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 .
Introduction
Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
The objection to claims 5, 7-9, 14, 16, 17 and 20-22 has been overcome by the amendments to the claims.
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.
Claims 11-19 and 22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 11 has been amended to include the limitation “means for achieving color ….” The limitation invokes 35 USC 112(f) where the “means” are interpreted to cover the corresponding structure recited in the specification, and equivalents thereof. The specification does not employ the term, “means,” nor does the specification identify anything that could be construed as means with a corresponding structure. Without this information, one of ordinary skill in the art cannot ascertain the scope of the limitation, i.e., the corresponding structure, or equivalents thereof.
Claims 12-19 and 22 are rejected for failing to correct the deficiencies of claim 11.
Claims 11-19 and 22 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
The specification, as originally filed, fails to employ the phrase “means for achieving color ….” Moreover, there is nothing in the specification as originally filed to suggest that the invention includes “means for achieving color…” and a corresponding structure and equivalents thereof.
Claims 12-19 and 22 are rejected for failing to correct the deficiencies of claim 11.
Claims 11-19 and 22 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for a β-spodumene glass ceramic having the composition indicated as "compositions 1 or 2" on page 25 of the specification, does not reasonably provide enablement for a glass ceramic having any composition, any predominant crystalline phase other than β-spodumene, and which possesses the CIELAB color space coordinates recited in claim 11. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
“There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.” MPEP 2164.01(a).
These factors will be considered in turn.
(A) The breadth of the claims;
Independent claim 11 covers any glass ceramic material so long as the glass ceramic has a crystalline phase, and amorphous phase, a thickness of 0.5 to 5 mm and CIELAB color space coordinates of L* 88-97; a* -3 to +3; and b* of -6 to +6 using illuminate F02.
(B) The nature of the invention;
The invention relates to glass ceramic materials and glass ceramic materials that are ion exchanged strengthened. See paragraph [0002] of the instant specification. The invention relates to a specific subset of these materials which have CIELAB color space coordinates of L* 88-97; a* -3 to +3; and b* of -6 to +6 using illuminate F02.
(C) The state of the prior art;
The art of glass ceramics has been around since at least 1960 when Stanley Stookey first patented the process in which a glass is formed and then carefully heat treated to crystallize the glass into a ceramic. See US 2,920,971. Since the U.S. effective filing date of this application (09 October 2013), 1,424 United States Patents and PGPubs have been published in which the phrase "glass ceramic" appears in the title.
The examiner was unable to locate a non-patent literature reference that discusses an “F02” reference – only an F2 illuminant. Presumably they are the same.
One hundred and sixty-five U.S. patents and pre-grant publications refer to illuminant F02. One hundred and sixty-two of the references are by the same assignee as the instant application. The earliest reference to F02 is in 2011.
These facts indicate that the art of glass ceramics has been investigated extensively, but CIELAB color space employing F02 illuminants and glass ceramics is a recent event.
(D) The level of one of ordinary skill;
The level of ordinary skill in the art would appear to be a ceramic scientist or engineer with at least a PhD and a number of years of research experience.
(E) The level of predictability in the art;
The art of glass ceramics appears to be somewhat predictable, however, the predictability is low when it comes to how these glass ceramics can be formed to obtain a particular set of CIELAB color space coordinates.
Applicants assert that color space are sufficiently different that illuminant D65 color coordinates are not sufficiently predictive of color space according using F02 (see page 13 of applicants’ arguments filed 02 March 2026:
However, Comte is not silent regarding CIELAB color coordinates. Here, the CIELAB color coordinates disclosed in Comte are using a different illuminant. D65 corresponds to "daylight" while F02 corresponds to fluorescent lighting. A person having ordinary skill in the art is well aware of differences in color perception when viewing colors outside (in daylight) versus indoors (in a room lit with fluorescent lighting). Consequently, it would be unreasonable to presume that the perceived color under these illuminants would be the same. Therefore, there is at least sufficient doubt that the color coordinates would necessarily be the same to make the inherency presumption inapplicable to the current facts.
(F) The amount of direction provided by the inventor;
Page 10, paragraph [0041] teaches a ratio of [Li2O+Na2O+K2O+MgO+ZnO]/ [Al2O3+B2O3] of 0.7-1.5 is needed to achieve the appropriate color:
In this manner, the precursor glasses of one or more embodiments are formulated so that the value of this ratio allows for practical transforming schedules (e.g., nucleation and crystallization temperatures and/or times) while at the same time allowing for the formation of glass-ceramics characterized by prespecified color coordinates that can be repeatedly and reliably achieved.
Page 13; paragraph [0045] of the specification as originally filed indicates spinels do not influence the color of the glass ceramic:
Therefore, in some embodiments, spinels in general and Zn-containing spinels in particular may have less of influence on color of glass-ceramics than would rutile.
Page 21; paragraph [0074] of the specification as originally filed indicates the heating schedule and precursor glass composition is chosen to obtain the appropriate crystalline phase, and as a result appropriate color:
Temperature-temporal profile of steps (iii) and (iv), in addition to a precursor glasses, are judiciously prescribed so as to produce the desired crystalline phase (e.g., p-spodumene solid solution as a predominant crystalline phase and/or one or more Ti-containing crystalline phases, which include rutile, as one or more minor crystalline phases); desired proportions of the predominate crystalline phase and/or minor crystalline phase(s) and residual glass; desired crystal phase assemblages of the predominate crystalline phase and/or minor crystalline phase(s) and residual glass; desired grain sizes or grain size distributions among the predominate crystalline phase and/or minor crystalline phase(s); and, hence the final integrity, quality, color, and/or opacity, of resultant glass-ceramics and/or glass-ceramic articles according to some embodiments of this disclosure.
(G) The existence of working examples;
The instant specification reports CIELAB color space coordinates for three glass ceramics: Examples F-H. Each example is formed from one of two compositions (see Table 3) and result in a majority crystalline phase of β-spodumene (Table 6). Examples F-H differ in their heat treatments (Table 3). Examples G and H are comparative examples. Each of Examples F-H have color coordinates falling within the claim 11 color space.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure
A great deal to experimentation would be necessary to determine which heat treatments will work to form all of the other crystalline forms of the genus of glass ceramic while maintaining the appropriate color coordinates with an F02 illuminant. Prior art data employing other illuminants is apparently not predictive of the color of the resultant glass ceramic and is therefore not helpful. Undue experimentation would be needed to determine which heat treatments, precursor compositions, and resultant crystalline phases would achieve the claimed color coordinates. Applicants have established how to make two specific beta spodumene glass ceramic compositions which can achieve the appropriate color space.
The use of the phrase “means for achieving” limits the claim to the disclosed means for achieving the color coordinates, and equivalents thereof. The specification does not indicate a corresponding structure so that one of ordinary skill in the art can ascertain equivalents thereof.
MPEP 2181 IV states:
The Federal Circuit has recognized the problem of providing a sufficient disclosure for functional claiming, particularly with generic claim language, explaining that "The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant [inventor] has made a generic invention that achieves the claimed result and do so by showing that the applicant [inventor] has invented species sufficient to support a claim to the functionally-defined genus." Ariad Pharmaceuticals Inc. v. Eli & Lilly Co., 598 F.3d 1336, 1349, 94 USPQ2d 1161, 1171 (Fed. Cir. 2010) (en banc).
Claims 11-19 and 22 are generic to any glass ceramic, and has shown two specific glass ceramic compositions, each of which form beta spodumene and which can achieve the appropriate color space.
Claim Rejections - 35 USC § 103
Claims 2-3, 5-10, 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Comte et al. (US 2007/0213192 A1) in view of Amin et al. (US 2011/0092353 A1).
Comte et al. discloses a glass composition having overlapping ranges of components with the glass composition recited in instant claims 5-9, 20 and 21. Comte et al. discloses the glass composition in weight percent whereas the present claims recited the composition in mole percent. Below is a hypothetical composition which falls within the ranges of components of Comte et al. as taught in paragraph [0010], and instant claims 20 and 5-9.
Component
Comte range in wt%
Hypothetical composition in wt%
Hypothetical composition in mol%
Claim 20 range in mol%
SiO2
55-68
65.2
68.83%
67-74
Al2O3
18-24
20.3
12.63%
11-17
Li2O
3.3-4.1
4.5
9.51%
5-13
TiO2
2-5
3
2.38%
ZrO2
0
0.00%
0-2
MgO
1.5-5
1.8
2.86%
0-8
ZnO
1.5-4
1.8
1.40%
0-4
SnO2
0.4
0.17%
P2O5
0-8
1
0.45%
B2O3
0-5
1.8
1.64%
0-4
Na2O
0-2
0
0.00%
K2O
0-2
0.2
0.14%
0.038-4
Fe2O3
0
0.00%
B2O3+P2O5
>1.5
2.8
MgO+ZnO
>3.5
3.6
Na2O+K2O
<3.0
0.2
P2O5+B2O3+Na2O+K2O
<11
3
Na2O+K2O/B2O3+P2O5
<0.5
0.071429
Instant claim 20 ratio in molar ratio:
0.97
0.75-1.5
The instant claim 20 ratio in the table above refers to the ratio: [Li2O+Na2O+K2O+MgO+ZnO]/ [Al2O3+B2O3]
This hypothetical composition is evidence of the overlap between the composition of Comte et al., and claims 5-9, 20 and 21. 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 at the time of fling to have selected from the overlapping ranges taught by Comte et al. because overlapping ranges have been held to establish prima facie obviousness.
Comte et al. fails to disclose “a compressive stress layer extending from a surface of the glass article into the glass article of at least about 300 MPa, and a depth of compressive stress layer of at least about 1% of an overall thickness of the glass article” as recited in claim 20.
Amin et al. teaches ion exchange strengthening glass ceramics to a compressive stress of at least 500 MPa and a depth of compressive layer of at least 40 µm for a 2 mm thickness (i.e., 0.040 mm/2 mm = at least 2% of the thickness). See paragraph [0023]. The result is a durable glass ceramic. See the title.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have formed a compressive stress of at least 500 MPa a depth of layer of at least 40 µm in the glass ceramic of Comte et al. as taught by Amin because the resultant glass ceramic will be durable.
As to claim 2, Comte et al. fails to disclose the glass ceramic has a thickness of from 0.5 to 3 mm.
However, it has been held to have been within the level of ordinary skill in the art to have changed the size of a prior art product. See MPEP 2144.04 IV.A.
Therefore, it would have been obvious one of ordinary skill in the art at the time of filing to have changed the size of the article of Comte et al. because it has been held to be within the level of ordinary skill in the art to have changed the size of a prior art product.
One of ordinary skill in the art would have expected the glass ceramic article of Comte et al. to possess the opacity of claim 3 in view of the overlapping ranges of components and closely overlapping ceramming cycle:
Comte et al. (paragraph 0055)
Instant invention (Table 4)
Nucleation temp.
600-850°C
780°C
Nucleation time
> 15 minutes
38 to 105 minutes
Crystallization temp.
900-1050°C
969-980°C
Crystallization time
> 10 minutes
110-230 minutes
Comte et al. discloses the limitations of instant claim 10 in paragraph [0052].
Response to Arguments
Applicant's arguments filed 08 June 2026 have been fully considered but they are not persuasive.
Claim Rejections 35 USC § 112(a)
Applicants argue that the rejection under 112(a) has been overcome by the amendments to the claims that invoke 35 U.S.C. 112(f), means-plus-function language. In other words, the amendments limit the claims to the means identified in the specification for achieving the function, and equivalents thereof. This argument is not deemed persuasive for the reasons identified in the rejection above.
Claim Rejections – 35 USC § 103
Applicants argue the use of the hypothetical composition is improper hindsight. This argument is not deemed persuasive. The use of the hypothetical composition is purely employed to show that an overlap exists in the composition disclosed by Comte (which is in weight percent), and the composition recited in the claims (which is in mole percent). Overlapping ranges have long been held to be sufficient to establish prima facie obviousness. See MPEP 2144.05.
Applicants note that none of the examples of Comte fall within the ranges recited in claim 20. This argument is not deemed persuasive because a reference may be employed for all that it fairly suggests to one of ordinary skill in the art, and is not limited to examples or preferred embodiments for disclosure.
Applicants note the appeal in application serial no. 18/143,138. It appears applicants meant to cite 18/142,138. The decision in the ‘138 application is distinguishable from the present fact scenario. In the ‘138 application, the Board states:
Examiner does not find that the asserted composition is disclosed by Sprenger or would have been suggested to one of ordinary skill in the art by Sprenger.
In the instant case, the examiner finds that the composition of instant claim 20 would have been obvious to one of ordinary skill in the art at the time of filing based upon the overlapping ranges of components that exist between Comte and claim 20 (as described above). The hypothetical composition created by the examiner is evidence of this overlap.
The Board further states
Examiner's asserted composition appears to have been created by Examiner, and is not prior art.
The hypothetical composition is not asserted as prior art. It is evidence of overlapping ranges of components. The examiner is showing the manner in which the calculation is made in order to show overlapping ranges. See, e.g., appeal no. 2021-003747 (application serial no. 16/294,022).
The examiner analogizes the situation to inherency. It has long been held that something old does not become new because of a newly discovered property. See MPEP 2112 I. Moreover, a scientific rationale may be employed to establish that an inherent characteristic is present in an “old” product. See MPEP 2112 IV. By analogy, an old (or obvious) composition should not become new (or nonobvious) by finding a new manner in calculating the composition, and scientific reasoning (such as a conversion calculation) was employed to show an overlap in ranges between the new and old methods of listing a composition.
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 David Sample whose telephone number is (571)272-1376. The examiner can normally be reached Monday to Friday 7AM to 3:30 PM.
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.
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/David Sample/Primary Examiner, Art Unit 1784
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