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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 is dependent on claim 1. Claim 1 requires that the oxides of P, Te, B, Ti, Ta, W, Zr, Bi, and Zn make up 90 mol% or more of the glass. Claim 3 sets forth that oxides of Li, Na, K, and Nb may make up more than 10% and up to 15% of the glass. If the content of any of these elements is greater than 10%, the glass does not fall within the scope of claim 1 as the content of the recited elements would be less than 90 mol%. Thus claim 3 has a scope that partially falls outside of claim 1 and cannot be said to further limit the claimed subject matter. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-4 and 6-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hasegawa in JP2011051886 (IDS; citations to attached machine translation).
Regarding Claim 1: Hasegawa teaches the creation of a glass. Hasegawa teaches various explicit examples falling within the claimed range. Glass 1 for example contains 17.6 mol% TeO2. The total content of TeO2, Bi2O-3, B2O3, P2O5, ZnO, and TiO2 account for 100% of the glass (which is greater than 90% as claimed). The ‘parameter A’ of example 1 is A=(3.114620*10.1)+(0.308780*17.6)+(1.018169*25.4)+(1.144722*8.1)+ (0.266476*33.7)+(0.339981*5.1)=31.46+5.43+25.86+9.27+8.98+1.74=82.74. The ‘parameter A’ of glass 1, as defined by the claims, falls within the claimed range of 65 or more. The glass of Hasegawa thus anticipates the claimed glass as is established by at least Example 1 (See Table 1).
Regarding Claim 2: Hasegawa teaches the creation of the glass of Example 1, which contains 17.6 mol% TeO2 and 33.7 mol% Bi2O3 falling within the claimed range (See Table 1).
Regarding Claim 3: Hasegawa teaches the creation of the glass of Example 1. This glass contains 33.7 mol% Bi2O3, 25.4% B2O3, 17.6% TeO2, 10.1% P2O5, 5.1% ZnO, and 8.1% TiO2. The glass of Example 1 falls squarely within the range of compositions claimed (See Table 1).
Regarding Claim 4: Hasegawa does not teach the addition of Fe, Cr or Ni. The glass created by Hasegawa appears to be free of these elements and thus their content is equal to 0 ppm, which falls within the claimed range.
Regarding Claim 6: Hasegawa teaches that the glass samples are provided in a size having dimensions of 20 mm in length, 20 mm in width, and 2 mm thickness. Each of the two faces of this glass have a surface area of 4 cm (2cmx2cm) and the lateral edge has a surface area of 1.6 cm. The total surface area of this glass is 9.6 cm2 (See Paragraph before Industrial Applicability).
Regarding Claim 7: The claims are drawn to an intended use of the glass. Intended use limitations are examined on the material’s capability to be used in the intended purpose and not its actual use (the claims are ultimately drawn to a composition and not a use thereof). The glass of Hasegawa is of the same composition and structure (plate) as that which is claimed and would inherently be capable of the same use as a light guide plate. Hasegawa notes that the glass is to be used as a lens, which has a shape and refractive index tailored to guiding light to an image sensor.
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(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa in JP2011051886 (IDS; citations to attached machine translation)..
Hasegawa teaches an overlapping range of glass compositions comprising 12-48 mol% Bi2O3, 15-60% B-2O3, 5-60% TeO2, 0-15% P2O5, 0-5% Nb2O5 + Ta2O5, 0-10% ZnO, and 0-15 TiO2. The glass of Hasegawa contains an overlapping range of TeO2 and the glass may be comprised of greater than 90% of oxides of P, Te, B, Ti, Ta, W, Zr, Bi and Zn. The glass of Hasegawa does not require components other than those instantly claimed (See Abstract and Tables). Hasegawa is silent in terms of the claimed parameter A; however, as is discussed above Example 1 of Hasewaga establishes that selection of a glass according to their teachings necessarily leads to providing a glass having a parameter A that is greater than 65 (See Discussion of Claim 1 above). Hasegawa thus teaches an overlapping range of glass compositions. Overlapping ranges have been held to establish a prima facie case of obviousness over the prior art. Those of ordinary skill in the art would only need to select from the invention as claimed to arrive at the invention as claimed.
Hasegawa teaches that their glass may have a refractive index of greater than 2.05 (See Examples and Paragraph beginning “When the refractive index .sub.n d of this glass”), but is silent in terms of the internal transmittance of light in said glass under the claimed conditions and the young’s modulus of the glass.
However, Hasegawa teaches glass of an overlapping range of compositions. Those of ordinary skill in the art would only need to select from the overlapping portion of the claimed range to arrive at the invention as claimed. Selection of such glasses would necessarily provide glass having the claimed modulus and internal transmittance as claimed. Those of ordinary skill in the art would have expected the glass of Hasegawa to have similar Young’s modulus as it is made of the same components and has the same structure (amorphous; glass). Materials of the same composition and structure must necessarily have the same properties as these properties stem directly from the composition and structure.
Those of ordinary skill in the art would have expected the range of glasses taught by Hasegawa to have an overlapping range of internal transmittance based on the exemplary samples shown. Hasegawa notes the use of JOGIS02 test for determining transmittance (See Paragraph beginning “Transmittance λ .sub.5 , λ .sub.70 ; The spectral transmittance”), which is a test that determines total transmittance and includes reflection loss. As the glass of Hasegawa is a glass having a refractive index of greater than 2, those of ordinary skill would expect greater than 10% reflective loss based on Fresnel’s equations R=|(n1-n2)/(n1+n2)|2. Hasegawa shows various examples where the total transmittance around 440 nm is 70% (See Example 3-7). Those of ordinary skill in the art would expect that these samples would have had an overlapping range of internal transmittance under the claimed conditions when reflective loss was considered. Additionally, Hasegawa teaches overlapping ranges of glass compositions, which would be expected to have overlapping properties with those instantly claimed. Materials of the same composition and structure must necessarily have the same properties as these properties stem directly from the composition and structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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