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 .
Response to Amendment
Applicant’s amendments, filed July 6, 2026, have been fully considered.
Claim 7 is withdrawn. Claim 9 is canceled. Claims 10-14 are newly added.
The rejections of Claims 1-6 and 8-9 under 35 U.S.C. § 112(b), mailed July 6, 2026, have been overcome by the Applicant’s amendments.
Claim Objections
Claim 2 is objected to because of the following informalities: grammatical clarity. Appropriate correction is required.
The Examiner suggests the following amendment to Claim 2:
2. (Currently Amended) The glass composition according to claim 1 further comprising boron (B), wherein a content of the boron (B) in terms of oxide is 1% by mass to 20% by mass.
Claim 3 is objected to because of the following informalities: grammatical clarity. Appropriate correction is required.
The Examiner suggests the following amendment to Claim 3:
3. (Currently Amended) The glass composition according to claim 1 further comprising aluminum (Al), wherein a content of the aluminum (Al) in terms of oxide is 0.1% by mass to 15% by mass.
Claim 4 is objected to because of the following informalities: grammatical clarity. Appropriate correction is required.
The Examiner suggests the following amendment to Claim 4:
4. (Currently Amended) The glass composition according to claim 1, wherein the content of the fluorine (F) is 0.1% by mass to 6% by mass.
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.
The factual inquiries 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 1-6, 8, and 10-13 are rejected under 35 U.S.C. 103 as obvious over Ritter et al. (US 2014/0376868).
Claim 1. Ritter discloses A glass composition (Abstract; [0023]; [0104]) comprising:
cesium (Cs) ([0063] – [0065]; [0104]);
at least one of potassium (K) or sodium (Na) ([0104]);
silicon (Si) ([0104]), and
fluorine (F) ([0104]),
wherein a content of the cesium (Cs) in terms of oxide is 9% by mass or more ([0104] Cs2O may be present in an amount of 0-21% by weight),
wherein when the potassium (K) is contained in the glass composition, a content of the potassium (K) in terms of oxide is 5% by mass or more (Examiner note: elected Species A; [0104] K2O may be present in an amount of 0-25.7% by weight),
wherein when the sodium (Na) is contained in the glass composition, a content of the sodium (Na) in terms of oxide is 1% by mass or more (Examiner note: nonelected Species A; [0104] Na2O may be present in an amount of 0-18.5% by weight),
wherein a content of the fluorine (F) is 0.1% by mass or more ([0104] F may be present in an amount of 0-2% by weight), and
wherein the glass composition does not contain barium (Ba) (Examiner note: elected Species B) ([0104] BaO may be present in an amount of 0-57.8% by weight).
Where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ 2d 1934 (MPEP § 2144.05 I).
Claim 2. Ritter discloses The glass composition according to claim 1 further comprising boron (B), wherein a content of the boron (B) in terms of oxide is 1% by mass or more and 20% by mass or less (See claim objection; [0104] B2O3 may be present in an amount of 0-24% by weight).
Claim 3. Ritter discloses The glass composition according to claim 1 further comprising aluminum (Al), wherein a content of the aluminum (Al) in terms of oxide is 0.1% by mass or more and 15% by mass or less (See claim objection; [0104] Al2O3 may be present in an amount of 0-10% by weight).
Claim 4. Ritter discloses The glass composition according to claim 1 further comprising fluorine (F) (See claim objection), wherein the content of the fluorine (F) is 0.1% by mass or more and 6% by mass or less (See claim objection; [0104] F may be present in an amount of 0-2% by weight).
Claim 5. Ritter discloses The glass composition according to claim 1, wherein a refractive index (nd) of a glass containing the glass composition is 1.524 or less ([0024]; [0137] “Preferably, the refractive index of the cladding glass is between 1.48 and 1.52.”).
Claim 6. Ritter discloses The glass composition according to claim 1. Ritter does not disclose wherein an X-ray contrast of a glass containing the glass composition is 300% or higher with respect to an X-ray contrast of aluminum. However, since Ritter discloses the same composition as claimed, the glass, if subjected to an X-ray contrast test, would inherently act in the same manner as claimed, (i.e., it would be capable of an aluminum equivalent thickness (ALET) of at least 300%). If there is any difference between the composition of Ritter and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775,227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934). In the alternative, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the concentration(s) of the glass components in Ritter to achieve the X-ray contrast range as claimed, because it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 8. Ritter discloses The glass composition according to claim 1, wherein the glass composition contains potassium (K) ([0104] K2O may be present in an amount of 0-25.7% by weight).
Claim 13. Ritter discloses A glass composition (Abstract; [0023]; [0104]) comprising:
cesium (Cs) ([0063] – [0065]; [0104]);
at least one of potassium (K) or sodium (Na) ([0104]); and
silicon (Si) ([0104]),
wherein a content of the cesium (Cs) in terms of oxide is 9% by mass or more ([0104] Cs2O may be present in an amount of 0-21% by weight),
wherein when the potassium (K) is contained in the glass composition, a content of the potassium (K) in terms of oxide is 5% by mass or more (Examiner note: elected Species A; [0104] K2O may be present in an amount of 0-25.7% by weight),
wherein when the sodium (Na) is contained in the glass composition, a content of the sodium (Na) in terms of oxide is 1% by mass or more (Examiner note: nonelected Species A; [0104] Na2O may be present in an amount of 0-18.5% by weight), and
wherein the glass composition does not contain barium (Ba) (Examiner note: elected Species B) ([0104] BaO may be present in an amount of 0-57.8% by weight).
Where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ 2d 1934 (MPEP § 2144.05 I).
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Tachibana et al. (US 4,472,030).
Claim 13. Tachibana discloses A glass composition (Abstract; Col. 1, lines 56-60; Claim 1) comprising:
cesium (Cs) (Col. 2, lines 20-36; Col. 2, lines 47-52 “Cs2O is included…”);
at least one of potassium (K) or sodium (Na) (Col. 2, lines 20-36; Col. 2, lines 53-54 “K2O is included…”); and
silicon (Si) (Col. 2, lines 20-36; Col. 2, lines 38-41 “SiO2 is used as a glass-forming component, and its proportion should be 32 to 56% by weight…”),
wherein a content of the cesium (Cs) in terms of oxide is 18% by mass or more (Col. 2, lines 20-36; Col. 2, lines 47-52 “Cs2O is included in a proportion of 6 to 32% by weight.”),
wherein when the potassium (K) is contained in the glass composition, a content of the potassium (K) in terms of oxide is 5% by mass or more (Examiner note: elected Species A; Col. 2, lines 20-36; Col. 2, lines 53-54 “K2O is included in a proportion of 6 to 25% by weight…”; Claim 1),
wherein when the sodium (Na) is contained in the glass composition, a content of the sodium (Na) in terms of oxide is 1% by mass or more (Examiner note: nonelected Species A; Col. 4, lines 35-37 “Li2O and Na2O may be included in an amount of not more than 2.5% by weight and not more than 4.5% by weight, respectively.”), and
wherein the glass composition does not contain barium (Ba) (Examiner note: elected Species B) (Tachibana discloses BaO as an optional additional component; Claim 1).
Where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ 2d 1934 (MPEP § 2144.05 I).
Claim 14. Tachibana discloses The glass composition according to claim 13, wherein the content of the cesium (Cs) in terms of oxide is 29% by mass or more (Col. 2, lines 20-36; Col. 2, lines 47-52 “Cs2O is included in a proportion of 6 to 32% by weight.”).
Response to Arguments
Applicant’s arguments, filed July 6, 2026, have been considered but the arguments 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 Crystal J. Lee whose telephone number is (571)272-6242. The examiner can normally be reached M-F from 9:00am - 5:00pm.
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/CRYSTAL J LEE/Primary Examiner, Art Unit 1738
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