CTNF 18/739,794 CTNF 77249 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 statement (IDS) submitted on December 10, 2024 was considered by the examiner. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claim 2 is 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 2 recites the limitation "the two primary peaks" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim. It is unclear if the claim is referring to the 006 and 0012 peaks or other primary peaks which could be present in the diffraction pattern. For sake of further examination, “the primary peaks” will be viewed as referring to the 006 and 0012 peaks. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) 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. 07-20-aia AIA 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. 07-21-aia AIA Claim s 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0002231 (Ogawa et al.) . Regarding claim 1 , Ogawa discloses embodiments for an alumina-based plate having an in-line transmission of around 71-75% (see Table 1, Examples 3-7) for a light with a wavelength range from 500 to 900 nm (see paragraphs 0012 and 0048), which is within the claimed in-line transmission range of 60-75% and overlaps the claimed wavelength range of 645-2500 nm (see paragraph 0047), and a relative density of 98.95% or more (see paragraph 0034), which overlaps the claimed range of 99.00-99.95%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). The Examples disclosed by Ogawa are 1.9 mm thick (see paragraph 0012), which is just outside the claimed range of 2-5 mm. Utilizing a sample where the thickness is 2.0 mm would yield an insignificant change to the transmittance, as can be seen when using the Beer-Lambert relation of T 2 =T 1 (t2/t1) , for Example 7 where T 1 = transmittance of 71.10% at 1.9 mm, t 1 =1.9 mm, and t 2 =2.0 mm, yielding T 2 =0.7110 (2.0/1.9) =69.9%. It is therefore the Examiner’s position that the disclosed values are close enough that one of ordinary skill in the art before the effective filing date of the invention would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). It would have been obvious to one having ordinary skill in the art before the effective filing date to optimize the thickness of the alumina-based plate, depending on the dimensions needed for its intended use. While Ogawa does not state the in-line transmission variance of the alumina-based plate, in Tables 1 and 2, all of the Examples 1-11 have transmittances ranging from 70.19-80.51%, yielding a variance that is on the order of around 10%, which within the claimed range of <15%. Regarding claims 2 and 3 , 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). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENDY L BOSS whose telephone number is (571)272-7466. The examiner can normally be reached 8:30-6:30. 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, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /WENDY L BOSS/Examiner, Art Unit 1749 /ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781 Application/Control Number: 18/739,794 Page 2 Art Unit: 1749 Application/Control Number: 18/739,794 Page 3 Art Unit: 1749 Application/Control Number: 18/739,794 Page 4 Art Unit: 1749 Application/Control Number: 18/739,794 Page 5 Art Unit: 1749
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