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 .
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 1-19 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, at lines 12-13 and after the period, recites “the sum total of the proportions by weight of SiO2 and B2O3 is at least 10% by weight”. This is likely a typographical error because it simply restates a limitation already in the claim, but its presence after the end of the claim is sufficient to render the claim indefinite because it is not clear if further limitations were intended. For the purposes of this action, however, this limitation is assumed to be inadvertently included.
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 1-20 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 and 0.5-5% ZnO (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
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712