DETAILED ACTION
An amendment, amending claims 1, 18 and 20, was entered on 6/9/26.
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 Arguments
Applicant argues that the cited art fails to teach the claimed range of Nb2O5 and ZrO2. This is not persuasive. As acknowledged by applicant, Kuang teaches a range of 10-25 wt% for this combination of compounds. This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I).
Applicant argues, however, that Kuang does not teach or suggest any significant effect associated with the claimed range and that applicant has disclosed that limiting the sum of these compounds can limit the risk of Nb2O5 crystallizing on interfaces. This is not persuasive. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. MPEP § 716.02(d). The portion of the specification which applicant has relied upon (¶ 0060) does not provide any clear evidence that the claimed range is responsible for the disclosed results and only provide suggested ranges. Evidence which shows that the claimed range provides an unexpected benefit compared to values outside this range would be considered if submitted.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kuang (WO2013049988).
Claims 1 and 20: Kuang teaches an optical glass used as a lens (Abst., bottom of p. 1) which has a refractive index of 1.99 and an Abbe number (i.e. claimed dispersion) of 23 or more (p. 2), the lens comprising the following materials in % by weight: 5-10% SiO2; 10-18% SiO2+B2O3, 2-15% BaO, 30-50% La2O3, 0-15% of Gd2O3m Y2O3 and Yb2O3 combined, 2-10% ZrO2, 10-22% TiO2, 8-15% Nb2O5, 0.5-5% ZnO and 10-25% Nb2O5 + ZrO2 (Abst.; p. 2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected the claimed composition with the predictable expectation of success.
Claims 2-4: Kuang teaches 0-2% Y2O3 (bottom of p. 2-top of p. 3). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected 0.5-1.5% with the predictable expectation of success.
Claim 5: Kuang teaches 30-50% La2O3, 10-22% TiO2, and 2-15% BaO (i.e. 42-87% of the sum of these materials) (Abst.; p. 2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a sum total of 55-70% with the predictable expectation of success.
Claims 6-8: Kuang teaches 2-15% BaO (Abst.; p. 2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected 1-9 or 2-8.5% with the predictable expectation of success.
Claims 9-11: Kuang teaches 2-10% ZrO2 (p. 2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected 0.5-4.5 or 1-5% with the predictable expectation of success.
Claims 12-14: Kuang teaches 0.5-5% ZnO (p. 2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a ZnO content of 0.5 with the predictable expectation of success.
Claims 15 and 16: Kuang teaches that the amount of SiO2 is greater than or equal to the amount of B2O3 (Abst.; p. 2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a ratio of 1-1.9 with the predictable expectation of success.
Claim 17: Kuang fails to teach the transmittance at the specified thickness. However, such a property would be inherent in the lend of Kuang as Kuang teaches a lens having the same composition as that which is disclosed to yield this transmittance.
Claims 18 and 19: Kuang teaches 2-10% ZrO2, 10-22% TiO2, 8-15% Nb2O5 (Abst.; p. 2). This equates to 10-25% ZrO2 + Nb2O5 to 10-22% TiO2. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a ratio of less than 0.9 with the predictable expectation of success.
Prior Art
Matano (JP2015020913, machine translation) is also cited as it teaches substantially the same composition as Kuang.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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