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.
However, applicant cannot rely upon the certified copy of the foreign priority application or the filing date of said application to overcome any rejection herein because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
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 3 and 6 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.
Claim 3 and 6 recite a content of BaO being 0-20.0%, however, note that BaO cannot be 0. Specifically, note that as these claims depend on claims 1 and 2 which now require a mass ratio of ZrO2+Na2O/BaO = 1.91 or less, BaO cannot be 0 as this would make the ratio undefined.
Claim 10 is rejected for being dependent on claim 3 above.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN107963808 (cited by Applicants).
Regarding claims 1-11: ‘808 teaches chemically strengthened optical glass (abstract, 0102-0103), which necessarily results in a CS surface layer, the glass comprising in mass% a composition as shown below.
“The glass composition, the composition of which is expressed in weight percent: SiO2: 20-40%; ZrO2: 1-12%; TiO2: 10-28%; Nb2O5: 2-15%; Na2O: 4-25%; La2O3: 3 -20%; ZnO: 0-10%; Al2O3: 0-10%; Li2O: 0-10%; K2O: 0-5%; MgO: 0-10%; CaO: 0-10%; SrO: 0- 10%; BaO: 0-10%; B2O3: 0-15%; WO3: 0-10%; Gd2O3: 0-10%; Y2O3: 0-10%; Yb2O3: 0-10%; Sb2O3: 0-1 %.”
The above SiO2 and TiO2 ranges fall within that claimed, the Na2O and CaO ranges overlap the ranges claimed (MPEP 2144.05), the above ZrO2, Na2O and BaO ranges allow for ratio relationships overlapping the ratio claimed (MPEP 2144.05) and the minimum endpoint of the above La2O3 3-20% is so close to the maximum end point of the now claimed range of “less than 3%” to render it obvious (MPEP 2144.05, see Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
‘808 also teaches the following,
“Further, the refractive index nd of the glass is 1.68-1.77, preferably 1.69-1.76; the Abbe number νd is 25-34, preferably 26-33.”
While ‘808 may not explicitly discuss the impact resistance features claimed as determined by the test method claimed, given that ‘808’s glass meets that claimed and is made by a similar chemical strengthening method as Applicants (see Applicants method of using a molten salt of KNO3 and/or NaNO3 at 370-550oC for 1-1440, preferably 60-800min in par 0114 and 0116 compared to ‘808’s method of using a molten salt of KNO3 and/or NaNO3 at 370-480oC for 4-8hrs (240-480min) in par 0102), one skilled in the art would reasonably conclude the same properties when tested similarly (MPEP 2112).
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by USPub20220162115.
Regarding claims 1-11: ‘115 teaches chemically strengthened optical glass having a CS (DOL) surface layer (abstract, 0117, 0133, 0146), the glass can comprise the following composition in mol% which allows for compositions, when converted to mass%, overlapping that claimed (MPEP 2144.05).
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For instance, the above composition allows for composition such as the following,
Taught composition (mol%)
Allows for composition (Mol%)
Wt% conversion (approx.)
SiO2
20-50
45.5
34.7
Al2O3
0-2
0
0
B2O3
0-10
0
0
P2O5
0-5
0
0
Li2O
0-15
0
0
Na2O
0-30
14.5
11.4
K2O
0-10
2
2.4
ΣR2O
5-25
16.5
MgO
0-5
0
0
CaO
0-5
0
0
SrO
0-3
0
0
BaO
0-15
5
9.7
ΣR’O
5-15
5
ZnO
0-5
0
0
TiO2
20-35
28
28.5
Nb2O5
1-15
3
10.1
Σ TiO2+Nb2O5
22-45
31
Ln2O3
0-5
0
0
ZrO2
0-5
2
3.1
Σ(Sb2O3, SnO2, As2O3, SO3, Cl, F)
0-0.5
0
0
Note that the above illustrated composition provides for a mass ratio of (ZrO2 3.1 +Na2O 11.4)/BaO 9.7 of 1.49.
‘115 teaches that their glasses have a refractive index (nd) of 1.65-2.05 (0015) overlapping the range claimed (MPEP 2144.05) and an Abbe number of 20-30 (0019).
While ‘115 may not explicitly discuss the impact resistance features claimed determined by the exact test method claimed (i.e. using a 16.0g SUS ball), given that ‘115’s glass meets that claimed and is made by a similar chemical strengthening method as Applicants (see Applicants method of using a molten salt of KNO3 and/or NaNO3 at 370-550oC for 1-1440, preferably 60-800min in par 0114 and 0116 compared to ‘115’s method of using a molten salt of KNO3 at 350-500oC for 2-8hrs (120-480min) in par 0117, 0133, 0146), one skilled in the art would reasonably conclude the same properties when tested similarly (MPEP 2112).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, and 7 of copending Application No. 17/913440 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims overlap in scope with the copending Application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed November 20, 2025 with respect to CN108069591 have been considered but are moot as this reference is no longer applied in the present Office Action.
Specifically, in view of ‘591 requiring their glass to have greater than 0-10wt% ZrO2, 10-25wt% Na2O and 0-4wt% BaO, ‘591 cannot meet the limitation of the mass ratio now claimed. Note that the smallest ratio following the above ranges would be 2.5 (0ZrO2+10Na2O/4BaO=2.5) falling outside the claimed range of 1.91 or less.
Applicant's arguments filed November 20, 2025 with respect to CN107963808 and USPub20220162115 have been fully considered but they are not persuasive.
Initially, Applicants argue that ‘808’s Examples fail to include La2O3 content being less than 3wt% as now required by the claims and as ‘808 only teaches a range of 3-20wt%, one skilled in the art would not be motivated to adjust to less than 3wt% as claimed.
This is not persuasive. Initially, while the Examiner agrees that ‘808’s Examples may not include a La2O3 content as claimed, it has been held by the courts that a reference is not limited to their Examples but instead, what it teaches as a whole. In the instant case, as pointed out by Applicants, ‘808 does teach a range of 3-20wt%. While Applicants attempt to argue that one skilled in the art would not be motivated to adjust to less than 3wt% as claimed based on ‘808’s taught range of 3-20wt%, it is noted that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Specifically, the minimum endpoint of the La2O3 3-20% is so close to the maximum end point of the now claimed range of “less than 3%” to render it obvious. As Applicants have yet to provide any evidence of unexpected results or criticality for their claimed range, the rejection is proper.
Applicants argue that ‘115’s Examples fail to meet the combination of the individual La2O3, CaO, TiO2 and SiO2 ranges now claimed.
This is not persuasive. Initially, while the Examiner agrees that ‘115’s Examples may not meet all the range requirements now claimed, it has been held by the courts that a reference is not limited to their Examples but instead, what it teaches as a whole. In the instant case, as discussed in the Office Action, 115’s glass can comprise the following composition in mol% which allows for compositions, when converted to mass%, overlapping that claimed (MPEP 2144.05).
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For instance, the above composition allows for composition such as the following,
Taught composition (mol%)
Allows for composition (Mol%)
Wt% conversion (approx.)
SiO2
20-50
45.5
34.7
Al2O3
0-2
0
0
B2O3
0-10
0
0
P2O5
0-5
0
0
Li2O
0-15
0
0
Na2O
0-30
14.5
11.4
K2O
0-10
2
2.4
ΣR2O
5-25
16.5
MgO
0-5
0
0
CaO
0-5
0
0
SrO
0-3
0
0
BaO
0-15
5
9.7
ΣR’O
5-15
5
ZnO
0-5
0
0
TiO2
20-35
28
28.5
Nb2O5
1-15
3
10.1
Σ TiO2+Nb2O5
22-45
31
Ln2O3
0-5
0
0
ZrO2
0-5
2
3.1
Σ(Sb2O3, SnO2, As2O3, SO3, Cl, F)
0-0.5
0
0
Note that the above illustrated composition provides for a mass ratio of (ZrO2 3.1 +Na2O 11.4)/BaO 9.7 of 1.49.
As Applicants have yet to provide any evidence of unexpected results or criticality for any of their ranges, the rejection is proper.
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 LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/ Primary Examiner, Art Unit 1784