DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art, relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of the Claims
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Claims 1-11 are currently pending.
Claims 1-11 are currently rejected.
Claims 1, 3, and 5-11 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Tsujimura et al., U.S. Patent Application Publication, US 2013/0288877 A1.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Tsujimura et al., U.S. Patent Application Publication, US 2013/0288877 A1.
Claims 1-4 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga et al., U.S. Patent Application Publication US 2020/0407265 A1.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Saito, U.S. Patent Application Publication US 2018/0086660 A1.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Saito, U.S. Patent Application Publication US 2018/0086660 A1 in view of Tokunaga et al., U.S. Patent Application Publication US 2014/0366581 A1.
Claims 1-11 rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga et al., U.S. Patent Application Publication US 2014/0366581 A1.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,441,653 B2.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-9 of copending Application No. 17/920,962.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/708,829.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Receipt is acknowledged of the International Application PCT/JP2022/019704. A Notice of Acceptance of Application under 35 U.S.C. 371 and 37 CFR 1.495 was mailed 9 May 2024.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted 7 April 2026, 8 April 2026, 19 May 2026, and 1 July 2026 have been considered by the Examiner.
Drawings
The original drawings received on 9 November 2023 are accepted by the Examiner.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, and 5-11 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Tsujimura et al., U.S. Patent Application Publication, US 2013/0288877 A1.
Tsujimura et al. disclose an alkali-free glass comprising in terms of mole percentages, 66-69% SiO2, 12-15% of Al2O3, 0-1.5% of B2O3, 6-9.5% of MgO, 7-9% of CaO, 0.5-3% of SrO, 0-1% of BaO, 0-2% of ZrO2, 0-5% of ZnO, Fe2O3, SO3, F, Cl, and SnO2. See Abstract and the entire specification, specifically, paragraphs [0017], [0023]-[0030], and [0037]. Tsujimura et al. disclose that the alkali-free glass has a Young’s modulus of at least 84 GPa, preferably at least 90 GPa. See paragraph [0049]. Tsujimura et al. disclose that the alkali-free glass has a strain temperature of at least 735°C, preferably at least 740°C. See paragraphs [0017] and [0039]. Tsujimura et al. disclose that the alkali-free glass has a coefficient of thermal expansion in the range of 30 x 10-7 to 40 x 10-7/°C. See paragraphs [0017] and [0042]. Tsujimura et al. disclose that the alkali-free glass is used for various displays including organic EL displays. See paragraphs [0039] and [0076]. Tsujimura et al. disclose that the alkali-free glass is used for substrates including those with metal or oxide thin films. See paragraphs [0002], [0022], and [0082]. The compositional ranges of Tsujimura et al. are sufficiently specific to anticipate the alkali-free glass composition as recited in claims 1, 3, and 5-11. See MPEP 2131.03.
Specifically, as to claim 1, Tsujimura et al. disclose Example 6 (see Table 1), which reads on an alkali free glass comprising in terms of mole percentages, 64-72% of SiO2, 12-16% of Al2O3, 0-1.1% of B2O3, 0-0.5% of Li2O+Na2O+K2O, 6-12% of MgO, 3-<9% of CaO, >0-1.8% of SrO, 0-1% of BaO, and a mol% ratio of SrO/CaO of 0-0.2 and a mol% ratio of (MgO+CaO+SrO+BaO) x CaO/(SiO2 x MgO) of 0-0.3 and a mol% of (B2O3+SrO+BaO)/Al2O3 of 0.001-0.069, and having a strain point of 730 °C or more, as recited in instant claim 1.
As to claim 3, Tsujimura et al. disclose Example 6 (see Table 1), which reads on an alkali-free glass which does not substantially contain As2O3 and Sb2O3, as recited in instant claim 3.
As to claim 5, Tsujimura et al. disclose Example 6 (see Table 1), which reads on an alkali-free glass having a Young’s modulus of at least 83 GPa, as recited in instant claim 5.
As to claim 5, since the composition of the reference is the same as those claimed herein it follows that the glasses of Tsujimura et al. would inherently possess a liquidus temperature of at most 1350 °C, as recited in claim 5. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 6, Tsujimura et al. disclose Example 6 (see Table 1), which reads on an alkali-free glass having a strain point of at most 735°C, as recited in instant claim 6.
As to claim 7, Tsujimura et al. disclose Example 6 (see Table 1), which reads on an alkali-free glass having a Young’s modulus of greater than 84 GPa, as recited in instant claim 7.
As to claim 8, Tsujimura et al. disclose Example 6 (see Table 1), which reads on an alkali-free glass having a coefficient of thermal expansion of 30 x 10-7 to 50 x 10-7/°C, as recited in instant claim 8.
As to claim 9, since the composition of the reference is the same as those claimed herein it follows that the glasses of Tsujimura et al. would inherently possess a liquidus viscosity of at least 103.9 dPa·s, as recited in claim 9. See MPEP 2112.
As to claim 10, Tsujimura et al disclose that the alkali-free glass is used for various display technologies including organic EL displays (see paragraphs [0039] and [0076]), which reads on an alkali-free glass sheet used for an organic EL device, as recited in instant claim 10.
As to claim 11, Tsujimura et al disclose that the alkali-free glass is used for various substrates (see paragraphs [0002], [0022], and [0082]), which reads on an alkali-free glass sheet used for a magnetic recording medium, as recited in instant claim 11.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Tsujimura et al., U.S. Patent Application Publication, US 2013/0288877 A1.
Tsujimura et al. teach an alkali-free glass comprising in terms of mole percentages, 66-69% SiO2, 12-15% of Al2O3, 0-1.5% of B2O3, 6-9.5% of MgO, 7-9% of CaO, 0.5-3% of SrO, 0-1% of BaO, 0-2% of ZrO2, 0-5% of ZnO, Fe2O3, SO3, F, Cl, and SnO2. See Abstract and the entire specification, specifically, paragraphs [0017], [0023]-[0030], and [0037]. Tsujimura et al. teach that the alkali-free glass has a Young’s modulus of at least 84 GPa, preferably at least 90 GPa. See paragraph [0049]. Tsujimura et al. teach that the alkali-free glass has a strain temperature of at least 735°C, preferably at least 740°C. See paragraphs [0017] and [0039]. Tsujimura et al. teach that the alkali-free glass has a coefficient of thermal expansion in the range of 30 x 10-7 to 40 x 10-7/°C. See paragraphs [0017] and [0042]. Tsujimura et al. teach that the alkali-free glass is used for various displays including organic EL displays. See paragraphs [0039] and [0076]. Tsujimura et al. teach that the alkali-free glass is used for substrates including those with metal or oxide thin films. See paragraphs [0002], [0022], and [0082].
Tsujimura et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 2 and 4. However, the mole percent ranges taught by Tsujimura et al. have overlapping compositional ranges with instant claims 2 and 4. See paragraphs [0028], [0023]-[0030], and [0037]. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Tsujimura et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
As to claim 2, Tsujimura et al. teach an alkali-free glass comprising in terms of mole percentages, 66-69% SiO2, 12-15% of Al2O3, 0-1.5% of B2O3, 6-9.5% of MgO, 7-9% of CaO, 0.5-3% of SrO, 0-1% of BaO, 0-2% of ZrO2, 0-5% of ZnO, Fe2O3, SO3, F, Cl, and SnO2 (see paragraphs [0017], [0023]-[0030], and [0037]), which reads on an alkali free glass comprising in terms of mole percentages, 67.4-72% of SiO2, 12-15.5% of Al2O3, 0-1.1% of B2O3, 0-0.5% of Li2O+Na2O+K2O, 6-12% of MgO, 6-<9% of CaO, >0-0.9% of SrO, 0-1% of BaO, and a mol% ratio of SrO/CaO of 0-0.1 and a mol% ratio of (MgO+CaO+SrO+BaO) x CaO/(SiO2 x MgO) of 0-<0.25, as recited in instant claim 2.
As to claim 4, Tsujimura et al. disclose the alkali-free glass comprises 0-5 mol% of SnO2 as a refining agent (see paragraph [0037], which reads on an alkali-free glass comprising 0.001-1 mol% of SnO2, as recited in instant claim 4.
Claims 1-4 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga et al., U.S. Patent Application Publication US 2020/0407265 A1.
Tokunaga et al. teach an alkali-free glass comprising in terms of mole percentages, 62-67% SiO2, 12.5-16.5% of Al2O3, 0-3% of B2O3, 8-13% of MgO, 6-12% of CaO, 0.5-4% of SrO, 0-0.5% of BaO, and 0-0.5% of SnO2. See Abstract and the entire specification, specifically, paragraphs [0008]-[0015], [0024], and [0039]-[0057]. Tokunaga et al. teach that the alkali-free glass has a Young’s modulus of at least 88 GPa. See paragraph [0071]. Tokunaga et al. teach that the alkali-free glass has a coefficient of thermal expansion in the range of 30 x 10-7 to 43 x 10-7/°C. See paragraphs [0067]-[0070]. Tokunaga et al. teach that the alkali-free glass is used for information recording media and various displays including organic EL displays. See paragraphs [0001], [0002], [0030], [0032], [0097]-[0100], and [0103]-[0104].
Tokunaga et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 1-4 and 7-11. However, the mole percent ranges taught by Tokunaga et al. have overlapping compositional ranges with instant claims 1-4 and 7-11. See paragraphs [0008]-[0015], [0024], and [0039]-[0057]. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Tokunaga et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Specifically, as to claim 1, Tokunaga et al. teach an alkali-free glass comprising in terms of mole percentages, 62-67% SiO2, 12.5-16.5% of Al2O3, 0-3% of B2O3, 8-13% of MgO, 6-12% of CaO, 0.5-4% of SrO, 0-0.5% of BaO, and 0-0.5% of SnO2, (see paragraphs [0008]-[0015], [0024], and [0039]-[0057]), which reads on an alkali free glass comprising in terms of mole percentages, 64-72% of SiO2, 12-16% of Al2O3, 0-1.1% of B2O3, 0-0.5% of Li2O+Na2O+K2O, 6-12% of MgO, 3-<9% of CaO, >0-1.8% of SrO, 0-1% of BaO, and a mol% ratio of SrO/CaO of 0-0.2 and a mol% ratio of (MgO+CaO+SrO+BaO) x CaO/(SiO2 x MgO) of 0-0.3, and a molar ratio (B2O3+SrO+BaO)/Al2O3 of 0.001-0.069, as recited in instant claim 1.
As to claim 2, Tokunaga et al. teach an alkali-free glass comprising in terms of mole percentages, 62-67% SiO2, 12.5-16.5% of Al2O3, 0-3% of B2O3, 8-13% of MgO, 6-12% of CaO, 0.5-4% of SrO, 0-0.5% of BaO, and 0-0.5% of SnO2, (see paragraphs [0008]-[0015], [0024], and [0039]-[0057]), which reads on an alkali free glass comprising in terms of mole percentages, 67.4-72% of SiO2, 12-15.5% of Al2O3, 0-1.1% of B2O3, 0-0.5% of Li2O+Na2O+K2O, 6-12% of MgO, 6-<9% of CaO, >0-0.9% of SrO, 0-1% of BaO, and a mol% ratio of SrO/CaO of 0-0.1 and a mol% ratio of (MgO+CaO+SrO+BaO) x CaO/(SiO2 x MgO) of 0-<0.25, as recited in instant claim 2.
As to claim 3, Tokunaga et al. teach an alkali-free glass comprising in terms of mole percentages, 62-67% SiO2, 12.5-16.5% of Al2O3, 0-3% of B2O3, 8-13% of MgO, 6-12% of CaO, 0.5-4% of SrO, 0-0.5% of BaO, and 0-0.5% of SnO2, (see paragraphs [0008]-[0015], [0024], and [0039]-[0057]), which reads on an alkali-free glass which does not substantially contain As2O3 and Sb2O3, as recited in instant claim 3.
As to claim 4, Tokunaga et al. teach an alkali-free glass comprising in terms of mole percentages, 0-0.5% of SnO2, (see paragraphs [0024] and [0057]), which reads on an alkali-free glass comprising 0.001-1 mol% of SnO2, as recited in instant claim 4.
As to claim 7, Tokunaga et al. teach the glass has a Young’s modulus of at least 88 GPa (see paragraph [0008] and [0071]), which reads on an alkali-free glass having a Young’s modulus of greater than 84 GPa, as recited in instant claim 7.
As to claim 8, Tokunaga et al. teach the glass has a coefficient of thermal expansion of 30 x 10-7 to 43 x 10-7/°C (see paragraphs [0008] and [0067]-[0073]), which reads on an alkali-free glass having a coefficient of thermal expansion of 30 x 10-7 to 50 x 10-7/°C, as recited in instant claim 8.
As to claim 9, since the composition of the reference is the same as those claimed herein it follows that the glasses of Tokunaga et al. would inherently possess a liquidus viscosity of at least 103.9 dPa·s, as recited in claim 9. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 10, Tokunaga et al. teach that the alkali-free glass is used for various display technologies including organic EL displays (see paragraphs [0001], [0002], [0030], and [0097]-[0100]), which reads on an alkali-free glass sheet used for an organic EL device, as recited in instant claim 10.
As to claim 11, Tokunaga et al. teach that the alkali-free glass is used for information recording medium (see paragraphs [0001], [0002], [0032], and [0103]-[0104]), which reads on an alkali-free glass sheet used for a magnetic recording medium, as recited in instant claim 11.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Saito, U.S. Patent Application Publication US 2018/0086660 A1.
Saito teaches an alkali-free glass comprising in terms of mole percentages, 55-80% SiO2, 12-30% of Al2O3, 0-3% of B2O3, 0-15% of MgO, 2-20% of CaO, 0-10% of SrO, 0-15 of BaO, 0-5% of ZnO, 0-5% of ZrO2, 0-5% of TiO2, 0-5% of P2O5, 0-1% of SnO2, 0-1% of refining agents: CeO2, SO3, C, and metal powders and 0-<0.1% of As2O3, Sb2O3, F, and Cl. See Abstract and the entire specification, specifically, paragraphs [0003], [0013], and [026]-[0052]. Saito teaches that the alkali-free glass has a Young’s modulus of at least 75 GPa, preferably at least 80 GPa. See paragraph [0060]. Saito teaches that the alkali-free glass has a strain temperature of at least 750°C, preferably at least 800°C. See paragraphs [0020], [0021], and [0059]. Saito teaches that the alkali-free glass has a coefficient of thermal expansion in the range of 28 x 10-7 to 40 x 10-7/°C. See paragraphs [0013] and [0058]. Saito teaches that the alkali-free glass is used for various displays including organic EL displays. See paragraphs [0002], [0003], [0025], and [0084].
Saito fails to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 1-10. However, the mole percent ranges taught by Saito have overlapping compositional ranges with instant claims 1-10. See paragraphs [0003], [0013], and [026]-[0052]. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Saito overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Specifically, as to claim 1, Saito teaches an alkali-free glass comprising in terms of mole percentages, 55-80% SiO2, 12-30% of Al2O3, 0-3% of B2O3, 0-15% of MgO, 2-20% of CaO, 0-10% of SrO, 0-15 of BaO, 0-5% of ZnO, 0-5% of ZrO2, 0-5% of TiO2, 0-5% of P2O5, 0-1% of SnO2, 0-1% of refining agents: CeO2, SO3, C, and metal powders and 0-<0.1% of As2O3, Sb2O3, F, and Cl and the glass has a strain point of at least 750 °C (see paragraphs [0003], [0013], [0020], [0021], [0026]-[0052], and [0059]), which reads on an alkali free glass comprising in terms of mole percentages, 64-72% of SiO2, 12-16% of Al2O3, 0-1.1% of B2O3, 0-0.5% of Li2O+Na2O+K2O, 6-12% of MgO, 3-<9% of CaO, >0-1.8% of SrO, 0-1% of BaO, and a mol% ratio of SrO/CaO of 0-0.2 and a mol% ratio of (MgO+CaO+SrO+BaO) x CaO/(SiO2 x MgO) of 0-0.3, and a molar ratio (B2O3+SrO+BaO)/Al2O3 of 0.001-0.069, and having a strain point of at least 730 °C, as recited in instant claim 1.
As to claim 2, Saito teaches an alkali-free glass comprising in terms of mole percentages, 55-80% SiO2, 12-30% of Al2O3, 0-3% of B2O3, 0-15% of MgO, 2-20% of CaO, 0-10% of SrO, 0-15 of BaO, 0-5% of ZnO, 0-5% of ZrO2, 0-5% of TiO2, 0-5% of P2O5, 0-1% of SnO2, 0-1% of refining agents: CeO2, SO3, C, and metal powders and 0-<0.1% of As2O3, Sb2O3, F, and Cl (see paragraphs [0003], [0013], [0020], [0021], and [0026]-[0052]), which reads on an alkali free glass comprising in terms of mole percentages, 67.4-72% of SiO2, 12-15.5% of Al2O3, 0-1.1% of B2O3, 0-0.5% of Li2O+Na2O+K2O, 6-12% of MgO, 6-<9% of CaO, >0-0.9% of SrO, 0-1% of BaO, and a mol% ratio of SrO/CaO of 0-0.1 and a mol% ratio of (MgO+CaO+SrO+BaO) x CaO/(SiO2 x MgO) of 0-<0.25, as recited in instant claim 2.
As to claim 3, Saito teaches an alkali-free glass comprising in terms of mole percentages, 55-80% SiO2, 12-30% of Al2O3, 0-3% of B2O3, 0-15% of MgO, 2-20% of CaO, 0-10% of SrO, 0-15 of BaO, 0-5% of ZnO, 0-5% of ZrO2, 0-5% of TiO2, 0-5% of P2O5, 0-1% of SnO2, 0-1% of refining agents: CeO2, SO3, C, and metal powders and 0-<0.1% of As2O3, Sb2O3, F, and Cl (see paragraphs [0003], [0013], [0020], [0021], and [0026]-[0052]), which reads on an alkali-free glass which does not substantially contain As2O3 and Sb2O3, as recited in instant claim 3.
As to claim 4, Saito teaches an alkali-free glass comprising in terms of mole percentages, 0-1% of SnO2 (see paragraph [0050]), which reads on an alkali-free glass comprising 0.001-1 mol% of SnO2, as recited in instant claim 4.
As to claim 5, Saito teaches that the glass has a Young’s modulus of at least 75 GPa, which reads on an alkali-free glass having a Young’s modulus of at least 83 GPa, as recited in instant claim 5. Furthermore, since the composition of the reference has overlapping compositional ranges with the instant claims it follows that the glasses of Saito would have a liquidus temperature of at most 1350 °C, as recited in claim 5.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 6, Saito teach that the glass has a strain point of at least 750 °C (see paragraphs [0020], [0021], and [0059]), which reads on an alkali-free glass having a strain point of at most 735°C, as recited in instant claim 6.
As to claim 7, Saito teaches that the glass has a Young’s modulus of at least 75 GPa (see paragraph [0060]), which reads on an alkali-free glass having a Young’s modulus of greater than 84 GPa, as recited in instant claim 7.
As to claim 8, Saito teaches that the glass has a coefficient of thermal expansion of 28 x 10-7 to 40 x 10-7 /°C ( See paragraphs [0013] and [0058]), which reads on an alkali-free glass having a coefficient of thermal expansion of 30 x 10-7 to 50 x 10-7/°C, as recited in instant claim 8.
As to claim 9, since the composition of the reference has overlapping compositional ranges with the instant claims it follows that the glasses of Saito would have a liquidus viscosity of at least 103.9 dPa·s, as recited in claim 9. See MPEP 2112.
As to claim 10, Saito teaches that the alkali-free glass is used for various display technologies including organic EL displays (see paragraphs [0002], [0003], [0025], and [0084]), which reads on an alkali-free glass sheet used for an organic EL device, as recited in instant claim 10.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Saito, U.S. Patent Application Publication US 2018/0086660 A1 in view of Tokunaga et al., U.S. Patent Application Publication US 2014/0366581 A1.
Saito teaches an alkali-free glass comprising in terms of mole percentages, 55-80% SiO2, 12-30% of Al2O3, 0-3% of B2O3, 0-15% of MgO, 2-20% of CaO, 0-10% of SrO, 0-15 of BaO, 0-5% of ZnO, 0-5% of ZrO2, 0-5% of TiO2, 0-5% of P2O5, 0-1% of SnO2, 0-1% of refining agents: CeO2, SO3, C, and metal powders and 0-<0.1% of As2O3, Sb2O3, F, and Cl. See Abstract and the entire specification, specifically, paragraphs [0003], [0013], and [026]-[0052]. Saito teaches that the alkali-free glass has a Young’s modulus of at least 75 GPa, preferably at least 80 GPa. See paragraph [0060]. Saito teaches that the alkali-free glass has a strain temperature of at least 750°C, preferably at least 800°C. See paragraphs [0020], [0021], and [0059]. Saito teaches that the alkali-free glass has a coefficient of thermal expansion in the range of 28 x 10-7 to 40 x 10-7/°C. See paragraphs [0013] and [0058]. Saito teaches that the alkali-free glass is used for various displays including organic EL displays. See paragraphs [0002], [0003], [0025], and [0084].
Saito fails to disclose that the glass is used for a magnetic recording medium.
Tokunaga et al. teach a similar alkali-free glass comprising in terms of mole percentages, 66-70% SiO2, 12-15% of Al2O3, 0-1.5% of B2O3, >9.5-13% of MgO, 4-9% of CaO, 0.5-4.5% of SrO, 0-1 of BaO, 0-2% of ZrO2, and 0-5% of refining agents, ZnO, Fe2O3, SO3, F, Cl, and SnO2. See Abstract and the entire specification, specifically, paragraphs [0037], [0040], [0041], [0077]-[0088], [0100], [0106] and [0107]. Tokunaga et al. teach that the alkali-free glass has a Young’s modulus of at least 84 GPa, preferably at least 90 GPa. See paragraph [0175]. Tokunaga et al. teach that the alkali-free glass has a strain temperature of at least 725°, preferably at least 735°C. See paragraphs [0056], [0166], [0167], and [0202]. Tokunaga et al. teach that the alkali-free glass has a coefficient of thermal expansion in the range of 30 x 10-7 to 40 x 10-7/°C. See paragraphs [0056], [0169], and [0202]. Tokunaga et al. teach that the alkali-free glass is used for information recording media and various displays including organic EL displays. See paragraphs [0003], [0020], [0167], and [0208].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have a glass composition substrate of Saito as suggested by Tokunaga et al. because the resultant magnetic recording medium would have the superior strain temperature as taught by Tokunaga et al.
Claims 1-11 rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga et al., U.S. Patent Application Publication US 2014/0366581 A1.
Tokunaga et al. teach an alkali-free glass comprising in terms of mole percentages, 66-70% SiO2, 12-15% of Al2O3, 0-1.5% of B2O3, >9.5-13% of MgO, 4-9% of CaO, 0.5-4.5% of SrO, 0-1 of BaO, 0-2% of ZrO2, and 0-5% of refining agents, ZnO, Fe2O3, SO3, F, Cl, and SnO2. See Abstract and the entire specification, specifically, paragraphs [0037], [0040], [0041], [0077]-[0088], [0100], [0106] and [0107]. Tokunaga et al. teach that the alkali-free glass has a Young’s modulus of at least 84 GPa, preferably at least 90 GPa. See paragraph [0175]. Tokunaga et al. teach that the alkali-free glass has a strain temperature of at least 725°, preferably at least 735°C. See paragraphs [0056], [0166], [0167], and [0202]. Tokunaga et al. teach that the alkali-free glass has a coefficient of thermal expansion in the range of 30 x 10-7 to 40 x 10-7/°C. See paragraphs [0056], [0169], and [0202]. Tokunaga et al. teach that the alkali-free glass is used for information recording media and various displays including organic EL displays. See paragraphs [0003], [0020], [0167], and [0208].
Tokunaga et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 1-11. However, the mole percent ranges taught by Tokunaga et al. have overlapping compositional ranges with instant claims 1-11. See paragraphs [0037], [0040], [0041], [0077]-[0088], [0100], [0106] and [0107]. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Tokunaga et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Specifically, as to claim 1, Tokunaga et al. teach an alkali-free glass comprising in terms of mole percentages, 66-70% SiO2, 12-15% of Al2O3, 0-1.5% of B2O3, >9.5-13% of MgO, 4-9% of CaO, 0.5-4.5% of SrO, 0-1 of BaO, 0-2% of ZrO2, and 0-5% of refining agents, ZnO, Fe2O3, SO3, F, Cl, and SnO2 and having a strain point of at least 725 °C (see paragraphs [0037], [0040], [0041], [0056], [0077]-[0088], [0100], [0106], [0107], [0166], [0167], and [0202]), which reads on an alkali free glass comprising in terms of mole percentages, 64-72% of SiO2, 12-16% of Al2O3, 0-1.1% of B2O3, 0-0.5% of Li2O+Na2O+K2O, 6-12% of MgO, 3-<9% of CaO, >0-1.8% of SrO, 0-1% of BaO, and a mol% ratio of SrO/CaO of 0-0.2, a mol% ratio of (MgO+CaO+SrO+BaO) x CaO/(SiO2 x MgO) of 0-0.3, and a molar ratio (B2O3+SrO+BaO)/Al2O3 of 0.001-0.069 and having a strain point of at least 730 °C, as recited in instant claim 1.
As to claim 2, Tokunaga et al. teach an alkali-free glass comprising in terms of mole percentages, 66-70% SiO2, 12-15% of Al2O3, 0-1.5% of B2O3, >9.5-13% of MgO, 4-9% of CaO, 0.5-4.5% of SrO, 0-1 of BaO, 0-2% of ZrO2, and 0-5% of refining agents, ZnO, Fe2O3, SO3, F, Cl, and SnO2 (see paragraphs [0037], [0040], [0041], [0077]-[0088], [0100], [0106], and [0107]), which reads on an alkali free glass comprising in terms of mole percentages, 67.4-72% of SiO2, 12-15.5% of Al2O3, 0-1.1% of B2O3, 0-0.5% of Li2O+Na2O+K2O, 6-12% of MgO, 6-<9% of CaO, >0-0.9% of SrO, 0-1% of BaO, and a mol% ratio of SrO/CaO of 0-0.1 and a mol% ratio of (MgO+CaO+SrO+BaO) x CaO/(SiO2 x MgO) of 0-0.25, as recited in instant claim 2.
As to claim 3, Tokunaga et al. teach an alkali-free glass does not contain PbO, As2O3, and Sb2O3 (see paragraph [0106]), which reads on an alkali-free glass which does not substantially contain As2O3 and Sb2O3, as recited in instant claim 3.
As to claim 4, Tokunaga et al. teach an alkali-free glass comprising in terms of mole percentages, 0-5% of refining agents, ZnO, Fe2O3, SO3, F, Cl, and SnO2 (see paragraph [0107]), which reads on an alkali-free glass comprising 0.001-1 mol% of SnO2, as recited in instant claim 4.
As to claim 5, Tokunaga et al. teach the glass has a Young’s modulus of at least 84 GPa (see paragraphs [0056], [0166], [0167], and [0175]), which reads on an alkali-free glass having a Young’s modulus of at least 83 GPa, as recited in instant claim 5. Furthermore, since the composition of the reference has overlapping ranges of components as the instant claims, one would expect that the glass would have a liquidus temperature of at most 1350°C, as recited in claim 5.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 6, Tokunaga et al. teach a glass having a strain point of at least 725 °C (see paragraphs [0056], [0166], and [0167]), which reads on an alkali-free glass having a strain point of at most 735°C, as recited in instant claim 6.
As to claim 7, Tokunaga et al. teach the glass has a Young’s modulus of at least 84 GPa (see paragraph [0175]), which reads on an alkali-free glass having a Young’s modulus of greater than 84 GPa, as recited in instant claim 7.
As to claim 8, Tokunaga et al. teach the glass having a coefficient of thermal expansion of 30 x 10-7 to 40 x 10-7 / °C (see paragraph [0056], [0169], and [0202]), which reads on an alkali-free glass having a coefficient of thermal expansion of 30 x 10-7 to 50 x 10-7/°C, as recited in instant claim 8.
As to claim 9, since the composition of the reference has overlapping compositional ranges as those claimed herein it follows that the glasses of Tokunaga et al. would possess a liquidus viscosity of at least 103.9 dPa·s, as recited in claim 9.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 10, Tokunaga et al. teach that the alkali-free glass is used for various display technologies including organic EL displays (see paragraphs [0003], [0020], and [0167]), which reads on an alkali-free glass sheet used for an organic EL device, as recited in instant claim 10.
As to claim 11, Tokunaga et al. teach that the alkali-free glass is used for information recording medium (see paragraph [0208]), which reads on an alkali-free glass sheet used for a magnetic recording medium, as recited in instant claim 11.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,441,653 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional and property ranges overlap. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-9 of copending Application No. 17/920,962. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional ranges overlap. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/708,829. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional ranges overlap. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see pages 4-7, filed 25 June 2026, with respect to the rejections of claims 1-4 and 7-11 under 35 U.S.C. 102(a)(1) as anticipated by Tokunaga et al., US 2020/0407265 A1, claims 1-10 under 35 U.S.C. 102(a)(1) as anticipated by Saito, US 2018/0086660 A1, and claims 1 and 3-11 under 35 U.S.C. 102(a)(1) as anticipated by Tokunaga et al., US 2014/0366581 A1, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of a 35 U.S.C. 103 rejection. While the prior art references fail to disclose or anticipate the instant claims, the compositional ranges of the prior art has overlapping compositional ranges with the instant claims as shown in the above rejections.
Applicant’s arguments, see pages 7-8, filed 25 June 2026, with respect to the nonstatutory double patenting rejections of claims 1-10 over U.S. Patent 12,441,653 B2, claims 1-10 over copending US Patent Application No. 17/920,962, and claims 1-10 over copending US Patent Application No. 18/708,829, have been fully considered and are not persuasive. The compositional ranges of the cited art has overlapping compositional ranges with the instant claims as shown in the above rejections.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth A. Bolden whose telephone number is (571)272-1363. The examiner can normally be reached 10:00 am to 6:30 pm M-F.
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
7 July 2026
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