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 § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1, 5-7,10-11,14, 16 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO2012132328(WO’328).
Regarding claims 1, 5-7,10-11, and 14, WO’328 discloses a glass composition according to example 21. Please see example 21.
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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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). ). “Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claims 16 and 18, 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries 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.
Claim(s) 1-14, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2012132328(WO’328, submitted by applicants on 02/16/024).
Regarding claims 1-14, WO’328 discloses a glass composition expressed in mol%, SiO2: 55 to 75%, B2O3: 5 to 17%, Al2O3: 5 to 15%, MgO: 0 to 10%, CaO: 0 to 10%, SrO: 0 to 5%, BaO: 0 to 1%, ZnO: 0 to 6%, Li2O: 0.6 to 4%, Na2O: 0 to 1%, K2O: 0 to 1%, SnO2: 0 to 1% Fe2O3: 0 to 5%, TiO2: 0 to 30%, and CeO2: 0 to 10%. See abstract.
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" or “encompassing” ranges, and overlapping or encompassing ranges have been held to establish prima facie obviousness (MPEP 2144.05).
the Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claims 16 and 18, the Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Claim(s) 15, and 19 - 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2012132328(WO’328), further in view of US20140249018(US’018).
Regarding claim 15 and 19-27, WO’328 discloses a glass composition expressed in mol%, SiO2: 55 to 75%, B2O3: 5 to 17%, Al2O3: 5 to 15%, MgO: 0 to 10%, CaO: 0 to 10%, SrO: 0 to 5%, BaO: 0 to 1%, ZnO: 0 to 6%, Li2O: 0.6 to 4%, Na2O: 0 to 1%, K2O: 0 to 1%, SnO2: 0 to 1%, Fe2O3: 0 to 5%, TiO2: 0 to 30%, and CeO2: 0 to 10%. See abstract.
But it is silent about using ZrO2 as applicant set forth in claim 15.
US’018, also drawn to a glass composition, discloses that ZrO2 can increase the chemical durability and improve the acid resistance. The ZrO2 content is preferably less than 0.5%. See [0081].
Thus, it would have been obvious to one of ordinary skill in the art to use ZrO2 in the claimed amount in the teaching of WO’328, motivated by the fact that US’018 discloses ZrO2 can increase the chemical durability and improve the acid resistance. The ZrO2 content is preferably less than 0.5%. See [0081].
The Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Claim(s) 1-4, 7-16, 18-19, 25-26, and 28-30 is/are rejected under 35 U.S.C. 103 as being unpatentable US20100035745A1(US’745).
Regarding claims 1-4, 7-15, 25-26, and 28-30, US’745 discloses a glass composition including, in terms of mole %, 50 to 85% of SiO2, 7-20% of Al2O3, 0-7% B2O3, 0-10% MgO, 0 to 20% of Na2O, 0 to 20% of K2O, 0-3% CeO2, 0.001 to 10% of TiO2, 0-10% CaO, 0-10% SrO, 0-0.1% ZrO2 and 0-3% SnO2. See [0032] - [0035]; [0047]; [0048]; [0049]; [0037]; [0038]; [0051] and [0054].
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" or “encompassing” ranges, and overlapping or encompassing ranges have been held to establish prima facie obviousness (MPEP 2144.05).
The Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 16, the glass density is 2.4 g/cm3 or less. See [0070].
Regarding claim 18, It is preferred that the tempered glass substrate of the present invention have a plate thickness of 0.3 mm or less. See [0061]. The claimed properties are deemed to naturally flow from the composition in the prior art, since the prior art teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claims 25-26, US’745 discloses a glass composition including, in terms of mole %, 50 to 85% of SiO2, 7-20% of Al2O3, 0-7% B2O3, 0-10% MgO, 0 to 20% of Na2O, 0 to 20% of K2O, 0-3% CeO2, 0.001 to 10% of TiO2, 0-10% CaO, 0-10% SrO, 0-0.5% ZrO2 and 0-3% SnO2. See [0032] - [0035]; [0047]; [0048]; [0049]; [0037]; [0038];[0051] and [0054].
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" or “encompassing” ranges, and overlapping or encompassing ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claims 28-29, US’745 discloses a glass composition including, in terms of mole %, 50 to 85% of SiO2, 7-20% of Al2O3, 0-7% B2O3, 0-10% MgO, 0 to 20% of Na2O, 0-3% CeO2, 0.001 to 10% of TiO2, and 0-3% SnO2. See [0032]-[0035]; [0047];[0037] and [0054].
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" or “encompassing” ranges, and overlapping or encompassing ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Response to Arguments
Applicant's arguments filed 07/09/2026 have been fully considered but they are not persuasive.
The applicant argues that Hiromasa (WO’328) fails to expressly or inherently disclose any glass composition that includes the combination or at least these elements of independent claim 1.
The Examiner respectfully submits that WO’328 discloses a glass composition according to example 21. Please see example 21. Although WO’328 does not teach” the glass composition has a CTE when measured at 500 degrees C, of not greater than 3.4 ppm”, it has been held that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). ). “Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The applicant argues that Example 21 of Hiromasa cited by the Office has a CTE of 34.7 x 10-7/°C, which is outside the claimed range.
The Examiner respectfully submits that WO’328 discloses that the coefficient of thermal expansion of each test piece was measured using a differential thermal dilatometer, and the average coefficient of linear expansion from 25 to 450 ° C. was calculated.
The applicant argues that Hiromasa fails to teach any glass composition including the recited amounts of SiO2 and CeO2 and in which "the glass composition has a CTE when measured at 500 degrees C, of not greater than 3.4 ppm" as recited in claim 1.
The Examiner respectfully submits that WO’328 discloses SiO2 content of 67.90 mole% and CeO2 content of 0.65 mole%. Although WO’328 does not teach” the glass composition has a CTE when measured at 500 degrees C, of not greater than 3.4 ppm”, it has been held that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). ). “Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). WO’328 discloses a glass composition expressed in mol%, SiO2: 55 to 75%, B2O3: 5 to 17%, Al2O3: 5 to 15%, MgO: 0 to 10%, CaO: 0 to 10%, SrO: 0 to 5%, BaO: 0 to 1%, ZnO: 0 to 6%, Li2O: 0.6 to 4%, Na2O: 0 to 1%, K2O: 0 to 1%, SnO2: 0 to 1% Fe2O3: 0 to 5%, TiO2: 0 to 30%, and CeO2: 0 to 10%. See abstract. The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" or “encompassing” ranges, and overlapping or encompassing ranges have been held to establish prima facie obviousness (MPEP 2144.05). The Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
The applicant argues that Koyama does not disclose, teach, or fairly suggest any glass composition that includes SiO2 within the range of 65.7 mol% and 68 mol%, CeO2 with the range of 0.02 mol%, and 1.6 mol% and a CTE of not greater than 3.4 ppm when measured at 500 degrees C. In fact, Koyama does not disclose any glass composition that includes CeO2.
The Examiner respectfully submits that in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). US’018, also drawn to a glass composition, is used to show that ZrO2 can increase the chemical durability and improve the acid resistance. The ZrO2 content is preferably less than 0.5%. See [0081].
The applicant argues that Applicant submits that the Office has failed to provide specific, concrete evidence to show that a glass having a compositions of Murata would have a "CTE when measured at 500 degrees C, of not greater than 3.4 ppm" as recited in independent claims 1, 19, 25, 28, and 30 and, thus, has failed to establish inherency.
The Examiner respectfully submits that US’745 discloses a glass composition including, in terms of mole %, 50 to 85% of SiO2, 7-20% of Al2O3, 0-7% B2O3, 0-10% MgO, 0 to 20% of Na2O, 0 to 20% of K2O, 0-3% CeO2, 0.001 to 10% of TiO2, 0-10% CaO, 0-10% SrO, 0-0.1% ZrO2 and 0-3% SnO2. See [0032] - [0035]; [0047]; [0048]; [0049]; [0037]; [0038]; [0051] and [0054].The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" or “encompassing” ranges, and overlapping or encompassing ranges have been held to establish prima facie obviousness (MPEP 2144.05). The Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
The applicant argues that Murata teaches that its glass compositions have a coefficient of thermal expansion of "preferably 40 to 95x10-7/°C., more preferably 70 to 95x10-7/°C., still more preferably 75 to 95x10-7/°C., particularly preferably 77 to 90x10-7/ C., and most preferably 80 to 90x10-7/°C." Murata, paragraph [0071]. Thus, Murata expressly discloses a preference for CTEs of greater than 0.34 ppm (34x10-7/°C) and not a CTE of "not greater than 3.4 ppm" as recited in independent claims 1, 19, 25, 28, and 30.
The Examiner respectfully submits that the prior art discloses that the tempered glass has a thermal expansion coefficient at 30 to 380° C. of 40 to 95×10−7/° C. See [0021].
Since the rejection of the independent claims are proper, the rejections of depended claims stand.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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