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 .
Drawings
The drawings were received on 8/28/23. These drawings are accepted.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/429,164 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims substantially encompasses the claims of application ‘164 and/or obvious variant of one another with slight optimization of ranges. In addition, claimed SiO2 about 57 mol% would read upon SiO2 60 mol% in US ‘437.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Beall et al. (US 2019/0084870).
Regarding claims 1-2 and 14, Beall discloses a glass article with a thicknesses of about 0.2 mm [0072] prepared from a glass composition comprising 55-75 mol% of SiO2, 9-18 mol% of Al2O3, 0.2-14 mol% Na2O, 0-2.5 mol% K2O, 2.5-20 mol% B2O3, and 0-5 mol% MgO ([0005] and [0019]), wherein R2O(mol %)+R′O(mol %)-Al2O3(mol %)-B2O3(mol %)-P2O5(mol %) is in a range from about −10.5 mol % to about −0.11 mol %, where R′O=MgO+CaO+SrO+BaO [0022] and having a CaO content within the claimed range (Table 2). Beall and the claims differ in that Beall does not teach the exact same proportions as recited in the instant claims.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the compositional proportions taught by Beall overlap the instantly claimed proportions 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.
With regards to the claimed condition 1, Beall disclose a content of 9-18 mol% of Al2O3, 0.2-14 mol% Na2O, and 0-2.5 mol% K2O and that all values within the range appears to be functionally equivalent. It would have been obvious to choose any concentration from the ranges to satisfy claimed condition 1 based on the desired glass properties and that choosing concentration values would have rendered the claimed relationship between concentration of Al2O3, Na2O, and K2O obvious in the absence of showing criticality.
Additionally, although Beall fails to explicitly disclose an example of having just CaO without MgO, Beall explicitly disclose that R′O=MgO+CaO+SrO+BaO, wherein MgO can be zero [0019]. Therefore, given that Beall discloses that CaO and MgO is functionally equivalent, wherein MgO is optionally present, it would have been obvious to choose any concentration from the ranges to satisfy claimed condition 1 based on the desired glass properties and that choosing concentration values would have rendered the claimed relationship between concentration of MgO and CaO obvious in the absence of showing criticality.
Alternatively, Beall discloses an example comprising of 0.01 mol% of MgO (Table 2, 196HLR). However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
In the instant case, the difference between greater than 0 mol% and 0.01 mol% does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed MgO content.
Regarding claims 3, 6-8, and 10-13, Beall fails to explicitly disclose Tg, hardness, fracture toughness, brittleness, Poisson ratio, crack initiation load, fractional free volume, and pen drop breakage height as presently claimed. However, 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. Products of identical composition may not have mutually exclusive properties. 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).
Regarding claim 4, Beall discloses the density as claimed (Table 2).
Regarding claim 5, Beall discloses a modulus of elasticity of about 68 GPa [0016].
Regarding claim 9, Beall discloses CTE as claimed (Table 2).
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Gomez et al. (US 2012/0052271).
Regarding claims 1-2 and 14, Gomez discloses a glass article with a thickness of less than 2 mm [0017] prepared from a glass composition comprising 50-70 mol % SiO2, 5-15 mol % Al2O3, 0-20 mol % Na2O; 0-10 mol % K2O, 5-20 mol % B2O3, and 0-5 mol % of MgO [0017], and CaO content as claimed (Table 1). Gomez and the claims differ in that Gomez does not teach the exact same proportions as recited in the instant claims.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the compositional proportions taught by Gomez overlap the instantly claimed proportions 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.
With regards to the claimed condition 1, Gomez disclose a content of 5-15 mol % Al2O3, 0-20 mol % Na2O; 0-10 mol % K2O and that all values within the ranges appears to be functionally equivalent. It would have been obvious to choose any concentration from that ranges to satisfy claimed condition 1 based on the desired glass properties and that choosing concentration values would have rendered the claimed relationship between concentration of Al2O3, Na2O, and K2O obvious in the absence of showing criticality.
Furthermore, Gomez only discloses examples comprising of MgO with CaO. However, Gomez discloses that MgO can be of 0 mol.% (Table 1) or 0-5 mol.% (claim 8), therefore all values within the range appears to be functionally equivalent. It would have been obvious to choose any MgO concentration from that ranged, including 0 mol.%, based on the desired glass properties and that choosing concentration values would have rendered the claimed relationship obvious between concentration of MgO and CaO obvious in the absence of showing criticality.
Regarding claim 4, Gomez discloses the density as claimed (Table 1).
Regarding claims 3, 5-8, and 10-13, Gomez fails to explicitly disclose Tg, modulus of elasticity, hardness, fracture toughness, brittleness, Poisson ratio, crack initiation load, fractional free volume, and pen drop breakage height as presently claimed. However, 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. Products of identical composition may not have mutually exclusive properties. 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).
Regarding claim 9, Gomez discloses the CTE as claimed (Table 1).
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Murata (JP 2008-195602)
Regarding claims 1-2 and 14, Murata discloses a glass article with a thickness of less than 0.3 mm [0064] prepared from a glass composition comprising 50-80% of SiO2, 2-20% of Al2O3, 0-15% Na2O, 0-10% K2O, 2-20% B2O3, and 0-5 % CaO (claim 8, [0052]). Murata discloses that MgO preferably has a content of 0-1% [0051], wherein discloses an example of CaO present and not MgO (Table 1). Murata and the claims differ in that Murata does not teach the exact same proportions as recited in the instant claims.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the compositional proportions taught by Murata overlap the instantly claimed proportions 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.
With regards to the claimed condition 1, Murata disclose a content of 2-20% of Al2O3, 0-15% Na2O, and 0-10% K2O, (claim 8, [0052]) and that all values within the range appears to be functionally equivalent. It would have been obvious to choose any concentration from the ranges to satisfy claimed condition 1 based on the desired glass properties and that choosing concentration values would have rendered the claimed relationship between concentration of Al2O3, Na2O, and K2O obvious in the absence of showing criticality. Nevertheless, Murata satisfies the claimed condition (Table 1, No. 3).
Regarding claims 3, 6-8, and 10-13, Murata fails to explicitly disclose Tg, hardness, fracture toughness, brittleness, Poisson ratio, crack initiation load, fractional free volume, and pen drop breakage height as presently claimed. However, 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. Products of identical composition may not have mutually exclusive properties. 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).
Regarding claim 4, Murata discloses the density as claimed [0038].
Regarding claim 5, Murata discloses a modulus of elasticity of 70 GPa [0039].
Regarding claim 9, Murata discloses an overlapping CTE (Abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 14 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.
Applicant argues that Beall and Gomez fail to teach the claimed invention because both Beall and Gomez discloses MgO is present in the examples. However, it is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). As set forth above, Beall and Gomez disclose a range of MgO that includes 0%. Therefore, both Beall and Gomez disclose that the usage of MgO is optional.
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 LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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Linda Chau
/L.N.C/ Examiner, Art Unit 1785
/Holly Rickman/ Primary Examiner, Art Unit 1785
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