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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 16 June 2026 has been entered.
Status of the Claims
The Response filed 16 June 2026 has been entered. Claims 1 – 28 remain pending in the application.
Claim Interpretation
Claims 1, 6, 11, 16, and 21 – 24 (i.e. the independent claims) each recited, as amended, the glass article comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2, wherein SiO2 forms the framework of the glass article (see the last two lines of the respective claims). The examiner understands “CaO or MgO” to mean that either or both may be present. However, SiO2, Al2O3, Na2O, Li2O, and ZrO2 must be present.
Claims 2 – 5, 7 – 10, 12 – 15, 17 – 20, and 25 – 28 depend, directly or indirectly, on claim 1, 6, 11, 16, or 21 – 24, as appropriate. 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, the same interpretation discussed above for claims 1, 6, 11, 16, and 21 – 24 applies to claims 2 – 5, 7 – 10, 12 – 15, 17 – 20, and 25 – 28.
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”) in view of Walther (US 2017/0183255 A1). 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.
Although the claims of the ‘930 application do not specify the glass article comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2, wherein SiO2 forms the framework of the glass article, this feature would have been obvious in view of Walther.
Walther glass articles comprising SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 (e.g. ¶¶ [0025], [0066] – [0081]), wherein SiO2 forms the framework of the glass article (e.g. ¶¶ [0025], [0066] – [0081]). Glass articles of this composition exhibit excellent thermal shock resistance and therefore reduced self-breaking (e.g. ¶¶ [0017], [0065], [0137]).
Accordingly, it would have been obvious to provide the glass article of the ‘930 application with a comprising wherein the glass article comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2, wherein SiO2 forms the framework of the glass article, e.g. with a composition of this genus with excellent thermal shock resistance in order to reduce self-breaking.
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.
Although the claims of the ‘930 application do not specify the glass article comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2, wherein SiO2 forms the framework of the glass article, this feature would have been obvious in view of Walther.
Walther glass articles comprising SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 (e.g. ¶¶ [0025], [0066] – [0081]), wherein SiO2 forms the framework of the glass article (e.g. ¶¶ [0025], [0066] – [0081]). Glass articles of this composition exhibit excellent thermal shock resistance and therefore reduced self-breaking (e.g. ¶¶ [0017], [0065], [0137]).
Accordingly, it would have been obvious to provide the glass article of the ‘930 application with a comprising wherein the glass article comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2, wherein SiO2 forms the framework of the glass article, e.g. with a composition of this genus with excellent thermal shock resistance in order to reduce self-breaking.
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.
Although the claims of the ‘930 application do not specify the glass article comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2, wherein SiO2 forms the framework of the glass article, this feature would have been obvious in view of Walther.
Walther glass articles comprising SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 (e.g. ¶¶ [0025], [0066] – [0081]), wherein SiO2 forms the framework of the glass article (e.g. ¶¶ [0025], [0066] – [0081]). Glass articles of this composition exhibit excellent thermal shock resistance and therefore reduced self-breaking (e.g. ¶¶ [0017], [0065], [0137]).
Accordingly, it would have been obvious to provide the glass article of the ‘930 application with a comprising wherein the glass article comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2, wherein SiO2 forms the framework of the glass article, e.g. with a composition of this genus with excellent thermal shock resistance in order to reduce self-breaking.
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.
Although the claims of the ‘930 application do not specify the glass article comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2, wherein SiO2 forms the framework of the glass article, this feature would have been obvious in view of Walther.
Walther glass articles comprising SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 (e.g. ¶¶ [0025], [0066] – [0081]), wherein SiO2 forms the framework of the glass article (e.g. ¶¶ [0025], [0066] – [0081]). Glass articles of this composition exhibit excellent thermal shock resistance and therefore reduced self-breaking (e.g. ¶¶ [0017], [0065], [0137]).
Accordingly, it would have been obvious to provide the glass article of the ‘930 application with a comprising wherein the glass article comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2, wherein SiO2 forms the framework of the glass article, e.g. with a composition of this genus with excellent thermal shock resistance in order to reduce self-breaking.
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. Claim 1 recites “the glass article SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2” where “SiO2 forms the framework of the glass article” but, like the specification, gives no ranges for these oxides. Only qualitative effects of these oxides are given in the instant specification (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. Claim 1 recites “the glass article SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2” where “SiO2 forms the framework of the glass article” but, like the specification, gives no ranges for these oxides. Only qualitative effects of these oxides are given in the instant specification (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. Claim 1 recites “the glass article SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2” where “SiO2 forms the framework of the glass article” but, like the specification, gives no ranges for these oxides. Only qualitative effects of these oxides are given in the instant specification (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. Claim 1 recites “the glass article SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2” where “SiO2 forms the framework of the glass article” but, like the specification, gives no ranges for these oxides. Only qualitative effects of these oxides are given in the instant specification (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. Claim 1 recites “the glass article SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2” where “SiO2 forms the framework of the glass article” but, like the specification, gives no ranges for these oxides. Only qualitative effects of these oxides are given in the instant specification (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. Claim 1 recites “the glass article SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2” where “SiO2 forms the framework of the glass article” but, like the specification, gives no ranges for these oxides. Only qualitative effects of these oxides are given in the instant specification (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. Claim 1 recites “the glass article SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2” where “SiO2 forms the framework of the glass article” but, like the specification, gives no ranges for these oxides. Only qualitative effects of these oxides are given in the instant specification (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. Claim 1 recites “the glass article SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2” where “SiO2 forms the framework of the glass article” but, like the specification, gives no ranges for these oxides. Only qualitative effects of these oxides are given in the instant specification (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. Rather, dimensional analysis of the given equation indication surface strength σ has units of mass3/(length5*time2*temperature). As such, there is ambiguity with respect to how surface strength is defined.
Moreover, because the thermal expansion coefficient introduces units of temperature, the above issues carry over into all parameters which rely on surface strength in their calculation. That is, for the third elastic energy index Eelas3 to not have temperature in its units as required of claim 1 (namely MPa2/m0.5), at least one of the parameters for calculating the third elastic energy index Eelas3 must cancel out the temperature. However, this does not appear anywhere in claim 1.
As evidence of these issues, when using the equations in claim 1, which are the same as those in the instant specification, a calculation of the third elastic energy index Eelas3 from the data given in the examples in Table 1 of the instant specification fail to yield the recited result for the same example in Table 2 of the instant specification.
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. Rather, dimensional analysis of the given equation indication surface strength σ has units of mass3/(length5*time2*temperature). As such, there is ambiguity with respect to how surface strength is defined.
Moreover, because the thermal expansion coefficient introduces units of temperature, the above issues carry over into all parameters which rely on surface strength in their calculation. That is, for the third free volume index Vt3 to have temperature in its units as required of claim 6 (namely MPa4/m2.5*K3), at least one of the parameters for calculating the third free volume index Vt3 must cancel out the temperature provided by the surface strength σ. Otherwise, the third free volume index Vt3 would have K4 in its denominator for the units. However, this does not appear anywhere in claim 6.
As evidence of these issues, when using the equations in claim 6, which are the same as those in the instant specification, a calculation of the third free volume index Vt3 from the data given in the examples in Table 1 of the instant specification fail to yield the recited result for the same example in Table 2 of the instant specification.
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. Rather, dimensional analysis of the given equation indication surface strength σ has units of mass3/(length5*time2*temperature). As such, there is ambiguity with respect to how surface strength is defined.
Moreover, because the thermal expansion coefficient introduces units of temperature, the above issues carry over into all parameters which rely on surface strength in their calculation. That is, for the second elastic energy index Eelas2 to not have units of temperature as required of claim 11 (namely (kJ/m2)2), at least one of the parameters for calculating the second elastic energy index Eelas2 must cancel out the temperature provided by the surface strength σ. However, this does not appear anywhere in claim 11.
As evidence of these issues, when using the equations in claim 11, which are the same as those in the instant specification, a calculation of the second elastic energy index Eelas2 from the data given in the examples in Table 1 of the instant specification fail to yield the recited result for the same example in Table 2 of the instant specification.
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. Rather, dimensional analysis of the given equation indication surface strength σ has units of mass3/(length5*time2*temperature). As such, there is ambiguity with respect to how surface strength is defined.
Moreover, because the thermal expansion coefficient introduces units of temperature, the above issues carry over into all parameters which rely on surface strength in their calculation. That is, for the second free volume index Vt2 to have temperature in its units as required of claim 16 (namely (kJ/m2)2/K), at least one of the parameters for calculating the second free volume index Vt2 must cancel out the temperature provided by the surface strength σ. Otherwise, the second free volume index Vt2 would have K2 in its denominator for the units. However, this does not appear anywhere in claim 16.
As evidence of these issues, when using the equations in claim 16, which are the same as those in the instant specification, a calculation of the second free volume index Vt2 from the data given in the examples in Table 1 of the instant specification fail to yield the recited result for the same example in Table 2 of the instant specification.
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
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 21. Rather, dimensional analysis of the given equation indication surface strength σ has units of mass3/(length5*time2*temperature). As such, there is ambiguity with respect to how surface strength is defined.
Moreover, because the thermal expansion coefficient introduces units of temperature, the above issues carry over into all parameters which rely on surface strength in their calculation. That is, for the third elastic energy index Eelas3 to not have temperature in its units as required of claim 21 (namely MPa2/m0.5), at least one of the parameters for calculating the third elastic energy index Eelas3 must cancel out the temperature. However, this does not appear anywhere in claim 21.
As evidence of these issues, when using the equations in claim 21, which are the same as those in the instant specification, a calculation of the third elastic energy index Eelas3 from the data given in the examples in Table 1 of the instant specification fail to yield the recited result for the same example in Table 2 of the instant specification.
Regarding claim 22, claim 22 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 22. Rather, dimensional analysis of the given equation indication surface strength σ has units of mass3/(length5*time2*temperature). As such, there is ambiguity with respect to how surface strength is defined.
Moreover, because the thermal expansion coefficient introduces units of temperature, the above issues carry over into all parameters which rely on surface strength in their calculation. That is, for the third free volume index Vt3 to have temperature in its units as required of claim 22 (namely MPa4/m2.5*K3), at least one of the parameters for calculating the third free volume index Vt3 must cancel out the temperature provided by the surface strength σ. Otherwise, the third free volume index Vt3 would have K4 in its denominator for the units. However, this does not appear anywhere in claim 22.
As evidence of these issues, when using the equations in claim 22, which are the same as those in the instant specification, a calculation of the third free volume index Vt3 from the data given in the examples in Table 1 of the instant specification fail to yield the recited result for the same example in Table 2 of the instant specification.
Regarding claim 23, claim 23 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 23. Rather, dimensional analysis of the given equation indication surface strength σ has units of mass3/(length5*time2*temperature). As such, there is ambiguity with respect to how surface strength is defined.
Moreover, because the thermal expansion coefficient introduces units of temperature, the above issues carry over into all parameters which rely on surface strength in their calculation. That is, for the second elastic energy index Eelas2 to not have units of temperature as required of claim 23 (namely (kJ/m2)2), at least one of the parameters for calculating the second elastic energy index Eelas2 must cancel out the temperature provided by the surface strength σ. However, this does not appear anywhere in claim 23.
As evidence of these issues, when using the equations in claim 23, which are the same as those in the instant specification, a calculation of the second elastic energy index Eelas2 from the data given in the examples in Table 1 of the instant specification fail to yield the recited result for the same example in Table 2 of the instant specification.
Regarding claim 24, claim 24 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 24. Rather, dimensional analysis of the given equation indication surface strength σ has units of mass3/(length5*time2*temperature). As such, there is ambiguity with respect to how surface strength is defined.
Moreover, because the thermal expansion coefficient introduces units of temperature, the above issues carry over into all parameters which rely on surface strength in their calculation. That is, for the second free volume index Vt2 to have temperature in its units as required of claim 24 (namely (kJ/m2)2/K), at least one of the parameters for calculating the second free volume index Vt2 must cancel out the temperature provided by the surface strength σ. Otherwise, the second free volume index Vt2 would have K2 in its denominator for the units. However, this does not appear anywhere in claim 24.
As evidence of these issues, when using the equations in claim 24, which are the same as those in the instant specification, a calculation of the second free volume index Vt2 from the data given in the examples in Table 1 of the instant specification fail to yield the recited result for the same example in Table 2 of the instant specification.
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 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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 – 20 and 25 – 28 are rejected under 35 U.S.C. 103 as being unpatentable over Heiß (US 2019/0337845 A1) in view of Walther (US 2017/0183255 A1).
Regarding claim 1, Heiß discloses a glass article (“article” of a “transparent material”, e.g. “glass”: e.g. Fig. 1 – 7; ¶¶ [0010] – [0195]) having a thickness in a range of, e.g., 1 µm to 100 µm (e.g. ¶ [0028]), where the glass articles comprises SiO2, Al2O3, Na2O, Li2O, MgO, and ZrO2 (e.g. ¶¶ [0022], [0148]), wherein SiO2 forms the framework of the glass article (e.g. ¶ [0022]).
Although Heiß is not explicit as to the glass article having a third elastic energy index of 1.8 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, these features would have been obvious in view of Walther.
Walther discloses a thermal expansion coefficient α less than 10 x 10-6/K is advantageous for providing excellent thermal shock resistance (e.g. ¶¶ [0021], [0022], [0024], [0027], [0137]) to glass articles whose thickness is, e.g., 300 µm or less (e.g. ¶ [0023]). Walther further discloses their glass articles comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 (e.g. ¶¶ [0025], [0066] – [0081]), wherein SiO2 forms the framework of the glass article (e.g. ¶¶ [0025], [0066] – [0081]).
Walther discloses a high thermal expansion coefficient α and correspondingly low thermal shock resistance results in a high degree of self-breaking in glass articles (e.g. ¶¶ [0017], [0137]). Thus, Walther’s thermal expansion coefficient α is useful for reducing the amount of self-breaking in glass articles.
Therefore, it would have been obvious to modify Heiß’s glass article to have a thermal expansion coefficient α less than 10 x 10-6/K as Walther suggests, the motivation being to reduce self-breaking of the glass article.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I.
Heiß’s glass article as modified in view of Walther compares with the instant specification (particularly from the noted samples in Tables 1 and 2 of the instant specification: e.g. ¶¶ [00177] – [00203]) as follows:
Property
Heiß in view of Walther
Sample 1
Sample 2
Fracture toughness KIC (MPa·m0.5)
0.4 to 100, e.g. 0.8 to 5 (Heiß: e.g. ¶ [0120])
1.27
1.38
Poisson’s ratio ν
0.1 to 0.4, e.g. 0.18 to 0.32 (Heiß: e.g. ¶ [0024])
0.213
0.202
Young’s Modulus E (MPa)
40,000 to 110,000, e.g. 60,000 to 90,000 (Heiß: e.g. ¶ [0023])
85,000
80,000
Brittleness B (m-0.5)
0.1 to 20, e.g. 2 to 8 (Heiß: e.g. ¶ [0020])
5.26
4.85
Density ρ (g/cm3)
1 to 5, e.g. 2 to 4 (Heiß: e.g. ¶ [0025])
2.464
2.458
Thermal expansion coefficient α (10-7/K)
Less than 100 (Walther: e.g. ¶¶ [0021], [0022], [0024], [0027], [0137])
84
84
Thickness (µm)
1 µm to 100 µm (Walther: e.g. ¶ [0028])
50
50
Glass transition temperature Tg (K)
778-830 (Walther: Table 3, examples 1 - 4)
859.1
862.1
Here, the examiner observes that, for all properties other than Tg, Samples 1 and 2 of the instant specification fall within narrow ranges of Heiß and Walther. As to the Tg, Walther’s Tg’s are a range covered by their examples, so one of ordinary skill in the art would have expected there to be some breadth outside the disclosed ranges which would be close to the Tg’s of the samples in the instant specification. The examiner finds this reasonable in light of the breadth of Walther’s thermal expansion coefficient α range being broader than the thermal expansion coefficient α of the examples Walther provides.
Given Samples 1 and 2 of the instant specification respectively have a third elastic energy index Eelas3 of 2.365 and 2.533 MPa2/m0.5, the closeness with which Heiß and Walther disclose a glass article to the samples of the instant specification suggest a similar third elastic energy index Eelas3 would be present. Therefore, Heiß and Walther are considered sufficient to establish a prima facie case of obviousness with respect to claim 1.
Regarding claim 2, in addition to the limitations of claim 1, for similar reasons as discussed in the 35 U.S.C. 103 rejection of claim 1 in view of Heiß and Walther with respect to the third elastic energy index Eelas3, one of ordinary skill in the art would have expected the glass article to have 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, Heiß discloses the fracture energy index is 1.22 x 10-6 to 0.2475 MPa·m (using the values for the fracture toughness KIC, Poisson’s ratio ν, and Young’s modulus E as provided in the 35 U.S.C. 103 rejection of claim 1 according to the definition claimed: e.g. ¶¶ [0020], [0023], [0024]), i.e. 1.22 x 10-3 to 247.5 kJ/m2, which overlaps 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 4, in addition to the limitations of claim 3, for similar reasons as discussed in the 35 U.S.C. 103 rejection of claim 1 in view of Heiß and Walther with respect to the third elastic energy index Eelas3, one of ordinary skill in the art would have expected the glass article to have a first elastic energy index of 1.0 × 105 MPa/m1.5 or greater, wherein the first elastic energy index is defined by
First elastic energy index (Eelas1) = (1/B) × Eabs,
where B and Eabs are as defined in the 35 U.S.C. 103 rejection of claim 1 above.
Regarding claim 5, in addition to the limitations of claim 3, for similar reasons as discussed in the 35 U.S.C. 103 rejection of claim 1 in view of Heiß and Walther with respect to the third elastic energy index Eelas3, one of ordinary skill in the art would have expected the glass article to have a second elastic energy index of 5.0 x10-5 (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 35 U.S.C. 103 rejection of claim 1 above, and B and Eabs are as defined in the 35 U.S.C. 103 rejection of claim 1 above.
Regarding claim 6, Heiß discloses a glass article (“article” of a “transparent material”, e.g. “glass”: e.g. Fig. 1 – 7; ¶¶ [0010] – [0195]) having a thickness in a range of, e.g., 1 µm to 100 µm (e.g. ¶ [0028]), where the glass articles comprises SiO2, Al2O3, Na2O, Li2O, MgO, and ZrO2 (e.g. ¶¶ [0022], [0148]), wherein SiO2 forms the framework of the glass article (e.g. ¶ [0022]).
Although Heiß is not explicit as to the glass article having a third free volume index of 5×10-14 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-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,
wherein 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, these features would have been obvious in view of Walther.
Walther discloses a thermal expansion coefficient α less than 10 x 10-6/K is advantageous for providing excellent thermal shock resistance (e.g. ¶¶ [0021], [0022], [0024], [0027], [0137]) to glass articles whose thickness is, e.g., 300 µm or less (e.g. ¶ [0023]). Walther further discloses their glass articles comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 (e.g. ¶¶ [0025], [0066] – [0081]), wherein SiO2 forms the framework of the glass article (e.g. ¶¶ [0025], [0066] – [0081]).
Walther discloses a high thermal expansion coefficient α and correspondingly low thermal shock resistance results in a high degree of self-breaking in glass articles (e.g. ¶¶ [0017], [0137]). Thus, Walther’s thermal expansion coefficient α is useful for reducing the amount of self-breaking in glass articles.
Therefore, it would have been obvious to modify Heiß’s glass article to have a thermal expansion coefficient α less than 10 x 10-6/K as Walther suggests, the motivation being to reduce self-breaking of the glass article.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I.
Heiß’s glass article as modified in view of Walther compares with the instant specification (particularly from the noted samples in Tables 1 and 2 of the instant specification: e.g. ¶¶ [00177] – [00203]) as follows:
Property
Heiß in view of Walther
Sample 1
Sample 2
Fracture toughness KIC (MPa·m0.5)
0.4 to 100, e.g. 0.8 to 5 (Heiß: e.g. ¶ [0120])
1.27
1.38
Poisson’s ratio ν
0.1 to 0.4, e.g. 0.18 to 0.32 (Heiß: e.g. ¶ [0024])
0.213
0.202
Young’s Modulus E (MPa)
40,000 to 110,000, e.g. 60,000 to 90,000 (Heiß: e.g. ¶ [0023])
85,000
80,000
Brittleness B (m-0.5)
0.1 to 20, e.g. 2 to 8 (Heiß: e.g. ¶ [0020])
5.26
4.85
Density ρ (g/cm3)
1 to 5, e.g. 2 to 4 (Heiß: e.g. ¶ [0025])
2.464
2.458
Thermal expansion coefficient α (10-7/K)
Less than 100 (Walther: e.g. ¶¶ [0021], [0022], [0024], [0027], [0137])
84
84
Thickness (µm)
1 µm to 100 µm (Walther: e.g. ¶ [0028])
50
50
Glass transition temperature Tg (K)
778-830 (Walther: Table 3, examples 1 – 4)
859.1
862.1
Here, the examiner observes that, for all properties other than Tg, Samples 1 and 2 of the instant specification fall within narrow ranges of Heiß and Walther. As to the Tg, Walther’s Tg’s are a range covered by their examples, so one of ordinary skill in the art would have expected there to be some breadth outside the disclosed ranges which would be close to the Tg’s of the samples in the instant specification. The examiner finds this reasonable in light of the breadth of Walther’s thermal expansion coefficient α range being broader than the thermal expansion coefficient α of the examples Walther provides.
Given Samples 1 and 2 of the instant specification respectively have a third free volume index Vt3 of 8.4 × 10-14 and 9.6 × 10-14 MPa4/(m2.5×K3), the closeness with which Heiß and Walther disclose a glass article to the samples of the instant specification suggest a similar third free volume index Vt3 would be present. Therefore, Heiß and Walther are considered sufficient to establish a prima facie case of obviousness with respect to claim 6.
Regarding claim 7, in addition to the limitations of claim 6, for similar reasons as discussed in the 35 U.S.C. 103 rejection of claim 6 in view of Heiß and Walther with respect to the third free volume index Vt3, one of ordinary skill in the art would have expected the glass article to have 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 8, in addition to the limitations of claim 7, Heiß discloses the fracture energy index is 1.22 x 10-6 to 0.2475 MPa·m (using the values for the fracture toughness KIC, Poisson’s ratio ν, and Young’s modulus E as provided in the 35 U.S.C. 103 rejection of claim 6 according to the definition claimed: e.g. ¶¶ [0020], [0023], [0024]), i.e. 1.22 x 10-3 to 247.5 kJ/m2, which overlaps 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 9, in addition to the limitations of claim 8, the glass article Heiß and Walter discloses has a first free volume index of 0.0012 K-1 or greater, wherein the first free volume index is defined by:
First free volume index (Vt1)=1/Tg,
where 'Tg' is a glass transition temperature (noting the Tg’s Walther discloses: e.g. Table 3, examples 1 – 4).
Regarding claim 10, in addition to the limitations of claim 8, for similar reasons as discussed in the 35 U.S.C. 103 rejection of claim 8 in view of Heiß and Walther with respect to the third free volume index Vt3, one of ordinary skill in the art would have expected the glass article to have a second free volume index of 5 x108 (kJ/m2)2/K or greater, wherein the second free volume index is defined by:
Second free volume index (Vt2) = GIC×(1/B)6×Eabs×(1/Tg),
where Tg is a glass transition temperature, GIC is the fracture energy index defined in the 35 U.S.C. 103 rejection of claim 6 above, B is the brittleness, Eabs is the absorption energy, and σ is the surface strength.
Regarding claim 11, Heiß discloses a glass article (“article” of a “transparent material”, e.g. “glass”: e.g. Fig. 1 – 7; ¶¶ [0010] – [0195]) having a thickness in a range of, e.g., 1 µm to 100 µm (e.g. ¶ [0028]), where the glass articles comprises SiO2, Al2O3, Na2O, Li2O, MgO, and ZrO2 (e.g. ¶¶ [0022], [0148]), wherein SiO2 forms the framework of the glass article (e.g. ¶ [0022]).
Although Heiß is not explicit as to the glass article having a second elastic energy index of 5.0 x10-5 (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 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, these features would have been obvious in view of Walther.
Walther discloses a thermal expansion coefficient α less than 10 x 10-6/K is advantageous for providing excellent thermal shock resistance (e.g. ¶¶ [0021], [0022], [0024], [0027], [0137]) to glass articles whose thickness is, e.g., 300 µm or less (e.g. ¶ [0023]). Walther further discloses their glass articles comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 (e.g. ¶¶ [0025], [0066] – [0081]), wherein SiO2 forms the framework of the glass article (e.g. ¶¶ [0025], [0066] – [0081]).
Walther discloses a high thermal expansion coefficient α and correspondingly low thermal shock resistance results in a high degree of self-breaking in glass articles (e.g. ¶¶ [0017], [0137]). Thus, Walther’s thermal expansion coefficient α is useful for reducing the amount of self-breaking in glass articles.
Therefore, it would have been obvious to modify Heiß’s glass article to have a thermal expansion coefficient α less than 10 x 10-6/K as Walther suggests, the motivation being to reduce self-breaking of the glass article.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I.
Heiß’s glass article as modified in view of Walther compares with the instant specification (particularly from the noted samples in Tables 1 and 2 of the instant specification: e.g. ¶¶ [00177] – [00203]) as follows:
Property
Heiß in view of Walther
Sample 1
Sample 2
Fracture toughness KIC (MPa·m0.5)
0.4 to 100, e.g. 0.8 to 5 (Heiß: e.g. ¶ [0120])
1.27
1.38
Poisson’s ratio ν
0.1 to 0.4, e.g. 0.18 to 0.32 (Heiß: e.g. ¶ [0024])
0.213
0.202
Young’s Modulus E (MPa)
40,000 to 110,000, e.g. 60,000 to 90,000 (Heiß: e.g. ¶ [0023])
85,000
80,000
Brittleness B (m-0.5)
0.1 to 20, e.g. 2 to 8 (Heiß: e.g. ¶ [0020])
5.26
4.85
Density ρ (g/cm3)
1 to 5, e.g. 2 to 4 (Heiß: e.g. ¶ [0025])
2.464
2.458
Thermal expansion coefficient α (10-7/K)
Less than 100 (Walther: e.g. ¶¶ [0021], [0022], [0024], [0027], [0137])
84
84
Thickness (µm)
1 µm to 100 µm (Walther: e.g. ¶ [0028])
50
50
Glass transition temperature Tg (K)
778-830 (Walther: Table 3, examples 1 - 4)
859.1
862.1
Here, the examiner observes that, for all properties other than Tg, Samples 1 and 2 of the instant specification fall within narrow ranges of Heiß and Walther. As to the Tg, Walther’s Tg’s are a range covered by their examples, so one of ordinary skill in the art would have expected there to be some breadth outside the disclosed ranges which would be close to the Tg’s of the samples in the instant specification. The examiner finds this reasonable in light of the breadth of Walther’s thermal expansion coefficient α range being broader than the thermal expansion coefficient α of the examples Walther provides.
Given Samples 1 and 2 of the instant specification respectively have a second elastic energy index Eelas2 of 5.8 × 10-5 and 9.4 × 10-5 (kJ/m2)2, the closeness with which Heiß and Walther disclose a glass article to the samples of the instant specification suggest a similar second elastic energy index Eelas2 would be present. Therefore, Heiß and Walther are considered sufficient to establish a prima facie case of obviousness with respect to claim 11.
Regarding claim 12, in addition to the limitations of claim 11, for similar reasons as discussed in the 35 U.S.C. 103 rejection of claim 11 in view of Heiß and Walther with respect to the second elastic energy index Eelas2, one of ordinary skill in the art would have expected the glass article to have 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, Heiß discloses the fracture energy index is 1.22 x 10-6 to 0.2475 MPa·m (using the values for the fracture toughness KIC, Poisson’s ratio ν, and Young’s modulus E as provided in the 35 U.S.C. 103 rejection of claim 11 according to the definition claimed: e.g. ¶¶ [0020], [0023], [0024]), i.e. 1.22 x 10-3 to 247.5 kJ/m2, which overlaps 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 14, in addition to the limitations of claim 13, for similar reasons as discussed in the 35 U.S.C. 103 rejection of claim 11 in view of Heiß and Walther with respect to the second elastic energy index Eelas2, one of ordinary skill in the art would have expected the glass article to have a first elastic energy index of 1.0 × 105 MPa/m1.5 or greater, wherein the first elastic energy index is defined by
First elastic energy index (Eelas1) = (1/B) × Eabs,
where B and Eabs are as defined in the 35 U.S.C. 103 rejection of claim 11 above.
Regarding claim 15, in addition to the limitations of claim 13, for similar reasons as discussed in the 35 U.S.C. 103 rejection of claim 11 in view of Heiß and Walther with respect to the second elastic energy index Eelas2, one of ordinary skill in the art would have expected the glass article to have a third elastic energy index of 1.8 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 35 U.S.C. 103 rejection of claim 11 above, and B and Eabs are as defined in the 35 U.S.C. 103 rejection of claim 11 above.
Regarding claim 16, Heiß discloses a glass article (“article” of a “transparent material”, e.g. “glass”: e.g. Fig. 1 – 7; ¶¶ [0010] – [0195]) having a thickness in a range of, e.g., 1 µm to 100 µm (e.g. ¶ [0028]), where the glass articles comprises SiO2, Al2O3, Na2O, Li2O, MgO, and ZrO2 (e.g. ¶¶ [0022], [0148]), wherein SiO2 forms the framework of the glass article (e.g. ¶ [0022]).
Although Heiß is not explicit as to the glass article having a second free volume index of 5 x10-8 (kJ/m2)2/K or greater, wherein the second free volume index is defined by:
Second free volume index (Vt2) = GIC×(1/B)6×Eabs×(1/Tg),
where Tg is a glass transition temperature, and 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, these features would have been obvious in view of Walther.
Walther discloses a thermal expansion coefficient α less than 10 x 10-6/K is advantageous for providing excellent thermal shock resistance (e.g. ¶¶ [0021], [0022], [0024], [0027], [0137]) to glass articles whose thickness is, e.g., 300 µm or less (e.g. ¶ [0023]). Walther further discloses their glass articles comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 (e.g. ¶¶ [0025], [0066] – [0081]), wherein SiO2 forms the framework of the glass article (e.g. ¶¶ [0025], [0066] – [0081]).
Walther discloses a high thermal expansion coefficient α and correspondingly low thermal shock resistance results in a high degree of self-breaking in glass articles (e.g. ¶¶ [0017], [0137]). Thus, Walther’s thermal expansion coefficient α is useful for reducing the amount of self-breaking in glass articles.
Therefore, it would have been obvious to modify Heiß’s glass article to have a thermal expansion coefficient α less than 10 x 10-6/K as Walther suggests, the motivation being to reduce self-breaking of the glass article.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I.
Heiß’s glass article as modified in view of Walther compares with the instant specification (particularly from the noted samples in Tables 1 and 2 of the instant specification: e.g. ¶¶ [00177] – [00203]) as follows:
Property
Heiß in view of Walther
Sample 1
Sample 2
Fracture toughness KIC (MPa·m0.5)
0.4 to 100, e.g. 0.8 to 5 (Heiß: e.g. ¶ [0120])
1.27
1.38
Poisson’s ratio ν
0.1 to 0.4, e.g. 0.18 to 0.32 (Heiß: e.g. ¶ [0024])
0.213
0.202
Young’s Modulus E (MPa)
40,000 to 110,000, e.g. 60,000 to 90,000 (Heiß: e.g. ¶ [0023])
85,000
80,000
Brittleness B (m-0.5)
0.1 to 20, e.g. 2 to 8 (Heiß: e.g. ¶ [0020])
5.26
4.85
Density ρ (g/cm3)
1 to 5, e.g. 2 to 4 (Heiß: e.g. ¶ [0025])
2.464
2.458
Thermal expansion coefficient α (10-7/K)
Less than 100 (Walther: e.g. ¶¶ [0021], [0022], [0024], [0027], [0137])
84
84
Thickness (µm)
1 µm to 100 µm (Walther: e.g. ¶ [0028])
50
50
Glass transition temperature Tg (K)
778-830 (Walther: Table 3, examples 1 – 4)
859.1
862.1
Here, the examiner observes that, for all properties other than Tg, Samples 1 and 2 of the instant specification fall within narrow ranges of Heiß and Walther. As to the Tg, Walther’s Tg’s are a range covered by their examples, so one of ordinary skill in the art would have expected there to be some breadth outside the disclosed ranges which would be close to the Tg’s of the samples in the instant specification. The examiner finds this reasonable in light of the breadth of Walther’s thermal expansion coefficient α range being broader than the thermal expansion coefficient α of the examples Walther provides.
Given Samples 1 and 2 of the instant specification respectively have a second free volume index Vt2 of 6.8 × 10-8 and 11 × 10-8 (kJ/m2)2/K MPa4/(m2.5×K3), the closeness with which Heiß and Walther disclose a glass article to the samples of the instant specification suggest a similar second free volume index Vt2 would be present. Therefore, Heiß and Walther are considered sufficient to establish a prima facie case of obviousness with respect to claim 16.
Regarding claim 17, in addition to the limitations of claim 16, for similar reasons as discussed in the 35 U.S.C. 103 rejection of claim 16 in view of Heiß and Walther with respect to the second free volume index Vt2, one of ordinary skill in the art would have expected the glass article to have 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 18, in addition to the limitations of claim 17, Heiß discloses the fracture energy index is 1.22 x 10-6 to 0.2475 MPa·m (using the values for the fracture toughness KIC, Poisson’s ratio ν, and Young’s modulus E as provided in the 35 U.S.C. 103 rejection of claim 16 according to the definition claimed: e.g. ¶¶ [0020], [0023], [0024]), i.e. 1.22 x 10-3 to 247.5 kJ/m2, which overlaps 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 19, in addition to the limitations of claim 18, the glass article Heiß and Walter discloses has a first free volume index of 0.0012 K-1 or greater, wherein the first free volume index is defined by:
First free volume index (Vt1)=1/Tg,
where 'Tg' is a glass transition temperature (noting the Tg’s Walther discloses: e.g. Table 3, examples 1 – 4).
Regarding claim 20, in addition to the limitations of claim 18, for similar reasons as discussed in the 35 U.S.C. 103 rejection of claim 16 in view of Heiß and Walther with respect to the second free volume index Vt2, one of ordinary skill in the art would have expected the glass article to have a third free volume index of 5 x10-14 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 the fracture energy index defined in the 35 U.S.C. 103 rejection of claim 16 above, B is the brittleness, Eabs is the absorption energy, and σ is the surface strength.
Regarding claim 25, in addition to the limitations of claim 1, Heiß discloses the glass article is used for a cover window disposed on a display panel of the foldable display device (e.g. ¶¶ [0001] – [0009]).
Regarding claim 26, in addition to the limitations of claim 6, Heiß discloses the glass article is used for a cover window disposed on a display panel of the foldable display device (e.g. ¶¶ [0001] – [0009]).
Regarding claim 27, in addition to the limitations of claim 11, Heiß discloses the glass article is used for a cover window disposed on a display panel of the foldable display device (e.g. ¶¶ [0001] – [0009]).
Regarding claim 28, in addition to the limitations of claim 16, Heiß discloses the glass article is used for a cover window disposed on a display panel of the foldable display device (e.g. ¶¶ [0001] – [0009]).
Claims 21 – 24 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2021/0188700 A1) in view of Heiß and Walther.
Regarding claim 21, Lee discloses a display device (“display device”, e.g. “display device” 500: e.g. Fig. 1 – 13; ¶¶ [0001], [0005] – [0127]) comprising:
a display panel comprising a plurality of pixels (“display panel”, e.g. “display panel” 200, 500: e.g. Fig. 2; ¶¶ [0023], [0030], [0054], [0059] – [0063], [0120], [0121]);
a cover window disposed on the display panel (“cover window”, e.g. “cover window” 100: e.g. Fig. 1, 2; ¶¶ [0023], [0030], [0058], [0059], [0062], [0063], [0083], [0121]); and
an optically clear bonding layer disposed between the display panel and the cover window (“optically clear bonding layer”, e.g. “optically clear bonding layer” 300: e.g. Fig. 2; ¶¶ [0023], [0059], [0061], [0063]).
Although Lee is not explicit as to the cover window comprising a glass article having a thickness in a range of 20 µm to 100 µm, a fracture energy index of 150 kJ/m2 or greater, and a third elastic energy index of 1.8 MPa2/m0.5 or greater, and 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, these features would have been obvious in view of Heiß and Walther.
Heiß discloses a glass article (“article” of a “transparent material”, e.g. “glass”: e.g. Fig. 1 – 7; ¶¶ [0010] – [0195]) having a thickness in a range of, e.g., 1 µm to 100 µm (e.g. ¶ [0028]), where the glass article is a cover window for a display (e.g. ¶ [0001]) with increased life expectancy under load bending (e.g. ¶ [0010]), where the glass articles comprises SiO2, Al2O3, Na2O, Li2O, MgO, and ZrO2 (e.g. ¶¶ [0022], [0148]), wherein SiO2 forms the framework of the glass article (e.g. ¶ [0022]).
Walther discloses a thermal expansion coefficient α less than 10 x 10-6/K is advantageous for providing excellent thermal shock resistance (e.g. ¶¶ [0021], [0022], [0024], [0027], [0137]) to glass articles whose thickness is, e.g., 300 µm or less (e.g. ¶ [0023]). Walther further discloses their glass articles comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 (e.g. ¶¶ [0025], [0066] – [0081]), wherein SiO2 forms the framework of the glass article (e.g. ¶¶ [0025], [0066] – [0081]).
Walther discloses a high thermal expansion coefficient α and correspondingly low thermal shock resistance results in a high degree of self-breaking in glass articles (e.g. ¶¶ [0017], [0137]). Thus, Walther’s thermal expansion coefficient α is useful for reducing the amount of self-breaking in glass articles.
Therefore, it would have been obvious to modify Lee’s cover window to be a glass article with features as Heiß and Walther disclose, the motivation being to reduce self-breaking of the glass article, and to increase lifespan under bending loads. Given Lee’s cover window needs to bend (e.g. Fig. 1; ¶ [0056]), these modifications would have been considered reasonable.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I.
Heiß’s and Walther provides properties which are comparable with the instant specification (particularly from the noted samples in Tables 1 and 2 of the instant specification: e.g. ¶¶ [00177] – [00203]) as follows:
Property
Heiß in view of Walther
Sample 1
Sample 2
Fracture toughness KIC (MPa·m0.5)
0.4 to 100, e.g. 0.8 to 5 (Heiß: e.g. ¶ [0120])
1.27
1.38
Poisson’s ratio ν
0.1 to 0.4, e.g. 0.18 to 0.32 (Heiß: e.g. ¶ [0024])
0.213
0.202
Young’s Modulus E (MPa)
40,000 to 110,000, e.g. 60,000 to 90,000 (Heiß: e.g. ¶ [0023])
85,000
80,000
Brittleness B (m-0.5)
0.1 to 20, e.g. 2 to 8 (Heiß: e.g. ¶ [0020])
5.26
4.85
Density ρ (g/cm3)
1 to 5, e.g. 2 to 4 (Heiß: e.g. ¶ [0025])
2.464
2.458
Thermal expansion coefficient α (10-7/K)
Less than 100 (Walther: e.g. ¶¶ [0021], [0022], [0024], [0027], [0137])
84
84
Thickness (µm)
1 µm to 100 µm (Walther: e.g. ¶ [0028])
50
50
Glass transition temperature Tg (K)
778-830 (Walther: Table 3, examples 1 - 4)
859.1
862.1
Here, the examiner observes that, for all properties other than Tg, Samples 1 and 2 of the instant specification fall within narrow ranges of Heiß and Walther. As to the Tg, Walther’s Tg’s are a range covered by their examples, so one of ordinary skill in the art would have expected there to be some breadth outside the disclosed ranges which would be close to the Tg’s of the samples in the instant specification. The examiner finds this reasonable in light of the breadth of Walther’s thermal expansion coefficient α range being broader than the thermal expansion coefficient α of the examples Walther provides.
Given Samples 1 and 2 of the instant specification respectively have a third elastic energy index Eelas3 of 2.365 and 2.533 MPa2/m0.5, the closeness with which Heiß and Walther disclose a glass article to the samples of the instant specification suggest a similar third elastic energy index Eelas3 would be present.
Furthermore, Heiß discloses the fracture energy index is 1.22 x 10-6 to 0.2475 MPa·m (using the values for the fracture toughness KIC, Poisson’s ratio ν, and Young’s modulus E as provided in the 35 U.S.C. 103 rejection of claim 1 according to the definition claimed: e.g. ¶¶ [0020], [0023], [0024]), i.e. 1.22 x 10-3 to 247.5 kJ/m2, which overlaps the claimed range.
Therefore, Heiß and Walther are considered sufficient to establish a prima facie case of obviousness with respect to claim 21.
Regarding claim 22, Lee discloses a display device (“display device”, e.g. “display device” 500: e.g. Fig. 1 – 13; ¶¶ [0001], [0005] – [0127]) comprising:
a display panel comprising a plurality of pixels (“display panel”, e.g. “display panel” 200, 500: e.g. Fig. 2; ¶¶ [0023], [0030], [0054], [0059] – [0063], [0120], [0121]);
a cover window disposed on the display panel (“cover window”, e.g. “cover window” 100: e.g. Fig. 1, 2; ¶¶ [0023], [0030], [0058], [0059], [0062], [0063], [0083], [0121]); and
an optically clear bonding layer disposed between the display panel and the cover window (“optically clear bonding layer”, e.g. “optically clear bonding layer” 300: e.g. Fig. 2; ¶¶ [0023], [0059], [0061], [0063]).
Although Lee is not explicit as to the cover window comprising a glass article having a thickness in a range of 20 µm to 100 µm, a fracture energy index of 150 kJ/m2 or greater, and a fracture energy index of 150 kJ/m2 or greater, and a third free volume index of 5x10-14 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-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, these features would have been obvious in view of Heiß and Walther.
Heiß discloses a glass article (“article” of a “transparent material”, e.g. “glass”: e.g. Fig. 1 – 7; ¶¶ [0010] – [0195]) having a thickness in a range of, e.g., 1 µm to 100 µm (e.g. ¶ [0028]), where the glass article is a cover window for a display (e.g. ¶ [0001]) with increased life expectancy under load bending (e.g. ¶ [0010]), where the glass articles comprises SiO2, Al2O3, Na2O, Li2O, MgO, and ZrO2 (e.g. ¶¶ [0022], [0148]), wherein SiO2 forms the framework of the glass article (e.g. ¶ [0022]).
Walther discloses a thermal expansion coefficient α less than 10 x 10-6/K is advantageous for providing excellent thermal shock resistance (e.g. ¶¶ [0021], [0022], [0024], [0027], [0137]) to glass articles whose thickness is, e.g., 300 µm or less (e.g. ¶ [0023]). Walther further discloses their glass articles comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 (e.g. ¶¶ [0025], [0066] – [0081]), wherein SiO2 forms the framework of the glass article (e.g. ¶¶ [0025], [0066] – [0081]).
Walther discloses a high thermal expansion coefficient α and correspondingly low thermal shock resistance results in a high degree of self-breaking in glass articles (e.g. ¶¶ [0017], [0137]). Thus, Walther’s thermal expansion coefficient α is useful for reducing the amount of self-breaking in glass articles.
Therefore, it would have been obvious to modify Lee’s cover window to be a glass article with features as Heiß and Walther disclose, the motivation being to reduce self-breaking of the glass article, and to increase lifespan under bending loads. Given Lee’s cover window needs to bend (e.g. Fig. 1; ¶ [0056]), these modifications would have been considered reasonable.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I.
Heiß’s and Walther provides properties which are comparable with the instant specification (particularly from the noted samples in Tables 1 and 2 of the instant specification: e.g. ¶¶ [00177] – [00203]) as follows:
Property
Heiß in view of Walther
Sample 1
Sample 2
Fracture toughness KIC (MPa·m0.5)
0.4 to 100, e.g. 0.8 to 5 (Heiß: e.g. ¶ [0120])
1.27
1.38
Poisson’s ratio ν
0.1 to 0.4, e.g. 0.18 to 0.32 (Heiß: e.g. ¶ [0024])
0.213
0.202
Young’s Modulus E (MPa)
40,000 to 110,000, e.g. 60,000 to 90,000 (Heiß: e.g. ¶ [0023])
85,000
80,000
Brittleness B (m-0.5)
0.1 to 20, e.g. 2 to 8 (Heiß: e.g. ¶ [0020])
5.26
4.85
Density ρ (g/cm3)
1 to 5, e.g. 2 to 4 (Heiß: e.g. ¶ [0025])
2.464
2.458
Thermal expansion coefficient α (10-7/K)
Less than 100 (Walther: e.g. ¶¶ [0021], [0022], [0024], [0027], [0137])
84
84
Thickness (µm)
1 µm to 100 µm (Walther: e.g. ¶ [0028])
50
50
Glass transition temperature Tg (K)
778-830 (Walther: Table 3, examples 1 - 4)
859.1
862.1
Here, the examiner observes that, for all properties other than Tg, Samples 1 and 2 of the instant specification fall within narrow ranges of Heiß and Walther. As to the Tg, Walther’s Tg’s are a range covered by their examples, so one of ordinary skill in the art would have expected there to be some breadth outside the disclosed ranges which would be close to the Tg’s of the samples in the instant specification. The examiner finds this reasonable in light of the breadth of Walther’s thermal expansion coefficient α range being broader than the thermal expansion coefficient α of the examples Walther provides.
Given Samples 1 and 2 of the instant specification respectively have a third free volume index Vt3 of 8.4 × 10-14 and 9.6 × 10-14 MPa4/(m2.5×K3), the closeness with which Heiß and Walther disclose a glass article to the samples of the instant specification suggest a similar third free volume index Vt3 would be present.
Furthermore, Heiß discloses the fracture energy index is 1.22 x 10-6 to 0.2475 MPa·m (using the values for the fracture toughness KIC, Poisson’s ratio ν, and Young’s modulus E as provided in the 35 U.S.C. 103 rejection of claim 22 according to the definition claimed: e.g. ¶¶ [0020], [0023], [0024]), i.e. 1.22 x 10-3 to 247.5 kJ/m2, which overlaps the claimed range.
Therefore, Heiß and Walther are considered sufficient to establish a prima facie case of obviousness with respect to claim 22.
Regarding claim 23, Lee discloses a display device (“display device”, e.g. “display device” 500: e.g. Fig. 1 – 13; ¶¶ [0001], [0005] – [0127]) comprising:
a display panel comprising a plurality of pixels (“display panel”, e.g. “display panel” 200, 500: e.g. Fig. 2; ¶¶ [0023], [0030], [0054], [0059] – [0063], [0120], [0121]);
a cover window disposed on the display panel (“cover window”, e.g. “cover window” 100: e.g. Fig. 1, 2; ¶¶ [0023], [0030], [0058], [0059], [0062], [0063], [0083], [0121]); and
an optically clear bonding layer disposed between the display panel and the cover window (“optically clear bonding layer”, e.g. “optically clear bonding layer” 300: e.g. Fig. 2; ¶¶ [0023], [0059], [0061], [0063]).
Although Lee is not explicit as to the cover window comprising a glass article having a thickness in a range of 20 µm to 100 µm, a fracture energy index of 150 kJ/m2 or greater, and a fracture energy index of 150 kJ/m2 or greater, and a second elastic energy index Eelas2 of 5.0 × 10-5 (kJ/m2)2, 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-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, these features would have been obvious in view of Heiß and Walther.
Heiß discloses a glass article (“article” of a “transparent material”, e.g. “glass”: e.g. Fig. 1 – 7; ¶¶ [0010] – [0195]) having a thickness in a range of, e.g., 1 µm to 100 µm (e.g. ¶ [0028]), where the glass article is a cover window for a display (e.g. ¶ [0001]) with increased life expectancy under load bending (e.g. ¶ [0010]), where the glass articles comprises SiO2, Al2O3, Na2O, Li2O, MgO, and ZrO2 (e.g. ¶¶ [0022], [0148]), wherein SiO2 forms the framework of the glass article (e.g. ¶ [0022]).
Walther discloses a thermal expansion coefficient α less than 10 x 10-6/K is advantageous for providing excellent thermal shock resistance (e.g. ¶¶ [0021], [0022], [0024], [0027], [0137]) to glass articles whose thickness is, e.g., 300 µm or less (e.g. ¶ [0023]). Walther further discloses their glass articles comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 (e.g. ¶¶ [0025], [0066] – [0081]), wherein SiO2 forms the framework of the glass article (e.g. ¶¶ [0025], [0066] – [0081]).
Walther discloses a high thermal expansion coefficient α and correspondingly low thermal shock resistance results in a high degree of self-breaking in glass articles (e.g. ¶¶ [0017], [0137]). Thus, Walther’s thermal expansion coefficient α is useful for reducing the amount of self-breaking in glass articles.
Therefore, it would have been obvious to modify Lee’s cover window to be a glass article with features as Heiß and Walther disclose, the motivation being to reduce self-breaking of the glass article, and to increase lifespan under bending loads. Given Lee’s cover window needs to bend (e.g. Fig. 1; ¶ [0056]), these modifications would have been considered reasonable.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I.
Heiß’s and Walther provides properties which are comparable with the instant specification (particularly from the noted samples in Tables 1 and 2 of the instant specification: e.g. ¶¶ [00177] – [00203]) as follows:
Property
Heiß in view of Walther
Sample 1
Sample 2
Fracture toughness KIC (MPa·m0.5)
0.4 to 100, e.g. 0.8 to 5 (Heiß: e.g. ¶ [0120])
1.27
1.38
Poisson’s ratio ν
0.1 to 0.4, e.g. 0.18 to 0.32 (Heiß: e.g. ¶ [0024])
0.213
0.202
Young’s Modulus E (MPa)
40,000 to 110,000, e.g. 60,000 to 90,000 (Heiß: e.g. ¶ [0023])
85,000
80,000
Brittleness B (m-0.5)
0.1 to 20, e.g. 2 to 8 (Heiß: e.g. ¶ [0020])
5.26
4.85
Density ρ (g/cm3)
1 to 5, e.g. 2 to 4 (Heiß: e.g. ¶ [0025])
2.464
2.458
Thermal expansion coefficient α (10-7/K)
Less than 100 (Walther: e.g. ¶¶ [0021], [0022], [0024], [0027], [0137])
84
84
Thickness (µm)
1 µm to 100 µm (Walther: e.g. ¶ [0028])
50
50
Glass transition temperature Tg (K)
778-830 (Walther: Table 3, examples 1 - 4)
859.1
862.1
Here, the examiner observes that, for all properties other than Tg, Samples 1 and 2 of the instant specification fall within narrow ranges of Heiß and Walther. As to the Tg, Walther’s Tg’s are a range covered by their examples, so one of ordinary skill in the art would have expected there to be some breadth outside the disclosed ranges which would be close to the Tg’s of the samples in the instant specification. The examiner finds this reasonable in light of the breadth of Walther’s thermal expansion coefficient α range being broader than the thermal expansion coefficient α of the examples Walther provides.
Given Samples 1 and 2 of the instant specification respectively have second elastic energy index Eelas2 of 5.8 × 10-5 and 9.4 × 10-5 (kJ/m2)2, the closeness with which Heiß and Walther disclose a glass article to the samples of the instant specification suggest a similar second elastic energy index Eelas2 would be present.
Furthermore, Heiß discloses the fracture energy index is 1.22 x 10-6 to 0.2475 MPa·m (using the values for the fracture toughness KIC, Poisson’s ratio ν, and Young’s modulus E as provided in the 35 U.S.C. 103 rejection of claim 22 according to the definition claimed: e.g. ¶¶ [0020], [0023], [0024]), i.e. 1.22 x 10-3 to 247.5 kJ/m2, which overlaps the claimed range.
Therefore, Heiß and Walther are considered sufficient to establish a prima facie case of obviousness with respect to claim 23.
Regarding claim 24, Lee discloses a display device (“display device”, e.g. “display device” 500: e.g. Fig. 1 – 13; ¶¶ [0001], [0005] – [0127]) comprising:
a display panel comprising a plurality of pixels (“display panel”, e.g. “display panel” 200, 500: e.g. Fig. 2; ¶¶ [0023], [0030], [0054], [0059] – [0063], [0120], [0121]);
a cover window disposed on the display panel (“cover window”, e.g. “cover window” 100: e.g. Fig. 1, 2; ¶¶ [0023], [0030], [0058], [0059], [0062], [0063], [0083], [0121]); and
an optically clear bonding layer disposed between the display panel and the cover window (“optically clear bonding layer”, e.g. “optically clear bonding layer” 300: e.g. Fig. 2; ¶¶ [0023], [0059], [0061], [0063]).
Although Lee is not explicit as to the cover window comprising a glass article having a thickness in a range of 20 µm to 100 µm, a fracture energy index of 150 kJ/m2 or greater, and a fracture energy index of 150 kJ/m2 or greater, and a second free volume index Vt2 of 5 × 10-8 (kJ/m2)2/K or greater, wherein the second free volume index is defined by
Second free volume index (Vt2) = GIC×(1/B)6×Eabs×(1/Tg),
where Tg is a glass transition temperature, and 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, these features would have been obvious in view of Heiß and Walther.
Heiß discloses a glass article (“article” of a “transparent material”, e.g. “glass”: e.g. Fig. 1 – 7; ¶¶ [0010] – [0195]) having a thickness in a range of, e.g., 1 µm to 100 µm (e.g. ¶ [0028]), where the glass article is a cover window for a display (e.g. ¶ [0001]) with increased life expectancy under load bending (e.g. ¶ [0010]), where the glass articles comprises SiO2, Al2O3, Na2O, Li2O, MgO, and ZrO2 (e.g. ¶¶ [0022], [0148]), wherein SiO2 forms the framework of the glass article (e.g. ¶ [0022]).
Walther discloses a thermal expansion coefficient α less than 10 x 10-6/K is advantageous for providing excellent thermal shock resistance (e.g. ¶¶ [0021], [0022], [0024], [0027], [0137]) to glass articles whose thickness is, e.g., 300 µm or less (e.g. ¶ [0023]). Walther further discloses their glass articles comprises SiO2, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 (e.g. ¶¶ [0025], [0066] – [0081]), wherein SiO2 forms the framework of the glass article (e.g. ¶¶ [0025], [0066] – [0081]).
Walther discloses a high thermal expansion coefficient α and correspondingly low thermal shock resistance results in a high degree of self-breaking in glass articles (e.g. ¶¶ [0017], [0137]). Thus, Walther’s thermal expansion coefficient α is useful for reducing the amount of self-breaking in glass articles.
Therefore, it would have been obvious to modify Lee’s cover window to be a glass article with features as Heiß and Walther disclose, the motivation being to reduce self-breaking of the glass article, and to increase lifespan under bending loads. Given Lee’s cover window needs to bend (e.g. Fig. 1; ¶ [0056]), these modifications would have been considered reasonable.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I.
Heiß’s and Walther provides properties which are comparable with the instant specification (particularly from the noted samples in Tables 1 and 2 of the instant specification: e.g. ¶¶ [00177] – [00203]) as follows:
Property
Heiß in view of Walther
Sample 1
Sample 2
Fracture toughness KIC (MPa·m0.5)
0.4 to 100, e.g. 0.8 to 5 (Heiß: e.g. ¶ [0120])
1.27
1.38
Poisson’s ratio ν
0.1 to 0.4, e.g. 0.18 to 0.32 (Heiß: e.g. ¶ [0024])
0.213
0.202
Young’s Modulus E (MPa)
40,000 to 110,000, e.g. 60,000 to 90,000 (Heiß: e.g. ¶ [0023])
85,000
80,000
Brittleness B (m-0.5)
0.1 to 20, e.g. 2 to 8 (Heiß: e.g. ¶ [0020])
5.26
4.85
Density ρ (g/cm3)
1 to 5, e.g. 2 to 4 (Heiß: e.g. ¶ [0025])
2.464
2.458
Thermal expansion coefficient α (10-7/K)
Less than 100 (Walther: e.g. ¶¶ [0021], [0022], [0024], [0027], [0137])
84
84
Thickness (µm)
1 µm to 100 µm (Walther: e.g. ¶ [0028])
50
50
Glass transition temperature Tg (K)
778-830 (Walther: Table 3, examples 1 - 4)
859.1
862.1
Here, the examiner observes that, for all properties other than Tg, Samples 1 and 2 of the instant specification fall within narrow ranges of Heiß and Walther. As to the Tg, Walther’s Tg’s are a range covered by their examples, so one of ordinary skill in the art would have expected there to be some breadth outside the disclosed ranges which would be close to the Tg’s of the samples in the instant specification. The examiner finds this reasonable in light of the breadth of Walther’s thermal expansion coefficient α range being broader than the thermal expansion coefficient α of the examples Walther provides.
Given Samples 1 and 2 of the instant specification respectively have a second free volume index Vt2 of 6.8 × 10-8 and 11 × 10-8 (kJ/m2)2/K MPa4/(m2.5×K3), the closeness with which Heiß and Walther disclose a glass article to the samples of the instant specification suggest a similar second free volume index Vt2 would be present. Furthermore, Heiß discloses the fracture energy index is 1.22 x 10-6 to 0.2475 MPa·m (using the values for the fracture toughness KIC, Poisson’s ratio ν, and Young’s modulus E as provided in the 35 U.S.C. 103 rejection of claim 22 according to the definition claimed: e.g. ¶¶ [0020], [0023], [0024]), i.e. 1.22 x 10-3 to 247.5 kJ/m2, which overlaps the claimed range.
Therefore, Heiß and Walther are considered sufficient to establish a prima facie case of obviousness with respect to claim 24.
Response to Arguments
The examiner acknowledges Applicant’s request that the double patenting rejections in view of copending application 18/629,930 be held in abeyance, see p. 11 of the Remarks filed 16 June 2026, and presents no arguments as to the merits of these rejections. These rejections are accordingly maintained herein to the extent consistent with the amendments considered herein.
Applicant’s arguments, see pp. 11 – 13, filed 16 June 2026, with respect to the rejections of claims 1 – 28 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for failing to comply with the enablement requirement have been fully considered but they are not persuasive.
Applicant asserts the claims now require a glass article comprising in, relevant part, SiO2 as a framework, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2 consistent with ¶¶ [00119] – [00126] of the instant specification. Applicant further asserts the methods for manufacturing in ¶¶ [00177] – [00203] of the instant specification indicate how one of ordinary skill in the art would have been able to obtain glass articles with the claimed properties.
The examiner respectfully disagrees.
As noted in the Office Action mailed 17 December 2025, Applicant references ¶¶ [00119] – [00126] of the instant specification for their disclosure of compositions useful to making glass articles and ¶¶ [00177] – [00203] for the processes of making the glass articles. However, as explained in the rejections, the instant specification only provides a qualitative assessment of how various oxides impact the properties of glass. The examiner adds that no quantities are mentioned for the amounts of the oxides in the general specification or in the examples. At best, the claims and the instant specification only require the recited species to be present. Therefore, even though some processes may be disclosed for how to treat glass compositions, no direction is given with regards to starting compositions from which would enable one of ordinary skill in the art to arrive at the claimed invention without high difficulty.
Accordingly, the enablement rejections are maintained.
Applicant’s arguments, see pp. 13 – 15, filed 16 June 2026, with respect to the rejections of claims 1 – 28 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite have been fully considered but they are not persuasive.
Applicant asserts that because the surface strength σ can be easily calculated, any properties defined thereby are likewise readily determined.
As noted in the rejections, surface strength σ is calculated from the equation
σ
=
E
α
ρ
2
1
-
ν
Dimensional analysis of this equation indicates that surface strength has units of:
M
P
a
×
1
K
×
g
c
m
3
2
1
However, the equations required in the claims require surface strength σ to have units of (MPa/m)2, as is written in ¶ [00159] of the instant specification, particularly as is needed in order to determine other properties throughout the claims. It is this inconsistency in the units for surface strength which causes the claims to be indefinite as the equations would need some sort of correction factor which is not present. This issue is confirmed when conferring the examples in Tables 1 and 2 of the instant specification. The values listed in Table 2 of the instant specification in the columns Equations 2-1, 2-2, 2-3, 3-1, 3-2, and 3-3 are not the same as those which would be calculated using the equations using the data provided in Table 1 of the instant specification.
Thus, the indefiniteness rejections are maintained.
Applicant’s arguments, see pp. 12 – 14, filed 25 September 2025, with respect to the rejections of claims 1 – 28 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
Applicant asserts Heiß and Walther do not teach the equations as recited in the claims. Applicant further asserts would not know how to compute the desired values of the various parameters defined throughout the claims.
However, as noted in the rejections, Walther enumerates values for properties of glass articles which are highly comparable to those in the instant specification which have the claimed values and therefore would have been expected to exhibit the same properties. This is further supported—contrary to Applicant’s assertion where neither Heiβ nor Walther teach the glass articles comprising SiO2 as a framework, Al2O3, Na2O, Li2O, CaO or MgO, and ZrO2—in view of both Heiβ and Walther teaching compositions overlapping those of the claims. Accordingly, a prima facie case of obviousness is properly established in of Walther’s suggested modifications.
Moreover, MPEP § 2145, II, states the following, in relevant part, regarding arguing latent properties:
Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) "would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art." 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness. However, the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.).
"The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed that an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) ("The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention.").
In light of Walther’s disclosures, it is thus observed that Applicant’s arguments rely on the claimed equations being an asserted novel and nonobvious manner of assessing a prior art glass article. This is not the same as the glass articles themselves being novel and nonobvious. As such, any new manner of characterizing such glass articles does not change that which is already known or obvious.
Therefore, the rejections under 35 U.S.C. 103 are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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