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 March 18, 2026, have been fully considered.
Claim 7 is withdrawn. Claims 8-9 are newly added.
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-6 and 8-9) in the reply filed on March 18, 2026 is acknowledged.
Applicant’s election without traverse of Species A. and Species B. in the reply filed on March 18, 2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-6 and 8-9 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, Claim 1 recites the broad recitation “wherein the glass composition does not contain barium (Ba)” in line 10, and the claim also recites “wherein the glass composition … contains 0.5% by mass or less of barium (Ba) in terms of oxide” in lines 10-11, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 1-6 and 8-9 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.
Claim 1 recites the limitation “wherein the glass composition … contains 0.5% by mass or less of barium (Ba) in terms of oxide” in line 5. The phrase “or less” in Claim 1 renders the claim indefinite, because it is unclear whether barium is required to meet the claimed invention. The lower limit of the content of barium is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 2 recites the limitation “wherein a content of the boron (B) in terms of oxide is 20% by mass or less” in line 2. The phrase “or less” in Claim 2 renders the claim indefinite, because it is unclear whether boron is required to meet the claimed invention. The lower limit of the content of boron is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 3 recites the limitation “wherein a content of the aluminum (Al) in terms of oxide is 15% by mass or less” in line 2. The phrase “or less” in Claim 3 renders the claim indefinite, because it is unclear whether aluminum is required to meet the claimed invention. The lower limit of the content of aluminum is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 4 recites the limitation “wherein a content of the fluorine (F) is 6% by mass or less” in line 2. The phrase “or less” in Claim 4 renders the claim indefinite, because it is unclear whether fluorine is required to meet the claimed invention. The lower limit of the content of fluorine is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
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 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ritter et al. (US 2014/0106168).
Claim 1. Ritter discloses, as best understood by the indefinite language: A glass composition (Abstract; [0031]; [0035]) comprising:
cesium (Cs) ([0036] “Cs2O”; [0045]; Claim 1);
at least one of potassium (K) or sodium (Na) ([0043] “Na2O”; [0044] “K2O”; Claim 1); and
silicon (Si) ([0039] “the glass of the invention contains SiO2 in a proportion of from 55 to 75% by weight”; Claim 1),
wherein a content of the cesium (Cs) in terms of oxide is 9% by mass or more ([0036]; [0045] “Cs2O is present in an amount of from 0 to 15% by weight”; Claim 1),
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; [0044] “K2O can be present in an amount of from 0 to 9% 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; [0043] “Na2O is present in an amount of from 0 to 7% by weight”; Claim 1), and
wherein the glass composition does not contain barium (Ba) (Examiner note: elected Species B) or contains 0.5% by mass or less of barium (Ba) in terms of oxide ([0035] “The glass of the invention achieves the properties of barium-containing and/or lead-containing dental glasses regarding X-ray absorption without use of barium and lead”; 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 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 20% by mass or less ([0039] “ B2O3 is only optionally provided for in the glass of the invention. It can be present in the range from 0 to 9% by weight. B2O3 serves as flux”; Claims 2-3).
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 15% by mass or less ([0040] “In the glass of the invention, Al2O3 is necessarily present in the range from 0.5 to 4% by weight.”).
Claim 4. Ritter discloses The glass composition according to claim 1 further comprising fluorine (F), wherein a content of the fluorine (F) is 6% by mass or less ([0042]; [0055]; Claim 7 “The X-ray-opaque glass according to claim 1, which is free of B2O3 and/or Li2O and/or fluorides except for at most impurities”).
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 ([0034] “The glass of the invention has a refractive index nd of 1.50 to 1.58”; Claim 1).
Claim 6. Ritter discloses The glass composition according to claim 1, 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 ([0038] “The glass of the invention has, inter alia, as a result of the aforesaid measures, an aluminum equivalent thickness (ALET) of at least 300%, preferably at least 350%, particularly preferably at least 390%.”; [0090]).
Claim 8. Ritter discloses The glass composition according to claim 1, wherein the glass composition contains potassium (K) ([0044] “K2O can be present in an amount of from 0 to 9% by weight”; Claim 1).
Claim 9. Ritter discloses The glass composition according to claim 1, wherein the glass composition does not contain barium (Ba) ([0035] “The glass of the invention achieves the properties of barium-containing and/or lead-containing dental glasses regarding X-ray absorption without use of barium and lead”; Claim 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Niida et al. (US 2009/0088309) discloses a glass substrate composition ([0014]) comprising: 60 to 79% SiO2 ([0035]; [0059]); 4 to 15% Na2O ([0040]); optional components, such as 0 to 15% K2O ([0041]; [0062]); optional components, such as 0 to 15% BaO ([0047]); and additional oxides, such as up to 5% Cs2O ([0066]).
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 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at (571) 272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CRYSTAL J LEE/Primary Examiner, Art Unit 3674
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