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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art, relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted 29 September 2023, 16 October 2023, 14 February 2024, 27 January 2026, and 15 April 2026 been considered by the Examiner.
Drawings
The original drawings received on 21 August 2023 are accepted by the Examiner.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 16-22 in the reply filed on 22 May 2026 is acknowledged.
Claims 1-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 22 May 2026.
Claim Rejections - 35 USC § 112(b) or second paragraph
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 16-22 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.
The term "about", which is used repeatedly in claims 16-18 and 20-22, is a relative term which renders the claims indefinite. The term "about" is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For example, looking at claim 16 and only the average titania concentration, “about 6 wt.% to about 12 wt.%”, since the term “about” is not defined by the specification it is not clear what the range’s endpoints are for titania or what is meant by the term “about”. Does 5.94, 5.4, or even 4.8 read on “about 6” since 5.94 represents ±1% of 6 (or 0.06%), 5.4 represents ±10% of 6 (or 0.6%), and 4.8 represents ±20% of 6 (or 1.2%). When looking at the upper limit of the range how much titania is too much to meet the limitation of “about 6 wt.% to about 12 wt.%”? 12.12%, 13.2%, or even 14.4%? (1% of 12, 10% of 12, and 20% of 12, respectively)
Therefore, claims 16-18 and 20-22 are rendered indefinite since the use of the relative term “about” does not allow for one of ordinary skill in the art to reasonably determine the scope of the claims.
The claims will be treated in the broadest meaning which would be the interpretation using “about” to modify the claims. Therefore, the numerical ranges of the claims will be read in view of the ranges as modified by the term “about”. Since the specification does don' t define the value of “about”, the term “about” is being considered up to ±20% of the value. The ranges of the instant claims will be considered anticipated or obvious if the examples or ranges of the prior art falls within ±20% of the endpoints. There is no consistent value for which the term “about” used in the prior art related to glass compositions and glasses as shown by the specifications of: U.S. Patent Application Publications such as: US 2021/0025984 A1, US 2018/0099487 A1, US 2015/0344352 A1, US 2015/0344352 A1, US 2010/395134 A1, US 2019/0177212 A1, US 2010/221727 A1, US 2010/206687 A1, US 2020/002216 A1, US 2018/0319700 A1, and US 2003/0216242 A1. In the listed specification the term “about” is defined as anywhere from ±0.2% of the value up to ±30% or even 50% of the endpoint values.
Claim 19 is rejected as indefinite since it depends from claim 16 without correcting the issue.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 16-22 are rejected under 35 U.S.C. § 103 as being unpatentable over Campion et al., U.S. Patent Application Publication US 2022/0250964 A1.
Campion et al. teach a titania-doped quartz (SiO2) glass (see Abstract and the entire specification, specifically, paragraphs [0003]-[0018]), which reads on a glass comprising titania and silica as recited in claim 16. Campion et al. teach that the titania-doped quartz glass has an OH concentration of 600 ppm to 1400 ppm (see paragraph [0031]), which reads on an average hydroxyl concentration of about 800 ppm or greater as recited in claim 16. Campion et al. that the titania-doped quartz glass comprises in terms of weight percentages 5-10% of TiO2 (titania), (see paragraph [0018]), which reads the glass comprising an average titania content of about 6 wt% to about 12 wt%, as recited in claim 16. Campion et al. teach that the titania-doped quartz glass has a refractive index variation of 20 ppm to 60 ppm (0.20x10-4 to 0.60 x 10-4-), (see paragraph [0030]), which reads on a peak-to-valley difference between the maximum refractive index and a minimum refractive index of about 1x10-4 or less, as recited in claim 16.
Titania Concentration
(wt%)
OH Concentration (ppm)
CTE
(ppb/K)
Tzc
(°C)
Slope of CTE
(ppb/K2)
Ex. 2A
7.67
~820
~40.39
51.2
1.62
Ex. 2B
7.67
~820
~40.76
51.2
1.63
Ex. 2C
7.67
~820
~12.76
30.1
1.6
Ex. 3A
7.61
~1090
~29.27
41.2
1.60
Ex. 3B
7.61
~1090
~27.27
4.8
1.49
Ex. 3C
7.61
~1090
3.79
17.1
1.27
Ex. 3D
7.61
~1090
1.81
18.6
1.31
Campion et al. fails to teach that the measurements of the variations are measured based on segments having a length of about 12.7 mm, a width of about 12.7 mm, and a height of about 7.62 mm, as recited in instant claim 16. However, the weight percent and property ranges taught by Campion et al. have overlapping ranges. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Campion et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the ranges taught by Campion et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“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 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Furthermore, when general conditions are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by changing the size, the proportion, the shape, and/or the sequence of added ingredients through routine experimentation. See MPEP 2144.04 (IV)(A) - In re Rose, 105 USPQ 237 and MPEP 2144.04 (IV)(A) - In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
As to claim 17, Campion et al. teach that the glass is cut into substrates having has a size of 6 inches x 6 inches x 0.25 inches or 152.4mm x 152.4 mm x 6.35 mm, (paragraph [0109]), which reads on a glass having a length and width of about 25 mm or more, as recited in instant claim 17.
As to claim 18, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the peak-to-valley difference between the maximum and minimum hydroxyl of about 15 ppm or less, as recited in instant claim 18.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 19, Campion et al. is silent to the inclusion of halides in the glass, Campion et al. only mentions halides in part as trace element analysis with detection levels of 200 ppm for F and 20 ppm for Cl and Br (see paragraph [0094]), which reads on the glass being halide-free, as recited in claim 19.
As to claim 20, Campion et al. teach a titania-doped quartz (SiO2) glass (see Abstract and the entire specification, specifically, paragraphs [0003]-[0018]), which reads on a glass comprising titania and silica as recited in claim 20. Campion et al. teach that the titania-doped quartz glass has a refractive index variation of 20 ppm to 60 ppm (0.20x10-4 to 0.60 x 10-4-), (see paragraph [0030]), which reads on a peak-to-valley difference between the maximum refractive index and a minimum refractive index of about 1x10-4 or less, as recited in claim 20. Campion et al. teach that the glass is cut into substrates having has a size of 6 inches x 6 inches x 0.25 inches or 152.4mm x 152.4 mm x 6.35 mm, (paragraph [0109]), which reads on a glass having a length and width of about 25 mm or more, as recited in instant claim 20.
Titania Concentration
(wt%)
OH Concentration (ppm)
CTE
(ppb/K)
Tzc
(°C)
Slope of CTE
(ppb/K2)
Ex. 2A
7.67
~820
~40.39
51.2
1.62
Ex. 2B
7.67
~820
~40.76
51.2
1.63
Ex. 2C
7.67
~820
~12.76
30.1
1.6
Ex. 3A
7.61
~1090
~29.27
41.2
1.60
Ex. 3B
7.61
~1090
~27.27
4.8
1.49
Ex. 3C
7.61
~1090
3.79
17.1
1.27
Ex. 3D
7.61
~1090
1.81
18.6
1.31
Campion et al. fails to teach that the measurements of the variations are measured based on segments having a length of about 12.7 mm, a width of about 12.7 mm, and a height of about 7.62 mm, as recited in instant claim 20. However, the compositional and property ranges taught by Campion et al. have overlapping ranges. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Campion et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the ranges taught by Campion et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“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 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Furthermore, when general conditions are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by changing the size, the proportion, the shape, and/or the sequence of added ingredients through routine experimentation. See MPEP 2144.04 (IV)(A) - In re Rose, 105 USPQ 237 and MPEP 2144.04 (IV)(A) - In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
As to the peak-to-valley difference between the maximum and minimum hydroxyl concentration, Campion et al. teach that the titania-doped quartz glass has an OH concentration of 600 ppm to 1400 ppm (see paragraph [0031]), one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the peak-to-valley difference between the maximum and minimum hydroxyl of about 100 ppm or less, as recited in instant claim 20.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 21, Campion et al. teach that the glass is cut into substrates having has a size of 6 inches x 6 inches x 0.25 inches or 152.4mm x 152.4 mm x 6.35 mm, (paragraph [0109]), which reads on a glass having a length and width of about 150 mm, as recited in instant claim 21. When general conditions are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by changing the size, the proportion, the shape, and/or the sequence of added ingredients through routine experimentation. See MPEP 2144.04 (IV)(A) - In re Rose, 105 USPQ 237 and MPEP 2144.04 (IV)(A) - In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
As to claim 22, which recites limitations to the peak-to-valley difference between the maximum and minimum hydroxyl concentration, Campion et al. teach that the titania-doped quartz glass has an OH concentration of 600 ppm to 1400 ppm (see paragraph [0031]), one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the peak-to-valley difference between the maximum and minimum hydroxyl of about 15 ppm or less, as recited in instant claim 22.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
Claims 16-22 are rejected under 35 U.S.C. § 103 as being unpatentable over Maida et al., U.S. Patent Application Publication US 2008/0305940 A1.
Maida et al. teach a titania-doped quartz (SiO2) glass (see Abstract and the entire specification, specifically, paragraphs [0014]-[0016] and [0022]), which reads on a glass comprising titania and silica as recited in claim 16. Maida et al. teach that the titania-doped quartz glass has an OH concentration of up to 1000 ppm (see paragraph [0026]), which reads on an average hydroxyl concentration of about 600 ppm or greater as recited in claim 16. Maida et al. that the titania-doped quartz glass comprises in terms of weight percentages 5-10% of titania, (see paragraph [0016]), which reads the glass comprising an average titania content of about 6 wt% to about 12 wt%, as recited in claim 16. Maida et al. teach that the titania-doped quartz glass has a refractive index distribution of at most 5x10-4, preferably at most 1x10-5, (0.1x10-4), (see paragraph [0027]), which reads on a peak-to-valley difference between the maximum refractive index and a minimum refractive index of about 1x10-4 or less, as recited in claim 16. Maida et al. teach that the measured segments are 10mm x 10mm and having a thickness of 3 mm, (see Figure 1 and paragraphs [0045] and [0050]), which reads on a segment having a length of about 12.7 mm, a width of about 12.7 mm, and a height of about 7.62 mm, as recited in instant claim 16. Additionally, Maida et al. teach Examples 1 and 2 in Table 2, which teach that the maximum and minimum titania concentration, refractive index distribution, and the maximum and minimum OH concentration for a total of 50 zones, which read on the limitation of claim 16.
Titania Concentration
Wt%
Refractive Index
OH Concentration PPM
Max
Min
X 10-4
Max
Min
Ex. 1
7.4
7.3
2.2
882
861
Ex. 2
7.4
7.3
0.8
878
863
Maida et al. fail to teach any examples or compositional and property ranges using the same sampling size of the instant claims that are sufficiently specific to anticipate the compositional limitations of claim 16. However, the weight percent and property ranges taught by Maida et al. have overlapping ranges. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Maida et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the ranges taught by Maida et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“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 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Furthermore, when general conditions are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by changing the size, the proportion, the shape, and/or the sequence of added ingredients through routine experimentation. See MPEP 2144.04 (IV)(A) - In re Rose, 105 USPQ 237 and MPEP 2144.04 (IV)(A) - In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
As to claim 17, Maida et al. teach that the glass has a size of 152.4mm x 152.4 mm, (Figure 1 and paragraphs [0040] and [0044]), which reads on a glass having a length and width of about 25 mm or more, as recited in instant claim 17.
As to claim 18, Maida et al. teach Example 2 (see Table 2) having a difference between the maximum and minimum hydroxyl content of 15 ppm, respectively, which reads on a peak-to-valley difference between the maximum and minimum hydroxyl of about 15 ppm or less, as recited in instant claim 18.
As to claim 19, Maida et al. teach that the titania-doped quartz glass has a chlorine concentration up to 500 ppm, and further teach that the chlorine limit is preferably at or below detection limits of 10 ppm, (see paragraph [0025]), which reads on the glass being halide-free, as recited in claim 19.
As to claim 20, Maida et al. teach a titania-doped quartz (SiO2) glass (see Abstract and the entire specification, specifically, paragraphs [0014]-[0016] and [0022]), which reads on a glass comprising titania and silica as recited in claim 20. Maida et al. teach that the titania-doped quartz glass has a refractive index distribution of at most 5x10-4, preferably at most 1x10-5, (0.1x10-4), (see paragraph [0027]), which reads on a peak-to-valley difference between the maximum refractive index and a minimum refractive index of about 1x10-4 or less, as recited in claim 20. Maida et al. teach that the measured segments are 10mm x 10mm and having a thickness of 3 mm, (see Figure 1 and paragraphs [0045] and [0050]), which reads on a segment having a length of about 12.7 mm, a width of about 12.7 mm, and a height of about 7.62 mm, as recited in instant claim 20. Maida et al. teach that the glass has a size of 152.4mm x 152.4 mm, (Figure 1 and paragraphs [0040] and [0044]), which reads on a glass having a length and width of about 25 mm or more, as recited in instant claim 20. Additionally, Maida et al. teach Examples 1 and 2 in Table 2, which teach that the maximum and minimum titania concentration, refractive index distribution, and the maximum and minimum OH concentration for a total of 50 zones, which read on the limitation of claim 20.
Titania Concentration
Wt%
Refractive Index
OH Concentration PPM
Max
Min
X 10-4
Max
Min
Ex. 1
7.4
7.3
2.2
882
861
Ex. 2
7.4
7.3
0.8
878
863
Maida et al. fail to teach any examples or compositional and property ranges using the same sampling size of the instant claims that are sufficiently specific to anticipate the compositional limitations of claim 20. However, the weight percent and property ranges taught by Maida et al. have overlapping ranges. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Maida et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the ranges taught by Maida et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“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 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Furthermore, when general conditions are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by changing the size, the proportion, the shape, and/or the sequence of added ingredients through routine experimentation. See MPEP 2144.04 (IV)(A) - In re Rose, 105 USPQ 237 and MPEP 2144.04 (IV)(A) - In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
As to the peak-to-valley difference between the maximum and minimum hydroxyl concentration, Maida et al. teach that the titania-doped quartz glass has an OH concentration of up to 1000 ppm (see paragraph [0026]), one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the peak-to-valley difference between the maximum and minimum hydroxyl of about 100 ppm or less, as recited in instant claim 20.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 21, Maida et al. teach that the glass has a size of 152.4mm x 152.4 mm, (Figure 1 and paragraphs [0040] and [0044]), which reads on a glass having a length and width of about 150 mm, as recited in instant claim 21. When general conditions are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by changing the size, the proportion, the shape, and/or the sequence of added ingredients through routine experimentation. See MPEP 2144.04 (IV)(A) - In re Rose, 105 USPQ 237 and MPEP 2144.04 (IV)(A) - In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
As to claim 22, which recites limitations to the peak-to-valley difference between the maximum and minimum hydroxyl concentration, Maida et al. teach that the titania-doped quartz glass has an OH concentration of up to 1000 ppm (see paragraph [0026]), one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the peak-to-valley difference between the maximum and minimum hydroxyl of about 15 ppm or less, as recited in instant claim 22.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 16-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/448,880. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional ranges overlap. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The additional references cited on the 892 have been cited as art of interest since they are considered to be cumulative to or less than the art relied upon in the rejections above. Specifically, Duran et al. teach a titania-doped quartz glass having a OH concentration of 600-2500 ppm and a titania concentration of 5-14 wt%. See paragraph [0006].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth A. Bolden whose telephone number is (571)272-1363. The examiner can normally be reached 10:00 am to 6:30 pm M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
13 June 2026
Prosecution Insights