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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted 12 December 2023 has been considered by the Examiner.
Claim Rejections - 35 USC § 112(b) or second paragraph
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 14 and 15 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 pre-AIA the applicant regards as the invention.
Claim 14 recites in line 15, “R2O 0.1 – 5.5” and in line 16, “RO 15.5 – 21.5”, these limitations render the claim indefinite since the claim does not define “R2O” nor “RO”. For the purposes of examination, “R2O” is read as the sum of Na2O and K2O, and “RO” is read as the sum of MgO, CaO, SrO, BaO, and ZnO.
Claim 15 recites in line 13, “R2O 0.1 – 5.5” and in line 14, “RO 15.5 – 21.5”, these limitations render the claim indefinite since the claim does not define “R2O” nor “RO”. For the purposes of examination, “R2O” is read as the sum of Na2O and K2O, and “RO” is read as the sum of MgO, CaO, SrO, BaO, and ZnO.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-10, 12, and 13 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Drake et al., U.S. Patent Application Publication, US 2013/0101853 A1.
Drake et al. disclose a glass comprising in terms of mole percentages, 65-75% of SiO2, 6-12.5% of Al2O3, 0-2.5% of K2O, 2.5-10% of Na2O, 1-3% of Li2O, 5-12% of R2O, 0-7% of MgO, 2-7% of CaO, 0-6% of SrO, 0-2% of BaO, 8-15% of RO, 0-1% of B2O3, 0-2% of ZnO, 0-2% of ZrO2, and 0-1% of SnO2, As2O3,and Cl. See Abstract and the entire specification, specifically, paragraphs [0009] and [0023]-[0038]. Drake et al. disclose that the glass has hydrolytic resistance of HGA1. See paragraph [0012]. Drake et al. disclose that glass is formed into sheets, tubes, and such by standard forming techniques. See paragraphs [0074] and [0075]. Drake et al. disclose that the glass is used pharmaceutical packaging. See paragraphs [0007] and [0075]. The compositional ranges of Drake et al. are sufficiently specific to anticipate the glass composition as recited in claims 1-10, 12, and 13. See MPEP 2131.03.
Specifically, as to claim 1, Drake et al. disclose Examples B, C, D, E, F, and K (see Tables 1, 2, and 4), which reads on a glass comprising in terms of mole percentages, 64.5-73% of SiO2, 4-11% of Al2O3, 0-0.2% of B2O3, 0-3.5% of Na2O, 0-4% of K2O, 0.-7% of MgO, 3-15% of CaO, 0-10% of SrO, 0-5% of BaO, 0-0.5% of ZnO, 0.1-7.5% of R2O, and >15-22.5% of RO, as recited in instant claim 1.
As to claim 2, Drake et al. disclose Examples B, C, D, E, F, and K (see Tables 1, 2, and 4), which reads on a glass having a molar ratio of RO/Al2O3 in the range of 1.4:1 to 5:1, as recited in instant claim 2.
As to claim 3, Drake et al. disclose Examples B and C (see Table 1), which reads on a glass having a molar ratio of SiO2/RO in the range of 3:1 to 4.5:1, as recited in instant claim 3.
As to claim 4, Drake et al. disclose Examples B, C, D, E, F, and K (see Tables 1, 2, and 4), which reads on a glass having a molar ratio Al2O3/CaO in a range of 0.3:1 to 3:1, as recited in instant claim 4.
As to claim 5, Drake et al. disclose Examples B, C, D, E, F, and K (see Tables 1, 2, and 4), which reads on a glass comprising in terms of molar percentages, at most 0.5% of TiO2 and/or at most 0.5% of Li2O, as recited in instant claim 5.
As to claim 6, Drake et al. disclose Examples B, C, D, E, F, and K (see Tables 1, 2, and 4), which reads on a glass comprising in terms of molar percentages, at most 6% of ZrO2, as recited in instant claim 6.
As to claim 7, Drake et al. disclose Examples B, C, D, E, F, and K (see Tables 1, 2, and 4), which reads on a glass having a molar ratio of R2O/Al2O3 of at most 1:1, as recited in instant claim 7.
As to claim 8, Drake et al. disclose Examples B, C, D, E, F, and K (see Tables 1, 2, and 4), which reads on a glass having a molar ratio of at least 2.5:1, as recited in instant claim 8.
As to claim 9, Drake et al. disclose Examples B, C, D, E, F, and K (see Tables 1, 2, and 4), which reads on a glass comprising in terms of molar percentages, a sum of R2O and BaO of 0.75-7%, as recited in instant claim 9.
As to claim 10, Drake et al. disclose Examples B, C, D, E, F, and K (see Tables 1, 2, and 4), which reads on a glass comprising in terms of molar percentages, less than 100 ppm of MoO3, as recited in instant claim 10.
As to claim 12, since the composition of the reference is the same as those claimed herein it follows that the glasses of Drake et al. would inherently possess a hydrolytic resistance corresponding to less than 75% of the HGA1, as recited in claim 12. See MPEP 2112.
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 13, since the composition of the reference is the same as those claimed herein it follows that the glasses of Drake et al. would inherently possess a maximum crystallization rate of the glass is at most 0.75 µm/min in a temperature range of from 1035°C to 1405°C, as recited in claim 13. See MPEP 2112.
Claims 11, 14, and 15 are rejected under 35 U.S.C. § 103 as being unpatentable over Drake et al., U.S. Patent Application Publication, US 2013/0101853 A1.
Drake et al. teach a glass comprising in terms of mole percentages, 65-75% of SiO2, 6-12.5% of Al2O3, 0-2.5% of K2O, 2.5-10% of Na2O, 1-3% of Li2O, 5-12% of R2O, 0-7% of MgO, 2-7% of CaO, 0-6% of SrO, 0-2% of BaO, 8-15% of RO, 0-1% of B2O3, 0-2% of ZnO, 0-2% of ZrO2, and 0-1% of SnO2, As2O3,and Cl. See Abstract and the entire specification, specifically, paragraphs [0009] and [0023]-[0038].
Drake et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 11, 14, and 15. However, the molar percent ranges taught by Drake et al. have overlapping compositional ranges with instant claims 11, 14, and 15. See paragraphs [0009] and [0023]-[0038]. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
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 the reference 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 Drake 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.
Conclusion
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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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
3 July 2026
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