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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-17, drawn to a glass composition, classified in C03C3/095.
II. Claims 18-20, drawn to a method of manufacturing a glass or glass ceramic composition, classified in C03C2203/52.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process, such as a process which heats the mixture to 1900°C.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired a separate status in the art in view of their different classification and the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Peter Butch on 07/22/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 18-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claims 5-6 and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 5 is directed towards the glass composition of claim 1, wherein the aluminum oxide is present in an amount ranging from about 30 mol% to about 45 mol%.
Claim 6 is directed towards the glass composition of claim 1, wherein at least 30 mol% of the aluminum oxide is in five-coordination (AlO5).
Claim 10 is directed towards the glass composition of claim 1, wherein the amounts of each of the oxides are selected so that the glass composition has a coefficient of thermal expansion (CTE) ranging from about 5.0 to about 6.0 ppm/K.
The closest prior art is Yoshii (US20060019813, hereinafter referred to as Yoshii). Per instant claim 5, Yoshii does not disclose or make obvious the aluminum oxide is present in an amount ranging from about 30 mol% to about 45 mol%. Per instant claim 6, Yoshii does not disclose or make obvious at least 30 mol% of the aluminum oxide is in five-coordination (AlO5). Per instant claim 10, Yoshii does not disclose or make obvious he amounts of each of the oxides are selected so that the glass composition has a coefficient of thermal expansion (CTE) ranging from about 5.0 to about 6.0 ppm/K.
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, 9, 11-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshii (US20060019813, hereinafter referred to as Yoshii).
Regarding claim 1, Yoshii discloses a glass composition (See Yoshii at the Abstract, disclosing a glass) comprising a rare earth metal oxide (See Yoshii at Table 1, example 3, disclosing an example of a glass comprising 1.6 mol% La2O3. Examiner notes La2O3 is a rare earth oxide per instant claim 7.), magnesium oxide (See Yoshii at Table 1, example 3, disclosing an example of a glass comprising 0.2 mol% MgO), aluminum oxide (See Yoshii at Table 1, example 3, disclosing an example of a glass comprising 4.9 mol% Al2O3), boron oxide (See Yoshii at Table 1, example 3, disclosing an example of a glass comprising 14.7 mol% B2O3), and silicon oxide (See Yoshii at Table 1, example 3, disclosing an example of a glass comprising 29.5 mol% SiO2), wherein the silicon oxide is present in an amount ranging from about 10% to about 50% by mole in the total amount of the oxides (See Yoshii at Table 1, example 3, disclosing an example of a glass comprising 29.5 mol% SiO2), and wherein the molar ratio of magnesium oxide to aluminum oxide in the starting material (MgO:Al2O3) is less than 1 (See Yoshii at Table 1, example 3, disclosing an example of a glass comprising 0.2 mol% MgO and 4.9 mol% Al2O3 for a ratio of 0.2/4.9= 0.04).
Regarding claim 2, Yoshii discloses the silicon oxide ranges from about 15% to about 35% by mole (See Yoshii at Table 1, example 3, disclosing an example of a glass comprising 29.5 mol% SiO2).
Regarding claim 3, Yoshii discloses the boron oxide ranges from about 5% to about 40% by mole (See Yoshii at Table 1, example 3, disclosing an example of a glass comprising 14.7 mol% B2O3).
Regarding claim 4, Yoshii discloses N3 is equal or greater than 85%, wherein N3 is defined as follows: N3 = (BO3/ BO3+BO4) (See Yoshii at Table 1, example 3, disclosing an example of a glass comprising 14.7 mol% B2O3 and no BO4, therefore the ratio of BO3/BO3+BO4 is 100%).
Regarding claim 9, while Yoshii does not explicitly disclose the amounts of each of the oxides are selected so that the glass composition has a density ranging from about 2.50 to about 3.50 g/cm3 because Yoshii does not disclose the density, the density of a glass is a function of the composition of the glass as detailed by instant claim 9. Because the composition of Yoshii is substantially identical to the instant composition, the glass of Yoshii would inherently possess the claimed property. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph)..
Regarding claim 11, while Yoshii does not explicitly disclose the glass composition has a transmission of equal or greater than 80% at a thickness ranging from about 1 mm to about 2 mm because Yoshii does not disclose the transmission of the glass, the transmission of a glass is a function of the composition of the glass as detailed by instant claim 11. Because the composition of Yoshii is substantially identical to the instant composition, the glass of Yoshii would inherently possess the claimed property.
Regarding claim 12, while Yoshii does not explicitly disclose the glass composition has Youngs modulus ranging from about 90 to about 140 GPa because Yoshii does not disclose the Youngs modulus of the glass, the Youngs modulus of a glass is a function of the composition of the glass as detailed by instant claim 12. Because the composition of Yoshii is substantially identical to the instant composition, the glass of Yoshii would inherently possess the claimed property.
Regarding claim 13, while Yoshii does not explicitly disclose the glass composition has Poisson's ratio ranging from about 0.20 to about 0.40 because Yoshii does not disclose the Poisson's ratio of the glass, the Poisson's ratio of a glass is a function of the composition of the glass as detailed by instant claim 13. Because the composition of Yoshii is substantially identical to the instant composition, the glass of Yoshii would inherently possess the claimed property.
Regarding claim 14, while Yoshii does not explicitly disclose the glass composition has a refractive index ranging from about 1.40 to about 1.80 because Yoshii does not disclose the refractive index of the glass, the refractive index of a glass is a function of the composition of the glass as detailed by instant claim 14. Because the composition of Yoshii is substantially identical to the instant composition, the glass of Yoshii would inherently possess the claimed property.
Regarding claim 15, while Yoshii does not explicitly disclose the glass composition has a Vickers hardness of equal or greater than 7.0 GPa at 200 gf load because Yoshii does not disclose the Vickers hardness of the glass, the Vickers hardness of a glass is a function of the composition of the glass as detailed by instant claim 15. Because the composition of Yoshii is substantially identical to the instant composition, the glass of Yoshii would inherently possess the claimed property.
Regarding claim 16, while Yoshii does not explicitly disclose the glass composition has a crack resistance equal or greater than 25 N or 2.55 kgf, wherein the crack resistance corresponds to the load at which 50% crack probability is recorded because Yoshii does not disclose the crack resistance of the glass, the crack resistance of a glass is a function of the composition of the glass as detailed by instant claim 16. Because the composition of Yoshii is substantially identical to the instant composition, the glass of Yoshii would inherently possess the claimed property.
Regarding claim 17, Yoshii discloses an article of manufacture comprising the glass composition (see Yoshii at [0002], disclosing a sealing glass sheet. Examiner notes a sealing glass sheet is an article).
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) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshii.
Regarding claim 7, Yoshii makes obvious the rare earth metal oxide is yttrium oxide, lanthanum oxide, or a combination thereof, wherein the rare earth metal oxide ranges from about 5% to about 15% by mole (see Yoshii at [0014], disclosing 1 to 10 mol % of a broadly defined rare earth oxide, which overlaps with the claimed range.). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 8, Yoshii makes obvious the magnesium oxide ranges from about 5% to about 15% by mole (see Yoshii at the Abstract, disclosing the total content of MgO, CaO, SrO, BaO and ZnO is 30 to 50 mol %, which overlaps with the claimed range).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber 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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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
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