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 .
Priority
Note that Applicant cannot rely upon the filing date of the certified copy of the foreign priority 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) 1-7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Yagi WO2018154973 (rejection using corresponding English document USPub20190375680) or alternatively, in view of either one of Yagi (USPub20110135964) or Momono (USPub20140141285).
Regarding claims 1-2 and 8: Yagi teaches a crystallized glass (entire document) that can have the following composition in mass% and a Vicker’s Hardness as claimed (abstract).
Applicants
Yagi
SiO2
40-55
40-70 (0014)
Al2O3
10-30
11-25 (0015)
MgO
10-30
0-18 (0018)
TiO2
5-15
0.5-12 (0020)
Na2O
More than 0 to 4.57 or less (claim 1) or more than 0-4.06% (now claim 8)
5-19 (0016)
ZnO
5 or less
0-5 (0075)
B2O3
0-5
0 to 2 (0076)
P2O5
0-5
0-2 (0076)
Li2O
0-4
0-2 (0076)
K2O
0-5
0-9 (0017)
CaO
0-5
0-3 (0019)
SrO
0-5
0-2 (0076)
BaO
0-5
0-2 (0076)
ZrO2
0-8
0-5 (0075)
Sb2O3
0-2
0.01-3 (0063)
All the ranges in the above composition overlap that claimed thereby rendering them obvious (MPEP 2144.05) expect for the Na2O content and a teaching of a Na2O+Li2O content as now claimed.
However, regarding the Na2O content, Yagi’s Na2O endpoint of 5% is so close to the claimed 4.57% of claim 1 and the 4.06% now recited in claim 8. Note that it has been held by the courts that ranges that may not overlap but are merely close still provides for a prima facie case of obviousness absent a showing of unexpected results (see MPEP 2144.05, Titanium Metals).
Additionally, regarding the claimed total, using Yagi’s taught Na2O and Li2O ranges above allows for Na2O (5-19) +Li2O (0-2) = 5-21 which the endpoint of 5 overlaps with that claimed (MPEP 2144.05).
Alternatively, regarding the Na2O content, while the Office acknowledges that ‘680 may teach 5-19% Na2O, upon review of ‘680 there is nothing that indicates or suggests that lower amounts cannot be used nor is there any direct teaching away from using lower amounts of Na2O. As such, one skilled in the art would conclude ‘680 to not be limited to 5-19% Na2O and that any amounts deemed suitable in the crystallized glass art can be used.
In the instant case, ‘680 is directed to a crystallized glass wherein the crystals can be MgAl2O4 or even Mg2TiO4 (0044).
As both ‘964 and ‘285, who each similarly teach crystallized glass wherein the crystals can be MgAl2O4 or even Mg2TiO4 (see abstracts), suggests that such glasses can be made with 0-15% Na2O (0100 in ‘964), 0-10, 0-8 or even 2-8 (see 0122-0123) as desired, it would have been obvious to one skilled in the art at the time of invention to modify ‘680 to include any of the above ranges to obtain a crystallized glass having MgAl2O4 or Mg2TiO4 crystals therein.
The above modification will provide for the following,
Applicants
Yagi
SiO2
40-55
40-70 (0014)
Al2O3
10-30
11-25 (0015)
MgO
10-30
0-18 (0018)
TiO2
5-15
0.5-12 (0020)
Na2O
More than 0 to 4.57 or less or more than 0-4.06
0-15, 0-10, 0-8 or even 2-8
ZnO
5 or less
0-5 (0075)
B2O3
0-5
0 to 2 (0076)
P2O5
0-5
0-2 (0076)
Li2O
0-4
0-2 (0076)
K2O
0-5
0-9 (0017)
CaO
0-5
0-3 (0019)
SrO
0-5
0-2 (0076)
BaO
0-5
0-2 (0076)
ZrO2
0-8
0-5 (0075)
Sb2O3
0-2
0.01-3 (0063)
The above Na2O ranges overlap with that claimed and the above Na2O ranges as well as the Li2O range allows for totals also overlapping with that claimed (MPEP 2144.05)
It is noted that Yagi does teach their crystallized glass having a spectral transmittance of 80% at 400-669nm when 10mm thick (see abstract). While Yagi does not explicitly discuss the above when at 1mm thickness, given that it is well understood in the art that transmittance only increases with reduced thickness (and vice versa) because less light will be absorbed and more will be transmitted as a sample gets thinner, one skilled in the art would readily conclude Yagi’s glass to have a transmittance higher than 80% at 400-669nm wavelengths with thicknesses of 1mm as claimed.
Alternatively, Yagi’s glass modified above overlaps that claimed, it can be crystallized with a similar method using similar temperatures and durations (see 0094-0099 compared to Applicants’ published specification), and it is then reinforced using a substantially similar method of ion exchanging treatment process using the same salts with similar temperatures and durations as used by Applicants (see 0102 compared to specification par 0078-0080). Given the similarities between that of the prior art and Applicants’ invention, one skilled in the art would reasonably conclude the same properties absent a showing to the contrary (MPEP 2112).
Regarding claims 3 and 5: Yagi’s crystallized glass comprises microcrystals with particle size as claimed (See 0045).
Regarding claims 4, 6 and 7: The crystallized glass can be strengthened and have a CS layer in the surface (see abstract).
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/020069 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
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 February 4, 2026 regarding Ogasawara no longer meeting the invention now claimed have been considered and are persuasive. The rejection over Ogasawara has been removed.
Applicant’s arguments filed February 4, 2026 regarding Yagi ‘973 or alternatively, Yagi ‘973 in view of either one of Yagi ‘964 or Momono have been considered and are not persuasive.
Initially, Applicants argue that the claims recite more than 0-4.57mass% Na2O and Yagi ‘973 teaches that their composition requires Na2O to be 5-19mass% with higher preferred values and none of Yagi’s Examples include Na2O contents lower than 12%.
This is not persuasive. Initially, while the Examiner does acknowledge that Yagi ‘973 teaches a Na2O range of 5-19mass% which may fall slightly outside the range claimed, as discussed in the Office Action, Yagi’s Na2O endpoint of 5% is so close to the claimed 4.57% of claim 1 and the 4.06% now recited in claim 8. As it been held by the courts that ranges that may not overlap but are merely close still provides for a prima facie case of obviousness absent a showing of unexpected results (see MPEP 2144.05, Titanium Metals) and Applicants have yet to provide such showing/evidence, the rejection is proper and maintained.
Further, while Applicants argue that Yagi’s Examples do not include lower than 12%, it is first noted that it has been held by the courts that a reference is not limited to their Examples and disclosed examples or preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2123).
Additionally, while Applicants argue that Yagi “requires” a Na2O content of 5-19%, it is noted for the record that there is nothing in Yagi that indicates or suggests that such a range is “required”, there is no suggestion that lower amounts cannot be used nor is there any direct teaching away from using amounts of Na2O lower than 5-19%. Instead, the reference appears to only be generally teaching a Na2O range that can be used. As such, one skilled in the art would conclude Yagi to not be limited to 5-19% Na2O and that any amounts deemed suitable in the crystallized glass art can be used.
In the instant case, the Office Action also included an alternative rejection which indicated that Yagi is directed to a crystallized glass wherein the crystals can be MgAl2O4 or even Mg2TiO4 (0044).
As both ‘964 and ‘285, who each similarly teach crystallized glass wherein the crystals can be MgAl2O4 or even Mg2TiO4 (see abstracts), suggests that such glasses can be made with 0-15% Na2O (0100 in ‘964), 0-10, 0-8 or even 2-8 (see 0122-0123) as desired, it would have been obvious to one skilled in the art at the time of invention to modify ‘680 to include any of the above ranges to obtain a crystallized glass having MgAl2O4 or Mg2TiO4 crystals therein.
While Applicants also attempt to argue that because Yagi ‘973 teaches ion exchanging the glass to exchange Na+ ions in the glass with K+ ions from a molten salt that Yagi ‘973 provides a technical concept of setting Na2O content at a high level of 5-19% to have a sufficient amount of Na+ to function as an ion-exchange source, this is not persuasive.
Initially, while the Office acknowledges that Yagi ‘973 does teach ion exchanging their glass to exchange Na+ ions from the glass with K+ ions from a molten salt, there is nothing in Yagi to indicate that the glass requires high levels of Na2O to function in ion exchange nor is there is anything in the reference to indicate that ion exchange can only be done with high Na2O amounts of 5-19% in the glass. In contrast, Yagi ‘973 only generally teaches a glass, teaches a Na2O content range that can be used and discusses that Na+ from the glass can be exchanged with K+ ions from a molten salt. As such, one skilled in the art would conclude Yagi to not be limited to 5-19% Na2O and that any amounts deemed suitable in the crystallized glass art which can function similarly with ion exchange can be used.
In the instant case, as discussed above, as both ‘964 and ‘285 similarly teach crystallized glass having crystals of MgAl2O4 or Mg2TiO4 similar to that of Yagi ‘973 wherein such glasses can be made with 0-15% Na2O, 0-10, 0-8 or even 2-8 as desired, it would have been obvious to one skilled in the art at the time of invention to modify ‘680 to include any of the above ranges to obtain a crystallized glass having MgAl2O4 or Mg2TiO4 crystals therein. Further, it is noted for the record that as both ‘964 and ‘285 teach that glasses having their taught lower amounts of Na2O can still undergo ion exchange to exchange Na+ ions from the glass with K+ ions from a molten source (see 0100, 0102 and 0122 in Yagi ‘964 and 0122-0123 and 0136 in ‘285) which is the desire of Yagi ‘973, using such lower amounts would not have only been obvious but there would be a reasonable expectation of success of using those lower amounts in Yagi ‘973. There is simply nothing in the references do conclude that lower amounts cannot be used in the teaching of Yagi ‘973 and on the contrary, Yagi ‘964 and Momono ‘285 clearly indicate that lower amounts are more than sufficient to function as an ion exchange source.
Applicants argue against the Office’s assertion that regarding the claimed total, using Yagi’s taught Na2O and Li2O ranges above allows for Na2O (5-19) +Li2O (0-2) = 5-21 wherein the endpoint of 5 overlaps with that claimed (MPEP 2144.05) because this scenario would be Na2O is 5% and Li2O would have to be 0 but the claim requires more than 0 Li2O.
Initially, while the Examiner agrees that the claims require more than 0 Li2O, the Office was merely indicating with the above assertion that the individual ranges taught by Yagi ‘973 would render obvious the claimed total specifically. It was not meant indicate that values of more than 0 Li2O could not be used. Further, for the sake of argument, even if more than 0 Li2O is used, Yagi’s 973 ranges would still render the claimed total obvious. For example, as stated above Yagi’s taught Na2O and Li2O ranges above allows for Na2O (5-19) +Li2O (0-2) = 5-21. Note that Yagi’s range allows for Li2O to be present in amounts such as 0.1 and Na2O to be present in amounts of 5 which provides for a total of 5.1 which is so close to the end point of 5 to render it obvious (MPEP 2144.05).
Even further, regardless of the above, the Office Action also included an alternative rejection which included Yagi ‘973 being modified with the Na2O contents of Yagi ‘964 or Momono and that modification provided Yagi ‘973 with the following composition.
Applicants
Yagi
SiO2
40-55
40-70 (0014)
Al2O3
10-30
11-25 (0015)
MgO
10-30
0-18 (0018)
TiO2
5-15
0.5-12 (0020)
Na2O
More than 0 to 4.57 or less or more than 0-4.06
0-15, 0-10, 0-8 or even 2-8
ZnO
5 or less
0-5 (0075)
B2O3
0-5
0 to 2 (0076)
P2O5
0-5
0-2 (0076)
Li2O
0-4
0-2 (0076)
K2O
0-5
0-9 (0017)
CaO
0-5
0-3 (0019)
SrO
0-5
0-2 (0076)
BaO
0-5
0-2 (0076)
ZrO2
0-8
0-5 (0075)
Sb2O3
0-2
0.01-3 (0063)
It was noted in the Office Action that the above Na2O ranges as well as the Li2O range allows for totals also overlapping with that claimed (MPEP 2144.05). As Applicants have yet to provide any showing/evidence of unexpected results, the rejection is proper and maintained.
Applicants argue again that Yagi ‘973 consistently provides technical concept that their glass contains Na2O of 5% or more and therefore, regardless of whether or not Li2O is present, there would be no motivation for one skilled in the art to adjust total Na2O+Li2O to be 5% or less.
This is not persuasive because again, Yagi ‘973 does not require Na2O to be 5% or more and instead, for all the reasons above, lower amounts of 0-15, 0-10, 0-8 or even 2-8 would have been obvious. These ranges together with Yagi’s ‘973’s Li2O range of 0-2% allow for totals overlapping that claimed thereby rendering the total obvious (MPEP 2144.05). As Applicants have yet to provide any showing/evidence of unexpected results, the rejection is proper and maintained.
Finally, Applicants argue that the new Na2O end point of 4.06% in claim 8 is not close to the 5% end point in Yagi ‘973 but this is not persuasive.
Initially, while Applicants argue that the values are not “close”, this is not persuasive. Note that the end points are only 0.94% different which would be considered to be sufficiently close to render the end point obvious (MPEP 2144.05).
Alternatively, even if Applicants continue to argue the above, note again that the Office Action included an alternative rejection wherein lower amounts of 0-15, 0-10, 0-8 or even 2-8 Na2O would have been obvious and these ranges overlap the new range of claim 8 rendering it obvious (MPEP 2144.05). As Applicants have yet to provide any evidence of unexpected results or criticality for the range, the rejection is proper.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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
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