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 .
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.
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Claims 1 – 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 12,454,480 (hereinafter “Furuta ‘480”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, Furuta ‘480’s claim 1 is directed to a glass ceramic having a three-dimensional shape including a plurality of round shapes (“R-shapes”) including a minimum round shape having an average curvature radius of 5.0 x 102 mm or less and a maximum round shape having an average curvature radius of 1.0 x103 mm or more, wherein
the glass ceramic has a sheet thickness t [mm], and a value obtained by dividing a maximum value of retardation [nm] measured by the following measurement method by the sheet thickness t [mm] is 20 [nm/mm] or less,
measurement method: retardation is measured using a birefringence measuring device by vertically irradiating one or more points on an arc of each of the round shapes with light having a wavelength of 543 nm.
Furuta ‘480’s claim 4 is directed to a chemically strengthened glass comprising a glass ceramic with the features discussed above.
Regarding claim 2, in addition to the limitations of claim 1, as noted in the double patenting rejection of claim 1, Furuta ‘480’s claims 1 and 4 each indicate the value obtained by dividing the maximum value of the retardation [nm] by the sheet thickness t [mm] is 20 [nm/mm] or less.
Regarding claim 3, in addition to the limitations of claim 1, as noted in the double patenting rejection of claim 1, Furuta ‘480’s claims 1 and 4 each indicate the value obtained by dividing the maximum value of the retardation [nm] by the sheet thickness t [mm] is 20 [nm/mm] or less.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 – 3 and 5 – 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Furuta ‘189 (US 2022/0002189 A1, as an English-language equivalent to WO 2020/203200 A1).
Regarding claim 1, Furuta ‘189 discloses a glass ceramic (e.g. ¶¶ [0012] – [0240]) having a three-dimensional shape including a plurality of round shapes including a minimum round shape having an average curvature radius of 5.0 x 102 mm or less and a maximum round shape having an average curvature radius of 1.0 x103 mm or more (“smallest R-shape” and “largest R-shape” meeting the cited ranges: e.g. ¶¶ [0016], [0022], [0028], [0038], [0048], [0077], [0078]), wherein
the glass ceramic has a sheet thickness t [mm], and a value obtained by dividing a maximum value of retardation [nm] measured by the following measurement method by the sheet thickness t [mm] is 20 [nm/mm] or less (e.g. ¶¶ [0017], [0025], [0048], [0081], [0083]),
measurement method: retardation is measured using a birefringence measuring device by vertically irradiating one or more points on an arc of each of the round shapes with light having a wavelength of 543 nm (e.g. ¶¶ [0020], [0045], [0048], [0065], [0082]).
Furuta ‘189’s ranges for the average curvature radii match those claimed. Additionally, Furuta ‘189’s range for the value obtained by dividing the maximum value of the retardation [nm] by the sheet thickness t [mm] is within the claimed range.
Regarding claim 2, in addition to the limitations of claim 1, as seen in the 35 U.S.C. 102(a)(1) rejection of claim 1, Furuta ‘189 discloses the value obtained by dividing the maximum value of the retardation [nm] by the sheet thickness t [mm] is 20 [nm/mm] or less (e.g. ¶¶ [0017], [0025], [0048], [0081], [0083]).
Furuta ‘189’s range for the value obtained by dividing the maximum value of the retardation [nm] by the sheet thickness t [mm] is within the claimed range.
Regarding claim 3, in addition to the limitations of claim 1, as seen in the 35 U.S.C. 102(a)(1) rejection of claim 1, Furuta ‘189 discloses the value obtained by dividing the maximum value of the retardation [nm] by the sheet thickness t [mm] is 20 [nm/mm] or less (e.g. ¶¶ [0017], [0025], [0048], [0081], [0083]).
Furuta ‘189’s range for the value obtained by dividing the maximum value of the retardation [nm] by the sheet thickness t [mm] is within the claimed range.
Regarding claim 5, in addition to the limitations of claim 1, Furuta ‘189 discloses the glass ceramic comprises, as crystal particles, at least one of Li4SiO4 crystals, Li2SiO3 crystals, LiAlSiO crystals, and Li2Si2O4 crystals (“lithium aluminosilicate”, “lithium silicate”: e.g. ¶¶ [0093], [0094], [0120] – [0122], [0124], [0126], [0144], [0146]).
Regarding claim 6, in addition to the limitations of claim 1, Furuta ‘189 discloses the glass ceramic is used as a cover glass (e.g. ¶¶ [0013], [0084], [0086], [0199]).
Regarding claim 7, Furuta ‘189 discloses a chemically strengthened glass obtained by chemically strengthening the glass ceramic as discussed in the 35 U.S.C. 102(a)(1) rejection of claim 1 (e.g. ¶¶ [0021], [0037], [0047], [0058], [0059], [0070], [0090], [0091], [0093] – [0096], [0104] – [0111], [0121], [0124], [0131], [0137] – [0140], [0151], [0180] – [0192], [0198]).
Claim Rejections - 35 USC § 102/103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4 and 8 – 10 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 Hu (US 2023/0023010 A1, as an English-language equivalent to CN 111087175 A).
Regarding claim 4, Hu discloses a glass ceramic (e.g. ¶¶ [0005] – [0194]).
Hu is not explicit as to the glass ceramic having an adhesive strength with a carbon member is 140 [N] or less, where the adhesive strength is measured by the following method when an equilibrium viscosity of the glass ceramic is 1.0 x109 [dPa-S],
(measurement method)
the glass ceramic is heated from room temperature to a set temperature at 1000C/min, allowed to stand for 10 minutes after reaching the set temperature, and the carbon member below is pressed at 32 N on the glass ceramic and then held for 180 seconds; thereafter, an adhesive force generated when the carbon member is pulled up from the glass ceramic at 10 mm/min is measured by a load cell, and is defined as an adhesive strength,
measuring device: light-condensing heating-type high-temperature observation tensile and compression tester,
size of glass ceramic: 9.2 x 9.2 x 2 [mm],
carbon member: CIP carbon,
diameter of contact surface of carbon member with glass ceramic: diameter 9 [mm], roughness of contact surface of carbon member with glass ceramic: arithmetic average roughness Ra in accordance with JIS B0601 (2013) is 1.1 [µm], and arithmetic average waviness Wa is 0.08 [µm],
oxygen concentration during measurement: 100 [ppm] or less,
the set temperature is a temperature at which the equilibrium viscosity of the glass ceramic is 1.0 x109 [dPa-S], and MC 4333 manufactured by Mechanical Carbon Industry Co., Ltd. is used as the CIP carbon.
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). MPEP § 2112.01, I.
The following table compares mol% of oxide species in embodiments Hu discloses with those in the instant specification which have the claimed adhesive strength:
Oxide
Hu Example 1 (e.g. ¶¶ [0043] – [0054])
Hu Example 4 (e.g. ¶¶ [0080] – [0092]
Hu Example 8 (e.g. ¶¶ [0130] – [0142])
Instant specification (e.g. ¶¶ [0064] – [0090])
SiO2
65
66
67
40-70
Li2O
19.7
25
22
10-35
Al2O3
12
4
7
4-15
P2O5
0.5
1.5
0.5
0.5-5
ZrO2
1
1.7
0.8
0-5
B2O3
0-10
Na2O
0.5
0.5
0.5
0-3
K2O
0-2
SnO2
0.1
0.2
0-4
MgO
0-10
CeO2
0.3
0.1
0.2
0.03-1.5
La2O3
0.9
1.5
0.5 to 4 (total of La2O3, Nb2O5, and Ta2O5)
Nb2O5
1
0.5
0.5 to 4 (total of La2O3, Nb2O5, and Ta2O5)
Total
100
100
100
By virtue of the recited species in Hu’s Examples 1, 4, and 8 each totaling to 100 mol%, it is understood that blank cells in the above table, as well as non-tabulated species, are not comprised in the glass ceramics, i.e. constitute 0 mol%. Furthermore, from the above data, the following sub-totals and ratios can be calculated for comparison with the instant specification:
Hu Example 1 (e.g. ¶¶ [0043] – [0054])
Hu Example 4 (e.g. ¶¶ [0080] – [0092]
Hu Example 8 (e.g. ¶¶ [0130] – [0142])
Instant specification (e.g. ¶¶ [0064] – [0090])
SiO2 + Al2O3 + P2O5 + B2O3 (NWF)
77.5
71.5
74.5
60-80
Li2O + Na2O + K2O (R2O)
20.2
25.5
22.5
1-35
R2O/NWF
0.261
0.357
0.302
0.2-0.6
From the above tables, it is observed each of Hu’s Examples 1, 4, and 8 lie within the ranges of the instant specification for obtaining the claimed adhesive strength and thus would have been understood to have an adhesive strength as claimed. Accordingly, a prima facie case of anticipation is established with respect to claim 4.
Hu also more broadly discloses glass ceramics comprising, in mole percentage, 65-75% SiO2, 3-12% Al2O3, 0.5-5% P2O5, 0-3% B2O3, 0-5% MgO, 0-3% ZnO, 0.5-5% ZrO2, 0-1.5% TiO2, 0.5-6% Na2O, 10-25% Li2O, 0-0.3% CeO2, 0-0.5% SnO2, and at least one of 0-6% Ta2O5, 0-6% La2O5, 0-6% Y2O3, 0-6% Tm2O3, and/or 0-6% Nb2O5 (e.g. ¶ [0008]), which have a significant degree of overlap with respect to the general ranges of the instant specification (e.g. ¶¶ [0064] – [0090]). Accordingly, at least for where there is overlap, and particularly where the overlap provides compositions similar to those of Hu’s Examples 1, 4, and 8, it would have been understood such glass ceramics have an adhesive strength as claimed. Accordingly, a prima facie case of obviousness is established with respect to claim 4.
Regarding claim 8, in addition to the limitations of claim 4, for similar reasons as discussed above with respect to Hu’s glass ceramics having a composition within or overlapping those with the claimed adhesive strength, it follows Hu implicitly discloses the glass ceramic comprises, as crystal particles, e.g., at least one selected from the group consisting of Li3PO4 crystals, Li4SiO4 crystals, Li2SiO3 crystals, Li2Mg (SiO4) crystals, LiAlSiO crystals, and Li2Si2O4 crystals.
Regarding claim 9, in addition to the limitations of claim 4, Hu discloses the glass ceramic is used as a cover glass (“cover plate”: e.g. ¶¶ [0031], [0033], [0040], [0042], [0054], [0066], [0079], [0092], [0104], [0117], [0129], [0142], [0154], [0166], [0178], [0191], [0193]).
Regarding claim 10, Hu discloses a chemically strengthened glass obtained by chemically strengthening the glass ceramic as discussed in the 35 U.S.C. 102(a)(1)/103 rejection of claim 4 (e.g. ¶¶ [0025] – [0030]).
Claim 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hu in view of Furuta ‘189.
Regarding claim 11, Hu discloses molding glass and describes using glass ceramic due to its superior properties compared to glass, e.g. in relation to cover glass (e.g. ¶¶ [0002], [0003]). As such, Hu implicitly discloses molding glass ceramics. Additionally, Hu discloses glass ceramics for solving issues with prior glass ceramics (e.g. ¶¶ [0004] – [0194]), implying molding of such glass ceramics.
Hu is not explicit as to the glass ceramic having an adhesive strength with a carbon member is 140 [N] or less, where the adhesive strength is measured by the following method when an equilibrium viscosity of the glass ceramic is 1.0 x109 [dPa-S],
(measurement method)
the glass ceramic is heated from room temperature to a set temperature at 1000C/min, allowed to stand for 10 minutes after reaching the set temperature, and the carbon member below is pressed at 32 N on the glass ceramic and then held for 180 seconds; thereafter, an adhesive force generated when the carbon member is pulled up from the glass ceramic at 10 mm/min is measured by a load cell, and is defined as an adhesive strength,
measuring device: light-condensing heating-type high-temperature observation tensile and compression tester,
size of glass ceramic: 9.2 x 9.2 x 2 [mm],
carbon member: CIP carbon,
diameter of contact surface of carbon member with glass ceramic: diameter 9 [mm], roughness of contact surface of carbon member with glass ceramic: arithmetic average roughness Ra in accordance with JIS B0601 (2013) is 1.1 [µm], and arithmetic average waviness Wa is 0.08 [µm],
oxygen concentration during measurement: 100 [ppm] or less,
the set temperature is a temperature at which the equilibrium viscosity of the glass ceramic is 1.0 x109 [dPa-S], and MC 4333 manufactured by Mechanical Carbon Industry Co., Ltd. is used as the CIP carbon.
Hu is also not explicit as to press molding such a glass ceramic.
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). MPEP § 2112.01, I.
The following table compares mol% of oxide species in embodiments Hu discloses with those in the instant specification which have the claimed adhesive strength:
Oxide
Hu Example 1 (e.g. ¶¶ [0043] – [0054])
Hu Example 4 (e.g. ¶¶ [0080] – [0092]
Hu Example 8 (e.g. ¶¶ [0130] – [0142])
Instant specification (e.g. ¶¶ [0064] – [0090])
SiO2
65
66
67
40-70
Li2O
19.7
25
22
10-35
Al2O3
12
4
7
4-15
P2O5
0.5
1.5
0.5
0.5-5
ZrO2
1
1.7
0.8
0-5
B2O3
0-10
Na2O
0.5
0.5
0.5
0-3
K2O
0-2
SnO2
0.1
0.2
0-4
MgO
0-10
CeO2
0.3
0.1
0.2
0.03-1.5
La2O3
0.9
1.5
0.5 to 4 (total of La2O3, Nb2O5, and Ta2O5)
Nb2O5
1
0.5
0.5 to 4 (total of La2O3, Nb2O5, and Ta2O5)
Total
100
100
100
By virtue of the recited species in Hu’s Examples 1, 4, and 8 each totaling to 100 mol%, it is understood that blank cells in the above table, as well as non-tabulated species, are not comprised in the glass ceramics, i.e. constitute 0 mol%. Furthermore, from the above data, the following sub-totals and ratios can be calculated for comparison with the instant specification:
Hu Example 1 (e.g. ¶¶ [0043] – [0054])
Hu Example 4 (e.g. ¶¶ [0080] – [0092]
Hu Example 8 (e.g. ¶¶ [0130] – [0142])
Instant specification (e.g. ¶¶ [0064] – [0090])
SiO2 + Al2O3 + P2O5 + B2O3 (NWF)
77.5
71.5
74.5
60-80
Li2O + Na2O + K2O (R2O)
20.2
25.5
22.5
1-35
R2O/NWF
0.261
0.357
0.302
0.2-0.6
From the above tables, it is observed each of Hu’s Examples 1, 4, and 8 lie within the ranges of the instant specification for obtaining the claimed adhesive strength and thus would have been understood to have an adhesive strength as claimed.
Hu also more broadly discloses glass ceramics comprising, in mole percentage, 65-75% SiO2, 3-12% Al2O3, 0.5-5% P2O5, 0-3% B2O3, 0-5% MgO, 0-3% ZnO, 0.5-5% ZrO2, 0-1.5% TiO2, 0.5-6% Na2O, 10-25% Li2O, 0-0.3% CeO2, 0-0.5% SnO2, and at least one of 0-6% Ta2O5, 0-6% La2O5, 0-6% Y2O3, 0-6% Tm2O3, and/or 0-6% Nb2O5 (e.g. ¶ [0008]), which have a significant degree of overlap with respect to the general ranges of the instant specification (e.g. ¶¶ [0064] – [0090]). Accordingly, at least for where there is overlap, and particularly where the overlap provides compositions similar to those of Hu’s Examples 1, 4, and 8, it would have been understood there are further such glass ceramics having an adhesive strength as claimed.
Furuta ‘189 discloses press molding is useful for forming cover glass, e.g. those with a three-dimensional shape which increases operability or visibility (e.g. ¶ [0003]).
Additionally, Furuta ‘189 discloses glass ceramics for press molding (e.g. ¶¶ [0012] – [0240]) which are comparable to Hu’s glass ceramics.
The comparison can be observed starting with Hu’s Examples 1, 4, and 8 above. Notably, by converting mole% to mass%, a comparison can be made with Furuta ‘189’s disclosure. The table below repeats Hu’s mole% of the constituent species cited above and shows the conversion to mass% in parentheses while Furuta’s disclosure is given only in mass%:
Oxide (MW in g/mol)
MW of oxide (g/mol)
Hu Example 1 (e.g. ¶¶ [0043] – [0054])
Hu Example 4 (e.g. ¶¶ [0080] – [0092]
Hu Example 8 (e.g. ¶¶ [0130] – [0142])
Furuta ‘189 (e.g. ¶¶ [0101], [0102], [0117] – [0153])
SiO2
60.084
65 (61.96)
66 (67.36)
67 (64.37)
58-74
Li2O
29.9
19.7 (9.35)
25 (12.70)
22 (10.52)
1-14
Al2O3
101.961
12 (19.41)
4 (6.93)
7 (11.41)
5-30
P2O5
141.94
0.5 (1.13)
1.5 (3.62)
0.5 (1.13)
0-6
ZrO2
123.22
1 (1.95)
1.7 (3.56)
0.8 (1.58)
0.5-6
Na2O
61.979
0.5 (0.49)
0.5 (0.53)
0.5 (0.50)
0-5
SnO2
150.71
0.1 (0.24)
0.2 (0.51)
0.5-6
CeO2
172.115
0.3 (0.82)
0.1 (0.29)
0.2 (0.55)
0.03-1.5
La2O3
325.809
0.9 (4.65)
1.5 (7.81)
≤4
Nb2O5
265.81
1 (4.51)
0.5 (2.13)
≤4
Total
100
100
100
With the exception of La2O3 and Nb2O5, Hu’s Examples 1, 4, and 8 are within the ranges Furuta ‘189 discloses. As to Hu’s Examples 1 and 4, while outside Furuta ‘189’s disclosed ranges, the general amounts Hu discloses for La2O3 and Nb2O5 as previously highlighted demonstrate that some deviation from these two examples can be had while still retaining the properties of the glass ceramics. Similar observation can be made for Hu’s Example 8 in this regard.
With further respect to the amounts of La2O3 and Nb2O5 in Hu’s Examples 1 and 4, the examiner finds the cited example values are not that excessive in comparison to Furuta ‘189’s disclosed ranges, particularly as Furuta ‘189 discloses such ranges are preferrable for making devitrification less prone (e.g. ¶¶ [0148], [0149]). This implies some excess of La2O3 and Nb2O5 can exist without deviating from Furuta ‘189’s disclosure so long as properties are maintained. Given both Hu and Furuta ‘189 relate to cover glass, the examiner finds any excess of La2O3 and Nb2O5 as Hu’s examples show would not have dissuaded one of ordinary skill in the art from considering Furuta ‘189’s disclosure for purposes of finding benefits to add to Hu’s disclosure.
Finding Hu and Furuta ‘189 describe comparable glass ceramics, it necessarily follows that Hu’s glass ceramics can be successfully press molded like Furuta ‘189’s glass ceramics.
Therefore, it would have been obvious to use press molding in Hu’s method, e.g. to use a process suitable for imparting structures which are useful for increasing operability or visibility as Furuta ‘189 suggest.
Conclusion
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783