DETAILED ACTION
The claims 1-20 are pending and presented for the examination.
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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/01/2024 and 08/19/2025 are being considered by the examiner.
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.
Claims 1-2, 4, 6, 9-11, and 13-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dejneka et al (US 2021/0155531 A1).
Regarding claim 1, Dejneka et al teaches a glass composition and article made therefrom that is subject to strengthening through ion exchange. Dejneka et al teaches an embodiment glass comprising 73.7 mol% SiO2, 8.9 mol% Al2O3, 12.7 mol% Li2O, 4.4 mol% Ta2O5, 0.1 mol% SnO2, and 0.1 mol% Na2O (see Table 1G, example 47). The content Y2O3+La2O3+Ta2O5 is therefore 4.4 mol%, and each compositional limitation of the instant claim is therefore met by the Dejneka et al teachings. Claim 1 is therefore anticipated by the prior art of record.
Regarding claim 2, the aforementioned Dejneka et al glass has a content Y2O3+La2O3+Ta2O5 of 4.4 mol%.
Regarding claim 4, the Dejneka et al example 47 glass contains 12.7 mol% Li2O.
Regarding claim 6, the Dejneka et al example 47 glass contains 4.4 mol% Ta2O5.
Regarding claim 9, the Al2O3+ZrO2 content of the Dejneka et al example 47 glass is 8.9 mol%.
Regarding claim 10, Dejneka et al teaches a glass composition and article made therefrom that is subject to strengthening through ion exchange. Dejneka et al teaches an embodiment glass comprising 73.7 mol% SiO2, 8.9 mol% Al2O3, 12.7 mol% Li2O, 4.4 mol% Ta2O5, 0.1 mol% SnO2, and 0.1 mol% Na2O (see Table 1G, example 47). The content Y2O3+La2O3+Ta2O5 is therefore 4.4 mol%, and each compositional limitation of the instant claim is therefore met by the Dejneka et al teachings. Claim 10 is therefore anticipated by the prior art of record.
Regarding claim 11, the aforementioned Dejneka et al glass has a content Y2O3+La2O3+Ta2O5 of 4.4 mol%.
Regarding claim 13, the Dejneka et al example 47 glass contains 12.7 mol% Li2O.
Regarding claim 14, the Dejneka et al example 47 glass has a Young’s modulus of 87.08 GPa (see Table 2G).
Regarding claim 15, the Dejneka et al example 47 glass has a fracture toughness of 0.829 MPa·m1/2 (see Table 2G).
Regarding claim 16, as discussed above, Dejneka et al teaches that the inventive glass articles are ion exchanged.
Regarding claim 17, Dejneka et al teaches a maximum central tension of the inventive glass of 275 MPa. However, this central tension is measured with a 1 mm thick glass sample (see paragraph 0179). Because the Dejneka et al example 47 glass is compositionally equivalent to that of the instant claims, it would inherently have equivalent central tension properties, and thus the maximum central tension would inherently be at least 75 MPa when measured instead on a 0.6 mm sample. The further limitations of claim 17 are therefore met, and the claim is anticipated by the prior art of record.
Regarding claim 18, Dejneka et al teaches that the inventive glasses have a store strain energy of greater than 20 J/m2 (see paragraph 0162). As the Dejneka et al glass discussed above is compositionally equivalent to that of the instant claims and has equivalent physical properties in terms of Young’s modulus and fracture toughness, the equivalent glass would also inherently have frangibility. The Dejneka et al glass would thus inherently be non-frangible. 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).
Regarding claim 19, Dejneka et al teaches a glass composition and article made therefrom that is subject to strengthening through ion exchange. Dejneka et al teaches an embodiment glass comprising 73.7 mol% SiO2, 8.9 mol% Al2O3, 12.7 mol% Li2O, 4.4 mol% Ta2O5, 0.1 mol% SnO2, and 0.1 mol% Na2O (see Table 1G, example 47). The content Y2O3+La2O3+Ta2O5 is therefore 4.4 mol%, and each compositional limitation of the instant claim is therefore met by the Dejneka et al teachings. The glass is formed by a heating a starting mixture and subsequently cooling to for a glass comprising the composition (see paragraph 0151). Each limitation of claim 19 is met by the Dejneka et al teachings and the claim is anticipated by the prior art of record.
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.
Claims 3, 5, 7-8, 12, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Dejneka et al (US 2021/0155531 A1).
Regarding claim 3, the claim differs from Dejneka et al as applied above because Dejneka et al does not teach an exemplary embodiment wherein the Al2O3 content is about 3 mol% to about 8 mol%. However, Dejneka et al teaches that the Al2O3 content of the inventive glasses is 8-40 mol% (see claim 1). This range overlaps and thus renders obvious the range of instant claim 3. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Furthermore, when general conditions are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by changing the size, the proportion, the shape, and/or the sequence of added ingredients through routine experimentation. See MPEP 2144.04 (IV)(A) - In re Rose, 105 USPQ 237 and MPEP 2144.04 (IV)(A) - In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
Claim 3 is therefore obvious and not patentably distinct over the prior art of record.
Regarding claim 5, the claim differs from Dejneka et al as applied above because Dejneka et al does not teach an exemplary embodiment wherein the Y2O3 content is about 0.5 mol% to about 9.5 mol%. However, Dejneka et al teaches that the Y2O3 content of the inventive glasses can be greater than 0.5 mol%, with an upper bound that can be from 4-7 mol% (see paragraph 0134). The range for this component as taught by Dejneka et al therefore overlaps the corresponding range of the instant claim. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Regarding claim 7, the claim differs from Dejneka et al as applied above because Dejneka et al does not teach an exemplary embodiment wherein the La2O3 content is about 0.5 mol% to about 9.5 mol%. However, Dejneka et al teaches that the La2O3 content of the inventive glasses can be greater than 0.5 mol%, with an upper bound that can be from 2.75-5 mol% (see paragraph 0136). The range for this component as taught by Dejneka et al therefore overlaps the corresponding range of the instant claim. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Regarding claim 8, the claim differs from Dejneka et al as applied above because Dejneka et al does not teach an exemplary embodiment wherein the ZrO2 content is greater than about 0 mol% to about 9 mol%. However, Dejneka et al teaches that the ZrO2 content of the inventive glasses is from about 0 mol% to 4 mol% (see claim 1). As discussed above, per MPEP 2144.05, overlapping ranges have been held to establish prima facie obviousness.
Regarding claim 12, the claim differs from Dejneka et al as applied above because Dejneka et al does not teach an exemplary embodiment wherein the Al2O3 content is about 3 mol% to about 8 mol%. However, Dejneka et al teaches that the Al2O3 content of the inventive glasses is 8-40 mol% (see claim 1). This range overlaps and thus renders obvious the range of instant claim 12. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Furthermore, when general conditions are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by changing the size, the proportion, the shape, and/or the sequence of added ingredients through routine experimentation. See MPEP 2144.04 (IV)(A) - In re Rose, 105 USPQ 237 and MPEP 2144.04 (IV)(A) - In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
Claim 12 is therefore obvious and not patentably distinct over the prior art of record.
Regarding claim 20, Dejneka et al teaches that the glasses are subject to ion exchange by placing them into a molten salt bath at a temperature of 370-480 °C (see paragraphs 0057 and 0058) for a time of 15 minutes to 100 hours, or more specifically 4-5 hours or less (see paragraph 0059). The time range taught by Dejneka et al meets the claim limitation coverage of the instant claim. The temperature range taught by Dejneka overlaps that of the instant claim. Per MPEP 2144.05, overlapping ranges have been held to establish prima facie obviousness, and it therefore would have been obvious to one of ordinary skill in the art to arrive at an ion exchange process wherein a temperature falling within the instant claim range is used through routine optimization and experimentation. Claim 20 is therefore not patentably distinct over the prior art of record.
Conclusion
11. No claim is allowed.
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH S WIESE whose telephone number is (571)270-3596. The examiner can normally be reached on Monday-Friday, 7:30am-4:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on 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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/NOAH S WIESE/Primary Examiner, Art Unit 1731
NSW11 September 2026
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