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 .
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.
Claim(s) 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2018/0127305) in view of Inaka et al. (US 2020/0087196).
Regarding claims 1, 3 Li discloses glass composition as described herein can include 50 to 55 weight percent SiO.sub.2, 17 to 26 weight percent B.sub.2O.sub.3, 13 to 19 weight percent Al.sub.2O.sub.3, 0-8.5 weight percent of MgO, 0 to 6 weight percent CaO, 0 to 1.5 weight percent Li.sub.2O, 0 to 1.5 weight percent F.sub.2, 0 to 1 weight percent Na.sub.2O, and 0 to 8 weight percent of other constituents. Also described herein are glass fibers formed from such compositions (abstract).
However, Li fails to disclose that the glass fiber composition comprises SnO2 in an amount of 0.05-0.5% and the claimed mass percentage content of SnO2 and Li2O and mass percentage content of F2 and SnO2.
Whereas, Inaka discloses glass composition of the present disclosure includes, in wt %, 50≤SiO.sub.2≤56, 20≤B.sub.2O.sub.3≤30, 10≤Al.sub.2O.sub.3≤20, 3.5≤MgO+CaO≤10, and 0≤R.sub.2O≤1.0 (abstract). The glass composition of the present disclosure may contain, as an additive, at least one selected from SnO.sub.2, provided that the content of each of these additives is 0% or more and 1% or less (para 0075).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include SnO2 in an amount of 0-1 wt% as taught by Inaka in the glass fiber composition of Li motivated by the desire to have increase electrical performance and enhances thermal stability.
Thus, based from the disclosure of Li and Inaka, if the amount of SnO2 and Li2O is 0.5-1 wt%, it would intrinsically satisfy the claimed range for SnO2/Li2O and if the amount of SnO2 and F2 is 0.5-1 wt%, it would intrinsically satisfy the claimed range of F2/SnO2.
As Li in view of Inaka discloses glass fiber composition with contents as claimed, therefore the glass fiber composition would intrinsically have low dielectric loss.
Claim(s) 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2018/0127305) in view of Inaka et al. (US 2020/0087196) as applied to claim 1, further in view of Hausrath et al. (US 2020/0216351).
Regarding claims 2, 4 Li in view of Inaka fails to disclose that the glass fiber composition further discloses P2O5 in an amount of 0.05-5 wt% and mass percentage content of P2O5, F2 and SnO2 in a range of 2-5.
Whereas, Hausrath discloses glass compositions and glass fibers having low dielectric constants and low dissipation factors that may be suitable for use in electronic applications and articles are disclosed. The glass fibers and compositions of the present invention may include between 48.0 to 57.0 weight percent SiO.sub.2; between 15.0 and 26.0 weight percent B.sub.2O.sub.3; between 12.0 and 18.0 weight percent Al.sub.2O.sub.3; between greater than 3.0 and 8.0 weight percent P.sub.2O.sub.5; between greater than 0.25 and 7.00 weight percent CaO (abstract). The glass fiber of the present invention typically also includes a composition having between greater than 3 and 8 weight percent phosphorus oxide (P.sub.2O.sub.5, also referred to as phosphorous pentoxide). Alternatively, the phosphorous oxide content may be between greater than 3 and 7.5 weight percent. Further alternatively, the phosphorous oxide content may be between greater than 3 and 7 weight percent. The inventors surprisingly found that this range is optimal for balancing the Df behavior with the T.sub.liq and melt instability index. More specifically, P.sub.2O.sub.5 was found to synergistically associate with the Al.sub.2O.sub.3 content of the glass, thereby decreasing the melt stability (para 0062).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include P2O5 in an amount 3-8 wt% as taught by Hausrath in the glass fiber composition of Li motivated by the desire for balancing the Df behavior and melt instability index.
Thus, based from the disclosure of Li, Inaka and Hausrath if the amount of SnO2, F2 and P2O5 are in claimed range as disclosed above it would intrinsically satisfy the claimed mass percentage range.
Thus, based from the disclosure of Li and Inaka, if the amount of SnO2 and Li2O is 0.5-1 wt%, it would intrinsically satisfy the claimed range for SnO2/Li2O and if the amount of SnO2 and F2 is 0.5-1 wt%, it would intrinsically satisfy the claimed range of F2/SnO2.
Response to Arguments
Applicant argues that Inaka, in paragraph [0075], discloses that "the glass composition may contain at least one additive selected from SnO₂, provided that the respective content of these additives is above 0% and not more than 1%". However, the core principle and function of SnO₂ disclosed in Inaka is as an auxiliary additive, primarily serving to aid clarification, while its achievement of low dielectric constant relies mainly on the major constituents such as SiO₂, B₂O₃, and Al₂O₃. Moreover, Inaka explicitly seeks a technical solution that is free of F₂ (see Inaka, paragraph [0091]: "The glass composition of the present disclosure may be a composition substantially free of F2").The core principle and function of SnO₂ in the present application differ from those in Inaka.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Applicant argues that a person skilled in the art, starting from Li, would recognize that Li's composition already contains F2. When confronted with Inaka, since Inaka explicitly teaches that "the glass composition may be substantially free of F2" (Inaka, [0091]), the skilled artisan would have no motivation to add SnO₂ from Inaka into Li's F2-containing composition. On the contrary, Inaka's teaching would likely prompt the skilled person to remove F₂ from Li in order to align with Inaka's preferred approach-directly contradicting the present invention's core concept of retaining and leveraging the synergistic interaction between F₂ and SnO₂. Therefore, even though Inaka discloses SnO₂, a person skilled in the art would have no motivation to incorporate SnO₂ into Li to arrive at the specific SnO₂-containing composition claimed in the present application.
However, Inara is only used as teaching reference in order to teach to include SnO2 in an amount of 0-1 wt%. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Applicant argues that Although Inaka, in paragraph [0047], mentions that R₂O (where R is Li, Na, or K) is limited to M 1.0 wt%, and in its examples specifically employs approximately 0.3 wt% of Na₂O + Li₂O, Inaka never teaches the need to strictly control the total content of K₂O + Na₂O to ≤ 0.05 wt%. More critically, paragraph [0095] of Inaka explicitly lists components that may be "substantially free" of, including P₂O₅ and F₂, but makes no suggestion to reduce K2O + Na₂O to such an extremely low level.
However, Inara is only used as teaching reference in order to teach to include SnO2 in an amount of 0-1 wt%. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Applicant argues that while a person skilled in the art may have a general motivation to reduce alkali metal oxides in pursuit of lower dielectric loss, there is a substantial difference between merely "reducing" their content and precisely controlling the total K2O + Na₂O to an extremely low limit of <0.05 wt%. No prior art reference provides any teaching or suggestion that it is necessary to restrict K2O + Na₂O to such a minimal threshold in order to balance the reduction of dielectric loss with the maintenance of adequate glass meltability. Therefore, this distinguishing feature cannot be arrived at through simple optimization.
However, it should be noted that as Li in view of Inara discloses K2O and Na2O in claimed amounts as presently claimed, it would be obvious that restriction in claimed amount would intrinsically have the properties of to balance the reduction of dielectric loss with the maintenance of adequate glass meltability.
Applicant argues that Li discloses a broad range for Li₂O (0-1.5 wt%), Li does not mention SnO₂ at all; therefore, it is impossible for Li to disclose the SnO₂/Li₂O ratio. Although Inaka separately discloses the content ranges for SnO₂ (0-1 wt%) and Li₂O (0.1-0.5 wt%), its disclosed examples actually contain 0 wt% of SnO₂ (see Table 1 in D2). Thus, Inaka neither discloses nor teaches the necessity of controlling a specific stoichiometric ratio between SnO₂ and Li₂O to achieve a synergistic effect.
However, it should be noted that as Li in view of Inara discloses Li2O and SnO2 in claimed amounts as presently claimed, it would be obvious, absent evidence to the contrary that restriction in claimed amount would intrinsically have the properties of synergistic effect and achieving optical composite clarification.
Applicant argues that specification of the present application discloses a distinct synergistic interaction between F₂ and SnO₂: "F2 is dispersed around SnO₂, to forming the Sn-F bond that works together with Si-F, B-F, and Al-F to further reduce the melting temperature, viscosity, and surface tension of the glass". By precisely controlling the F2/SnO₂ ratio within the range of 1-5, the present invention enables the formation of Sn-F bonds that cooperatively enhance the effects of other fluorine-based bonds (Si-F, B-F, A1-F), thereby achieving comprehensive optimization of the glass's physical properties-including reduced melting temperature, lower viscosity, and minimized surface tension-critical for high-quality fiber drawing and bubble-free manufacturing.
However, it should be noted that as Li in view of Inara discloses F2 and SnO2 in claimed amounts as presently claimed, it would be obvious, absent evidence to the contrary that restriction in claimed amount would intrinsically have the claimed properties.
Applicant argues that Inaka's explicit teaching that the glass composition "may be a composition substantially free of F2", a person skilled in the art would have a strong and reasonable basis to conclude that Inaka's inventive principle fundamentally relies on avoiding the use of F₂.
However, Inara is only used as teaching reference in order to teach to include SnO2 in an amount of 0-1 wt%. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Applicant argues that the significant technical advancement is shown in the direct evidence from Comparative Examples. Comparative Examples 1-3 demonstrate that even when all other compositional ranges fall within the disclosures of Li and Inaka, deviation from the critical SnO₂/Li₂O ratio (e.g., 5.00 in Comparative Example 1) or the F₂/SnO₂ ratio (e.g., 6.00 in Comparative Example 3) results in significantly degraded performance: dielectric losses rise to 0.0028-0.0035 and bubble counts increase to 10-25 per 10 g-far exceeding the performance of the embodiments (loss: 0.0013- 0.0018; bubbles: 0). This unambiguously proves that the claimed ratio ranges produce synergistic effects far beyond what would be expected from routine optimization or simple combination of Li and Inaka.
However, it should be noted that data is not persuasive, given that claimed range of SnO2 is 0.05-0.5, whereas comparative example 1 does disclose SnO2 present in an amount of 0.5, so it is not clear how the range is critical, further the combined range of Li2O and SO2 based on the teaching of Li and Inaka is less than 3 wt% which is upper range. Li discloses 0 to 1.5 weight percent Li.sub.2O and Inaka discloses 0-1 wt% of SnO2. Thus, when the combination of Li2O and SnO2 would have the range less than 3 wt% as presently claimed and thus, it would intrinsically have the properties as mentioned by the Applicant above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
