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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4, 7-10, and 13 in the reply filed on 20 October 2025 is acknowledged.
Claims 5, 6, 11, 12, and 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 20 October 2025.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted 28 February 2024, 29 January 2025, and 11 April 2025 have been considered by the Examiner.
Drawings
The original drawings received on 13 December 2023 are accepted by the Examiner.
Claim Comments
The Examiner contacted the Applicant’s Representative, Travis Gasa on 1 December 2025, about the dependency of withdrawn claims 15-17 and 20. During the conversation, the Applicant’s Representative and the Examiner determined that claims 15-17 and 20, which currently recite that the claims depend from claim 13, should actually depend from claim 14. The Applicant’s Representative stated that in response to this office action claims 15-17 and 20 would be amended to depend from claim 14. The Examiner is treating claims 15-17 and 20 as if they depend from claim 14 and are currently withdrawn.
Claim Rejections - 35 USC § 112(d) or fourth paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites that the R2O content is the sum of Li2O, Na2O, and K2O and is present in the amount of “greater than or equal to 6 mol% and less than or equal to 25 mol%”. Claim 3 depends from claim 1 which requires at least 7 mol% of Li2O, at least 0.5 mol% of Na2O, and greater than 0 mol% of K2O, therefore claim 1 requires greater than 7.5 mol% of R2O. Therefore, claim 3 fails to further limit claim 1 since the lowest R2O can be is greater than 7.5 mol%.
Claim 9 recites that the R2O content is the sum of Li2O, Na2O, and K2O and is present in the amount of “greater than or equal to 6 mol% and less than or equal to 25 mol%”. Claim 9 depends from claim 7 which requires at least 7 mol% of Li2O and at least 0.5 mol% of Na2O, therefore claim 7 requires at least 7.5 mol% of R2O. Therefore, claim 9 fails to further limit claim 7 since the lowest R2O can be is 7.5 mol%
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
It is noted that withdrawn claim 16 also fails to further limit claim 14 from which it depends for similar reasons as claims 3 and 9.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-4, 7-10, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,597,674. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional ranges overlap. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
US 11,597,674 recites the glass comprises in mol%: 40-70% of SiO2, 8-20% of Al2O3, 1-10% of B2O3, 1-20% of Li2O, 1-15% of Na2O, 1 x 10-6 to 1% of Au (claim 1) and 0.1-1% of K2O (claim 6), which reads on the limitations in instant claim 1.
US 11,597,674 recites the glass comprises in mol%: 1 x 10-6 to 1% of Au (claim 1which reads on the limitations in instant claim 2.
US 11,597,674 recites the glass comprises in mol%: 1-20% of Li2O, 1-15% of Na2O, (claim 1) and 0.1-1% of K2O (claim 6), which reads on the limitations in instant claim 3.
US 11,597,674 recites the CIELAB color space having a L* of 65-98, an a* of -10 to 25, and a b* of -20 to 5 (claim 12), which reads on the limitations of instant claim 4.
US 11,597,674 recites the glass comprises in mol%: 40-70% of SiO2, 8-20% of Al2O3, 1-10% of B2O3, 1-20% of Li2O, 1-15% of Na2O, 1 x 10-6 to 1% of Au (claim 1) and the compositional relationship being greater than -609 mol% (claim 10), which reads on the limitations in instant claim 7.
US 11,597,674 recites the glass comprises in mol%: 1 x 10-6 to 1% of Au (claim 1), which reads on the limitations in instant claim 8.
US 11,597,674 recites the glass comprises in mol%: 1-20% of Li2O, 1-15% of Na2O, (claim 1) and 0.1-1% of K2O (claim 6), which reads on the limitations in instant claim 9.
US 11,597,674 recites the CIELAB color space having a L* of 65-98, (claim 12), which reads on the limitations of instant claim 10.
US 11,597,674 recites the CIELAB color space having an a* of -10 to 25, and a b* of -20 to 5 (claim 12), which reads on the limitations of instant claim 13.
Claims 1-4, 7-10, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,560,329. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional ranges overlap. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
US 11,560,329 recites the glass comprises in mol%: 50-80% of SiO2, 7-25% of Al2O3, 1-15% of B2O3, 7-20% of Li2O, 0.5-12% of Na2O, >0-1% of K2O, 1 x 10-6 to 1% of Au (claim 1), which reads on the limitations in instant claim 1.
US 11,560,329 recites the glass comprises in mol%: 1 x 10-6 to 1% of Au (claim 1), which reads on the limitations in instant claim 2.
US 11,560,329 recites the glass comprises in mol%: 1-20% of Li2O, 1-15% of Na2O, and >0-1% of K2O (claim 1), which reads on the limitations in instant claim 3.
US 11,560,329 recites the CIELAB color space having a L* of 50-100, an a* of -15 to 25, and a b* of -25 to 25 (claim 13), which reads on the limitations of instant claim 4.
US 11,560,329 recites the glass comprises in mol%: 50-80% of SiO2, 7-25% of Al2O3, 1-15% of B2O3, 7-20% of Li2O, 0.5-12% of Na2O, >0-1% of K2O, 1 x 10-6 to 1% of Au (claim 1) and the compositional relationship being greater than -609 mol% (claim 6), which reads on the limitations in instant claim 7.
US 11,560,329 recites the glass comprises in mol%: 1 x 10-6 to 1% of Au (claim 1), which reads on the limitations in instant claim 8.
US 11,560,329 recites the glass comprises in mol%: 1-20% of Li2O, 1-15% of Na2O, and >0-1% of K2O (claim 1), which reads on the limitations in instant claim 9.
US 11,560,329 recites the CIELAB color space having a L* of 50-100, (claim 13), which reads on the limitations of instant claim 10.
US 11,560,329 recites the CIELAB color space having an a* of -15 to 25, and a b* of -25 to 25 (claim 13), which reads on the limitations of instant claim 13.
Claims 1-4, 7-10, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9-12 and 15-18 of U.S. Patent No. 11,891,322. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional ranges overlap. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
US 11,891,322 recites the glass comprises in mol%: 50-80% of SiO2, 7-25% of Al2O3, 1-15% of B2O3, 7-20% of Li2O, 0.5-12% of Na2O, >0-1% of K2O, 1 x 10-6 to 1% of Au (claim 1), which reads on the limitations in instant claim 1.
US 11,891,322 recites the glass comprises in mol%: 1 x 10-6 to 1% of Au (claim 1), which reads on the limitations in instant claim 2.
US 11,891,322 recites the glass comprises in mol%: 6-25% of R2O (claim 3), which reads on the limitations in instant claim 3.
US 11,891,322 recites the CIELAB color space having a L* of 50-100, an a* of -15 to 25, and a b* of -25 to 25 (claim 6), which reads on the limitations of instant claim 4.
US 11,891,322 recites the glass comprises in mol%: 50-80% of SiO2, 7-25% of Al2O3, 1-15% of B2O3, 7-20% of Li2O, 0.5-12% of Na2O, >0-1% of K2O, 1 x 10-6 to 1% of Au (claim 1) and the compositional relationship being greater than -609 mol% (claim 1), which reads on the limitations in instant claim 7.
US 11,891,322 recites the glass comprises in mol%: 1 x 10-6 to 1% of Au (claim 1), which reads on the limitations in instant claim 8.
US 11,891,322 recites the glass comprises in mol%: 6-25% of R2O (claim 3), which reads on the limitations in instant claim 9.
US 11,891,322 recites the CIELAB color space having a L* of 50-100, (claim 6), which reads on the limitations of instant claim 10.
US 11,891,322 recites the CIELAB color space having an a* of -15 to 25, and a b* of -25 to 25 (claim 6), which reads on the limitations of instant claim 13.
Claims 1-4, 7-10, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,054,422. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional ranges overlap. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
US 12,054,422 recites the glass comprises in mol%: 50-80% of SiO2, 12-20% of Al2O3, 1-15% of B2O3, 1-20% of Li2O, >0-15% of Na2O, 1-35% of Li2O+Na2O+K2O, 1 x 10-6 to 5% of Cr2O3, Au, Ag, CuO, NiO, Co3O4, TiO2, and CeO2 (claim 1), which reads on the limitations in instant claim 1.
US 12,054,422 recites the glass comprises in mol%: 1 x 10-6 to 5% of Cr2O3, Au, Ag, CuO, NiO, Co3O4, TiO2, and CeO2 (claim 1), which reads on the limitations in instant claim 2.
US 12,054,422 recites the glass comprises in mol%: 1-35% of Li2O+Na2O+K2O (claim 1), which reads on the limitations in instant claim 3.
US 12,054,422 recites the CIELAB color space having a L* of 55-96.5, an a* of -35 to 60, excluding a*>-0.3 to less than 0.3, and a b* of -90 to 80, excluding b* of greater than -0.5 to less than 0.5 (claim 1), which reads on the limitations of instant claim 4.
US 12,054,422 recites the glass comprises in mol%: 50-80% of SiO2, 12-20% of Al2O3, 1-12% of B2O3, 1-20% of Li2O, >0-15% of Na2O, 1-35% of Li2O+Na2O+K2O, 1 x 10-6 to 5% of Cr2O3, Au, Ag, CuO, NiO, Co3O4, TiO2, and CeO2 (claim 7) and the compositional relationship being greater than -609 mol% (claim 10), which reads on the limitations in instant claim 7.
US 12,054,422 recites the glass comprises in mol%: 1 x 10-6 to 5% of Cr2O3, Au, Ag, CuO, NiO, Co3O4, TiO2, and CeO2 (claim 7), which reads on the limitations in instant claim 8.
US 12,054,422 recites the glass comprises in mol%: 1-35% of Li2O+Na2O+K2O (claim 7), which reads on the limitations in instant claim 9.
US 12,054,422 recites the CIELAB color space having a L* of 55-96.5, (claim 7), which reads on the limitations of instant claim 10.
US 12,054,422 recites the CIELAB color space having an a* of |a*| is greater than or equal to 0.3, and a b* of |b*| is greater than or equal to 0.5 (claim 7), which reads on the limitations of instant claim 13.
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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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
9 December 2025
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