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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-4 are rejected because they use the term “based” when referring to crystals but it is unclear what is meant by “based”. Does this mean the crystal has to be mostly (>50%) the recited lithium disilicate or SiO2, does it just mean it has to include lithium disilicate or SiO2, etc.? The scope is just not clear.
For examination, as long as the prior art teaches a lithium disilicate and a SiO2 crystal, the limitation of being “based” will be considered to be met.
Claim 1 is also rejected because in lines 4-6, it is unclear from the language whether additional crystals are even being required.
Specifically, note that the language recites “a content of the lithium disilicate-based crystal and a content of the SiO2-based crystal are both equal to or greater than a content of crystal other than the lithium disilicate-based crystal and the SiO2-based crystal on a mass basis”. However, as an additional crystal other than the lithium disilicate and SiO2 has not yet been positively recited, it is unclear whether this limitation is now requiring additional crystal with the content of the lithium disilicate-based crystal and a content of the SiO2-based crystal both being equal to or greater than the content of crystal, is it merely a conditional limitation wherein if additional crystal is present, the content of the lithium disilicate-based crystal and a content of the SiO2-based crystal must both be equal to or greater than the content of crystal or does the limitation allow for no additional crystal which would necessarily mean the content of the lithium disilicate-based crystal and a content of the SiO2-based crystal would both be greater than content of any other crystal.
For examination, the limitation is considered to not require additional crystal as long as the content of lithium disilicate and SiO2 are both the highest content of crystals in the glass.
Claims 2-12 are rejected for being dependent on claim 1 above.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
1. Claim(s) 1-9 and 12 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by Shiratori (USPub2014019270).
Regarding claim 1: Shiratori teaches glass ceramic comprises lithium disilicate and SiO2 crystals (see Examples in Tables).
Given that Shiratori does not disclose the presence of any other crystal phase, the limitation that the content of both the lithium disilicate and SiO2 crystal being greater than a content of other crystals is considered to be met.
However, it is additionally noted that Shiratori teaches Examples of glass-ceramic compositions and methods such as that shown below which is substantially similar to that used by Applicants’ (see comparison below).
Specifically, as shown below, the method used by Shiratori meets that used by Applicants and the Example compositions meet each and every requirement of Applicants’ composition.
Ex 1 (mol%)
Ex 2 (mol%)
Applicants’ (see claim 8 for instance)
Applicants (mol%)
SiO2
72.7
72.3
SiO2
70-80
Al2O3
2
2.2
Al2O3
1-5
Li2O
22.7
23.1
Li2O
15-25
K2O
1.6
1.8
K2O
0-5
P2O5
0.9
0.5
P2O5
0.5-5
ZrO2
0
0
ZrO2
0-1
Sb2O3
0.1
0.1
TiO2
0
0
TiO2
0-5
Na2O
0
0
Na2O
0-5
B2O3
0
0
B2O3
0-5
MgO+CaO+SrO+BaO
0-5
Shiratori’s crystallization method
Temp (C)
Time (hours)
1st step
520
1
2nd
800
3
Applicants’ crystallization method (spec par 0101)
Temp (C)
Time (hours)
1st step
450-700
1-6
2nd step
600-800
1-6
Given the similarities above, one skilled in the art would reasonably conclude the same resulting content of crystals to result (MPEP 2112).
Regarding claims 2-5: As discussed above, given the similarities above, one skilled in the art would reasonably conclude the same resulting content of crystals and relationship between crystal content to result (MPEP 2112).
Regarding claims 6 and 7: Given the similarities above, one skilled in the art would reasonably conclude the same resulting properties to result (MPEP 2112).
Regarding claims 8 and 9: As discussed above, Shiratori teaches the following Examples meeting the claimed compositions.
Ex 1 (mol%)
Ex 2 (mol%)
Applicants’ (see claim 8 for instance)
Applicants (mol%)
SiO2
72.7
72.3
SiO2
70-80
Al2O3
2
2.2
Al2O3
1-5
Li2O
22.7
23.1
Li2O
15-25
K2O
1.6
1.8
K2O
0-5
P2O5
0.9
0.5
P2O5
0.5-5
ZrO2
0
0
ZrO2
0-1
Sb2O3
0.1
0.1
TiO2
0
0
TiO2
0-5
Na2O
0
0
Na2O
0-5
B2O3
0
0
B2O3
0-5
MgO+CaO+SrO+BaO
0-5
Na2O+K2O
0.1-10
Regarding claim 12: Shiraoti teaches electronic devices comprising their glass ceramic (see abstract).
Claim Rejections - 35 USC § 102/103
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.
2. Claim(s) 1-12 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yu (USPub20210024405).
Regarding claim 1: Yu teaches glass ceramic wherein the main crystal phase comprises lithium disilicate and quartz crystals (see abstract, see Examples in Tables)
Given that Yu’s lithium disilicate and quartz are the main crystal phase and Lu explicitly indicates that “main crystal phase” refers to the phase having higher weight percentage than other crystal phases in the glass ceramic (see 0147-0148), the limitation that the content of both the lithium disilicate and SiO2 crystal being greater than a content of other crystals is considered to be met.
However, it is additionally noted that Yu teaches glass-ceramic compositions and methods such as that shown below which is substantially similar to that used by Applicants’ (see comparison below).
Specifically, as shown below, the method used by Yu meets that used by Applicants and not only does the broadly disclosed composition of Yu allow for compositions, when converted to mol%, overlapping that of Applicants’ but note that Yu’s Example 17, when converted to mol, meets substantially every requirement of Applicants’ composition except the mol% conversion of ZrO2 appears to provide for 1.03mol% instead of 1% as Applicants’. However, note that with rounding, 1.03 actually rounds down to 1% which is the same as Applicants. Further, even if Applicants argue against the ZrO2 assertion above, note that 1.03% is still so close to 1% that one skilled in the art would expect the same properties to result See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997).
Broad composition
Wt% (see Yu’s 0009-0012, 0172)
Ex 17 Wt%
Conv Mol % (approx.)
Applicants’ (see claim 8 for instance)
Applicants (mol%)
SiO2
65-85
74.9
71.86
SiO2
70-80
Al2O3
1-15
8.5
4.80
Al2O3
1-5
Li2O
5-15
10
19.27
Li2O
15-25
K2O
0-10
1
0.61
K2O
0-5
ZnO
0-10
0.2
0.14
MgO
0-10
1
1.44
P2O5
0.1-10
2
0.81
P2O5
0.5-5
ZrO2
0.1-10
2.2
1.03
ZrO2
0-1
Sb2O3
0-2
0.2
0.04
SrO
0-5
0
0
BaO
0-5
0
0
TiO2
0-5
0
0
TiO2
0-5
Y2O3
0-5
0
0
Na2O
0-5
0
0
Na2O
0-5
B2O3
0-5
0
0
B2O3
0-5
MgO+CaO+SrO+BaO
0-5
Lu’s crystallization method
Temp (C)
Time (hours)
1st step
510
6
2nd
690
2
Applicants’ crystallization method (spec par 0101)
Temp (C)
Time (hours)
1st step
450-700
1-6
2nd step
600-800
1-6
Given the similarities above, one skilled in the art would reasonably conclude the same resulting content of crystals to result (MPEP 2112).
Alternatively, as mentioned above, Yu’s lithium disilicate and quartz are the main crystal phase in the glass ceramic which accounts for 50-92% of the overall glass ceramic (see 0148) and Lu’s glass phase is 8-45% of the glass ceramic (0146) which is considered to allow for overlap with the requirement claimed (MPEP 2144.05). For instance, given that the above values allow for situations wherein the glass ceramic includes 92% main phase (i.e. the lithium disilicate + quartz) and 8% being glass phase which totals 100%, no other crystals can be present which implicitly makes the lithium disilicate and quartz content higher than any other crystal content.
Regarding claims 2-4: As discussed above, given the similarities above, one skilled in the art would reasonably conclude the same resulting content of crystals and relationship between crystal content to result (MPEP 2112).
Alternatively, as mentioned above, Yu’s lithium disilicate and quartz form the main crystal phase which accounts for 50-92% of the overall glass ceramic and in that total, the quartz can be less than 55wt% and lithium disilicate can be less than 55wt% (see 0149-0150) which provides for relationships overlapping that of claim 2 and overlap with the individual ranges of claims 3 and 4 (MPEP 2144.05).
Regarding claim 5: As discussed above, Yu’s crystal phase accounts for 50-92% (i.e. crystallinity is at least 50%) (see 0148).
Regarding claims 6 and 7: Given the similarities above, one skilled in the art would reasonably conclude the same resulting properties to result (MPEP 2112).
Regarding claims 8 and 9: As discussed above, Yu teaches glass ceramic composition as follows.
Broad composition
Wt% (see Yu’s 0009-0012, 0172)
Ex 17 Wt%
Conv Mol % (approx.)
Applicants’ (see claim 8 for instance)
Applicants (mol%)
SiO2
65-85
74.9
71.86
SiO2
70-80
Al2O3
1-15
8.5
4.80
Al2O3
1-5
Li2O
5-15
10
19.27
Li2O
15-25
K2O
0-10
1
0.61
K2O
0-5
ZnO
0-10
0.2
0.14
MgO
0-10
1
1.44
P2O5
0.1-10
2
0.81
P2O5
0.5-5
ZrO2
0.1-10
2.2
1.03
ZrO2
0-1
Sb2O3
0-2
0.2
0.04
SrO
0-5
0
0
BaO
0-5
0
0
TiO2
0-5
0
0
TiO2
0-5
Y2O3
0-5
0
0
Na2O
0-5
0
0
Na2O
0-5
B2O3
0-5
0
0
B2O3
0-5
MgO+CaO+SrO+BaO
0-5
Na2O+K2O
0.1-10
As shown above, Yu’s Example 17, when converted to mol, meets substantially every requirement of Applicants’ compositions except the mol% conversion of ZrO2 provides for 1.03mol%. However, note that with rounding, 1.03 actually rounds down to 1% which will anticipate that of Applicants.
Alternatively, even if Applicants argue against the ZrO2 assertion above, note that 1.03% is still so close to 1% that one skilled in the art would expect the same properties to result See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) to render it obvious (see also Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) MPEP 2144.05).
Even further in the alternative, the broadly disclosed composition of Yu above allows for compositions, when converted to mol%, overlapping that of Applicants’ (MPEP 2144.05).
Regarding claim 10: Yu also teaches chemically strengthened glass having a compressive stress layer on the surface, with the CS being within the range claimed and the glass being their glass ceramic taught above (see 0112, 0116-0117, 0207).
Regarding claim 11: Yu’s glass ceramic has a sheet shape (0199-0204) and the content of alkaline will be different between the surface and center of the glass ceramic in the thickness direction (see 0112-0117 and note that in IOX, alkaline is introduced/ exchanged into the surface of a base glass composition but the center remains the base glass composition).
Regarding claim 12: Yu teaches electronic devices can comprise their glass ceramic (see 0001 for instance).
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.
3. Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiratori (USPub2014019270).
Regarding claim 10: Shiratori does teach chemically strengthened glass having a compressive stress layer on the surface, with the glass being their glass ceramic above (0047-0051) but they just do not teach the CS value as claimed.
However, Shiratori does not limit their CS and instead, only generally teach a chemically strengthened lithium silicate glass ceramic having lithium disilicate and quartz used for electronic devices.
As Yu, who similarly teaches chemically strengthened lithium silicate glass ceramic having lithium disilicate and quartz used for electronic devices, teaches that it is desirable to obtain compressive surface stress of above 200MPa for strength, etc. (0022, 0203), it would have been obvious to one having ordinary skill at the time of invention to modify Shiratori to include compressive surface stress of above 200MPa for strength.
Regarding claim 11: The glass is sheet shaped (0021) and the content of alkaline will be different between the surface and center of the glass ceramic in the thickness direction (see 0045-0050 and note that in IOX, alkaline is introduced/ exchanged into the surface of a base glass composition but the center of the glass remains the base glass composition).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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, Humera Sheikh can be reached at 571-272-0604. 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.
LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784