DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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 § 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.
Claim 10 is 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. Claim 10 depends from cancelled claim 2. As such, it is unclear what limitations claim 10 includes.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1 and 3-16 are rejected under 35 U.S.C. 103 as being unpatentable over Endo (US 2007/0015651).
Regarding claim 1, Endo discloses an optical glass comprising, by weight %, 1 to 15% of B2O3, 0 to 10% of SiO2 with SiO2/B2O3 from 0.3 to 2, 25 to 40% of La2O3, 18 to 38% of TiO2, 7 to 17% BaO, a total content of MgO, CaO, SrO from 0 to 10%, 2 to 10% ZrO2, 0 to 7% WO3 0 to 7% ZnO, 5 to 15% of Nb2O5, 0 to 5% of Gd2O3 and 0 to 5% of Y2O3, see abstract and [0015-0019 and 0052-0071].
While the reference teaches ranges that overlap the presently claimed ranges, the reference fails to disclose an anticipatory example or ranges that are sufficiently specific to anticipate the claimed ranges. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the ranges taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05. Further note, that based on the disclosed ranges for the individual components, the reference is considered to render obvious the claimed sum and claimed ratios.
Regarding claim 3, based on the ranges disclosed for Nb2O5, TiO2, ZrO2 and WO3, the reference is considered to render obvious the claimed sum, see above discussion.
Regarding claim 4, based on the ranges disclosed for La2O3, Gd2O3 and Y2O3, the reference is considered to render obvious the claimed sum, see above discussion.
Regarding claim 5, based on the ranges disclosed for MgO, CaO, SrO, BaO, ZnO, La2O3, Gd2O3 and Y2O3, the reference is considered to render obvious the claimed ratio, see above discussion.
Regarding claim 6, based on the ranges disclosed for Nb2O5, SiO2 and TiO2, the reference is considered to render obvious the claimed ratio, see above discussion.
Regarding claim 7, the reference discloses the glass has a refractive index of 2 or more, which overlaps the claimed range [0001]; see MPEP 2144.05 I.
Regarding claim 8, based on the ranges disclosed for the individual components, the reference is considered to render obvious the claimed ratios and sums, see above discussion. Additionally, the reference discloses the glass has a refractive index of 2 or more, which overlaps the claimed range [0001]; see MPEP 2144.05 I.
Regarding claims 9-16, the reference discloses an optical element formed of the optical glass [0001].
Response to Arguments
Applicant’s arguments with respect to claims 1 and 2-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at (571)272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAURA A AUER/Primary Examiner, Art Unit 1783
Prosecution Insights