DETAILED ACTION
The claims 1-8 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 statements (IDS) submitted 08/17/2023, 09/24/2024, and 05/02/2025 are being considered by the examiner.
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 1-4 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fumio et al (JP 2019147723 A).
Regarding claim 1, Fumio et al teaches a chalcogenide glass comprising Te, Ga, and Si each in amounts falling within the corresponding ranges of the instant claim (see i.e. Table 1 at paragraph 0034, example 4). The molar percentages for the glasses taught by Fumio et al are equivalent to atomic percentage in these non-oxide chalcogenide glasses. Each limitation of claim 1 is thus met by the teachings of the prior art of record, and the claim is anticipated.
Regarding claim 2, the aforementioned Fumio et al example 4 glass comprises 5 at% gallium.
Regarding claim 3, the aforementioned Fumio et al example 4 glass comprises 5 at% silicon.
Regarding claim 4, the aforementioned Fumio et al glass comprises germanium.
Regarding claim 7, Fumio et al teaches that the inventive glasses are used for forming lenses (see paragraph 0031).
Regarding claim 8, Fumio et al does not specify the manner by which the inventive glass lenses are prepared. However, this product-by-process limitation does not hold patentable weight in distinguishing the instantly claimed lens over the compositionally equivalent chalcogenide lens taught by Fumio because an equivalent resultant product is anticipatory even if prepared by a differing method. The limitations pertaining to the nature of the product to be covered by the claim are the only limitations given patentable weight in distinguishing, the there is no showing that those methods listed in claim 8 would necessarily imbue any structural or compositional features on the claim coverage. Therefore, the equivalent lens of Fumio et al is also anticipatory to that of claim 8.
Claims 5-6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Fumio et al (JP 2019147723 A).
Regarding claim 5, the claim differs from Fumio et al as applied above because Fumio et al does not teach the Vickers hardness values of the inventive glasses. However, as shown above, Fumio et al teaches a glass that is equivalent to that of the instant claims in terms of composition and structure. This equivalent glass would therefore inherently also have equivalent hardness properties and a Vickers hardness of 1.00-1.35 GPa.
In the event any differences can be shown for the product of the product-by-process claim 5, as opposed to the product taught by Fumio et al, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results; see also In re Thorpe, 227 USPQ 964 (CAFC 1985). When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or 103 of the statute is appropriate. As a practical matter, the Patent and Trademark Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Regarding claim 6, the claim differs from Fumio et al as applied above because Fumio et al does not teach the refractive index values of the inventive glasses. However, as shown above, Fumio et al teaches a glass that is equivalent to that of the instant claims in terms of composition and structure. This equivalent glass would therefore inherently also have equivalent refraction properties and a refractive index of 3.0 or greater at a wavelength of 10 µm.
Conclusion
9. No claim is allowed.
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
11. 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
NSW22 December 2025