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 .
Priority
Written support for the upper limit for KT of 2.2·KIC can be found in paragraph [00130] of provisional application serial no. 62/729735 and paragraph [0131] of application serial no’s 16/565899; 17/485911 and 18/131154. Therefore, the instant application has a US effective filing date of 11 September 2018.
Claim Objections
Applicant is advised that should claim 10 be found allowable, claim 16 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-10, 13 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,130,705 (‘705). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-25 of the ‘705 completely encompass all of the limitations of instant claims 1-2, 4-7, 9, 13 and 15-20 including overlapping ranges of KT.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Further as to claim 8 which recite a “alkali aluminosilicate” as the glass-based article, the claims of the ‘705 application teach a glass-based article. To one of ordinary skill in the art, the alkali aluminosilicates are a well-known sub-genus of glass compositions that are well suited to ion exchange strengthening. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have formulated a glass ceramic as the glass-based article. The rationale for doing so is that it has been held to have been obvious to make the “selection of a known material based on its suitability for its intended….” See MPEP 2144.07.
As to claim 13, the claims of the ‘705 application fail to teach the thickness of the glass-based article as recited in claim 13. However, it has been held to have been obvious to one of ordinary skill in the art at the time of filing to have changed the size of a prior art. See MPEP 2144.04 IV.
Further as to claims 10 and 16-20 which recite a “glass ceramic,” the claims of the ‘705 application teach a glass-based article. To one of ordinary skill in the art, the term “glass-based” is generic to glass and glass ceramic articles. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have formulated a glass ceramic as the glass-based article. The rationale for doing so is that it has been held to have been obvious to make the “selection of a known material based on its suitability for its intended….” See MPEP 2144.07.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,077,470 (‘470). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-14 of the ‘470 patent completely encompass all of the limitations of instant claims 1-20 including overlapping ranges of KT (see claim 8 of the ‘470 application).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Sample whose telephone number is (571)272-1376. The examiner can normally be reached Monday to Friday 7AM to 3:30 PM.
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, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David Sample/Primary Examiner, Art Unit 1784
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