2O3, 0% ZnO, and 5.6 wt.% Y2O3 provides for a value of (Gd2O3+ZnO)/Y2O3 of 0, which is within the claimed range. Therefore, the Gd2O3, ZnO, and Y2O3 ranges disclosed by Grabowski overlap with the claimed (Gd2O3+ZnO)/Y2O3 ratio range,
While Grabowski does not explicitly disclose La2O3/(Y2O3+Al2O3) is 8.0-20.0 Grabowski discloses a range of La2O3, Y2O3, and Al2O3 as detailed by the Abstract. The ranges of La2O3, Y2O3, and Al2O3 disclosed by Grabowski at the Abstract overlap with the claimed La2O3/(Y2O3+Al2O3) range, which can be demonstrated by selecting a point within the claimed La2O3, Y2O3, and Al2O3 ranges, performing the La2O3/(Y2O3+Al2O3) function, and demonstrating the value is within the claimed La2O3/(Y2O3+Al2O3) range. In the instant case, the point 0% Al2O3, 5.6 wt.% Y2O3, and 48 wt.% La2O3 is within the range disclosed by Grabowski, and provides for a value of approximately 8.6, which is within the claimed range. Therefore, the La2O3, Y2O3, and Al2O3 ranges disclosed by Grabowski overlap with the claimed La2O3/(Y2O3+Al2O3) range.
Regarding claim 2, Grabowski makes obvious wherein components thereof are represented by weight percentage, further comprising: 0-8% of Ta2O5; and/or 0-8% RO; and/or 0-8% of Rn2O; and/or 0-6% of WO3; and/or 0-8% Al2O3; and/or 0-10% Yb2O3; and/or 0-5% of GeO2; and/or 0-1% of clarifying agent; the RO is one or more of MgO, CaO, SrO, and BaO, the Rn2O is one or more of Li2O, Na2O, and K2O, and the clarifying agent is one or more of Sb2O3, SnO, SnO2, and CeO2 (see Grabowski at Claim 18, disclosing 0 to 3 wt.% WO3, which overlaps with the claimed range.).
Regarding claim 3, while Grabowski does not explicitly disclose (WO3+Gd2O3) /TiO2 is below 2.0, Grabowski discloses a range of WO3, Gd2O3, and TiO2 as detailed in the rejections above. The ranges of WO3, Gd2O3, and TiO2 disclosed by Grabowski overlap with the claimed (WO3+Gd2O3) /TiO2 ratio range, which can be mathematically demonstrated by selecting a point within the WO3, Gd2O3, and TiO2 ranges disclosed by Grabowski, performing the (WO3+Gd2O3) /TiO2 function, and demonstrating that point is within the claimed range. In the instant case, the point 0% WO3, 0% Gd2O3, and 10 wt.% TiO2 is within the range disclosed by Grabowski, and provides a (WO3+Gd2O3) /TiO2 ratio of 0, which is within the claimed range. therefore, the WO3, Gd2O3, and TiO2 values disclosed by Grabowski overlap with the claimed (WO3+Gd2O3) /TiO2 ratio range.
Regarding claim 4, while Grabowski does not explicitly disclose (WO3+Gd2O3) /TiO2 is below 1.5, Grabowski discloses a range of WO3, Gd2O3, and TiO2 as detailed in the rejections above. The ranges of WO3, Gd2O3, and TiO2 disclosed by Grabowski overlap with the claimed (WO3+Gd2O3) /TiO2 ratio range, which can be mathematically demonstrated by selecting a point within the WO3, Gd2O3, and TiO2 ranges disclosed by Grabowski, performing the (WO3+Gd2O3) /TiO2 function, and demonstrating that point is within the claimed range. In the instant case, the point 0% WO3, 0% Gd2O3, and 10 wt.% TiO2 is within the range disclosed by Grabowski, and provides a (WO3+Gd2O3) /TiO2 ratio of 0, which is within the claimed range. therefore, the WO3, Gd2O3, and TiO2 values disclosed by Grabowski overlap with the claimed (WO3+Gd2O3) /TiO2 ratio range.
Regarding claim 5, while Grabowski does not explicitly disclose La2O3/(Y2O3+Al2O3) is 8.0-15.0 Grabowski discloses a range of La2O3, Y2O3, and Al2O3 as detailed by the Abstract. The ranges of La2O3, Y2O3, and Al2O3 disclosed by Grabowski at the Abstract overlap with the claimed La2O3/(Y2O3+Al2O3) range, which can be demonstrated by selecting a point within the claimed La2O3, Y2O3, and Al2O3 ranges, performing the La2O3/(Y2O3+Al2O3) function, and demonstrating the value is within the claimed La2O3/(Y2O3+Al2O3) range. In the instant case, the point 0% Al2O3, 5.6 wt.% Y2O3, and 48 wt.% La2O3 is within the range disclosed by Grabowski, and provides for a value of approximately 8.6, which is within the claimed range. Therefore, the La2O3, Y2O3, and Al2O3 ranges disclosed by Grabowski overlap with the claimed La2O3/(Y2O3+Al2O3) range.
Regarding claim 6, while Grabowski does not explicitly disclose La2O3/(Y2O3+Al2O3) is 8.0-11.0 Grabowski discloses a range of La2O3, Y2O3, and Al2O3 as detailed by the Abstract. The ranges of La2O3, Y2O3, and Al2O3 disclosed by Grabowski at the Abstract overlap with the claimed La2O3/(Y2O3+Al2O3) range, which can be demonstrated by selecting a point within the claimed La2O3, Y2O3, and Al2O3 ranges, performing the La2O3/(Y2O3+Al2O3) function, and demonstrating the value is within the claimed La2O3/(Y2O3+Al2O3) range. In the instant case, the point 0% Al2O3, 5.6 wt.% Y2O3, and 48 wt.% La2O3 is within the range disclosed by Grabowski, and provides for a value of approximately 8.6, which is within the claimed range. Therefore, the La2O3, Y2O3, and Al2O3 ranges disclosed by Grabowski overlap with the claimed La2O3/(Y2O3+Al2O3) range.
Regarding claim 7, Grabowski makes obvious wherein components thereof are represented by weight percentage, in which: SiO2 is 2-10%; and/or B2O3 is 5-15%; and/or La2O3 is 47-60%; and/or Y2O3 is 2-12%; and/or ZrO2 is 2-10%; and/or Nb2O5 is 5-15%; and/or Ta2O5 is 0-5%; and/or TiO2 is 8-18%; and/or RO is 0-4%; and/or Rn2O is 0-4%; and/or WO3 is 0-4%; and/or ZnO is 0-5%; and/or Al2O3 is 0-5%; and/or Yb2O3 is 0-5%; and/or GeO2 is 0-3%; and/or clarifying agent is 0- 0.5%, the RO is one or more of MgO, CaO, SrO, and BaO, Rn2O is one or more of Li2O, Na2O, and K2O, and the clarifying agent is one or more of Sb2O3, SnO, SnO2, and CeO2 (see Grabowski at the Abstract, disclosing 0-10 wt.% SiO2, which overlaps with the claimed range.).
Regarding claim 8, Grabowski makes obvious wherein components thereof are represented by weight percentage, in which: SiO2 is 3-8%; and/or B2O3 is 6-12%; and/or La2O3 is 50-56%; and/or Y2O3 is 4-10%; and/or ZrO2 is 3-9%; and/or Nb2O5 is 6-12%; and/or Ta2O5 is 0-1%; and/or Gd2O3 is 0-2%; and/or TiO2 is 11-17%; and/or RO is 0-2%; and/or Rn2O is 0-2%; and/or WO3 is 0-3%; and/or ZnO is 0-1%; and/or Al2O3 is 0-2%, and/or Yb2O3 is 0-2%; and/or GeO2 is 0-1%; and/or clarifying agent is 0- 0.2%, the RO is one or more of MgO, CaO, SrO, and BaO, Rn2O is one or more of Li2O, Na2O, and K2O, and the clarifying agent is one or more of Sb2O3, SnO, SnO2, and CeO2 (see Grabowski at the Abstract, disclosing 0-10 wt.% SiO2, which overlaps with the claimed range.).
Regarding claim 9, Grabowski makes obvious wherein components thereof do not contain Ta2O5; and/or do not contain ZnO; and/or do not contain Rn2O; and/or do not contain Gd2O3; and/or do not contain Yb2O3; and/or do not contain GeO2, and the Rn2O is one or more of Li2O, Na2O, and K2O (see Grabowski at the Abstract, disclosing 0-10 wt.% Gd2O3, which overlaps with the claimed range.).
Regarding claim 10, Grabowski makes obvious wherein a refractive index nd of the optical glass is above 1.97 (See Grabowski at Claim 1, claiming refractive indexes greater than or equal to 1.9, which overlaps with the claimed range.), and an Abbe number vd is 26-33 (See Grabowski at Claim 1, claiming Abbe numbers greater than or equal to 25).
Regarding claim 11, Grabowski makes obvious wherein the refractive index nd of the optical glass is 1.99-2.10 (See Grabowski at Claim 1, claiming refractive indexes greater than or equal to 1.9, which overlaps with the claimed range.), and the Abbe number vd is 27-32 (See Grabowski at Claim 1, claiming Abbe numbers greater than or equal to 25).
Regarding claim 12, Grabowski makes obvious the refractive index nd of the optical glass is 1.995-2.02 (See Grabowski at Claim 1, claiming refractive indexes greater than or equal to 1.9, which overlaps with the claimed range.), and the Abbe number vd is 28-31 (See Grabowski at Claim 1, claiming Abbe numbers greater than or equal to 25).
Regarding claim 13, while Grabowski does not explicitly disclose a thermal expansion coefficient α20/120°C of the optical glass is below 90x10-7/K; and/or water resistance stability DW is above Class 2; and/or acid resistance stability DA is above Class 2; and/or weather resistance CR is above Class 2; and/or Knoop hardness HK is above 670x107 Pa; and/or Young's modulus E is above 11000x107Pa; and/or λ70 is below 450nm; and/or λ5 is below 390nm; and/or abrasion degree FA is 70-120; and/or bubble degree is above Grade A, the bubble degree of a glass is a function of the composition of the glass as evidenced by the instant specification at [0037] of the PGPub, which states (SiO2+B2O3)/Nb2O5 is controlled to be within a range of 1.0-2.5, which can also further optimize the abrasion degree and bubble degree of the glass. In the case of the glass of the Abstract of Grabowski, the (SiO2+B2O3)/Nb2O5 overlaps with the claimed range because Grabowski discloses range of SiO2, B2O3, and Nb2O5 which overlap with the claimed ratio, and therefore the glass of Grabowski would inherently possess the claimed bubble degree. This overlap can be demonstrated by the overlap between the claimed SiO2, B2O3, and Nb2O5 ratios and the ranges of the Abstract of Grabowski. 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 (see MPEP 2112.01(I) first paragraph).
Regarding claim 14, while Grabowski does not explicitly disclose a thermal expansion coefficient α20/120°C of the optical glass is below 90x10-7/K; and/or water resistance stability DW is above Class 2; and/or acid resistance stability DA is above Class 2; and/or weather resistance CR is above Class 2; and/or Knoop hardness HK is above 670x107 Pa; and/or Young's modulus E is above 11000x107Pa; and/or λ70 is below 450nm; and/or λ5 is below 390nm; and/or abrasion degree FA is 70-120; and/or bubble degree is above Grade A, the bubble degree of a glass is a function of the composition of the glass as evidenced by the instant specification at [0037] of the PGPub, which states (SiO2+B2O3)/Nb2O5 is controlled to be within a range of 1.0-2.5, which can also further optimize the abrasion degree and bubble degree of the glass. In the case of the glass of the Abstract of Grabowski, the (SiO2+B2O3)/Nb2O5 overlaps with the claimed range because Grabowski discloses range of SiO2, B2O3, and Nb2O5 which overlap with the claimed ratio, and therefore the glass of Grabowski would inherently possess the claimed bubble degree. This overlap can be demonstrated by the overlap between the claimed SiO2, B2O3, and Nb2O5 ratios and the ranges of the Abstract of Grabowski.
Regarding claim 15, while Grabowski does not explicitly disclose a glass preform, made of the optical glass it is noted a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and here the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In claim 1, the intended use of a glass preform, made of the optical glass is not given patentable weight.
Regarding claim 16, while Grabowski does not explicitly disclose an optical element, made of the optical glass it is noted a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and here the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In claim 1, the intended use of an optical element, made of the optical glass is not given patentable weight.
Regarding claim 17, while Grabowski does not explicitly disclose an optical instrument, comprising the optical glass and/or an optical element made of the optical glass or made of the glass preform, made of the optical glass it is noted a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and here the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In claim 1, the intended use of an optical instrument, comprising the optical glass and/or an optical element made of the optical glass or made of the glass preform, made of the optical glass is not given patentable weight.
Regarding claim 18, while Grabowski does not explicitly disclose a thermal expansion coefficient α20/120°C of the optical glass is below 85x10-7/K, a Knoop hardness HK is above 680x107 Pa, a Young’s modulus E is above 1200x107xPa, an abrasion degree FA is 80-110, λ70 is below 445 nm, and a bubble degree is above grade A0, these properties are all functions of the composition of the glass as detailed by the instant specification at [0029] which states SiO2… can adjust the thermal expansion coefficient of the glass, at [0034] which states ZrO2 can … also lower the thermal expansion of the glass, at [0036] which states Nb2O5 … [can] reduce the thermal expansion coefficient of the glass, at [0034] which states ZrO2 can increase the … hardness, at [0031] which states Y2O3 can … adjust the Young’s modulus of the glass, at [0032] which states if Gd2O3 exceeds 8%, the … abrasion degree of the glass will deteriorate, and at [0037] of the PGPub, which states (SiO2+B2O3)/Nb2O5 is controlled to be within a range of 1.0-2.5, which can also further optimize the abrasion degree and bubble degree of the glass. Because the glass of Grabowski overlaps with the claimed glass, the glass of Grabowski would inherently possess the claimed properties.
Response to Arguments
Applicant’s arguments, see the Remarks, filed 08/14/2026, with respect to the rejection(s) of claim(s) 1-17 under 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Grabowski under 103 as detailed in the rejections above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US20150203395.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
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