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 .
Status of the Claims
The Response filed 25 September 2025 has been entered. Claims 1 – 28 remain pending in the application.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 3, 5 – 7, 11 – 13, and 15 – 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 6, 8, 10 – 13, and 15 of copending Application No. 18/629,930 (hereinafter “the ‘930 application”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, claim 1 of the ‘930 application recites a glass article having a thickness in a range of 20 µm to 150 µm, and claim 6 of the ‘930 application (which depends on claim 3 and claim 1 of the ‘930 application) recites the glass article further has a third elastic energy index of 2.1 MPa2/m0.5 or greater, wherein the third elastic energy index is defined by
Third elastic energy index (Eelas3) = GIC × (1/B) × Eabs,
where GIC is a fracture energy index defined by
Fracture energy index (GIC) = (KIC2 × (1-v2))/E,
where KIC is fracture toughness, v is Poisson's ratio, and E is Young's modulus,
B is brittleness (fracture toughness KIC/hardness HV), and Eabs is absorption energy defined by:
Absorption energy (Eabs) = σ2 × (1-v)/E,
where σ is surface strength defined by:
Surface strength (σ)= (E×α×ρ2)/(1-v),
where E is Young's modulus, α is a thermal expansion coefficient, ρ is density, and v is Poisson's ratio.
Regarding claim 2, in addition to the limitations of claim 1, claim 8 of the ‘930 application recites the glass article has a cracking height of 6 cm or greater in a pen drop test performed using a pen with a ball diameter of 0.7 mm and a weight of 1.12 g.
Regarding claim 3, in addition to the limitations of claim 2, claim 5 of the ‘930 application recites the glass article where the fracture energy index is 150 kJ/m2 or greater.
Regarding claim 5, in addition to the limitations of claim 3, claim 3 of the ‘930 application recites the glass article has a second elastic energy index of 0.1 × 10-4 (kJ/m2)2 or greater, wherein the second elastic energy index is defined by
Second elastic energy index (Eelas2) = GIC × (1/B)6 × Eabs,
where GIC is the fracture energy index defined in the double patenting rejection of claim 1, and B and Eabs are as in the double patenting rejection of claim 1.
Regarding claim 6, claim 10 of the ‘930 application recites a glass article having a thickness in a range of 20 µm to 150 µm, and claim 13 of the ‘930 application (which depends on claims 10 – 12 of the ‘930 application) recites the glass article further has a third free volume index of 6.0×10-14 MPa4/(m2.5×K3) or greater, wherein the third free volume index is defined by
Third free volume index (Vt3) = GIC × (1/B) × Eabs × σ ×(1/(Tg)3),
where Tg is a glass transition temperature, and GIC is a fracture energy index defined by
Fracture energy index (GIC) = (KIC2× (1-ν2))/E,
where KIC is fracture toughness, v is Poisson's ratio, and E is Young's modulus,
B is brittleness (fracture toughness KIC/hardness Hv), and Eabs is absorption energy defined by
Absorption energy (Eabs) = σ2 × (1-v)/E,
where σ is surface strength defined by:
Surface strength (σ)= (E×α×ρ2)/(1-v),
where E is Young's modulus, α is a thermal expansion coefficient, ρ is density, and v is Poisson's ratio.
Regarding claim 7, in addition to the limitations of claim 6, claim 15 of the ‘930 application recites the glass article has a cracking height of 6 cm or greater in a pen drop test performed using a pen with a ball diameter of 0.7 mm and a weight of 1.12 g.
Regarding claim 11, claim 1 of the ‘930 application recites a glass article having a thickness in a range of 20 µm to 150 µm, and claim 3 of the ‘930 application recites the glass article further has a second elastic energy index of 1 × 10-5 (kJ/m2)2 or greater (0.1 × 10-4 (kJ/m2)2), wherein the second elastic energy index is defined by
Second elastic energy index (Eelas2) = GIC × (1/B)6 × Eabs
where GIC is a fracture energy index defined by
Fracture energy index (GIC) = (KIC2 × (1-v2))/E,
where KIC is fracture toughness, v is Poisson's ratio, and E is Young's modulus,
B is brittleness (fracture toughness KIC/hardness HV), and Eabs is absorption energy defined by:
Absorption energy (Eabs) = σ2 × (1-v)/E,
where σ is surface strength defined by:
Surface strength (σ)= (E×α×ρ2)/(1-v),
where E is Young's modulus, α is a thermal expansion coefficient, ρ is density, and v is Poisson's ratio.
Regarding claim 12, in addition to the limitations of claim 11, claim 8 of the ‘930 application recites the glass article has a cracking height of 6 cm or greater in a pen drop test performed using a pen with a ball diameter of 0.7 mm and a weight of 1.12 g.
Regarding claim 13, in addition to the limitations of claim 12, claim 5 of the ‘930 application recites the glass article where the fracture energy index is 150 kJ/m2 or greater.
Regarding claim 15, in addition to the limitations of claim 13, claim 6 of the ‘930 application recites the glass article further has a third elastic energy index of 2.1 MPa2/m0.5 or greater, wherein the third elastic energy index is defined by
Third elastic energy index (Eelas3) = GIC × (1/B) × Eabs,
where GIC is the fracture energy index defined in the double patenting rejection of claim 11, and B and Eabs are as in the double patenting rejection of claim 11.
Regarding claim 16, claim 10 of the ‘930 application recites a glass article having a thickness in a range of 20 µm to 150 µm, and claim 11 of the ‘930 application (which depends on claim 10 of the ‘930 application) recites the glass article further has a second free volume index of 7.0×10-8 (kJ/m2)2 or greater, wherein the second free volume index is defined by
Second free volume index (Vt2) = GIC × (1/B)6 × Eabs × σ ×(1/(Tg)),
where Tg is a glass transition temperature, and GIC is a fracture energy index defined by
Fracture energy index (GIC) = (KIC2× (1-ν2))/E,
where KIC is fracture toughness, v is Poisson's ratio, and E is Young's modulus,
B is brittleness (fracture toughness KIC/hardness Hv), and Eabs is absorption energy defined by
Absorption energy (Eabs) = σ2 × (1-v)/E,
where σ is surface strength defined by:
Surface strength (σ)= (E×α×ρ2)/(1-v),
where E is Young's modulus, α is a thermal expansion coefficient, ρ is density, and v is Poisson's ratio.
Regarding claim 17, in addition to the limitations of claim 16, claim 15 of the ‘930 application recites the glass article has a cracking height of 6 cm or greater in a pen drop test performed using a pen with a ball diameter of 0.7 mm and a weight of 1.12 g.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant is advised that should claim 5 be found allowable, claim 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1 – 28 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
MPEP § 2164.01(a), reproduced below in relevant part, outlines factors which determine compliance with the enablement requirement
In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is "reasonable" or is "undue." Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. See Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024). These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
The examiner finds undue experimentation would be necessary for the following reasons:
Regarding claim 1, claim 1 requires a glass article having a third elastic energy index Eelas3 of 1.8 MPa2/m0.5 or greater, but does not adequately describe how to attain a glass article with this property. The instant specification delineates properties for various examples of glass articles but does not provide, among other things, how these glass articles were obtained. Notably, no compositions are given for any of the sample glass articles. Moreover, no general ranges are given in the broader disclosure which could serve as a starting point for one of ordinary skill in the art to replicate Applicant’s results in the sample glass articles. Only qualitative effects of various oxides are given (e.g. ¶¶ [00119] – [00126]).
In view of this, Wands factors are addressed as follows:
With respect to factor (A), claim 1 is broad in that any glass with the third elastic energy index Eelas3 may meet claim 1. However, the instant specification only indicates three glasses which would (samples 1, 2, and 4 in Table 2).
With respect to factors (B) – (D), one of ordinary skill in the art would not have readily arrived at the claimed invention without significant guidance as the skill level necessary would be high. While the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), this does not provide substantial direction which one of ordinary skill in the art would need to make and/or use the invention. Moreover, the nature of the invention is such that the number of variables involved with obtaining the correct glass composition would be high, as evidenced by the number of parameters from which define the third elastic energy index Eelas3.
With respect to factors (E) – (H), as noted before, while the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), predicting the third elastic energy index Eelas3 would have been difficult without substantial effort from one of ordinary skill in the art. While Applicant does enumerate general effects of glass-forming oxides (e.g. ¶¶ [00119] – [00126]), this does not provide any direction for obtaining a glass article with the third elastic energy index Eelas3. While examples are provided in the instant specification which have a third elastic energy index Eelas3 in the claimed range, only three are provided which do (samples 1, 2, and 4 in Table 2). Moreover, no details are given as to how to make these samples, e.g. with respect to their compositions, which would have allowed one of ordinary skill in the art to reproduce Applicant’s invention. Therefore, the amount of experimentation necessary would be burdensome to make and/or use the invention.
Therefore, the examiner finds that claim 1 fails to comply with the enablement requirement.
Regarding claims 2 – 5 and 25, each of claims 2 – 5 and 25 depends, directly or indirectly, on claim 1. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Accordingly, each of claims 2 – 5 and 25 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement for the same reasons as claim 1.
Furthermore, the reasoning above with respect to the third elastic energy index Eelas3 similarly applies to the cracking height of claim 2, the fracture energy index of claim 3, the first elastic energy index Eelas1 of claim 4, and the second elastic energy index Eelas2 of claim 5.
Regarding claim 6, claim 6 requires a glass article having a third free volume index Vt3 of 5 x 10-14 MPa4/(m2.5×K3), but does not adequately describe how to attain a glass article with this property. The instant specification delineates properties for various examples of glass articles but does not provide, among other things, how these glass articles were obtained. Notably, no compositions are given for any of the sample glass articles. Moreover, no general ranges are given in the broader disclosure which could serve as a starting point for one of ordinary skill in the art to replicate Applicant’s results in the sample glass articles. Only qualitative effects of various oxides are given (e.g. ¶¶ [00119] – [00126]).
In view of this, Wands factors are addressed as follows:
With respect to factor (A), claim 6 is broad in that any glass with the third free volume index Vt3 may meet claim 6. However, the instant specification only indicates five glasses which would (samples 1 – 5 in Table 2).
With respect to factors (B) – (D), one of ordinary skill in the art would not have readily arrived at the claimed invention without significant guidance as the skill level necessary would be high. While the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), this does not provide substantial direction which one of ordinary skill in the art would need to make and/or use the invention. Moreover, the nature of the invention is such that the number of variables involved with obtaining the correct glass composition would be high, as evidenced by the number of parameters from which define the third free volume index Vt3.
With respect to factors (E) – (H), as noted before, while the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), predicting the third free volume index Vt3 would have been difficult without substantial effort from one of ordinary skill in the art. While Applicant does enumerate general effects of glass-forming oxides (e.g. ¶¶ [00119] – [00126]), this does not provide any direction for obtaining a glass article with the third free volume index Vt3. While examples are provided in the instant specification which have a third free volume index Vt3 in the claimed range, only five are provided which do (samples 1 – 5 in Table 2). Moreover, no details are given as to how to make these samples, e.g. with respect to their compositions, which would have allowed one of ordinary skill in the art to reproduce Applicant’s invention. Therefore, the amount of experimentation necessary would be burdensome to make and/or use the invention.
Therefore, the examiner finds that claim 6 fails to comply with the enablement requirement.
Regarding claims 7 – 10 and 26, each of claims 7 – 10 and 26 depends, directly or indirectly, on claim 6. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Accordingly, each of claims 7 – 10 and 26 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement for the same reasons as claim 6.
Furthermore, the reasoning above with respect to the third free volume index Vt3 similarly applies to the cracking height of claim 7, the fracture energy index of claim 8, the first free volume index Vt1 of claim 9, and the second free volume index Vt2 of claim 10.
Regarding claim 11, claim 11 requires a glass article having a second elastic energy index Eelas2 of 5.0 × 10-5 (kJ/m2)2 or greater, but does not adequately describe how to attain a glass article with this property. The instant specification delineates properties for various examples of glass articles but does not provide, among other things, how these glass articles were obtained. Notably, no compositions are given for any of the sample glass articles. Moreover, no general ranges are given in the broader disclosure which could serve as a starting point for one of ordinary skill in the art to replicate Applicant’s results in the sample glass articles. Only qualitative effects of various oxides are given (e.g. ¶¶ [00119] – [00126]).
In view of this, Wands factors are addressed as follows:
With respect to factor (A), claim 11 is broad in that any glass with the second elastic energy index Eelas2 may meet claim 11. However, the instant specification only indicates three glasses which would (samples 1, 2, and 4 in Table 2).
With respect to factors (B) – (D), one of ordinary skill in the art would not have readily arrived at the claimed invention without significant guidance as the skill level necessary would be high. While the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), this does not provide substantial direction which one of ordinary skill in the art would need to make and/or use the invention. Moreover, the nature of the invention is such that the number of variables involved with obtaining the correct glass composition would be high, as evidenced by the number of parameters from which define the second elastic energy index Eelas2.
With respect to factors (E) – (H), as noted before, while the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), predicting the second elastic energy index Eelas2 would have been difficult without substantial effort from one of ordinary skill in the art. While Applicant does enumerate general effects of glass-forming oxides (e.g. ¶¶ [00119] – [00126]), this does not provide any direction for obtaining a glass article with the second elastic energy index Eelas2. While examples are provided in the instant specification which have a second elastic energy index Eelas2 in the claimed range, only three are provided which do (samples 1, 2, and 4 in Table 2). Moreover, no details are given as to how to make these samples, e.g. with respect to their compositions, which would have allowed one of ordinary skill in the art to reproduce Applicant’s invention. Therefore, the amount of experimentation necessary would be burdensome to make and/or use the invention.
Therefore, the examiner finds that claim 11 fails to comply with the enablement requirement.
Regarding claims 12 – 15 and 27, each of claims 12 – 15 and 27 depends, directly or indirectly, on claim 11. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Accordingly, each of claims 12 – 15 and 27 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement for the same reasons as claim 11.
Furthermore, the reasoning above with respect to the second elastic energy index Eelas2 similarly applies to the cracking height of claim 12, the fracture energy index of claim 13, the first elastic energy index Eelas1 of claim 4, and the third elastic energy index Eelas3 of claim 15.
Regarding claim 16, claim 16 requires a glass article having a second free volume index Vt2 of 5 × 10-8 (kJ/m2)2/K, but does not adequately describe how to attain a glass article with this property. The instant specification delineates properties for various examples of glass articles but does not provide, among other things, how these glass articles were obtained. Notably, no compositions are given for any of the sample glass articles. Moreover, no general ranges are given in the broader disclosure which could serve as a starting point for one of ordinary skill in the art to replicate Applicant’s results in the sample glass articles. Only qualitative effects of various oxides are given (e.g. ¶¶ [00119] – [00126]).
In view of this, Wands factors are addressed as follows:
With respect to factor (A), claim 16 is broad in that any glass with the second free volume index Vt2 may meet claim 16. However, the instant specification only indicates three glasses which would (samples 1, 2, and 4 in Table 2, noting the change of exponent from -8 in the claim to -7 in the table).
With respect to factors (B) – (D), one of ordinary skill in the art would not have readily arrived at the claimed invention without significant guidance as the skill level necessary would be high. While the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), this does not provide substantial direction which one of ordinary skill in the art would need to make and/or use the invention. Moreover, the nature of the invention is such that the number of variables involved with obtaining the correct glass composition would be high, as evidenced by the number of parameters from which define the second free volume index Vt2.
With respect to factors (E) – (H), as noted before, while the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), predicting the second free volume index Vt2 would have been difficult without substantial effort from one of ordinary skill in the art. While Applicant does enumerate general effects of glass-forming oxides (e.g. ¶¶ [00119] – [00126]), this does not provide any direction for obtaining a glass article with the second free volume index Vt2. While examples are provided in the instant specification which have second free volume index Vt2 in the claimed range, only three are provided which do (samples 1 – 5 in Table 2). Moreover, no details are given as to how to make these samples, e.g. with respect to their compositions, which would have allowed one of ordinary skill in the art to reproduce Applicant’s invention. Therefore, the amount of experimentation necessary would be burdensome to make and/or use the invention.
Therefore, the examiner finds that claim 16 fails to comply with the enablement requirement.
Regarding claims 17 – 20 and 28, each of claims 17 – 20 and 28 depends, directly or indirectly, on claim 16. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Accordingly, each of claims 17 – 20 and 28 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement for the same reasons as claim 16.
Furthermore, the reasoning above with respect to the second free volume index Vt2 similarly applies to the cracking height of claim 17, the fracture energy index of claim 18, the first free volume index Vt1 of claim 19, and the third free volume index Vt3 of claim 20.
Regarding claim 21, claim 21 requires a glass article having a fracture energy index of 150 kJ/m2 and a third elastic energy index Eelas3 of 1.8 MPa2/m0.5 or greater, but does not adequately describe how to attain a glass article with this property. The instant specification delineates properties for various examples of glass articles but does not provide, among other things, how these glass articles were obtained. Notably, no compositions are given for any of the sample glass articles. Moreover, no general ranges are given in the broader disclosure which could serve as a starting point for one of ordinary skill in the art to replicate Applicant’s results in the sample glass articles. Only qualitative effects of various oxides are given (e.g. ¶¶ [00119] – [00126]).
In view of this, Wands factors are addressed as follows:
With respect to factor (A), claim 21 is broad in that any glass with the third elastic energy index Eelas3 may meet claim 21. However, the instant specification only indicates two glasses which would (samples 1 and 2 in Table 2).
With respect to factors (B) – (D), one of ordinary skill in the art would not have readily arrived at the claimed invention without significant guidance as the skill level necessary would be high. While the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), this does not provide substantial direction which one of ordinary skill in the art would need to make and/or use the invention. Moreover, the nature of the invention is such that the number of variables involved with obtaining the correct glass composition would be high, as evidenced by the number of parameters from which define the third elastic energy index Eelas3.
With respect to factors (E) – (H), as noted before, while the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), predicting the third elastic energy index Eelas3 would have been difficult without substantial effort from one of ordinary skill in the art. While Applicant does enumerate general effects of glass-forming oxides (e.g. ¶¶ [00119] – [00126]), this does not provide any direction for obtaining a glass article with the third elastic energy index Eelas3. While examples are provided in the instant specification which have a third elastic energy index Eelas3 in the claimed range, only three are provided which do (samples 1 and 2 in Table 2). Moreover, no details are given as to how to make these samples, e.g. with respect to their compositions, which would have allowed one of ordinary skill in the art to reproduce Applicant’s invention. Therefore, the amount of experimentation necessary would be burdensome to make and/or use the invention.
Therefore, the examiner finds that claim 21 fails to comply with the enablement requirement.
Regarding claim 22, claim 22 requires a glass article having a fracture energy index of 150 kJ/m2 and a third free volume index Vt3 of 5 x 10-14 MPa4/(m2.5×K3), but does not adequately describe how to attain a glass article with this property. The instant specification delineates properties for various examples of glass articles but does not provide, among other things, how these glass articles were obtained. Notably, no compositions are given for any of the sample glass articles. Moreover, no general ranges are given in the broader disclosure which could serve as a starting point for one of ordinary skill in the art to replicate Applicant’s results in the sample glass articles. Only qualitative effects of various oxides are given (e.g. ¶¶ [00119] – [00126]).
In view of this, Wands factors are addressed as follows:
With respect to factor (A), claim 22 is broad in that any glass with the third free volume index Vt3 may meet claim 22. However, the instant specification only indicates three glasses which would (samples 1, 2, and 5 in Table 2).
With respect to factors (B) – (D), one of ordinary skill in the art would not have readily arrived at the claimed invention without significant guidance as the skill level necessary would be high. While the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), this does not provide substantial direction which one of ordinary skill in the art would need to make and/or use the invention. Moreover, the nature of the invention is such that the number of variables involved with obtaining the correct glass composition would be high, as evidenced by the number of parameters from which define the third free volume index Vt3.
With respect to factors (E) – (H), as noted before, while the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), predicting the third free volume index Vt3 would have been difficult without substantial effort from one of ordinary skill in the art. While Applicant does enumerate general effects of glass-forming oxides (e.g. ¶¶ [00119] – [00126]), this does not provide any direction for obtaining a glass article with the third free volume index Vt3. While examples are provided in the instant specification which have a third free volume index Vt3 in the claimed range, only three are provided which do (samples 1, 2, and 5 in Table 2). Moreover, no details are given as to how to make these samples, e.g. with respect to their compositions, which would have allowed one of ordinary skill in the art to reproduce Applicant’s invention. Therefore, the amount of experimentation necessary would be burdensome to make and/or use the invention.
Therefore, the examiner finds that claim 22 fails to comply with the enablement requirement.
Regarding claim 23, claim 23 requires a glass article having a fracture energy index of 150 kJ/m2 and a second elastic energy index Eelas2 of 5.0 × 10-5 (kJ/m2)2 or greater, but does not adequately describe how to attain a glass article with this property. The instant specification delineates properties for various examples of glass articles but does not provide, among other things, how these glass articles were obtained. Notably, no compositions are given for any of the sample glass articles. Moreover, no general ranges are given in the broader disclosure which could serve as a starting point for one of ordinary skill in the art to replicate Applicant’s results in the sample glass articles. Only qualitative effects of various oxides are given (e.g. ¶¶ [00119] – [00126]).
In view of this, Wands factors are addressed as follows:
With respect to factor (A), claim 23 is broad in that any glass with the second elastic energy index Eelas2 may meet claim 23. However, the instant specification only indicates two glasses which would (samples 1 and 2 in Table 2).
With respect to factors (B) – (D), one of ordinary skill in the art would not have readily arrived at the claimed invention without significant guidance as the skill level necessary would be high. While the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), this does not provide substantial direction which one of ordinary skill in the art would need to make and/or use the invention. Moreover, the nature of the invention is such that the number of variables involved with obtaining the correct glass composition would be high, as evidenced by the number of parameters from which define the second elastic energy index Eelas2.
With respect to factors (E) – (H), as noted before, while the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), predicting the second elastic energy index Eelas2 would have been difficult without substantial effort from one of ordinary skill in the art. While Applicant does enumerate general effects of glass-forming oxides (e.g. ¶¶ [00119] – [00126]), this does not provide any direction for obtaining a glass article with the second elastic energy index Eelas2. While examples are provided in the instant specification which have a second elastic energy index Eelas2 in the claimed range, only two are provided which do (samples 1and 2 in Table 2). Moreover, no details are given as to how to make these samples, e.g. with respect to their compositions, which would have allowed one of ordinary skill in the art to reproduce Applicant’s invention. Therefore, the amount of experimentation necessary would be burdensome to make and/or use the invention.
Therefore, the examiner finds that claim 23 fails to comply with the enablement requirement.
Regarding claim 24, claim 24 requires a glass article having a fracture energy index of 150 kJ/m2 and a second free volume index Vt2 of 5 × 10-8 (kJ/m2)2/K, but does not adequately describe how to attain a glass article with this property. The instant specification delineates properties for various examples of glass articles but does not provide, among other things, how these glass articles were obtained. Notably, no compositions are given for any of the sample glass articles. Moreover, no general ranges are given in the broader disclosure which could serve as a starting point for one of ordinary skill in the art to replicate Applicant’s results in the sample glass articles. Only qualitative effects of various oxides are given (e.g. ¶¶ [00119] – [00126]).
In view of this, Wands factors are addressed as follows:
With respect to factor (A), claim 24 is broad in that any glass with the second free volume index Vt2 may meet claim 24. However, the instant specification only indicates two glasses which would (samples 1 and 2 in Table 2, noting the change of exponent from -8 in the claim to -7 in the table).
With respect to factors (B) – (D), one of ordinary skill in the art would not have readily arrived at the claimed invention without significant guidance as the skill level necessary would be high. While the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), this does not provide substantial direction which one of ordinary skill in the art would need to make and/or use the invention. Moreover, the nature of the invention is such that the number of variables involved with obtaining the correct glass composition would be high, as evidenced by the number of parameters from which define the second free volume index Vt2.
With respect to factors (E) – (H), as noted before, while the general effects of oxides used to form glasses may be known (see, e.g., US 2017/0183255 A1 at ¶¶ [0084] – [0089]), predicting the second free volume index Vt2 would have been difficult without substantial effort from one of ordinary skill in the art. While Applicant does enumerate general effects of glass-forming oxides (e.g. ¶¶ [00119] – [00126]), this does not provide any direction for obtaining a glass article with the second free volume index Vt2. While examples are provided in the instant specification which have second free volume index Vt2 in the claimed range, only two are provided which do (samples 1 and 2 in Table 2). Moreover, no details are given as to how to make these samples, e.g. with respect to their compositions, which would have allowed one of ordinary skill in the art to reproduce Applicant’s invention. Therefore, the amount of experimentation necessary would be burdensome to make and/or use the invention.
Therefore, the examiner finds that claim 24 fails to comply with the enablement requirement.
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 1 – 28 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.
Regarding claim 1, claim 1 defines surface strength σ as
σ
=
E
α
ρ
2
1
-
ν
In Table 1 of the specification (see ¶ [00196]), Applicant measures:
Young’s modulus E in units of MPa, i.e. pressure which force/area or mass*length/time2;
Thermal expansion coefficient α in units of 1/K, i.e. 1/temperature;
Density ρ in units of g/cm3, i.e. mass/length3; and
Poisson’s ratio ν is dimensionless.
From these units, it is not clear how surface strength σ can be measured in (MPa/m)2 (see ¶ [00159] of the specification), which is needed for the third elastic energy index Eelas3 to have units of MPa2/m0.5 as required in claim 1. While these units are not explicitly written into claim 1, the third elastic energy index Eelas3 is defined by the absorption energy Eabs, which in turn is defined by the surface strength σ. Stated another way, the third elastic energy index Eelas3 depends on the surface strength σ.
Since it is not clear what the definition of surface strength σ is, it must be said that the third elastic energy index Eelas3 is also unclear.
Regarding claims 2 – 5 and 25, each of claims 2 – 5 and 25 depends, directly or indirectly, on claim 1. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Accordingly, each of claims 2 – 5 and 25 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the same reasons as claim 1.
Regarding claim 6, claim 6 defines surface strength σ as
σ
=
E
α
ρ
2
1
-
ν
In Table 1 of the specification (see ¶ [00196]), Applicant measures:
Young’s modulus E in units of MPa, i.e. pressure which force/area or mass*length/time2;
Thermal expansion coefficient α in units of 1/K, i.e. 1/temperature;
Density ρ in units of g/cm3, i.e. mass/length3; and
Poisson’s ratio ν is dimensionless.
From these units, it is not clear how surface strength σ can be measured in (MPa/m)2 (see ¶ [00159] of the specification), which is needed for the third free volume index Vt3 to have units of MPa4/(m2.5×K3) as required in claim 6. While these units are not explicitly written into claim 6, the third free volume index Vt3 is defined by the absorption energy Eabs, which in turn is defined by the surface strength σ. Stated another way, the third free volume index Vt3 depends on the surface strength σ.
Since it is not clear what the definition of surface strength σ is, it must be said that the third free volume index Vt3 is also unclear.
Regarding claims 7 – 10 and 26, each of claims 7 – 10 and 26 depends, directly or indirectly, on claim 6. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Accordingly, each of claims 7 – 10 and 26 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the same reasons as claim 6.
Regarding claim 11, claim 11 defines surface strength σ as
σ
=
E
α
ρ
2
1
-
ν
In Table 1 of the specification (see ¶ [00196]), Applicant measures:
Young’s modulus E in units of MPa, i.e. pressure which force/area or mass*length/time2;
Thermal expansion coefficient α in units of 1/K, i.e. 1/temperature;
Density ρ in units of g/cm3, i.e. mass/length3; and
Poisson’s ratio ν is dimensionless.
From these units, it is not clear how surface strength σ can be measured in (MPa/m)2 (see ¶ [00159] of the specification), which is needed for the second elastic energy index Eelas2 to have units of (kJ/m2)2 as required in claim 11. While these units are not explicitly written into claim 11, the second elastic energy index Eelas2 is defined by the absorption energy Eabs, which in turn is defined by the surface strength σ. Stated another way, the second elastic energy index Eelas2 depends on the surface strength σ.
Since it is not clear what the definition of surface strength σ is, it must be said that the second elastic energy index Eelas2 is also unclear.
Regarding claims 12 – 15 and 27, each of claims 12 – 15 and 27 depends, directly or indirectly, on claim 11. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Accordingly, each of claims 12 – 15 and 27 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the same reasons as claim 11.
Regarding claim 16, claim 16 defines surface strength σ as
σ
=
E
α
ρ
2
1
-
ν
In Table 1 of the specification (see ¶ [00196]), Applicant measures:
Young’s modulus E in units of MPa, i.e. pressure which force/area or mass*length/time2;
Thermal expansion coefficient α in units of 1/K, i.e. 1/temperature;
Density ρ in units of g/cm3, i.e. mass/length3; and
Poisson’s ratio ν is dimensionless.
From these units, it is not clear how surface strength σ can be measured in (MPa/m)2 (see ¶ [00159] of the specification), which is needed for the second free volume index Vt2 to have units of (kJ/m2)2/K as required in claim 16. While these units are not explicitly written into claim 16, the second free volume index Vt2 is defined by the absorption energy Eabs, which in turn is defined by the surface strength σ. Stated another way, the second free volume index Vt2 depends on the surface strength σ.
Since it is not clear what the definition of surface strength σ is, it must be said that the second free volume index Vt2 is also unclear.
Regarding claims 17 – 20 and 28, each of claims 17 – 20 and 28 depends, directly or indirectly, on claim 16. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Accordingly, each of claims 17 – 20 and 28 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the same reasons as claim 16.
Regarding claim 21, claim 21 defines surface strength σ as
σ
=
E
α
ρ
2