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.
Priority
Receipt is acknowledged of the International Application PCT/CN2023/081958. A Notice of Acceptance of Application under 35 U.S.C. 371 and 37 CFR 1.495 was mailed 12 September 2025.
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in China on 27 February 2023. It is noted, however, that applicant has not filed a certified copy of the CN 2023102006213 application as required by 37 CFR 1.55.
Examiner’s Comment about
Patent Prosecution Highway - Special Status
and Claim Interpretation
Applicant's filed a petition to make special under the Patent Prosecution Highway on 17 April 2024 and the petition was granted on 3 May 2024. The request is marked that the supporting documents of the OEE Work Product and Translation for the OEE application CN 202310200621.3 mailed 8 November 2023 are attached. The Examiner is unable to locate the mailing of the Decision to Grant a Patent from the Chinese Patent Office mailed 8 November 2023 in the instant application files or in the Global Dossier. The Applicant did submit a table showing how the currently amended claims map to the claims indicated allowable by the OEE application, no copy of the claims indicated as allowable by the OEE are found in the instant application files or in the Global Dossier.
The Examiner was able to access a copy of CN 116253507 B (application CN 202310200621.3) on the WIPO website at https://patentscope.wipo.int/search/en/detail.jsf?docPN=CN116253507. A copy of CN 116253507 B accompanies office action. Included with the patent is an English language translation acquired from the WIPO website.
The Examiner notes that the transitional phrase used in the English language translation of the claims of the Chinese Patent is “consisting of” or “consists of”, which closes the composition to the components recited in the claims. The petition to make special under PPH filed 17 April 2024 included a Supplemental Amendment with claims that are purportedly sufficiently correspond to the allowable claims of the OEE application. The instant claims use the transitional phrase “comprising”, which allows for other components in the composition, even in large amounts, beyond what is recited in the claims. In view of this, the claims as filed on 17 April 2024, will be examined using the open transitional phrase of comprising.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted 29 January 2024 has been considered by the Examiner.
Drawings
The original drawings received on 29 January 2024 are accepted by the Examiner.
Claim Rejections - 35 USC § 112(b) or second paragraph
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 22-58 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 pre-AIA the applicant regards as the invention.
Claim 22 recites in lines 3-4 “a content of 0.8-1 % of at least one oxide selected from Na2O, K2O, Rb2O, and Cs2O”. This renders the claim indefinite since it is unclear how the content of 0.8-1 % is supposed to be examined as it could be read in several ways. 1) Does it mean that at least one of Na2O, K2O, Rb2O, and Cs2O is present, and if the component is present it is included in the composition in the range of 0.8-1&? 2) Does it mean that that at least one of Na2O, K2O, Rb2O, and Cs2O is present in the amount of 0.8-1 %, where as long as one of the 4 components is in the range of 0.8-1%, the other components can be absent or present in any amount? Or 3) Does it mean that the total content of at least one of Na2O, K2O, Rb2O, and Cs2O is in the range of 0.8-1 %? While the Examiner believes the claim is intended to read a total content of 0.8-1% of at least one oxide selected from Na2O, K2O, Rb2O, and Cs2O, based on the third and fourth paragraphs on page 7, spanning to page 8, the broadest and reasonable interpretation of the claim how it is written is that at least one of Na2O, K2O, Rb2O, and Cs2O is present in the range of 0.8-1% by weight.
Claims 23-38 recite the limitation “the content of 0.8-1 % of at least one oxide selected from Na2O, K2O, Rb2O, and Cs2O” which renders them indefinite for the reason stated above.
Claim 22 recites “A glass material, comprising the following components by mass percentage: 20-36% SiO2, 2-10% A12O3, 1-5% CaO, 5-20% BaO, 40-50% PbO, 1-5% CeO2, 0- 5% La2O3, 0-2% Nb2O5, 0-2% Ta2O5, 0-1% Bi2O3, and a content of 0.8-1% of at least one oxide selected from Na2O,K20, Rb20, and Cs20; wherein, a total content of La2O3, Nb2O5, Ta2O5, and Bi203 is 1-10%; a content of Na2O is 0, or the content of Na2O is 20-50% of the content of alkali metal oxides.” With the bolding added by the Examiner for emphasis. The Examiner reads this section as having three limitations: 1) a total content of La2O3, Nb2O5, Ta2O5, and Bi203 is 1-10%, 2) a content of Na2O is 0, and 3) the content of Na2O is 20-50% of the content of alkali metal oxides. The bolded portion starting at the semicolon after the term “Cs2O” renders the claim indefinite since it is confusing due to the use of the semicolon, comma, and “or” separating the limitations. The claim would be clearer if amended in a similar manner to: “… Cs20; wherein, a total content of La2O3, Nb2O5, Ta2O5, and Bi203 is 1-10%; and the content of Na2O is 0 or the content of Na2O is 20-50% of the content of alkali metal oxides.” Which adds the term “and” and removes the comma following “Na2O is 0”.
Additionally, claim 22 recites the limitation “the content of Na2O is 20-50% of the content of alkali metal oxides” which renders the claim indefinite. It is unclear in the claim if the ratio of the Na2O to the alkali metal oxides includes all possible alkali metal oxides or just the alkali metal oxides previously recited in the claim, Na2O, K2O, Rb2O, and Cs2O? While the Examiner believes “the alkali metal oxides” are limited to the total of Na2O, K2O, Rb2O, and Cs2O based on the first paragraph of the instant specification on page 8, the broadest and reasonable interpretation of the claim would read on the Na2O content being 20-50% of the total content of all alkali metal oxides, which includes Li2O, Na2O, K2O, Rb2O, Cs2O, and Fr2O.
Claim 58 recites the limitation "the core glass material" in line 2. There is insufficient antecedent basis for this limitation in the claim. The claim would be clearer if it depended from claim 57.
Claims 39-57 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite since they depend either directly or indirectly from a claim rejected as indefinite without correcting the issue.
Claim Rejections - 35 USC § 112(d) or fourth
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 38, 46, and 48 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 38 depends directly from claim 22. Claim 38 recites the same mass percentages for components: SiO2, Al2O3, CaO, BaO, PbO, CeO2, Nb2O5, Ta2O5, Bi2O3, and a content of Na2O, K2O, Rb2O, and Cs2O as recited in claim 22. None of the ranges in claim 38 further limit the range in claim 22. While claim 38 omits listing the component La2O3 and the portion of claim 22 which reads “wherein, a total content of La2O3, Nb2O5, Ta2O5, and Bi203 is 1-10%; a content of Na2O is 0, or the content of Na2O is 20-50% of the content of alkali metal oxides”, those limitations are read into claim 38 from independent claim 22. Claims 22 and 38 uses the term “comprising” as a transitional phrase and therefore does not exclude La2O3 from the composition, as well as other non-recited components.
Claim 46 depends directly from claim 22 and recites “wherein comprising 1-4% or 4-5% of CaO by mass percentage.” This fails to further limit claim 22 from which it depends since claim 22 recites the glass material comprises 1-5 % of CaO and claim 46 effectively limits the CaO content to 1-5%.
Claim 48 depends directly from claim 47 and recites “wherein comprising 0.5-2% or 2-5% of La2O3 by mass percentage.” This fails to further limit claim 47 from which it depends since claim 47 recites the glass material comprises 0-1.7% La2O3 and claim 48 recites ranges of La2O3 which are outside the scope of claim 47. It appears that claim 48 should depend from independent claim 22
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 of this title, 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:
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 22, 23, 26, 29, 38-52, 54, and 56 are rejected under 35 U.S.C. § 103 as being unpatentable over Speit et al., U.S. Patent US 4,520,115.
Speit et al. teach a glass comprising in terms of weight percentages: 20-65% of SiO2, 0-30% of P2O5+B2O3+Al2O3, 0-15% of MgO+CaO+ZnO, 0-40% of BaO, 5-60% of PbO, 0.1-5% of CeO2, 0-5% of Li2O, 0-10% of Na2O, 0-15% of K2O, and 0-20% of other components including: 0-15% of SnO2+Bi2O3+Y2O3+La2O3. See Abstract and the entire specification, specifically, column 2, lines 32-50 and column 2, line 63 to column 3, line 7.
Speit et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 22, 23, 26, 29, 38-52, 54, and 56. However, the weight percent ranges taught by Speit et al. have overlapping compositional ranges with instant claims 22, 23, 26, 29, 38-52, 54, and 56. 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 Speit et al. 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 Speit et al. 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 22, Speit et al. teach a glass in terms of wt% comprising 20-65% of SiO2, 0-30% of P2O5+B2O3+Al2O3, 0-15% of MgO+CaO+ZnO, 0-40% of BaO, 5-60% of PbO, 0.1-5% of CeO2, 0-5% of Li2O, 0-10% of Na2O, 0-15% of K2O, and 0-20% of other components including: 0-15% of SnO2+Bi2O3+Y2O3+La2O3 (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising the following components by mass percentage: 20-36% SiO2, 2-10% A12O3, 1-5% CaO, 5-20% BaO, 40-50% PbO, 1-5% CeO2, 0-5% La2O3, 0-2% Nb2O5, 0-2% Ta2O5, 0-1% Bi2O3, and a content of 0.8-1% of at least one oxide selected from Na2O,K20, Rb20, and Cs20; wherein, a total content of La2O3, Nb2O5, Ta2O5, and Bi203 is 1-10%; and a content of Na2O is 0 or the content of Na2O is 20-50% of the content of alkali metal oxides, as recited in instant claim 22.
As to claim 23, Speit et al. teach a glass in terms of wt% comprising 20-65% of SiO2, 0-30% of P2O5+B2O3+Al2O3, 0-15% of MgO+CaO+ZnO, 0-40% of BaO, 5-60% of PbO, 0.1-5% of CeO2, 0-5% of Li2O, 0-10% of Na2O, 0-15% of K2O, and 0-20% of other components including: 0-15% of SnO2+Bi2O3+Y2O3+La2O3 (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising the following components by mass percentage: 20-36% SiO2, 2-10% A12O3, 1-5% CaO, 5-20% BaO, 40-50% PbO, 1-5% CeO2, 0.5-5% La2O3, 0-2% Nb2O5, 0-2% Ta2O5, 0-1% Bi2O3, and a content of 0.8-1% of at least one oxide selected from Na2O,K20, Rb20, and Cs20, as recited in instant claim 23.
As to claim 26, Speit et al. teach a glass in terms of wt% comprising 20-65% of SiO2, 0-30% of P2O5+B2O3+Al2O3, 0-15% of MgO+CaO+ZnO, 0-40% of BaO, 5-60% of PbO, 0.1-5% of CeO2, 0-5% of Li2O, 0-10% of Na2O, 0-15% of K2O, and 0-20% of other components including: 0-15% of SnO2+Bi2O3+Y2O3+La2O3 (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising the following components by mass percentage: 20-36% SiO2, 2-10% A12O3, 1-5% CaO, 5-20% BaO, 40-50% PbO, 1-5% CeO2, 0-5% La2O3, 0-2% Nb2O5, 0-2% Ta2O5, 0.3-1% Bi2O3, and a content of 0.8-1% of at least one oxide selected from Na2O,K20, Rb20, and Cs20, as recited in instant claim 26.
As to claim 29, Speit et al. teach a glass in terms of wt% comprising 20-65% of SiO2, 0-30% of P2O5+B2O3+Al2O3, 0-15% of MgO+CaO+ZnO, 0-40% of BaO, 5-60% of PbO, 0.1-5% of CeO2, 0-5% of Li2O, 0-10% of Na2O, 0-15% of K2O, and 0-20% of other components including: 0-15% of SnO2+Bi2O3+Y2O3+La2O3 (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising the following components by mass percentage: 20-36% SiO2, 2-10% A12O3, 1-5% CaO, 5-20% BaO, 40-50% PbO, 1-5% CeO2, 0.5-5% La2O3, 0-2% Nb2O5, 0-2% Ta2O5, 0.3-1% Bi2O3, and a content of 0.8-1% of at least one oxide selected from Na2O,K20, Rb20, and Cs20, as recited in instant claim 29.
As to claim 38, Speit et al. teach a glass in terms of wt% comprising 20-65% of SiO2, 0-30% of P2O5+B2O3+Al2O3, 0-15% of MgO+CaO+ZnO, 0-40% of BaO, 5-60% of PbO, 0.1-5% of CeO2, 0-5% of Li2O, 0-10% of Na2O, 0-15% of K2O, and 0-20% of other components including: 0-15% of SnO2+Bi2O3+Y2O3+La2O3 (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising the following components by mass percentage: 20-36% SiO2, 2-10% A12O3, 1-5% CaO, 5-20% BaO, 40-50% PbO, 1-5% CeO2, 0-2% Nb2O5, 0-2% Ta2O5, 0-1% Bi2O3, and a content of 0.8-1% of at least one oxide selected from Na2O,K20, Rb20, and Cs20, as recited in instant claim 38.
As to claim 39, Speit et al. teach a glass in terms of wt% comprising 5-60% of PbO (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising 43-50% PbO by mass percentage, as recited in instant claim 39.
As to claim 40, Speit et al. teach a glass in terms of wt% comprising 5-60% of PbO (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising 44-50% PbO by mass percentage, as recited in instant claim 40.
As to claim 41, Speit et al. teach a glass in terms of wt% comprising 0-40% of BaO (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising 5-15% BaO by mass percentage, as recited in instant claim 41.
As to claim 42, Speit et al. teach a glass in terms of wt% comprising 0-40% of BaO (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising 5-10% BaO by mass percentage, as recited in instant claim 42.
As to claim 43, Speit et al. teach a glass in terms of wt% comprising 0.1-5% of CeO2 (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising 1.7-5% CeO2 by mass percentage, as recited in instant claim 43.
As to claim 44, Speit et al. teach a glass in terms of wt% comprising 0.1-5% of CeO2 (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising 2-5% of CeO2 by mass percentage, as recited in instant claim 44.
As to claim 45, Speit et al. teach a glass in terms of wt% comprising 0-30% of P2O5+B2O3+Al2O3 (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising 2-8% of Al2O3 by mass percentage, as recited in instant claim 45.
As to claim 46, Speit et al. teach a glass in terms of wt% comprising 0-15% of MgO+CaO+ZnO (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising 1-4% or 4-5% of CaO by mass percentage, as recited in instant claim 46.
As to claim 47, Speit et al. teach a glass in terms of wt% comprising 0-15% of SnO2+Bi2O3+Y2O3+La2O3 (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising 0-1.7% La2O3 by mass percentage, as recited in instant claim 47.
As to claim 48, Speit et al. teach a glass in terms of wt% comprising 0-15% of SnO2+Bi2O3+Y2O3+La2O3 (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising 0.5-2% or 2-5% of La2O3 by mass percentage, as recited in instant claim 48.
As to claim 49, Speit et al. is silent to the inclusion of Nb2O5, which reads on a glass material, comprising 0% of Nb2O5 by mass percentage, as recited in instant claim 49.
As to claim 50, Speit et al. is silent to the inclusion of Ta2O5, which reads on a glass material, comprising 0-1.5% of Ta2O5 by mass percentage, as recited in instant claim 50.
As to claim 51, Speit et al. is silent to the inclusion of Ta2O5, which reads on a glass material, comprising 1.5% or 0 of Ta2O5 by mass percentage, as recited in instant claim 51.
As to claim 52, Speit et al. teach a glass in terms of wt% comprising 0-15% of SnO2+Bi2O3+Y2O3+La2O3 (see column 2, lines 32-50 and column 2, line 63 to column 3, line 7), which reads on a glass material, comprising 0% of Bi2O3 by mass percentage, as recited in instant claim 52.
As to claim 54, Speit et al. teach a glass is made by taking the homogeneous mixture and melting the mixture in a furnace, refining the molten mixture, and using an agitator, the melt is then poured into a mold, and slowly cooled (annealed) in a furnace over 150 hours to room temperature (see column 5, lines 15-25), which reads on a method of preparing a glass material comprising: mixing raw materials, melting, clarifying by stirring, molding by cooling, and precision annealing, as recited in instant claim 54.
As to claim 56, Speit et al. teach a glass that is used in image screen having high permeability in the visible spectral range (see column 1, lines 11-17), which reads on an optical component made from a glass material, as recited in instant claim 56.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
23 July 2026
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