DETAILED ACTION
The claims 1-20 are pending and presented for the examination.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/28/2024 is being considered by the examiner.
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 4-7, 9-12, and 14 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. Each of said claims recites limitations to percentages of various compositional components, but does not specify if the percentages are given in weight percent or molar percentage. As such, the scope of the claim coverage is impossible to ascertain from the claim language itself, and the claims are indefinite under USC 112.
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 1-2, 4-12, 14-15, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Momono (WO 2019131123 A1).
Regarding claim 1, Momono teaches an optical glass having a λ5 value falling within the range 370-410 nm (see Table 1, example 8 and Table 2) and comprising La2O3, SiO2, B2O3, TiO2, Nb2O5, and WO3 each falling within the corresponding range of the instant claims. Further, the Momono glasses that meet the instant λ5 limitation also meet each compositional ratio limitation of the instant claims (i.e. those of dependent claims 8, 10, and 12) and the compositional sum limitations of the instant claims (i.e. those of claims 6 and 13). Said compositionally equivalent glasses have indices of refraction of greater than 2.0 (see Tables 1 and 2). While Momono does not specify the λ70 wavelength of the inventive glasses, this property would be inherently present said glasses of the prior art of record, as Momono teaches glasses that meet the compositional limitations of the instant claims and that are thus compositionally equivalent. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Thus, it inherently follows that the λ70 wavelength would be equivalent in terms of its relative value to the λ5 wavelength, and the λ70-λ5 difference would be 70 nm or less. Each limitation of instant claim 1 is therefore met by the Momono teachings, and the claim is anticipated by the prior art of record.
Regarding claim 2, the Momono glasses comprise B2O3 (see Tables 1 and 2).
Regarding claim 4, Momono teaches glasses having SiO2 contents falling within the range of the instant claim (see Table 1, example 8 and Table 2, examples 9-13).
Regarding claim 5, Momono teaches glasses having SiO2 contents falling within the range of the instant claim (see Table 1, example 8 and Table 2, examples 9-13).
Regarding claim 6, the total content SiO2+B2O3 of each of the aforementioned example glasses falls within the range of the instant claim.
Regarding claim 7, Momono teaches glasses having TiO2 contents falling within the range of the instant claim (see Table 1, example 8 and Table 2, examples 9-13).
Regarding claim 8, Momono teaches glasses having ratios TiO2/(SiO2+B2O3) that fall within the range of the instant claim (see Table 1, example 8 and Table 2, examples 9-13).
Regarding claim 9, Momono teaches glasses having Nb2O5 contents falling within the range of the instant claim (see Table 1, example 8 and Table 2, examples 9-13).
Regarding claim 10, the contents TiO2+Nb2O5+WO3 of the aforementioned exemplary embodiment glasses each fall within the range of the instant claim.
Regarding claim 11, each of the aforementioned Momono exemplary embodiment glasses comprises Y2O3 and La2O3 in amounts falling within the ranges of the instant claim.
Regarding claim 12, the contents Y2O3+La2O3+Gd2O3+Yb2O3 of the aforementioned exemplary embodiment glasses each fall within the range of the instant claim.
Regarding claim 14, the alkali oxide and alkaline earth oxide total contents of the aforementioned exemplary embodiment glasses of Momono are each below 5 wt% in total.
Regarding claim 15, Momono does not specify the λ70 value of the inventive glasses. However, as discussed above, the Momono glasses are compositionally equivalent to those of the instant claims. It therefore inherently follows that the λ70 property, which is compositionally dependent, is also equivalent in the Momono glasses, and would have a value in the range of 400-480 nm. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 20, Momono teaches that the inventive optical glass is formed into optical elements.
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.
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.
Claims 3, 13, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over by Momono (WO 2019131123 A1).
Regarding claim 3, Momono teaches exemplary embodiments comprising SiO2, B2O3, TiO2, Nb2O5, Y2O3, and La2O3. However, the claim differs from Momono as applied above because Momono does not teach an embodiment comprising Gd2O3. Momono teaches that Gd2O3 is an optional component that can be present in a range of up to 10 wt%. As such, routine optimization and experimentation with the Momono teachings would lead one of ordinary skill to glass embodiments that contain this Gd2O3 component in addition to the aforementioned inventive components. The further limitations of claim 3 are therefore met by Momono, and the claim is obvious and not patentably distinct over the prior art of record.
Regarding claim 13, the claim differs from Momono as applied above because Momono does not teach that any of the exemplary embodiments have a ratio Y2O3/(Y2O3+La2O3+Gd2O3+Yb2O3) of 0.010-0.100. However, the ranges for each of the components Y2O3, La2O3, Gd2O3, and Yb2O3 significantly overlap the corresponding ranges disclosed instantly, and as discussed above, the Momono compositions are substantially equivalent to those of the instant Specification. Momono teaches that the aforementioned ratios in the exemplary embodiments are each over 0.100 by a small amount. These teachings indicate that one of ordinary skill in the art would have been able, through routine optimization and experimentation, to form glasses according to the Momono teachings that also have a Y2O3/(Y2O3+La2O3+Gd2O3+Yb2O3) ratio falling within the range of the instant claim 13. Per MPEP 2144.05, overlapping ranges have been held to establish prima facie obviousness.
As such, each limitation of claim 13 is met by the Momono teachings, and the claim is obvious and not patentably distinct over the prior art of record.
Regarding claim 16, Momono does not specify the Pt content of the inventive glasses. However, Momono teaches melting in a platinum crucible and agitating/stirring during the melting process. These are factors disclosed in the instant Specification as leading to the claimed Pt content. As such, the Momono glasses would necessarily have equivalent contents of this element therein.
Regarding claim 17, Momono does not specify β-OH in terms of mm-1. However, according to the instant Specification, this value is actually determined from, and therefore a representation of, the transmittances at 2500 nm and 2900 nm. Hydroxyl content per se is not required to meet this β-OH value limitation because the value is calculated from transmittance measurements, and thus any glass also exhibiting 2500 nm and 2900 nm transmittances such that the equation (1) leads to a value in the range of 0.50-1.50 would fall within the scope of the instant claim, whether or not said transmittances were resultant from OH concentration.
As discussed above, Momono teaches glasses that are compositionally equivalent to those of the instant claims and Specification, and that have equivalent optical properties in λ5 and index of refraction. These equivalent glasses would therefore be expected to also have equivalent transmittances at 2500 nm and 2900 nm, because it is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition.
Since it has not been definitively shown that the instantly claimed β-OH values, which are transmittance properties, are necessarily only resultant from OH content, the equivalent glasses taught by Momono necessarily meet this property limitation, and the claim is not patentably distinct over the prior art of record.
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over by Momono (WO 2019131123 A1) in view of Sawasato et al (WO 2021085271 A1).
Regarding claim 18, the claim differs from Momono as applied above because while Momono teaches that the inventive glasses are used as optical elements, it does not teach a light guide plate made from said glasses. However, it would have been obvious to one of ordinary skill in the art to modify Momono in view of Sawasato et al in order to use the Momono glasses in such an application because Sawasato et al teaches a similarly composed glass (see Tables 1 and 2) in order to produce an index of refraction with an equivalently high value, and teaches that the glasses are advantageously used to form light guide plates. This teaching would indicate to one of ordinary skill in the art that glasses of the type taught by Momono can be used successfully to form such articles/products, and as such one would have had motivation to use the Momono glasses in such a commercial application. Because of the aforementioned similarities between the glasses taught by Momono and Sawasato et al, one would have had a reasonable expectation of success in the modification. As such, each limitation of instant claim 18 is met by the teachings of the prior art of record, and the claim is obvious and not patentably distinct.
Regarding claim 19, Sawasoto et al teaches an image display device wherein the light guide functions to guide light emitted from the image display element.
Conclusion
13. No claim is allowed.
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH S WIESE whose telephone number is (571)270-3596. The examiner can normally be reached on Monday-Friday, 7:30am-4:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOAH S WIESE/Primary Examiner, Art Unit 1731
NSW10 June 2026
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