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 § 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 1-18, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over 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),
wherein the glass ceramic has a composition comprising SnO2 and ZrO2 as nucleating agents (paragraph 0072).
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).
Since the instant specification is silent to unexpected results, the specific haze amount is not considered to confer patentability to the claims. As the physical and optical characteristics are variables that can be modified, among others, by adjusting the parameters of the method, the precise haze would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed haze cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the invention, would have optimized, by routine experimentation, the haze amount in the glass ceramic to obtain the desired optical characteristic (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). See MPEP 2144.05 Section II.
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 3, Sadowsky teaches that the composition comprises SiO2, A12O3. and Li2O as main components (paragraph 0064).
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 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 7, Sadowsky teaches that the composition comprises 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 composition comprises 0.0 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 10, Sadowsky teaches that the composition 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 12, Sadowsky teaches that the composition comprises 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 composition comprises 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 composition comprises 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 composition comprises 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 range of 0.0 to 2.5 wt% reads on the claimed range of “substantially free,” or 0 wt%.
Regarding claim 16, Sadowsky teaches the 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.
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).
Regarding claim 22, Sadowsky teaches that the keatite as a main crystal phase has an amorphous residual-glass-phase of less than 15% by weight (paragraph 0072 teaching more than 85% keatite such that the remaining amount, less than 15%, would be amorphous).
Regarding claim 23, Sadowsky teaches most of the limitations above with respect to claim 1. Sadowsky further teaches that the glass ceramic has a composition that comprises:
at least 2.0 wt% of Li2O (paragraph 0043),
0.0 to 3.1 wt% MgO (paragraph 0047). “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 3.1 wt% reads on the claimed range of “substantially free,” or 0 wt%, and
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 “substantially free” or 0 wt%.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2013/171047 Sadowsky et al as applied to claim 1 above, and further in view of US 2020/0017399 Click et al.
Regarding claim 21, Sadowsky teaches the glass ceramic with keatite as the main crystal phase (paragraph 0072) but does not teach the crystal size. Click teaches a glass ceramic where the crystal size is 5-125 nm (paragraph 0088). “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 5-125 nm reads on the claimed range of less than 100 nm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the crystal size taught by Click in the product of Sadowsky because small grains produce a transparent product (paragraph 0070).
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, 2 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
1
comprising SnO2 and ZrO2 as nucleating agents
wherein SnO2 and ZrO2 are nucleating agents
Same limitation
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.
Response to Arguments
Applicant’s arguments with respect to the claimed haze have been considered but are moot because the new ground of rejection relies on a different teaching.
Applicant's arguments filed June 4, 2026, have been fully considered but they are not persuasive.
Applicant argues that Sadowsky doesn’t teach visible transmittance. However, the claim reads “transmittance.” It does not specify which wavelengths. While the specification may refer to “transmittance” as being for visible light, this feature is specified in the specification and should be specified in the claim.
Applicant argues that Sadowsky’s examples do not read on the claims. However, the examples are just that – examples. The full teaching of Sadowsky’s ranges are discussed in the text. Please note that example 1 does refer to the presence of SnO2.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781
Prosecution Insights