DETAILED ACTION
The claims 1-3, 6-7, 11, and 13-16 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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/19/2024 and 07/19/2024 are being considered by the examiner.
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, 6, and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jonson et al (WO 9606052 A1).
Regarding claim 1, Jonson et al teaches an opal glass composition comprising 57.9 wt% SiO2, 4.1 wt% Al2O3, 13.3 wt% Na2O, 5.8 wt% CaO, 0.6 wt% BaO, 3.5 wt% ZnO, 4.3 wt% B2O3, 8.7 wt% P2O5, 1.2 wt% Li2O, and 0.6 wt% Sb2O3 (see Abstract and example 1 on page 7). As converted to molar percentage, this glass contains 62.8 mol% SiO2, 2.6 mol% Al2O3, 14.0 mol% Na2O, 6.7 mol% CaO, 0.3 mol% BaO, 2.8 mol% ZnO, 4.0 mol% B2O3, 4.0 mol% P2O5, 2.6 mol% Li2O, and 0.1 mol% Sb2O3. Each compositional limitation of claim 1 is therefore met by the Jonson et al embodiment glass, and the claim is anticipated by the prior art of record.
Regarding claim 2, as discussed above, Jonson et al teaches an opal glass comprising 62.8 mol% SiO2, 2.6 mol% Al2O3, 14.0 mol% Na2O, 6.7 mol% CaO, 0.3 mol% BaO, 2.8 mol% ZnO, 4.0 mol% B2O3, 4.0 mol% P2O5, 2.6 mol% Li2O, and 0.1 mol% Sb2O3. The claimed range extending from “about 63 mol%” is considered to include the amount 62.8 mol% SiO2, as this amount is within 0.32% of the claimed end point for this range, and thus would fall within the deviation imparted by the “about” usage. As such, each compositional limitation of claim 2 is met by the Jonson et al embodiment glass, and the claim is anticipated by the prior art of record.
Regarding claim 6, Jonson et al teaches a glass that is opalescent and that is compositionally equivalent to that of the instant claims. This equivalent glass would therefore also have equivalent scattering properties to visible light, and said scattering would inherently be wavelength independent. 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 14, the Jonson et al glass discussed above is free of fluorine and lead, thus meeting the further limitations of the instant claim.
Regarding claim 15, the Jonson et al glass discussed above is free of tungsten and molybdenum, thus meeting the further limitations of the instant claim.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Jonson et al (WO 9606052 A1).
Regarding claim 3, the claim differs from Jonson et al as applied above because Jonson et al does not teach an exemplary embodiment meeting each compositional limitation of the claim. However, Jonson et al teaches ranges for each of the components of the instant claim that significantly overlap the corresponding ranges in claim 3. It would therefore have been obvious to one of ordinary skill in the art to form an opal glass meeting each instant claim limitation through routine optimization and experimentation with the overlapping ranges, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Furthermore, when general conditions are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by changing the size, the proportion, the shape, and/or the sequence of added ingredients through routine experimentation. See MPEP 2144.04 (IV)(A) - In re Rose, 105 USPQ 237 and MPEP 2144.04 (IV)(A) - In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
Claim 3 is therefore obvious and not patentably distinct over the prior art of record.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Jonson et al (WO 9606052 A1) in view of Sasage et al (JP 2000128573 A).
Regarding claim 7, the claim differs from Jonson et al as applied above because while Jonson et al teaches that the inventive opal glass contains crystals therein, it does not specify the crystal sizes. However, it would have been obvious to one of ordinary skill in the art to modify Jonson et al in view of Sasage et al in order to for opal glass with the crystal sizes taught therein. Sasage et al teaches a light-transmissive opaline plate glass that is compositionally similar to that taught by Jonson et al, and teaches that a crystal size used in the opal glass is preferably 0.4 to 2.0 µm. One would have had motivation to use this average crystal size with the opal glass taught by Jonson et al because the lack of specificity in this regard by Jonson et al would lead one to look to other teachings for an appropriate size. Sasage et al provides such a teaching, and one would have had a reasonable expectation of success in the modification because Jonson et al and Sasage et al are each drawn to opal glasses from the same compositional system. One would have achieved a glass having crystals with a size of at least 1 µm from the Sasage et al range because a significant portion of this range is greater than 1 µm, and because per MPEP 2144.05, overlapping ranges have been held to establish prima facie obviousness.
Each limitation of claim 7 is therefore met by the teachings of the prior art of record, and the claim is obvious and not patentably distinct.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Jonson et al (WO 9606052 A1) in view of Sasage et al (JP 2000128573 A) and in further view of Fajst et al (FR 3068034 A1).
Regarding claim 11, the claim differs from Jonson et al as applied above because Jonson et al does not teach a thickness for the inventive opal glass. However, it would have been obvious to one of ordinary skill in the art to modify Jonson et al in further view of Fajst et al in order to form glasses with the thickness taught therein. Fajst et al teaches an opal glass used in the same electrical lightning/illumination applications as those for which the Jonson et al glasses are taught to be used. Fajst et al teaches that the inventive glasses have thicknesses on the order of 1 mm. One of ordinary skill would have had motivation to use the thickness taught by Fajst et al in preparing the Jonson et al glasses because the lack of specificity in this regard by Jonson et al would lead one to look to other teachings for an appropriate size. Fajst et al provides such a teaching, and one would have had a reasonable expectation of success in the modification because Jonson et al and Fajst et al are each drawn to opal glasses used in illumination applications.
Each limitation of claim 11 is therefore met by the teachings of the prior art of record, and the claim is obvious and not patentably distinct.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Jonson et al (WO 9606052 A1) in view of Sasage et al (JP 2000128573 A) and Fajst et al (FR 3068034 A1) and in further view of Boek et al (WO 2016196615 A1).
Regarding claim 13, the claim differs from Jonson et al as applied above because Jonson et al does not teach that the inventive glass has a textured surface. However, it would have been obvious to one of ordinary skill in the art to modify Jonson et al in further view of Boek et al in order to prepare a glass having a textured surface as is taught by Boek et al. Boek et al teaches a laminated glass article having cladding layers, wherein the cladding layers are opal glass (see claim 12), and wherein the cladding layers have a textured outer surface (see claim 9). Boek et al further teaches that the inventive glass article is used in applications such as electric lighting (see paragraph 0044), that is, in the same application for which the Jonson et al glass is taught. Therefore, one of ordinary skill would have had motivation to use the known technique of Boek et al of producing a textured surface on the opal glass when preparing the opal glass of Jonson et al, in order to achieve the advantageous results taught by Boek et al. One would have had a reasonable expectation of success in the modification because Jonson et al and Boek et al are each drawn to opal glasses used in lighting applications. Each limitation of claim 13 is therefore met by the teachings of the prior art of record, and the claim is obvious and not patentably distinct.
Allowable Subject Matter
Claim 16 is allowed. The prior art, either alone or in combination, fails to teach or suggest a glass that is opalescent and that meets each compositional limitation of the instant claim.
Conclusion
14. Claims 1-3, 6-7, 11, and 13-15 are rejected. Claim 16 is allowed.
15. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
16. 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
NSW31 August 2026
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