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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art, relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
Acknowledgement is made of applicant’s claim that the instant application is a continuation of the International Application PCT/CN2022/141427. This is also known as a ‘bypass' application. Should applicant desire to obtain the benefit of the file date for international application under 35 U.S.C. 120 and 365(c), a certified English translation of the international application must be submitted in reply to this action. See MPEP 1895.01 which recites:
A certified copy of the international application (and an English translation) of the international application may be required by the examiner to perfect the claim for benefit under 35 U.S.C. 120 and 365 (c) if the international application did not originate in the United States and such is necessary, for example, where an intervening reference is found and applied in a rejection of one or more claims.
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in China on 24 December 2021. It is noted that applicant has filed a certified copy of the CN 202111602659.0 application as required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted 5 June 2024 and 7 July 2025 have been considered by the Examiner.
Drawings
The original drawings received on 5 June 2024 are accepted by the Examiner.
Claim Rejections - 35 USC § 112(a) or first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contains subject matter, which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. While the claims are enabled for a glass comprising in terms of mass percentages, 100 mass percent in total selected from the following components: 55-85% of SiO2, 0-10% of Al2O3, 5-20% of Na2O, 5-20% of CaO, 0-10% of MgO, 0-10% of K2O, 0-10% of BaO, 0.4-0.6% of Sb2Ox, 0.2-0.4% of ZnO, 0.3-0.4% of TiO2, and a total iron expressed as Fe2O3 of less than 180 parts per million (ppm) and 10 Fe2O3 + ZnO + TiO2 ≥ Sb2Ox. See specification paragraph [0004] The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims which requires ZnO + TiO2 + Fe2O3 ≤ Sb2Ox. It is unclear how the glass can comprise 0.4-0.6% of Sb2Ox and 0.2-0.4% of ZnO and still meet ZnO + TiO2 + Fe2O3 ≤ Sb2Ox., when TiO2 is 0.3-0.4% and Fe2O3 is less than 180 ppm or less than 0.0180 mass %. If the lowest amount of ZnO, TiO2, and Fe2O3 is used where ZnO is 0.2, TiO2 is 0.3, and Fe2O3 is zero, Sb2Ox would have to be greater than or equal to 0.5 mass%. Therefore, the lower limit of Sb2Ox is unachievable. Additionally, using the lower limit amounts of TiO2 and Fe2O3, being 0.3 and zero, respectively, and using the highest amount of Sb2O3 is recited as 0.6 mass%, the highest the ZnO content could be is 0.3 mass%.
A) The breadth of the claims:
The claims encompass all glass compositions including upper and lower limits of components, which are not able to be achieved, based on the lower and upper limits of the required components and the relationship of those components. For example, in claim 1, how is the glass able to comprise the recited components in the recited ranges for Sb2Ox, TiO2, ZnO, and Fe2O3, 10 Fe2O3 + ZnO + TiO2 ≥ Sb2Ox and still meet the relationship of ZnO + TiO2 + Fe2O3 ≤ Sb2Ox?
Based on the required components the range listed below of the component in the following claims is not enabled.
Mass percent
Sb2Ox
ZnO
Claims 1, 6, and 20
0.4% to less than 0.5%
more than 0.3% to 0.4%
The composition that is considered enable in claims 1, 6, and 20 is shown below.
Component
Mass %
SiO2
55-85
Al2O3
0-10
Na2O
5-20
CaO
5-20
MgO
0-10
K2O
0-10
BaO
0-10
Sb2O3
0.5-0.6
ZnO
0.2-0.3
TiO2
0.3-0.4
Fe2O3
0-0.0180
wherein
ZnO + TiO2 + Fe2O3 ≤ Sb2Ox
10 Fe2O3 + ZnO + TiO2 ≥Sb2Ox
B) The nature of the invention:
The invention relates to a soda-lime-silicate glass having oxide components where the composition is expressed as mass percentages.
C) The state of the prior art:
While knowledge of glass compositions is extensive, there is little to no precedent for determining the composition based on mass percent ranges that are unachievable without altering the compositional and property make-up of the desired product.
D) The level of ordinary skill:
The level of ordinary skill in the art would appear to be a ceramic scientist or engineer with at least a PhD and a number of years of research experience.
E) The level of predictability in the art:
The effect of adding or removing a given component from glass composition on the properties of the glass composition can be somewhat predictable. However, altering a glass’s composition outside of mathematically achievable compositional ranges is unpredictable.
F) The amount of direction provided by the inventor:
The inventors disclose glass compositional ranges that are for producing a glass with the properties required by the instant claims (see specification paragraphs [0004]- [0014]). Exemplary compositions exhibiting the properties required by the instant claims are disclosed See Table 1. All of the exemplary compositions have compositions falling within the disclosed compositional ranges listed above as enable, specifically, the Sb2Ox content of 0.5-0.6 mass% and the ZnO content of 0.2-0.3 mass%. No guidance is provided for producing glasses that have a composition, which is outside of the ranges noted above as enabled.
G) The existence of working examples:
There are many soda-lime-silicate glasses with compositions similar to the composition in the instant application. Table 1 comparative examples 1-3 are provided of glasses having the similar components that are dissimilar to the composition. But these examples fail to meet all of the Sb2Ox, ZnO, TiO2, Fe2O3, and ZnO + TiO2 + Fe2O3 ≤ Sb2Ox limitations.
H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
The composition described in the disclosure would allow the production of a glass exhibiting the required properties selected from within its bounds without the need for undue experimentation. However, not even blind experimentation could be employed by one of ordinary skill in the art to produce the glass in terms of mass percentages comprising 55-85% of SiO2, 0-10% of Al2O3, 5-20% of Na2O, 5-20% of CaO, 0-10% of MgO, 0-10% of K2O, 0-10% of BaO, 0.4-0.6% of Sb2Ox, 0.2-0.4% of ZnO, 0.3-0.4% of TiO2, and a total iron expressed as Fe2O3 of less than 180 parts per million (ppm), wherein ZnO + TiO2 + Fe2O3 ≤ Sb2Ox and 10 Fe2O3 + ZnO + TiO2 ≥ Sb2Ox, as recited in instant claims 1, 6, and 20.
No guidance is provided in the instant specification that would allow one of ordinary skill in the art to produce the glass composition having a composition outside of the ranges indicated as being enabled. While all possible combinations of the recited ranges are not required to be within the scope of enablement, the entire range should be enabled. For example, a glass in terms of mass percentages comprising 55-85% of SiO2, 0-10% of Al2O3, 5-20% of Na2O, 5-20% of CaO, 0-10% of MgO, 0-10% of K2O, 0-10% of BaO, 0.5-0.6% of Sb2Ox, 0.2-0.3% of ZnO, 0.3-0.4% of TiO2, and a total iron expressed as Fe2O3 of less than 180 parts per million (ppm), wherein ZnO + TiO2 + Fe2O3 ≤ Sb2Ox. and 10 Fe2O3 + ZnO + TiO2 ≥ Sb2Ox would be fully enable since selecting points within the given ranges are able to be in total 100 mass percent. In the instant claims, the upper limit of ZnO and the lower limit of Sb2Ox are not enabled.
The glass composition and exemplary embodiments disclosed in the instant specification cover only a narrow fraction of the broad protection sought in the instant claims. In combination with the established unpredictability of the art, the lack of guidance would require one of ordinary skill in the art to conduct excessive blind experimentation to determine which glass combinations exhibit the required properties. The teaching set forth in the specification provides no more than an invitation for those of skill in the art to experiment searching for the required properties in compositions outside the range indicated as enabled. See, Enzo Biochem, Inc. v. Calgene, Inc., 52 USPQ2d 1129.
The scope of enablement provided to one of ordinary skill in the art by the disclosure must be commensurate in scope with the protection sought by the claims. See, AK Steel Corp. v. Solla, 68 USPQ2d 1280. The instant claims attempt to cover glass compositions including ranges that are unachievable based on the specific combination of compositional limitations, which constitutes the subject matter discovered by applicant. The subject matter identified as enabled by the Examiner includes the entire scope of the subject matter taught by applicant as sufficient to obtain the critical properties of their invention.
Claims 2-5 and 7-19 are rejected since they depend from claim 1, which is rejected as lacking enablement.
Claim Rejections - 35 USC § 112(b) or second paragraph
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 1-20 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 pre-AIA the applicant regards as the invention.
In claims 1, 6, 16, 18, and 20, the claims recite ranges of components or properties where the upper and lower limit of the range is separated by a tilde “~”. This is confusion since the tilde “~” is used to represent a value is approximately that value. For example, “~10” would be read as “approximately 10”. This renders the claims indefinite. The claims would be clearer if the tilde “~” was replaced with a hyphen “-“.
Claims 1-3, 6, and 20 recite the compositional component “Sb2Ox”. This renders the claim indefinite since the independent claims 1, 6, and 20 do not define what x represents in the component “Sb2Ox”.
Claims 5, 7, and 9 recite limitations directed towards the transmittance of the glass for infrared light with a wavelength ranging from 800 nm to 1580 nm. This renders the claim indefinite since it not clear at what thickness of glass the transmittance is measure in the 800-1580 nm range and transmittance is thickness dependent. A glass having a thickness of 1 cm would generally have a different transmittance as the same glass having a 1 mm thickness.
Claims 4, 8, 10-15, 17, and 19 are rejected as indefinite since the depend either directly or indirectly without correcting the above issues.
Conclusion
The additional references cited on the 892 have been cited as art of interest.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth A. Bolden whose telephone number is (571)272-1363. The examiner can normally be reached 10:00 am to 6:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at 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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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
8 August 2026
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