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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-18, in the reply filed on January 2, 2026, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Please note that Group II, claims 19-20, have been cancelled.
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 7, 15 and 16 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.
Claims 7, 15 and 16 recite “and/or.” It is unclear if both or either limitation is required by the claim. For purposes of examination, the claims will be interpreted as “or” such that satisfying any one of the listed options will satisfy the claim.
Claim 16 recites “up to 2% or more fining agents selected from a group consisting of As2O3, Sb2O3, halides and SO3.” It is unclear if each compound, or if the cumulative amount of all listed compounds are limited to up to 2%. For purposes of examination, if one of the listed compounds exists in an amount of 2% or less, this will satisfy the claim.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3, 6, 10, 11, 17 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2013/171047 Sadowsky et al.
Regarding claim 1, Sadowsky teaches a transparent (paragraph 0018, transparent to electromagnetic waves), chemically prestressable or chemically prestressed glass ceramic (paragraph 0042), comprising:
keatite as a main crystal phase (paragraph 0072);
a transmittance greater than 80% (paragraph 0018, transmittance of electromagnetic waves) at a thickness of 0.7 mm (paragraph 0088); and
a crystal phase content of at least 80% by weight of keatite solid solution based on all crystal phases in the glass ceramic (paragraph 0072 teaching more than 85%, where because the crystals are converted into keatite and the nature of the discussion, the examiner is taking the position that all of the crystals are converted into keatite).
Sadowsky does not explicitly teach the haze. However, Applicant has stated that the haze is a result of the crystal amount, size and light scattering distribution along with the composition of the glass (as-filed spec paragraph 0016). Therefore, as Sadowsky satisfies all of the previous limitations, and the glass and crystal limitations have been met (including composition as will be seen from the following claims), it is reasonable to expect that Sadowsky’s haze would also be less than or equal to 10. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established” (MPEP 2112.01 Section I).
Regarding claim 3, Sadowsky teaches that the glass ceramic has a composition comprising SiO2, A12O3. and Li2O as main components (paragraph 0064) and SnO2 and ZrO2 as nucleating agents (paragraph 0065).
Regarding claim 6, Sadowsky teaches that the Li2O is present in a content of between 2.0 to 5.1 in percent by weight (paragraph 0043).
Regarding claim 10, Sadowsky teaches that the glass ceramic has a composition that is substantially free of V2O5 and Nd2O3 (paragraphs 0043-0062, where V2O5 and Nd2O3 are not listed in the composition such that they are present in an amount of 0 wt% or unavoidable impurities).
Regarding claim 11, Sadowsky teaches that the glass ceramic has a composition comprising 0.0 to 1.0% by weight of B2O3 (paragraph 0052).
Regarding claim 17, Sadowsky teaches that the glass ceramic is configured as a cover pane (paragraph 0028) having a thickness of 0.7 mm (paragraph 0088).
Regarding claim 18, Sadowsky teaches that the cover pane is configured for a use in an electronic display device or a mobile electronic display device (paragraph 0028).
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.
Claims 2, 4, 5, 7-9 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2013/171047 Sadowsky et al.
Regarding claim 2, Sadowsky teaches that the crystal phase content is greater than 85% by weight (paragraph 0072). “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 Section I). Therefore, absent evidence of criticality, the taught range of greater than 85% reads on the claimed range of at least 95%.
Regarding claim 4, Sadowsky teaches that the SiO2 is present in a content of between 55.0 to 73.0 in percent by weight (paragraph 0054). “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 Section I). Therefore, absent evidence of criticality, the taught range of 55.0 to 73.0 wt% reads on the claimed range of 58 to 72 wt%.
Regarding claim 5, Sadowsky teaches that the A12O3 is present in a content of between 18.0 to 25.1 in percent by weight (paragraph 0053). “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 Section I). Therefore, absent evidence of criticality, the taught range of 18.0 to 25.1 wt% reads on the claimed range of 18 to 23 wt%.
Regarding claim 7, Sadowsky teaches that the glass ceramic has a composition comprising 0.0 to 3.1% by weight of SnO2 (paragraph 0057) and 0.7 to 5.0% by weight of ZrO2 (paragraph 0056). “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 Section I). Therefore, absent evidence of criticality, the taught ranges of 0.0 to 3.1% and 0.7 to 5.0 wt% reads on the claimed ranges of 1 to 2% and 2 to 3%, respectively.
Regarding claim 8, Sadowsky teaches that the glass ceramic has a composition comprising less than 0.o to 5.0% by weight of TiO2 (paragraph 0055). “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 Section I). Therefore, absent evidence of criticality, the taught range of 0.0 to 5.0 wt% reads on the claimed range of less than 0.1 wt%.
Regarding claim 9, Sadowsky teaches a ratio of A12O3 to SiO2, both in percent by weight, of 0.246 to 0.456 (paragraph 0053 teaching Al2O3 at 18.0 to 25.1 wt% and paragraph 0054 teaching SiO2 at 55.0 to 73.0 wt%).
Regarding claim 12, Sadowsky teaches that the glass ceramic has a composition comprising 0.0 to 7.2% by weight of P2O5 (paragraph 0058). “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 Section I). Therefore, absent evidence of criticality, the taught range of 0.0 to 7.2 wt% reads on the claimed range of less than 2 wt%.
Regarding claim 13, Sadowsky teaches that the glass ceramic has a composition comprising 0.0 to 2.0% by weight of Na2O + K2O (paragraph 0046). “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 Section I). Therefore, absent evidence of criticality, the taught range of 0.0 to 2.0 wt% reads on the claimed range of less than 1 wt%.
Regarding claim 14, Sadowsky teaches that the glass ceramic has a composition comprising a condition wherein Li2O - ZnO - CaO is 0.0 to 5.1 % by weight (paragraphs 0043, 0051 and 0048 teaching compositions of Li2O, ZnO and CaO of 2.0 to 5.1 wt%, 0.0 to 4.1 wt% and 0.0 to 1.5 wt%, respectively). “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 Section I). Therefore, absent evidence of criticality, the taught range of 0.0 to 5.1 wt% reads on the claimed range of less than 3 wt%.
Regarding claim 15, Sadowsky teaches that the glass ceramic has a composition comprising 0.0 to 3.1 wt% MgO (paragraph 0047) and 0.0 to 2.5 wt% BaO (paragraph 0050). “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 Section I). Therefore, absent evidence of criticality, the taught ranges of 0.0 to 3.1 wt% and 0.0 to 2.5 wt% read on the claimed range of “substantially free,” or 0 wt%.
Regarding claim 16, Sadowsky teaches 16. (Original) The glass ceramic of claim 1, wherein the glass ceramic has a composition comprising:
0.0 to 3.0 wt% of CaO + SrO (paragraph 0048 teaching CaO of 0.0 to 1.5 wt% and paragraph 0049 teaching SrO of 0.0 to 1.5 wt%), and
0.0 to 4.1 wt% by weight of ZnO (paragraph 0051), and
a sum of ZrO2 + SnO2 that is 0.7 to 8.1 wt% (paragraph 0056 teaching ZrO2 of 0.7 to 5.0 wt%, and paragraph 0057 teaching 0.0 to 3.1 wt% of SnO2), and
up to 1.35 wt% and 3.1 wt% of As2O3 and Sb2O3, respectively (paragraph 0059 teaching 0.0 to 1.35 As2O3, and paragraph 0060 teaching Sb2O3 of 0.0 to 3.1 wt%).
“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 Section I). Therefore, absent evidence of criticality, the taught range listed above read on the claimed ranges.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 8, 10 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17-19 of U.S. Patent No. 12,466,765. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the claims is minimal.
Claim Number
Application limitation
Patent limitation
Reason why not patentably distinct
1
80% or greater transmittance
85% or greater visible transmittance
Application has same limitation but broader range
1
Haze of 10 or less
Haze of 5 or less
Application has same limitation but broader range
8
Less than 0.1 wt% TiO2
Substantially free of TiO2
Both limitations are approximately the same titania content
10
Substantially free of V2O5, Nd2O3, CaO and combinations thereof
Substantially free of V2O5, Nd2O3 and CaO
Application also limits combinations but limitation of each option inherently includes combinations as well
16
Multiple limitations in the alternative, including up to 2% of one or more fining agents selected from a group consisting of As2O3, Sb2O3, halides, and SO3
up to 2% of one or more fining agents selected from a group consisting of As2O3, Sb2O3, halides, and SO3
Application does not require limitation to be met if one of the other options are met. However, if this is the chosen limitation, the claims are identical.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megha M Gaitonde whose telephone number is (571)270-3598. The examiner can normally be reached Monday-Friday 8:30 am to 5 pm.
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781