DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election with traverse of Group 1, Claims 1-3, filed on 5/27/2026 is acknowledged. First of all, claims 4-5 are independent claims. Although claims 4-5 refer back to claim 1, they are drawn to different inventions from claim 1. Claims 4-5 incorporating claim 1 by reference is to avoid repetition of limitations already recited in claim 1. Secondly, the applicant asserts that the glass composition is a common subject matter. By the same reasoning, a silicon atom may also be regarded as a common subject matter, as both serve as shared elements underlying the claimed subject matter.
The other traversal is on the ground that the restriction is only proper if there would be a serious burden placed on the Examiner if restriction is not required. This is not found persuasive because for PCT national stage applications, restriction is based upon unity of invention; restriction of a national stage application does not take into account whether or not the inventions are independent or distinct, and does not take into account burden on the examiner.
Therefore, the restriction requirement based on the lack of unity analysis is still deemed proper and is made final. Accordingly, claims 4-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/27/2026.
Claim Rejections - 35 USC § 112
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 1-3 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The formula in claims 1-3 are incorrect because the value B could be zero.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al (US 2006/0166805).
Li teaches a glass fiber composition comprising 53.78 wt% of SiO2 (SI), 5.62 wt% of B2O3 (B), Al2O3 13.67wt%, CaO 23.81wt%, TiO2 0.61wt% (T), P2O5 0%, ZnO 0% (Z), SO3 0.06% (SO), Li2O 0%, Na2O 0.42%, K2O 0.09% (example 1). For this composition, the claimed formula has a value of 11.79.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No.11,884,586. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘586 claims a glass composition comprising: SiO2 in a range of 45.60 to 59.00% by mass, Al2O3 in a range of 10.00 to 16.00% by mass, CaO in a range of 17.00 to 25.00% by mass, TiO2 in a range of 0.01 to 9.50% by mass, P2O5 in a range of 0.03 to 7.00% by mass, ZnO in a range of 0.00 to 9.50% by mass, SO3 in a range of 0.00 to 2.00% by mass, ZnO and SO3 in a range of 0.01 to 11.50% by mass in total, and Na2O, K 2 O, and Li2O in a range of 0.00 to 2.00% by mass in total, with respect to the total amount of the glass composition for glass fiber. The contents would satisfy the claimed formula. For the difference on the content of P2O5, case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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