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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 1, 2026 has been entered.
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 § 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(a) as being obvious over 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.
Although an index and Abbe number are not actually given for the cited composition, the composition meets that claimed and would be expected to have the same index and Abbe number (MPEP 2112)
Additionally, as ‘115 teaches that their glasses desirably 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), arriving at these properties with ‘115’s overlapping composition would have been obvious.
Additionally, it is noted for the record that ‘115 provides Examples such as that below shown as converted to wt%.
E1
SiO2
28.12
P2O5
0
B2O3
0
Al2O3
0
Li2O
0
Na2O
9.32
K2O
5.26
CaO
0.81
MgO
0
SrO
0
BaO
13.85
ZnO
0
TiO2
25.15
ZrO2
0.2
La2O3
0
Nb2O5
17.22
Sb2O3
0.07
(ZrO2+Na2O)/BaO
0.69
Nd
1.805
Abbe
25.4
As shown above, ‘115’s Example not only clearly conveys to one having ordinary skill glass compositions with SiO2, TiO2, and Na2O contents as claimed but also clearly conveys glass compositions according to their invention having a (ZrO2+Na2O)/BaO ratio as required by the claim.
While the Examiner does acknowledge that the above shown CaO may be 0.81% which is slightly outside the claimed maximum of 0.5%, note initially that 0.81 is so close to 0.5% and it has been held by the courts that a prima facie case of obviousness still 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).
Alternatively, although the above Example may include 0.81% CaO which is slightly outside of the claimed range, given that ‘115 clearly suggests CaO being a result effective variable (see par 0036 disclosing alkaline oxides including CaO being a network modifier, decreasing forming temperature, used to adjust CTE, Young’s modulus, change refractive index, etc.), it would be well within the skill in the art to adjust the content depending on final desired results (MPEP 2144.05).
Even further, given that ‘115 not only discloses that CaO can be added in amounts of 0-5mol% as previously mentioned (see broad disclosed composition mentioned in first table above) which allows for 0% but ‘115 even clearly suggests that in some preferred embodiments, the glass is CaO-free (i.e. 0%) (see par. 0038), one skilled in the art would clearly recognize and find it obvious that CaO can be eliminated as desired falling within the claimed range.
Regarding the index and Abbe number, note that in the first situation above, the Example composition is shown to have an index and Abbe as claimed and meets the composition claimed other than the CaO being 0.81% instead of 0.5% as claimed. However, the proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997).
In the second situation above in which one skilled in the art would have found a composition as claimed obvious with CaO being eliminated (i.e. 0%), note that such a composition would meet that claimed and as such would be expected to have the same index and Abbe number (MPEP 2112)
Alternatively, as ‘115 teaches that their glasses desirably 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), arriving at these properties would have been rendered obvious.
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.
Although not applied in the present Office Action, Prior art reference JP2015206880A has been cited herein as being relevant to the claimed invention.
Response to Arguments
Applicant's arguments filed April 1, 2026 have been fully considered but they are not persuasive.
Initially, in summary, Applicants argue against the Office’s rejection of the claims over ‘115 because Applicants assert that 115’ merely discloses content ranges in mol%, does not actually disclose the composition cited by the Office Action in wt%, only through multiple selections could the cited composition be obtained (i.e. select specific components such as SiO2, TiO2 and Na2O as essential components while excluding others and combine components in a particular manner to achieve the cited composition and ratio) and ‘115 contains no teaching regarding adjusting or controlling the compositional ratio claimed.
None of the above argument is persuasive.
Initially, while the Office acknowledges that 115’ discloses content ranges and may not explicitly disclose the composition cited by the Office, the Examiner maintains that 115’s content ranges still allow for composition overlapping that claimed such as that cited by the Office. Specifically, see again the allowed for composition shown below and the illustrated composition provides for a mass ratio of (ZrO2 3.1 +Na2O 11.4)/BaO 9.7 of 1.49.
Taught composition (mol%)
Allows for composition (Mol%)
Wt% conversion (approx.) (i.e. cited composition)
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
As overlapping ranges provides for a prima facie case of obviousness absent a showing of unexpected results (MPEP 2144.05) and Applicants have yet to provide such results, the rejection is proper.
Additionally, regarding Applicants argument that only through multiple selections could the cited composition be obtained and ‘115 contains no teaching regarding adjusting or controlling the compositional ratio claimed, this is not persuasive.
Initially, it appears that Applicants are arguing that only through picking and choosing can one arrive at the cited composition but this is not persuasive because it would be well within the skill in the art to arrive at the cited composition following ‘115’s disclosed ranges. First, note there is significant overlap with the disclosed SiO2, TiO2 and Na2O ranges shown above and ‘115’s CaO range clearly allows for CaO to be optional (i.e. 0%) as in the cited composition and claimed range. Further, regarding the ratio claimed, not only do ‘115’s ranges allow for individual contents of ZrO2, Na2O and BaO that would allow for a ratio as claimed but given that 115’s Examples even suggests (ZrO2+Na2O)/BaO ratios as claimed (see for instance E1 that has a ratio of 0.69 when converting the Example composition to wt%), one skilled in the art would have found it obvious to arrive at a composition as cited having such a ratio. As such, arriving at the cited composition would not be merely picking and choosing but rather, be well within the suggestion of the prior art.
Even further, note that the Office Action also noted that 115‘ provides Examples such as that below shown as converted to wt%.
E1
SiO2
28.12
P2O5
0
B2O3
0
Al2O3
0
Li2O
0
Na2O
9.32
K2O
5.26
CaO
0.81
MgO
0
SrO
0
BaO
13.85
ZnO
0
TiO2
25.15
ZrO2
0.2
La2O3
0
Nb2O5
17.22
Sb2O3
0.07
(ZrO2+Na2O)/BaO
0.69
Nd
1.805
Abbe
25.4
As shown above, ‘115’s Example not only clearly conveys to one having ordinary skill glass compositions with SiO2, TiO2, and Na2O contents as claimed but also clearly conveys glass compositions according to their invention having a (ZrO2+Na2O)/BaO ratio as required by the claim.
While the Examiner does acknowledge that the above shown CaO may be 0.81% which is slightly outside the claimed maximum of 0.5%, note initially that 0.81 is so close to 0.5% and it has been held by the courts that a prima facie case of obviousness still 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).
Alternatively, although the above Example may include 0.81% CaO which is slightly outside of the claimed range, given that ‘115 clearly suggests CaO being a result effective variable (see par 0036 disclosing alkaline oxides including CaO being a network modifier, decreasing forming temperature, used to adjust CTE, Young’s modulus, change refractive index, etc.), it would be well within the skill in the art to adjust the content depending on final desired results (MPEP 2144.05).
Even further, given that ‘115 not only discloses that CaO can be added in amounts of 0-5mol% as previously mentioned (see broad disclosed composition mentioned in first table above) which allows for 0% but ‘115 even clearly suggests that in some preferred embodiments, the glass is CaO-free (i.e. 0%) (see par. 0038), one skilled in the art would clearly recognize and find it obvious that CaO can be eliminated as desired falling within the claimed range.
Regarding the index and Abbe number, note that in the first situation above, the Example composition is shown to have an index and Abbe as claimed and meets the composition claimed other than the CaO being 0.81% instead of 0.5% as claimed. However, the proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997).
In the second situation above in which one skilled in the art would have arrived at a composition as claimed with CaO being eliminated (i.e. 0%), note that arriving at such a composition would meet that claimed and as such would be expected to have the same index and Abbe number (MPEP 2112)
Alternatively, as ‘115 teaches that their glasses desirably 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), arriving at these properties with ‘115’s composition would have been obvious.
Applicants also argue that ‘115’s broadly discloses a refractive index range (i.e. 1.65-2.05), however, this disclosed range also includes ranges that do not overlap the claimed index and since the index of the cited composition is not disclosed, there is no basis to conclude that the composition would necessarily exhibit the claimed index (1.65-1.85).
This is not persuasive. Initially, although an index is not actually given for the cited composition (see first Table in the Office Action and in remarks above), first note that the cited composition meets that claimed and would be expected to have the same index (MPEP 2112) and Applicants have provided no evidence to the contrary.
Secondly, while an index is not actually given for the cited composition, ‘115 does clearly disclose a refractive index range desired for their compositions being 1.65-2.05 and as such, it would have been obvious to one skilled in the art to arrive at an index of 1.65-2.05. Although 1.65-2.05 may be broader than the claimed index of 1.65-1.85, the ranges still overlap which provides for a prima facie case of obviousness (MPEP 2144.05) and Applicants have provided no evidence to suggest that the cited composition could not or would not arrive at indices within the claimed range.
Finally, ‘115 provides Examples such as that below which further suggests arriving at indices falling within the claimed range as being particularly obvious with 115’ overlapping compositions.
E1
SiO2
28.12
P2O5
0
B2O3
0
Al2O3
0
Li2O
0
Na2O
9.32
K2O
5.26
CaO
0.81
MgO
0
SrO
0
BaO
13.85
ZnO
0
TiO2
25.15
ZrO2
0.2
La2O3
0
Nb2O5
17.22
Sb2O3
0.07
(ZrO2+Na2O)/BaO
0.69
Nd
1.805
Abbe
25.4
Conclusion
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.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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