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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 20, 2026 has been entered.
Examiner’s Note
The Examiner acknowledges the amendments of claims 1 – 2. Claim 6 has been cancelled. Claims 1 – 5 & 7 – 13 are examined herein.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 – 2 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With regard to claim 1, the claim recites “from 0 to 0.5% of Li2O + Na2O + K2O…from 0.01 to 0.08% of Na2O.” It is not possible for a single embodiment of the invention contain both 0 mol% Na2O and 0.01 – 0.08 mol% Na2O. Therefore, claim 1 contains new matter.
With regard to claim 2, the claim recites “from 0 to 0.1% of Li2O + Na2O + K2O…a mol% ratio Na2O/K2O is from 1.4 to 21.”
It is not possible for there to be 0 mol% Na2O and 0 mol% K2O present in the glass sheet, as recited in the first limitation, and also have the recited mol% ratio of Na2O/K2O. Applicant’s support for the recited mol% ratio Na2O/K2O is based on the working examples (Tables 1 – 2), wherein the content of Na2O was in the range of 0.010 – 0.021 mol% and the content of K2O was in the range of 0.001 – 0.007 mol%. Therefore, claim 2 contains new matter.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3 – 5, 7 – 10, & 12 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga et al. (US 2014/0366581 A1).
With regard to claim 1, Tokunaga et al. (‘581) teach a non-alkali (alkali-free) glass, formed into a sheet (paragraph [0020]), with a glass composition, in mol%, comprising 66 – 70% SiO2, 12 – 15% Al2O3, 0 – 1.5% B2O3, 9.5 – 13% MgO, 4 – 9% CaO, 0.5 – 4.5% SrO, 0 – 1% BaO (Table 1), 2,000 ppm or less Li2O + Na2O + K2O (i.e., 0.0 – 0.12% or less) (paragraphs [0002], [0161], [0190] – [0196]), 17 to 21% MgO+CaO+SrO+BaO (paragraph [0042]). For, example Na2O may be present in the amount of 400 – 1000 ppm (0.004 – 0.01%) (paragraphs [0161] & [0190] – [0196]), which overlaps with Applicant’s claimed range of 0.01 – 0.08% Na2O. MgO is present in the range of 9.5 – 13 mol% and CaO is present in the range of 4 – 9 mol%. Therefore, the mol% ratio of MgO/CaO is a range of 1.05 – 4, which overlaps with Applicant’s claimed range of from 0.1 to 1.5. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Tokunaga et al. disclose the use of up to 1.5% B2O3, while the present claims require 2 to 4% B2O3. B2O3 is present in the range of 0 – 1.5 mol% and Al2O3 is present in the range of 12 – 15 mol%. Therefore, the mol% ratio of B2O3/Al2O3 is in the range of 0 – 0.125, which is slightly less than Applicant’s claimed range of 0.14 to 0.4.
However, Applicant’s originally filed specification, paragraphs [0033] – [0034], states the following:
[0033] B2O3 is a component that enhances chipping resistance, and can also provide the effect of increasing meltability and devitrification resistance. Thus, the lower limit amount of B2O3 is preferably 0%, more preferably more than 0%, more preferably 0.1%, further preferably 0.2%, further preferably 0.3%, further preferably 0.4%, further preferably 0.5%, further preferably 0.6%, further preferably 0.8%, further preferably 0.9%, further preferably 1%, further preferably 1.2%, further preferably 1.5%, further preferably 1.8%, further preferably 2%, and most preferably more than 2%. When the content of B2O3 is too high, the Young's modulus and the strain point tend to decrease. Thus, the upper limit amount of B2O3 is preferably 4%, more preferably 3.9%, more preferably 3.8%, further preferably 3.7%, further preferably 3.6%, further preferably 3.5%, further preferably 3.4%, further preferably 3.3%, further preferably 3.2%, and most preferably 3%.
[0034] The mol% ratio B2O3/Al2O3 is an important component ratio for increasing the Young's modulus and decreasing the viscosity in high temperature. When the mol% ratio B2O3/Al2O3 is too small, the viscosity in high temperature increases, and the manufacturing cost of the glass sheet tends to increase. Thus, the lower limit of the mol% ratio B2O3/Al2O3 is preferably 0.1, more preferably 0.11, further preferably 0.12, further preferably 0.13, further preferably 0.14, further preferably 0.15, further preferably 0.16, further preferably 0.17, further preferably 0.18, and most preferably 0.2. When the mol% ratio B2O3/Al2O3 is too large, the Young's modulus tends to decrease. Thus, the upper limit of the mol% ratio B2O3/Al2O3 is preferably 0.4, more preferably less than 0.4, further preferably 0.38, further preferably 0.36, further preferably 0.34, further preferably 0.32, and most preferably 0.3.
Furthermore, Applicant’s working Ex. No. 21 containing 1.70 mol% B2O3 and a B2O3/Al2O3 ratio of 0.13 yielded an alkali-free glass sheet with similar properties compared to the working examples containing 2 mol% B2O3 and a B2O3/Al2O3 ratio in the claimed range (see Applicant’s Ex. No. 14). Applicant did not provide any working examples in their specification containing less than 1.7 mol.% B2O3. However, paragraphs [0033] – [0034] of the broader teachings of the specification discloses 0 - 1.5 mol% B2O3 and a B2O3/Al2O3 ratio of 0 – 0.13, such as disclosed by the cited reference, are also in Applicant’s preferred ranges.
It is apparent, however, that the instantly claimed amount of 2% B2O3 and that taught by Tokunaga et al. are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 1.5% disclosed by Tokunaga et al. and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of 1.7% disclosed in the present claims is but an obvious variant of the amounts disclosed in Tokunaga et al., and thereby one of ordinary skill in the art would have arrived at the claimed invention.”
Additionally, Tokunaga et al. teach the non-alkali glass has Tokunaga et al. do teach a β-OH value is preferably 0.3/mm or less (paragraph [0183]) and a strain point of preferably higher than 730°C, and most preferably 735°C or higher (paragraphs [0166] – [0167]), which is within Applicant’s claimed range of 727°C or higher.
With regard to claim 3, as discussed above for claim 1, where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties.” In re Woodruff, 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
With regard to claim 4, Tokunaga et al. (‘581) teach the non-alkali glass does not substantially contain As2O3 and Sb2O3 (paragraph [0106]), and further comprises from 5 mol% or less of SnO2 in the glass composition (paragraph [0107]), which includes Applicant’s claimed range of 0.001 to 1 mol%.
With regard to claim 5, Tokunaga et al. (‘581) teach the non-alkali glass has a Young’s modulus of 84 GPa or more (paragraph [0175]), a strain point of 725°C or higher (paragraph [0056]). Furthermore, Tokunaga et al. teach the non-alkali glass has a glass viscosity (i.e., “liquidus viscosity”) reaches 104 dPas at 1320°C or lower (i.e. “liquidus temperature”) (paragraph [0056]).
With regard to claim 7, Tokunaga et al. (‘581) teach the non-alkali glass has a Young’s modulus of 84 GPa or more (paragraph [0175]).
With regard to claim 8, Tokunaga et al. (‘581) are silent with regard to a specific Young’s modulus is 34 GPa/g-cm3 or more.
Tokunaga et al. teach a glass composition substantially similar to the glass composition claimed by Applicant. Furthermore, Tokunaga et al. teach the composition is molded into the form of a plate having a thickness of 0.5 mm or less (paragraph [0167]). Applicant’s glass sheet has a thickness of 0.05 to 0.5 mm (paragraph [0072]), which overlaps with the range taught by Tokunaga et al. Therefore, one of ordinary skill in the art would expect the glass plate taught by Tokunaga et al. to inherently have the same properties as claimed by Applicant because Tokunaga et al. teach a glass plate of substantially similar composition and thickness as Applicant’s glass sheet.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
With regard to claim 9, Tokunaga et al. (‘581) teach the non-alkali glass has an average thermal expansion coefficient in a temperature range of from 50 – 300°C is from 30 x 10-7 to 40 x 10-7/°C (paragraphs [0056] & [0169]), which is within Applicant’s claimed temperature range of from 30 to 380°C and thermal expansion range from 30 x 10-7 to 50 x 10-7/°C.
With regard to claim 10, Tokunaga et al. (‘581) teach the non-alkali glass has a glass viscosity (i.e., “liquidus viscosity”) reaches 104 dPas at 1320°C or lower (paragraph [0056]).
With regard to claim 12, Tokunaga et al. (‘581) teach the non-alkali glass is for use in an organic EL device (paragraph [0167]).
With regard to claim 13, Tokunaga et al. (‘581) teach the non-alkali glass is for use in a magnetic disk (i.e., “magnetic recording medium”) (paragraph [0208]).
Claim(s) 1, 3 – 5, 7 – 10, & 12 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tsujimura et al. (US 2013/0288877 A1), in view of Saito et al. (US 2018/0141849 A1).
With regard to claim 1, Tsujimura et al. teach a non-alkali glass, in the form of a sheet (title & paragraphs [0010] & [0040]), wherein the glass has a composition in mol% of 66 – 69 SiO2, 12 – 15 Al2O3, 0 – 1.5 B2O3, 6 - 9.5 MgO, 7 – 9 CaO, 0.5 – 3 SrO, & 0 – 1 BaO (paragraph [0017]). The glass is completely alkali-free (i.e., 0% Li2O + Na2O + K2O). As discussed above, MgO + CaO + SrO + BaO is present in the range of 13.5 – 22.5%, which includes Applicant’s claimed range of 15 to 19%.
Tsujimura et al. teach 0% Li2O + Na2O + K2O, while the present claims require 0.01 to 0.08% of Na2O.
Applicant’s originally filed specification, paragraph [0035], states the following:
Li2O, Na2O, and K2O are components inevitably mixed from the glass raw material, and the total amount thereof is from 0 to 0.5%, preferably from 0 to 0.1%, more preferably from 0 to 0.09%, further preferably from 0.005 to 0.08%, further preferably from 0.008 to 0.06%, and most preferably from 0.01 to 0.05%. When the total amount of Li2O, Na2O, and K2O is too large, alkali ions may diffuse into a semiconductor material formed during a heat treatment step. The individual contents of Li2O, Na2O, and K2O are each preferably from 0 to 0.3%, more preferably from 0 to 0.1%, further preferably from 0 to 0.08%, further preferably from 0 to 0.07%, further preferably from 0 to 0.05%, and most preferably from 0.001 to 0.04%.
It is apparent, however, that the instantly claimed lower endpoint amount of 0.01 mol% Na2O and that taught by Tsujimura et al. are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 0 mol% Na2O disclosed by Tsujimura et al. and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of 0.01 mol% Na2O disclosed in the present claims is but an obvious variant of the amounts disclosed in Tsujimura et al., and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Tsujimura et al. disclose the use of up to 1.5% B2O3, while the present claims require 2 to 4% B2O3. B2O3 is present in the range of 0 – 1.5 mol% and Al2O3 is present in the range of 12 – 15 mol%. Therefore, the mol% ratio of B2O3/Al2O3 is in the range of 0 – 0.125, which is slightly less than Applicant’s claimed range of 0.14 to 0.4.
However, Applicant’s originally filed specification, paragraphs [0033] – [0034], states the following:
[0033] B2O3 is a component that enhances chipping resistance, and can also provide the effect of increasing meltability and devitrification resistance. Thus, the lower limit amount of B2O3 is preferably 0%, more preferably more than 0%, more preferably 0.1%, further preferably 0.2%, further preferably 0.3%, further preferably 0.4%, further preferably 0.5%, further preferably 0.6%, further preferably 0.8%, further preferably 0.9%, further preferably 1%, further preferably 1.2%, further preferably 1.5%, further preferably 1.8%, further preferably 2%, and most preferably more than 2%. When the content of B2O3 is too high, the Young's modulus and the strain point tend to decrease. Thus, the upper limit amount of B2O3 is preferably 4%, more preferably 3.9%, more preferably 3.8%, further preferably 3.7%, further preferably 3.6%, further preferably 3.5%, further preferably 3.4%, further preferably 3.3%, further preferably 3.2%, and most preferably 3%.
[0034] The mol% ratio B2O3/Al2O3 is an important component ratio for increasing the Young's modulus and decreasing the viscosity in high temperature. When the mol% ratio B2O3/Al2O3 is too small, the viscosity in high temperature increases, and the manufacturing cost of the glass sheet tends to increase. Thus, the lower limit of the mol% ratio B2O3/Al2O3 is preferably 0.1, more preferably 0.11, further preferably 0.12, further preferably 0.13, further preferably 0.14, further preferably 0.15, further preferably 0.16, further preferably 0.17, further preferably 0.18, and most preferably 0.2. When the mol% ratio B2O3/Al2O3 is too large, the Young's modulus tends to decrease. Thus, the upper limit of the mol% ratio B2O3/Al2O3 is preferably 0.4, more preferably less than 0.4, further preferably 0.38, further preferably 0.36, further preferably 0.34, further preferably 0.32, and most preferably 0.3.
Furthermore, Applicant’s working Ex. No. 21 containing 1.70 mol% B2O3 and a B2O3/Al2O3 ratio of 0.13 yielded an alkali-free glass sheet with similar properties compared to the working examples containing 2 mol% B2O3 and a B2O3/Al2O3 ratio in the claimed range (see Applicant’s Ex. No. 14). Applicant did not provide any working examples in their specification containing less than 1.7 mol.% B2O3. However, paragraphs [0033] – [0034] of the broader teachings of the specification discloses 0 - 1.5 mol% B2O3 and a B2O3/Al2O3 ratio of 0 – 0.13, such as disclosed by the cited reference, are also in Applicant’s preferred ranges.
It is apparent, however, that the instantly claimed amount of 2% B2O3 and that taught by Tsujimura et al. are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 1.5% disclosed by Tsujimura et al. and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of 2% disclosed in the present claims is but an obvious variant of the amounts disclosed in Tsujimura et al., and thereby one of ordinary skill in the art would have arrived at the claimed invention.
MgO is present in the range of 6 – 9.5 mol% and CaO is present in the range of 7 – 9 mol%. Therefore, the mol% ratio of MgO/CaO is a range of 0.66 – 1.056, which is within Applicant’s claimed range of from 0.1 to 1.5.
Additionally, Tsujimura et al. teach a strain point of 735°C or higher (paragraph [0017]), which is within Applicant’s claimed range of 727°C or higher.
Tsujimura et al. teach β-OH values for glass sheet working examples 1 – 2 for glass sheets (containing 0 mol% B2O3) of 0.3/mm (Table 1).
Furthermore, Saito et al. teach a non-alkali glass substrate comprising a β-OH value preferably less than 0.20/mm. When the β-OH value is too large, the strain point is liable to lower. When the β-OH is too small, the meltability is liable to lower. The β-OH value can be adjusted by a number of means, including selecting raw materials having low water contents, adding a desiccant, such as Cl or SO3, reducing the water content in a furnace atmosphere, performing N2 bubbling, adopting a small melting surface, increasing the flow rate of the molten glass, or heating through application of a current with a heating electrode (paragraphs [0053] – [0054]).
Therefore, based on the teachings of Saito et al., it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to minimize the β-OH value, preferably less than 0.20/mm, of the glass substrate taught by Tsujimura et al. in a variety of ways in order to achieve the desired strain point of the glass substrate, regardless of the B2O3 content.
With regard to claim 3, as discussed above for claim 1, where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties.” In re Woodruff, 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
With regard to claim 4, Tsujimura et al. teach the alkali-free glass does not substantially contain As2O3 and Sb2O3 (paragraph [0036]), and further comprises from 5 mol% or less of SnO2, in the glass composition, which includes Applicant’s claimed range of 0.001 to 1 mol%.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 5, Tsujimura et al. teach the alkali-free glass has a Young’s modulus of 84 GPa or more (paragraph [0049]), and a strain point of 735°C or higher (paragraph [0017]). Furthermore, the alkali-free glass has a temperature T4 (i.e., “liquidus temperature”) at which a glass viscosity (i.e., “liquidus viscosity”) is 104 dPas of 1,340°C or lower, more preferably 1,330°C or lower (abstract, paragraphs [0017] & [0045]).
With regard to claim 7, Tsujimura et al. the alkali-free glass has a Young’s modulus of 84 Gpa or more (paragraph [0049]).
With regard to claim 8, Tsujimura et al. are silent with regard to a specific Young’s modulus is 34 GPa/g-cm3 or more.
Tsujimura et al. teach a glass composition substantially similar to the glass composition claimed by Applicant. Furthermore, Tsujimura et al. teach the composition is molded into the form of a plate having a thickness of 100 µm or less (0.100 mm or less) (paragraph [0040]). Applicant’s glass sheet has a thickness of 0.05 to 0.5 mm (paragraph [0072]), which overlaps with the range taught by Tsujimura et al. Therefore, one of ordinary skill in the art would expect the glass plate taught by Tsujimura et al. to inherently have the same properties as claimed by Applicant because Tsujimura et al. teach a glass plate of substantially similar composition and thickness as Applicant’s glass sheet.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
With regard to claim 9, Tsujimura et al. teach the alkali-free glass has an average thermal expansion coefficient at from 50 to 350°C of from 30 x 10-7 to 50 x 10-7/°C, which is within Applicant’s claimed temperature range of from 30 to 380°C and thermal expansion range from 30 x 10-7 to 50 x 10-7/°C.
With regard to claim 10, Tsujimura et al. teach the alkali-free glass has a temperature T4 at which a glass viscosity (i.e., “liquidus viscosity”) is 104 dPas of 1,340°C or less (abstract, paragraphs [0017] & [0045]).
With regard to claim 12, Tsujimura et al. the alkali-free glass is for use in an organic EL device (paragraph [0039]).
With regard to claim 13, Tsujimura et al. do not explicitly teach the glass substrate is for use in magnetic recording medium.
However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
As discussed above for claim 1, Tsujimura et al. teach a glass substrate of similar composition and structure. The glass substrate taught by Tsujimura et al. is capable of performing the intended use in a magnetic recording medium, and thus, meets the claim.
Claim(s) 1 – 5, 7 – 10, & 12 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Akihiro (*CN 103429547 A), in view of Saito et al. (US 2018/0141849 A1).
Submitted by Applicant with IDS filed 7/15/2025
With regard to claim 1, Akihiro et al. teach a glass substrate in the form of a plate (i.e., “sheet”) (paragraph [0154]) for a flat panel display (paragraph [0014]) comprising a glass composition in mol% of ranges larger than all of the ranges recited above (abstract). The total amount of alkali-metals is 0.01 – 0.5 mol% (paragraph [0056]). Applicant’s claim 1 recites an alkali-free glass wherein the glass composition contains up to 0.5 mol% alkali compounds (Li2O + Na2O + K2O). Therefore, based on Applicant’s recited glass composition, Akihiro et al. teach an alkali-free sheet.
Akihiro et al. teach the glass substrate has a composition comprising, in mol%, of 55 – 80% SiO2, 8 – 20% Al2O3, 0 – 8% B2O3, 0.01 – 0.5% Li2O + N2O + K2O, 0 – 15% MgO, 0 – 20% CaO, 0 – 15% SrO, 0 – 10% BaO, (paragraphs [0017] – [0025] & [0056]). Furthermore, based on the ranges given above, the composition contains 0 – 60% MgO + CaO + SrO + BaO, which includes Applicant’s claimed range of 15 to 19%.
Based on the ranges discussed above, a mol% ratio B2O3/Al2O3 is from 0 – 1, which includes Applicant’s claimed range of 0.14 to 0.4. A molar ratio MgO/RO, wherein RO is the total amount of MgO, CaO, SrO, and BaO, is within the range of 0.15 to 0.9 (paragraph [0138]), which overlaps with Applicant’s claimed range of 0.1 to 1.5.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Akihiro et al. teach a strain point is preferably 695°C or higher (paragraph [0146]), which includes Applicant’s claimed range of 700°C or more.
Akihiro et al. do not explicitly teach the β-OH value of the glass sheet.
Saito et al. teach a non-alkali glass substrate comprising a β-OH value preferably less than 0.20/mm. When the β-OH value is too large, the strain point is liable to lower. When the β-OH is too small, the meltability is liable to lower. The β-OH value can be adjusted by a number of means, including selecting raw materials having low water contents, adding a desiccant, such as Cl or SO3, reducing the water content in a furnace atmosphere, performing N2 bubbling, adopting a small melting surface, increasing the flow rate of the molten glass, or heating through application of a current with a heating electrode (paragraphs [0053] – [0054]).
Therefore, based on the teachings of Saito et al., it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to minimize the β-OH value, preferably less than 0.20/mm, of the glass substrate taught by Akihiro et al. in order to increase the strain point of the glass substrate.
With regard to claim 2, Akihiro et al. teach a glass substrate in the form of a plate (i.e. “sheet”) (paragraph [0154]) for a flat panel display (paragraph [0014]) comprising a glass composition in mol% of ranges larger than all of the ranges recited above (abstract). The total amount of alkali-metals (Li2O + Na2O + K2O) is 0.01 – 0.5 mol% (paragraph [0056]), which includes Applicant’s recited range of 0.01 – 0.08 mol% Na2O, as well as content of Na2O and K2O that meet Applicant’s recited mol% ratio of Na2O/K2O in the range of 1.4 – 21.
Applicant’s claim 1 recites an alkali-free glass wherein the glass composition contains up to 0.5 mol% alkali compounds (Li2O + Na2O + K2O). Therefore, based on Applicant’s recited glass composition, Akihiro et al. teach an alkali-free sheet.
Akihiro et al. teach the glass substrate has a composition comprising, in mol%, of 55 – 80% SiO2, 8 – 20% Al2O3, 0 – 8% B2O3, 0.01 – 0.5% Li2O + Na2O + K2O, 0 – 15% MgO, 0 – 20% CaO, 0 – 15% SrO, 0 – 10% BaO (paragraphs [0017] – [0025] & [0056]). Furthermore, based on the ranges given above, the composition contains 0 – 60% MgO + CaO + SrO + BaO, which includes Applicant’s claimed range of 15 to 19%.
Based on the ranges discussed above, a mol% ratio B2O3/Al2O3 is from 0 – 1, which includes Applicant’s claimed range of 0.14 to 0.3. A molar ratio MgO/RO, wherein RO is the total amount of MgO, CaO, SrO, and BaO, is within the range of 0.15 to 0.9 (paragraph [0138]).
Akihiro et al. teach a molar ratio MgO/RO, wherein RO is the total amount of MgO, CaO, SrO, and BaO, is within the range of 0.15 to 0.9 (paragraph [0138]), which overlaps with Applicant’s claimed range of 0.5 to 1.4.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Akihiro et al. teach a strain point is preferably 695°C or higher (paragraph [0146]), which includes Applicant’s claimed range of 700°C or more.
Akihiro et al. do not explicitly teach the β-OH value of the glass sheet.
Saito et al. teach a non-alkali glass substrate comprising a β-OH value preferably less than 0.20/mm. When the β-OH value is too large, the strain point is liable to lower. When the β-OH is too small, the meltability is liable to lower. The β-OH value can be adjusted by a number of means, including selecting raw materials having low water contents, adding a desiccant, such as Cl or SO3, reducing the water content in a furnace atmosphere, performing N2 bubbling, adopting a small melting surface, increasing the flow rate of the molten glass, or heating through application of a current with a heating electrode (paragraphs [0053] – [0054]).
Therefore, based on the teachings of Saito et al., it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to minimize the β-OH value, preferably less than 0.20/mm, of the glass substrate taught by Akihiro et al. in order to increase the strain point of the glass substrate.
With regard to claim 3, as discussed above for claim 1, the content of B2O3 is from 0 – 8 mol%, which includes Applicant’s claimed range of 2 – 3 mol%.
With regard to claim 4, Akihiro et al. do not teach the presence of As2O3 or Sb2O3. Furthermore, Akihiro et al. teach SnO2 may be present in the amount of 0.01 to 0.2 mol% (paragraph [0126]), which is within Applicant’s claimed range of 0.01 to 1 mol%.
With regard to claim 5, Akihiro et al. teach a strain point is preferably 695°C or higher (paragraph [0146]), which includes Applicant’s claimed range of 700°C or more. Akihiro et al. do not explicitly teach a Young’s modulus is 83 GPa or more and a liquidus temperature is 1350°C or less.
However, as discussed above for claim 5, Akihiro et al. teach a glass composition substantially similar to the glass composition claimed by Applicant. Furthermore, Akihiro et al. teach the composition is molded into the form of a plate having a thickness of 0.1 – 1.1 mm (paragraph [0154]). Applicant’s glass sheet has a thickness of less than 0.7 mm, which overlaps with the range taught by Akihiro et al. Therefore, one of ordinary skill in the art would expect the glass plate taught by Akihiro et al. to inherently have the same properties as claimed by Applicant because Akihiro et al. teach a glass plate of substantially similar composition and thickness as Applicant’s glass sheet.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
With regard to claim 7, as discussed above for claim 5, Akihiro et al. do not explicitly teach a Young’s modulus is higher than 84 GPa. However, it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With regard to claim 8, Akihiro et al. do not explicitly teach a specific Young’s modulus is 34 GPa/g-cm3 or more. However, it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With regard to claim 9, Akihiro et al. teach an average thermal expansion coefficient in a temperature range of 100 – 300°C is from 28x10-7/°C or more and less than 50 x 10-7/°C (paragraph [0145]), which includes Applicant’s claimed range of an average thermal expansion coefficient in a temperature range of from 30 to 380°C is from 30 x 10-7 to 50 x 10-7/°C.
With regard to claim 10, Akihiro et al. do not explicitly teach a liquidus viscosity of 104.0 dPa-s or more. However, it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With regard to claim 12, Akihiro et al. the glass substrate is for use in an organic EL device (paragraphs [0002] & [0155]).
With regard to claim 13, Akihiro et al. do not explicitly teach the glass substrate is for use in magnetic recording medium.
However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
As discussed above for claim 1, Akihiro et al. teach a glass substrate of similar composition and structure. The glass substrate taught by Akihiro et al. is capable of performing the intended use in a magnetic recording medium, and thus, meets the claim.
Claim(s) 1 – 5, 7 – 10, & 12 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga et al. (US 2019/0185368 A1).
With regard to claim 1, Tokunaga et al. (‘368) teach an alkali-free glass comprising, in mol%, 65 – 75% SiO2, 9 – 15% Al2O3, 0 – 3% B2O3, 0.003 – 0.06% Na2O, 0.003 – 0.06% K2O, 0 – 12% MgO, 0 – 8% CaO, 0 – 6% SrO, 0 – 5% BaO, 12 – 22% MgO + CaO + SrO + BaO (paragraph [0011]), which overlaps Applicant’s claimed ranges. As such, Li2O + Na2O + K2O is in the range of 0.003 – 0.08%. Furthermore, the mol% ratio of B2O3/Al2O3 is in the range 0.33 or less, which includes Applicant’s claimed range of 0.14 – 0.3.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The β-OH is less than 0.35/mm (paragraph [0111]) and the strain point is more than 720°C (paragraph [0094] – [0095]).
With regard to claim 2, Tokunaga et al. (‘368) teach an alkali-free glass comprising, in mol%, 65 – 75% SiO2, 9 – 15% Al2O3, 0 – 3% B2O3, 0.003 – 0.06% Na2O, 0 – 0.02% K2O, 0 – 12% MgO, 0 – 8% CaO, 0 – 6% SrO, 0 – 5% BaO, 12 – 22% MgO + CaO + SrO + BaO (paragraph [0011]), which overlaps Applicant’s claimed ranges. As such, Li2O + Na2O + K2O is in the range of 0.003 – 0.08% and the mol% ratio of Na2O/K2O includes the range of 21 or less. For example, working Ex. 2 & Ex. 5 have a Na2O/K2O ratio of 9. Furthermore, the mol% ratio of B2O3/Al2O3 is in the range 0.33 or less, which includes Applicant’s claimed range of 0.14 – 0.3.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The β-OH is less than 0.35/mm (paragraph [0111]) and the strain point is more than 720°C (paragraph [0094] – [0095]).
With regard to claim 3, as discussed above for claim 1, Tokunaga et al. (‘368) teach 0 – 3% B2O3, which includes Applicant’s claimed range of 2 – 3 mol%.
With regard to claim 4, Tokunaga et al. (‘368) teach the glass does not substantially contain As2O and Sb2O3 (paragraph [0041]), and further comprises 0 – 0.12% SnO2, which overlaps with Applicant’s claimed range of 0.001 – 1 mol%. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 5, Tokunaga et al. (‘368) teach the glass the sheet has Young’s modulus of 83 GPa or more (paragraph [0102]) and a liquidus temperature (T4) at which the glass viscosity becomes 104 dPa/s is 1350°C or less (paragraph [0011]).
With regard to claim 7, Tokunaga et al. (‘368) teach the glass the sheet has Young’s modulus of 84 GPa or more (paragraph [0102]).
With regard to claim 8, Tokunaga et al. (‘368) teach working examples in which the specific elastic (Young’s) modulus is in the range of 32.6 – 35 MNm/kg (wherein 1 MNm/kg = 1 GPa/(g/cm3) (Tables 1 – 7), which overlap Applicant’s claimed range of 34 GPa/g-cm3 or more. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 9, Tokunaga et al. (‘368) teach the glass has an average thermal expansion coefficient from 50 – 350°C being from 30 x 10-7/°C to 45 x 10-7/°C (paragraph [0097). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 10, as discussed for claim 5 above, a liquidus temperature (T4) at which the glass viscosity becomes 104 dPa/s (liquidus viscosity) is 1350°C or less (paragraph [0011]).
With regard to claim 12, Tokunaga et al. (‘368) teach the glass is for use in an organic EL device (paragraphs [0095] & [0139]).
With regard to claim 13, Tokunaga et al. (‘368) teach the glass is for use in for use in magnetic disks (i.e., “recording medium”) (paragraph [0139]).
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga et al. (‘581), as applied to claim 1 above, and further in view of Bookbinder et al. (US 2019/0375668 A1).
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tsujimura et al. & Saito et al., as applied to claim 1 above, and further in view of Bookbinder et al. (US 2019/0375668 A1).
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Akihiro et al. & Saito et al., as applied to claim 1 above, and further in view of Bookbinder et al. (US 2019/0375668 A1).
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga et al. (‘368), as applied to claim 1 above, and further in view of Bookbinder et al. (US 2019/0375668 A1).
With regard to claim 11, the references cited above fail to teach the alkali-free glass sheet has a rectangular shape with a short side of 1500 mm or more.
Bookbinder et al. teach a glass sheet for visual display device (paragraph [0003]), wherein the glass sheet may be any shape suitable for a particular application. For ease of description, it is assumed the glass sheet has a rectangular sheet wherein the width (short side) is equal to or greater than about 1500 mm (paragraph [0081] & Fig. 1).
Therefore, based on the teachings of Bookbinder et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date for the alkali-free glass sheet for use as a display device taught by Tokunaga et al., Tsujimura et al., or Akihiro et al. as a rectangular shape with a width (short side) equal to or greater than 1500 mm based on the desired display device application.
Response to Arguments
Applicant argues, “Beginning with Tokunaga, an object of Tokunaga is to provide a non-alkali glass substrate having a high strain point. See Tokunaga, PP [0001], [0003], and [0005]. Tokunaga explicitly discloses that ‘B2O3 tends to decrease strain point,’ which is contrary to its object. See Tokunaga, [0003]. Accordingly, in furtherance of its object, Tokunaga restricts the B2O3 content in the glass composition to at most 1.5 mol%. See Tokunaga, PP [00040], [0049], [0063], and [0070].
“In contrast, claim 1 of the subject application requires a minimum of 2 mol% B2O3, which is beyond Tokunaga’s upper limit of 1.5 mol%” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant’s claim recites “2 – 4 mol% B2O3,” wherein each data point has one significant figure. One of ordinary skill in the art would not interpret Applicant’s claimed range to be equal to a recited range of “2.0 – 4.0 mol%,” wherein each data point has two significant figures. Data points containing two significant figures are considered to be substantially equivalent to data points containing one significant figure when the last number after the decimal point is rounded up. For example, 1.5 rounds up to 2 when the data point is considered as one significant figure. Therefore, when considering the rules of significant figures, one of ordinary skill in the art would consider the value of 1.5 mol% B2O3 taught by Tokunaga et al. to be within Applicant’s claimed range.
Second, even if one of ordinary skill in the art considered 1.5 mol% B2O3 to be outside of Applicant’s claimed range, Applicant’s specification does not recognize a significant difference in properties for a glass composition comprising 1.5 mol% B2O3 vs. 2 mol% B2O3. Where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties.” In re Woodruff, 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Third, Applicant’s specification, as well as the teachings of Tokunaga et al. and Saito et al., teach multiple variables (not B2O3 content alone) that influences the measured strain point of glass. As demonstrated by Tokunaga et al., a difference of 0.5 mol% B2O3 between Applicant’s claimed B2O3 content and the preferred maximum taught by Tokunaga et al. would not necessarily result in an undesirable strain point.
Applicant argues, “Now turning to Tsujimura and Saito, Applicant respectfully submits this combination of art is similarly deficient” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: The Examiner’s rationales for maintaining the rejection over Tokunaga et al. discussed above also applies to the rejection over Tsujimura et al.
Applicant argues, “Lastly, referring to Saito, Applicant respectfully submits that Saito fails to remedy Tsujimura’s deficiencies with respect to claim 1” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues, “Beginning with Akihiro, Akihiro discloses Na2O is a component that ‘may dissolve from the glass substrate and deteriorate TFT characteristics, or increase the thermal expansion coefficient of the glass and damage the substrate during heat treatment.’ See Akihiro, ¶ [0117]. Consistent therewith, Akihiro discloses Na2O is substantially not contained in the glass composition. See Akihiro, ¶ [0117]. It follows that none of Akihiro’s examples, as understood, include Na2O” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, as discussed above, the broader teachings of the reference of Akihiro et al. discloses a glass substrate comprises 0.01 – 0.5 mol% Li2O + Na2O + K2O (paragraphs [0017] – [0025] & [0056]), which allows for the presence of Na2O in the range of 0 – 0.5 mol%.
Second, Akihiro et al. teach Na2O is “[p]referably…substantially absent” (paragraph [0117]). The term “substantially absent” would not be interpreted by one of ordinary skill in the art to mean absolutely absent. Based on the teachings of Akihiro et al., one of ordinary skill in the art would interpret the phrase “substantially absent” to mean Na2O content is zero or low enough content to not deteriorate TFT characteristics or increase the coefficient of thermal expansion of the glass. See MPEP 2173.05(b).III.D. regarding how the courts have interpretated the term “substantially.”
Similarly, a person of ordinary skill in the art would interpret Applicant’s claimed “alkali-free glass sheet…comprising 0.01 to 0.08% Na2O” (wherein the term alkali includes sodium (Na)), and Akihiro’s teaching of a glass substrate such that “preferably, Li2O and Na2O are substantially absent” to have a similar meaning.
Third, Akihiro’s lack of a working example containing any Na2O does not teach away from the broader teaching of Na2O present in the amount of up to 0.5 mol%. The teachings of a reference are not limited to the preferred embodiments. MPEP 2123 [R-6]. II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
Applicant argues, “Applicant respectfully submit that Saito does not providing any suggestion or motivation to have a person having ordinary skill in the art to have increased the amount of Na2O in the glass compositions of Akihiro” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant is directed to the discussion above regarding the teachings of Akihiro et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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