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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art, relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-17 in the reply filed on 17 July 2026 is acknowledged.
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 July 2026.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted 6 May 2024 has been considered by the Examiner.
Drawings
The original drawings received on 22 November 2023 are accepted by the Examiner.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-17 are rejected under 35 U.S.C. § 103 as being unpatentable over Cui et al., U.S. Patent Application Publication, US 2021/0155530 A1.
Cui et al. teach a glass in terms of mol% comprising 50-70% of SiO2, 10-25% of Al2O3, 0-10% of B2O3, 0-5% of P2O5, 5-15% of Li2O, 1-15% of Na2O, 0-1% of K2O, 11-23% of R2O, 0-5% of MgO, 0-5% of CaO, 0-1% of SnO2, 0-2% of TiO2, 0-1% of Fe2O3, and may include MnO, MoO3, WO3, Y2O3, La2O3, CdO, As2O3, and Sb2O3. See Abstract and the entire specification, specifically, paragraphs [0006], [0061], [0116], [0249], [0250], [0289]-[0306], and [0312].
Cui et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 1-17. However, the mole percent ranges taught by Cui et al. have overlapping compositional ranges with instant claims 1-17. Cui et al. teach several examples that nearly anticipate the instant claims 1 and 12. See below table. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Examples
Examples from Table 1
with low TiO2
Ex. 1-7, 48, 60, 76-99, 105, 107, 108, 113, and Comp 1-4
with high Al2O3
Ex. 23-28
with high Al2O3 & low TiO2
Ex. 8-22, 36, 101-104, 106, 110-112, and 114
With high B2O3 & low TiO2
Ex. 29-35, 37-47, 19-59, 61-75, 109, and 115
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Cui et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Cui et al. overlap the instantly claimed ranges 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.
Specifically, as to claim 1, Cui et al. teach a glass in terms of mole percentages comprising: 50-70% of SiO2, 10-25% of Al2O3, 0-5% of P2O5, 0-10% of B2O3, 5-15% of Li2O, 1-15% of Na2O, 0-2% of TiO2, and the glass can further include WO3 and Y2O3 (see paragraphs [0289]-[0292], [0295], [0296], [0305], and [0312]), which reads on a glass composition in terms of mole percentages comprising: 55-70% of SiO2, 12.5-17.25% of Al2O3, 0.1-3.5% of P205, 0-5.5% of B2O3, 6-10% of Li2O, 3-10% of Na2O, 0-3% of TiO2, 0-3% of WO3, and 0-3% of Y2O3, wherein 12.5-22.5% of Al2O3+B2O3 0.2-22.5% of TiO2+WO3+Y2O3, as recited in instant claim 1.
As to claim 2, Cui et al. teach a glass in terms of mole percentages comprising: 0-2% of TiO2, and the glass can further include WO3 and Y2O3 (see paragraphs [0305] and [0312]), which reads on a glass composition, wherein TiO2+WO3+ Y203 is 0.4-3 mol%, as recited in claim 2.
As to claim 3, Cui et al. teach a glass in terms of mole percentages comprising: 50-70% of SiO2, 10-25% of Al2O3, 0-5% of P2O5, 0-10% of B2O3, 5-15% of Li2O, 1-15% of Na2O, 0-2% of TiO2, and the glass can further include WO3 and Y2O3 (see paragraphs [0289]-[0291], [0295], [0296], [0305], and [0312]), which reads on a glass composition, wherein Al2O3+B2O3 is 13.5-21.5 mol%, as recited in instant claim 3.
As to claim 4, Cui et al. teach a glass in terms of mole percentages comprising: 0-10% of B2O3 (see paragraph [0292]), which reads on a glass composition having 0.1-5.25 mol% of B2O3, as recited in instant claim 4.
As to claim 5, Cui et al. teach a glass in terms of mole percentages comprising: 10-25% of Al2O3 (see paragraph [0290]), which reads on a glass composition having 13-17 mol% of Al2O3, as recited in instant claim 5.
As to claim 6, Cui et al. teach a glass in terms of mole percentages comprising: 5-15% of Li2O, 1-15% of Na2O, 0-1% of K2O, and 11-23% of R2O (see paragraphs [0295]-[0299]), which reads on a glass composition having a R2O content of 9-20 mol%, where R2O being the sum of Li2O, Na2O, and K2O, as recited in instant claim 6.
As to claim 7, Cui et al. teach a glass in terms of mole percentages comprising: 0-1% of K2O (see paragraph [0297]), which reads on a glass composition having greater than 0 to 1 mol% of K2O, as recited in instant claim 7.
As to claim 8, Cui et al. teach a glass in terms of mole percentages comprising: 0-2% of TiO2 (see paragraph [0305]), which reads on a glass composition having greater than 0 to 3 mol% of TiO2, as recited in claim 8.
As to claim 9, Cui et al. teach a glass which can further include WO3 and Y2O3 (see paragraph [0312]), which reads on a glass composition having greater than 0 to 3 mol% of WO3, as recited in instant claim 9.
As to claim 10, Cui et al. teach a glass which can further include WO3 and Y2O3 (see paragraph [0312]), which reads on a glass composition having greater than 0 to 3 mol% of Y2O3, as recited in instant claim 10.
As to claim 11, Cui et al. teach a glass having a K-1c fracture toughness of at least 0.7 (see paragraph [0029]), which reads on a glass composition having a K1c fracture toughness as measured by a chevron notch short bar method greater than or equal to 0.7 MPa, as recited in instant claim 11.
As to claim 12, Cui et al. teach a glass in terms of mole percentages comprising: 50-70% of SiO2, 10-25% of Al2O3, 0-5% of P2O5, 0-10% of B2O3, 5-15% of Li2O, 1-15% of Na2O, 0-2% of TiO2, and the glass can further include WO3 and Y2O3 (see paragraphs [0289]-[0292], [0295], [0296], [0305], and [0312]), which reads on a glass article in terms of mole percentages comprising: 55-70% of SiO2, 12.5-17.25% of Al2O3, 0.1-3.5% of P205, 0-5.5% of B2O3, 6-10% of Li2O, 3-10% of Na2O, 0-3% of TiO2, 0-3% of WO3, and 0-3% of Y2O3, wherein 12.5-22.5% of Al2O3+B2O3 0.2-22.5% of TiO2+WO3+Y2O3, as recited in instant claim 12.
As to claim 13, Cui et al. teach a glass in terms of mole percentages comprising: 0-2% of TiO2 and the glass can further include WO3 and Y2O3 (see paragraphs [0305] and [0312]), which reads on a glass article, wherein TiO2+WO3+Y2O3 is 0.4 to 3 mol%, as recited in instant claim 13.
As to claim 14, Cui et al. teach a glass in terms of mole percentages comprising: 10-25% of Al2O3 and 0-10% of B2O3 (see paragraphs [0290]-[0292]), which reads on a glass article having an Al2O3+B2O3 content of 13.5-21.5 mol%, as recited in instant claim 14.
As to claim 15, Cui et al. teach a glass in terms of mole percentages comprising: 0-10% of B2O3 (see paragraph [0292]), which reads on a glass article having 0.1-5.25 mol% of B2O3, as recited in instant claim 15.
As to claim 16, Cui et al. teach a glass in terms of mole percentages comprising: 10-25% of Al2O3 (see paragraph [0290]), which reads on a glass article having 13-17 mol% of Al2O3, as recited in instant claim 16.
As to claim 17, Cui et al. teach a glass in terms of mole percentages comprising: 5-15% of Li2O, 1-15% of Na2O, 0-1% K2O, and 11-23% of R2O (see paragraphs [0295]-[0299]), which reads on a glass article having a R2O content of 9-20 mol%, where R2O being the sum of Li2O, Na2O, and K2O, as recited in instant claim 17.
Claims 1-7 and 10-17 are rejected under 35 U.S.C. § 103 as being unpatentable over Dejneka et al., U.S. Patent Application Publication, US 2020/0189962 A1.
Dejneka et al. teach a glass in terms of mol% comprising 50-80% of SiO2, 10-25% of Al2O3, 0-10% of B2O3, 0-5% of P2O5, 4-10% of Li2O, 0-4% of Na2O, 0-0.5% of K2O, 0-0.5% of Cs2O+Rb2O, 0-5% of MgO, 0-4% of CaO, 0-5% of SrO+BaO, 0-5% of RO, 0-3% of ZnO, 0-1.2% of SnO2, and 0-15% of La2O3, Y2O3, Gd2O3, Yb2O3, Lu2O3, CeO2, Pr2O3, Nd2O3, Sm2O3, Eu2O3, Tb2O3, Dy2O3, Ho2O3, Er2O3, and Tm2O3. See Abstract and the entire specification, specifically, paragraphs [0091]-[0108], [0118], and [0120].
Dejneka et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 1-7 and 10-17. However, the mole percent ranges taught by Dejneka et al. have overlapping compositional ranges with instant claims 1-7 and 10-17. Dejneka et al. teach several examples that nearly anticipate the instant claims 1 and 12. See below table. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Examples
Examples from Table 3
with low Na2O
Ex. 7, 9, and 10
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Dejneka et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Dejneka et al. overlap the instantly claimed ranges 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.
Specifically, as to claim 1, Dejneka et al. teach a glass in terms of mol% comprising 50-80% of SiO2, 10-25% of Al2O3, 0-10% of B2O3, 0-5% of P2O5, 4-10% of Li2O, 0-4% of Na2O, 0-0.5% of K2O, 0-0.5% of Cs2O+Rb2O, 0-5% of MgO, 0-4% of CaO, 0-5% of SrO+BaO, 0-5% of RO, 0-3% of ZnO, 0-1.2% of SnO2, and 0-15% of La2O3, Y2O3, Gd2O3, Yb2O3, Lu2O3, CeO2, Pr2O3, Nd2O3, Sm2O3, Eu2O3, Tb2O3, Dy2O3, Ho2O3, Er2O3, and Tm2O3 (see paragraphs [0091]-[0108], [0118], and [0120]), which reads on a glass composition in terms of mole percentages comprising: 55-70% of SiO2, 12.5-17.25% of Al2O3, 0.1-3.5% of P205, 0-5.5% of B2O3, 6-10% of Li2O, 3-10% of Na2O, 0-3% of TiO2, 0-3% of WO3, and 0-3% of Y2O3, wherein 12.5-22.5% of Al2O3+B2O3 0.2-22.5% of TiO2+WO3+Y2O3, as recited in instant claim 1.
As to claim 2, Dejneka et al. teach a glass in terms of mol% comprising 0-15% of La2O3, Y2O3, Gd2O3, Yb2O3, Lu2O3, CeO2, Pr2O3, Nd2O3, Sm2O3, Eu2O3, Tb2O3, Dy2O3, Ho2O3, Er2O3, and Tm2O3 (see paragraph [0118]), which reads on a glass composition, wherein TiO2+WO3+ Y203 is 0.4-3 mol%, as recited in claim 2.
As to claim 3, Dejneka et al. teach a glass in terms of mol% comprising 10-25% of Al2O3 and 0-10% of B2O3 (see paragraphs [0093] and [0108]), which reads on a glass composition, wherein Al2O3+B2O3 is 13.5-21.5 mol%, as recited in instant claim 3.
As to claim 4, Dejneka et al. teach a glass in terms of mol% comprising 0-10% of B2O3 (see paragraph [0108]), which reads on a glass composition having 0.1-5.25 mol% of B2O3, as recited in instant claim 4.
As to claim 5, Dejneka et al. teach a glass in terms of mol% comprising 10-25% of Al2O3 (see paragraph [0093]), which reads on a glass composition having 13-17 mol% of Al2O3, as recited in instant claim 5.
As to claim 6, Dejneka et al. teach a glass in terms of mol% comprising 4-10% of Li2O, 0-4% of Na2O, 0-0.5% of K2O, 0-0.5% of Cs2O+Rb2O (see paragraphs [0092]-[0097]), which reads on a glass composition having a R2O content of 9-20 mol%, where R2O being the sum of Li2O, Na2O, and K2O, as recited in instant claim 6.
As to claim 7, Dejneka et al. teach a glass in terms of mol% comprising 0-0.5% of K2O (see paragraph [0096]), which reads on a glass composition having greater than 0 to 1 mol% of K2O, as recited in instant claim 7.
As to claim 10, Dejneka et al. teach a glass in terms of mol% comprising 0-15% of La2O3, Y2O3, Gd2O3, Yb2O3, Lu2O3, CeO2, Pr2O3, Nd2O3, Sm2O3, Eu2O3, Tb2O3, Dy2O3, Ho2O3, Er2O3, and Tm2O3 (see paragraph [0118]), which reads on a glass composition having greater than 0 to 3 mol% of Y2O3, as recited in instant claim 10.
As to claim 11, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the K1c fracture toughness as measured by a chevron notch short bar method greater than or equal to 0.7 MPa, as recited in instant claim 11.
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. 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).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 12, Dejneka et al. teach a glass in terms of mol% comprising 50-80% of SiO2, 10-25% of Al2O3, 0-10% of B2O3, 0-5% of P2O5, 4-10% of Li2O, 0-4% of Na2O, 0-0.5% of K2O, 0-0.5% of Cs2O+Rb2O, 0-5% of MgO, 0-4% of CaO, 0-5% of SrO+BaO, 0-5% of RO, 0-3% of ZnO, 0-1.2% of SnO2, and 0-15% of La2O3, Y2O3, Gd2O3, Yb2O3, Lu2O3, CeO2, Pr2O3, Nd2O3, Sm2O3, Eu2O3, Tb2O3, Dy2O3, Ho2O3, Er2O3, and Tm2O3 (see paragraphs [0091]-[0108], [0118], and [0120]), which reads on a glass article in terms of mole percentages comprising: 55-70% of SiO2, 12.5-17.25% of Al2O3, 0.1-3.5% of P205, 0-5.5% of B2O3, 6-10% of Li2O, 3-10% of Na2O, 0-3% of TiO2, 0-3% of WO3, and 0-3% of Y2O3, wherein 12.5-22.5% of Al2O3+B2O3 0.2-22.5% of TiO2+WO3+Y2O3, as recited in instant claim 12.
As to claim 13, Dejneka et al. teach a glass in terms of mol% comprising 0-15% of La2O3, Y2O3, Gd2O3, Yb2O3, Lu2O3, CeO2, Pr2O3, Nd2O3, Sm2O3, Eu2O3, Tb2O3, Dy2O3, Ho2O3, Er2O3, and Tm2O3 (see paragraph [0118]), which reads on a glass article, wherein TiO2+WO3+Y2O3 is 0.4 to 3 mol%, as recited in instant claim 13.
As to claim 14, Dejneka et al. teach a glass in terms of mol% comprising 10-25% of Al2O3 and 0-10% of B2O3 (see paragraphs [0093] and [0108]), which reads on a glass article having an Al2O3+B2O3 content of 13.5-21.5 mol%, as recited in instant claim 14.
As to claim 15, Dejneka et al. teach a glass in terms of mol% comprising 0-10% of B2O3 (see paragraph [0108]), which reads on a glass article having 0.1-5.25 mol% of B2O3, as recited in instant claim 15.
As to claim 16, Dejneka et al. teach a glass in terms of mol% comprising 10-25% of Al2O3 (see paragraph [0093]), which reads on a glass article having 13-17 mol% of Al2O3, as recited in instant claim 16.
As to claim 17, Dejneka et al. teach a glass in terms of mol% comprising 4-10% of Li2O, 0-4% of Na2O, and 0-0.5% of K2O (see paragraphs [0092]-[0096]), which reads on a glass article having a R2O content of 9-20 mol%, where R2O being the sum of Li2O, Na2O, and K2O, as recited in instant claim 17.
Conclusion
The additional references cited on the 892 have been cited as art of interest since they are considered to be cumulative to or less than the art relied upon in the rejections above. Specifically, Dejneka et al., US 2019/0177211 A1, teach a glass comprising SiO2, Al2O3, R2O, RO, WO3, P2O5, and TiO2 which have overlapping ranges, Guo et al., US 2023/0107789 A1, teach a glass having overlapping ranges of SiO2, Al2O3, Li2O, Na2O, K2O, P2O5, TiO2, and Y2O3.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth A. Bolden whose telephone number is (571)272-1363. The examiner can normally be reached 10:00 am to 6:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
1 August 2026
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