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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 14, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-5, 8, 10-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicants’ specification as filed does not appear to provide clear support for the now claimed ratio of DOLzero to thickness being 0.1158 or more.
Initially, note that nowhere in the specification as filed is the DOLzero/thickness ratio range claimed explicitly taught.
Additionally, while the Examiner acknowledges that par 0038 of the specification as filed may discuss DOLzero and thickness wherein a ratio can arguably be calculated, note that not only is this paragraph limited to 0.7mm thickness, and not for any thickness as would be allowed by the presently claimed limitation, but the values calculated in the paragraph have specific lower and upper limits. Specifically, the paragraph discusses a thickness of 0.7mm (700micron) with a lower limit DOLzero of 70micron and upper limit of 180micron which provides for a ratio range of 0.1 (70micron /700micron) to 0.257 (180micron/700micron). This range does not support the entirety of the open-ended range claimed (“0.1158 or more”).
Even further, regarding Examples 1-16 in which Applicants point to as indicating support, note that the lowest ratio one can ascertain from following the DOLzero and thickness values of these Examples is 0.1125 (see Example 3 wherein the DOLzero is 90micron and the thickness is 800micron) and the highest ratio appears to be 0.22 (see Example 1 wherein the DOLzero is 132micron and the thickness is 600micron). This is not enough to support the entirety of the open-ended range claimed (“0.1158 or more”).
Finally, the Examiner notes for the record that while the now claimed ratio range has a minimum end point of 0.1158, when calculating ratios from Applicants’ Examples as well as any ratios that can be ascertained following Applicants’ disclosure, it is not clear where the actual point of 0.1158 is even coming from. Nowhere in the specification has the Examiner been able to locate this exact ratio disclosed either through explicit disclosure or following calculations from the disclosure or Examples. The Office urges Applicants to please clarify where this specific end point is disclosed and clearly supported in the specification as filed.
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.
Claim(s) 1, 3-5, 8, 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goto (USPub20080248316) in view of any one of (USPN8,071,493), (USPub20010056021) or (WO2020179872, rejection using corresponding English document US11,807,568).
Regarding claims 1 and 3: Goto teaches a crystallized glass substrate which can include alpha cristobalite solid solution as a main crystal phase (see Goto claim 2) and comprise the following in mass% (see Got claims 9-10).
SiO2
50-90
Al2O3
2-20
Li2O
4-15
P2O5
0-3
ZrO2
0-10
K2O
0-3
Na2O
0-2
MgO
0-3
CaO
0-7
SrO
0-7
BaO
0-7
ZnO
0-10
Sb2O3
0-2
TiO2
0-5
Goto’s crystallized glass can have a compressive stress layer on the surface (see entire document).
While the above composition fails to include B2O3 as required by the claims, ‘316 does not appear to exclude such an oxide but instead, only generally teaches a crystallized glass wherein the crystallized glass.
As ‘493, ‘021 and ‘568, who each similarly teach crystallized glass, disclose that B2O3 can be desirably added to such glasses in contents of less than 5mass% for realization of low viscosity and enhanced dissolution and moldability (see ‘493 Col. 8, lines 66-67 bridged to Col. 9, lines 1-8), 0.1-5mass% to act as a former and accelerating crystal deposition and growth while having improved melting characteristics (see 0036 in ‘021) or even 0-2% as desired (Col. 6, lines 3-9 in ‘568), it would have been obvious to one having ordinary skill at the time of invention to modify Goto to include 5mass% or less for realization of low viscosity and enhanced dissolution and moldability, 0.1-5mass% to act as a former and accelerating crystal deposition and growth while having improved melting characteristics or even 0-2% as desired with a reasonable expectation of success.
The above modification will provide Goto with the following,
SiO2
50-90
Al2O3
2-20
Li2O
4-15
B2O3
<5, 0.1-5 or 0-2
P2O5
0-3
ZrO2
0-10
K2O
0-3
Na2O
0-2
MgO
0-3
CaO
0-7
SrO
0-7
BaO
0-7
ZnO
0-10
Sb2O3
0-2
TiO2
0-5
The above composition allows for overlap with that claimed providing a prima facie case of obviousness (MPEP 2144.05).
Given that Goto’s crystallized glass meets that claimed, the softening properties would be expected to be the same (MPEP 2112).
Regarding the claimed DOLzero to thickness ratio, the Examiner notes the following.
Initially, Goto’s thickness is 0.635nm (0092, 0138) which falls within Applicants’ disclosed thickness range of 0.4mm or more (spec publication par 0094).
Additionally, note that DOLzero is a result of both the glass and method of production. In the instant case, as shown above Goto’s composition overlaps with Applicants.
Further, Applicants crystallized article is formed by initially following the below 2-stage method (published spec par 0100-0101)
Temperature (oC)
Duration (min)
1st stage
450-750, 500-720 or even 550-680
30-2000min or even 180-1440min
2nd stage
550-850 or even 600-800
30-600min or even 60-400min
followed by ion exchanging such as with NaNO3 at 350-550C for 1-1440min or even 30-500min (0109)
Goto’s crystallized glass is formed by initially following the below 2-stage method (0064, 0126)
Temperature (oC)
Duration (hr)
1st stage
450-620, or even 520-620
1-20hr (i.e. 60-1,200min)
2nd stage
620-800
0.5-10hrs (i.e. 30-600min)
followed by ion exchanging with NaNO3 at 300-600C for 0.5-12hours (30min-720min) (0087, 0136) which is substantially similar to Applicants’.
Given the similarities between Goto and Applicants’, one skilled in the art would reasonably conclude the same DOLzero/thickness ratio to result (MPEP 2112).
Regarding claims 4 and 8: As shown above, Goto’s glass includes 0-5 TiO2 overlapping the claimed range (MPEP 2144.05) and does not disclose the presence of Nb2O5 or Ta2O5 thereby, corresponding to 0% of these oxides.
Regarding claims 5 and 10-11: Given that Goto’s crystallized glass meets that claimed, the transition properties would be expected to be the same (MPEP 2112).
Claim(s) 1, 3-5, 8, 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogasawara (WO2020179872, rejection using corresponding English document US11,807,568).
Regarding claims 1, 3-4, and 8: ‘568 teaches crystallized glass containing an alpha cristobalite or alpha cristobalite solid solution as a main crystal phase (abstract) and comprises the following in mass% (see Ogasawara claims).
SiO2
50-75
Al2O3
5 to <15
Li2O
3-10
P2O5
0-10
ZrO2
1.2-10
K2O
0-10
Na2O
0-10
MgO
0-10
CaO
0-10
SrO
0-10
BaO
0-10
ZnO
0-10
Sb2O3
0-3
Nb2O5
0-10
Ta2O5
0-10
TiO2
0 to <7
Al2O3+ZrO2
>16.2
‘568 also teaches that 0-2 mass% B2O3 can be added as desired (Col. 6, lines 5-9).
The above composition and teaching allow for overlap with that presently claimed (MPEP 2144.05).
‘568 teaches their glass having a compressive stress layer on the surface (abstract, Examples).
Given that ‘568’s crystallized glass meeting that claimed, the softening point properties would be expected to be the same (MPEP 2112).
Regarding the claimed DOLzero to thickness ratio, the Examiner notes the following.
Initially, ‘568 teaches that their thickness can be 10mm with their compressive layer thickness (i.e. which equates to DOLzero as understood in the art) being made to be 200micron or more (Col 6, line 48-55 and Col. 9, lines 9). This allows for ratios overlapping that claimed (MPEP2144.05). For instance 200micron or more DOLzero with 10mm (10,000micron) thickness will allow for ratios of 0.02 or more (200micron/10,000micron).
Alternatively, it is additionally noted that ‘568’s thickness of 10mm falls within Applicants’ disclosed thickness range of 0.4mm or more (spec publication par 0094).
Additionally, note that DOLzero is a result of both the glass and method of production. In the instant case, as shown above ‘568’s composition overlaps with Applicants.
Further, Applicants crystallized article is formed by initially following the below 2-stage method (published spec par 0100-0101)
Temperature (oC)
Duration (min)
1st stage
450-750, 500-720 or even 550-680
30-2000min or even 180-1440min
2nd stage
550-850 or even 600-800
30-600min or even 60-400min
followed by ion exchanging such as with a two stage treatment of first using NaNO3 at 350-550C for 1-1440min or even 30-500min and then KNO3 at 350-550C for 1-1440min or even 60-600min (0107-0108).
568’ similarly discloses their article being formed by a 2-stage method shown below (see Col. 7, lines 4-14 and Examples 7-9, 11-15, 17-20, 21-24, 26-28).
Temperature (oC)
Duration (min)
1st stage
450-750, 500-720 or even 550-680
30-2000min or even 180-1440min
2nd stage
600-800
30-600min or even 60-400min
followed by ion exchanging such as with a two-stage treatment of first using NaNO3 at 350-550C for 1-1440min or even 90-500min and then KNO3 at 350-550C for 1-1440min or even 60-600min (Col. 7, lines 45-62) which is substantially similar to Applicants’.
Given the similarities between ‘568 and Applicants’, one skilled in the art would reasonably conclude the same DOLzero/thickness ratios to result (MPEP 2112).
Regarding claims 5 and 10-11: Given that ‘568’s crystallized glass meets that claimed, the glass transition properties would be expected to be the same (MPEP 2112).
Terminal Disclaimer
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, 3-5, 8, 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/713168 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Claims 1, 3-5, 8, 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/024490 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-5, 8, 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/994658 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Claims 1, 3-5, 8, 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/994649 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art above.
Response to Arguments
Applicant's arguments filed January 14, 2026 have been fully considered but they are not persuasive.
Applicants initially argue against Goto rendering obvious the claimed invention because claim 1 recites a mass ratio of SiO2/(B2O3+Li2O) being 3-7.1 and the glasses of Goto have a ratio exceeding 7.1.
This is not persuasive because nowhere in Goto do they teach or require such a ratio to exceed 7.1. In the instance Applicants are relying on Goto’s Examples in supporting their argument, it is noted that it has been held by the courts that a reference is not limited to their Examples but instead, what it teaches as a whole. In the instant case, as discussed in the Office Action, Goto as modified teaches a composition that allows for overlap with that claimed (MPEP 2144.05). As overlapping ranges has been held by the courts to provide for a prima facie case of obviousness absent evidence of unexpected results and Applicants have yet to provide such results, the rejection is proper and maintained.
Applicants also argue that Goto fails to disclose a DOLzero/thickness ratio now claimed because Goto only teaches in par 0150 an ion-exchange depth of 5-20micron and thickness of 0.635mm in par 0138 which provides for a ratio of 0.0079 to 0.0315.
This is not persuasive. Initially, note that par 0150 of Goto in which Applicants’ rely on as support is referring to Goto’s Examples (see “the ion exchange of the Examples reached a depth from 5 to 20 .mu.m” in par 0150) and as mentioned above, a reference is not limited to their Examples. Specifically, even though the paragraph may describe their Examples reach a depth (DOLzero) of 5 to 20micron in no way means that Goto is limiting their depth to this range and instead, Goto is only limited to what they teach as a whole.
In the instant case, as pointed out by Applicants and in the Office Action above, Goto does teach a thickness is 0.635nm (0092, 0138) and this falls within Applicants’ disclosed thickness range of 0.4mm or more (spec publication par 0094).
Additionally, note that DOLzero is a result of both the glass and method of production. In the instant case, Goto’s composition overlaps with Applicants.
Further, Applicants crystallized article is formed by initially following the below 2-stage method (published spec par 0100-0101)
Temperature (oC)
Duration (min)
1st stage
450-750, 500-720 or even 550-680
30-2000min or even 180-1440min
2nd stage
550-850 or even 600-800
30-600min or even 60-400min
followed by ion exchanging such as with NaNO3 at 350-550C for 1-1440min or even 30-500min (0109)
Goto’s crystallized glass is formed by initially following the below 2-stage method (0064, 0126)
Temperature (oC)
Duration (hr)
1st stage
450-620, or even 520-620
1-20hr (i.e. 60-1,200min)
2nd stage
620-800
0.5-10hrs (i.e. 30-600min)
followed by ion exchanging with NaNO3 at 300-600C for 0.5-12hours (30min-720min) (0087, 0136) which is substantially similar to Applicants’.
Given the similarities between Goto and Applicants’, one skilled in the art would reasonably conclude the same DOLzero/thickness ratio to result (MPEP 2112).
Applicants argue that their combined compositional ratio and DOLzero/thickness ratio provides advantages not taught or suggested by Goto but this is not persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants argue against Ogasawara rendering obvious the claimed invention because claim 1 recites a mass ratio of SiO2/(B2O3+Li2O) being 3-7.1 and the glasses of Ogasawara have a ratio exceeding 7.1.
This is not persuasive because nowhere in Ogasawara do they teach or require such a ratio to exceed 7.1. In the instance Applicants are relying on Ogasawara’s Examples in supporting their argument, it is noted that it has been held by the courts that a reference is not limited to their Examples but instead, what it teaches as a whole. In the instant case, as discussed in the Office Action, Ogasawara teaches a composition that allows for overlap with that claimed (MPEP 2144.05). As overlapping ranges has been held by the courts to provide for a prima facie case of obviousness absent evidence of unexpected results and Applicants have yet to provide such results, the rejection is proper and maintained.
Applicants also argue that Goto fails to disclose a DOLzero/thickness ratio now claimed because Ogasawara only teaches a thickness of 10mm (Ogasawara par 0036) and Ogasawara’s Examples have depths of 4-500micron which provides for a ratio of 0.0004 to 0.0500.
This is not persuasive. Initially, note that while Applicants rely on Ogasawara’s Examples to support their argument, a reference is not limited to their Examples. Specifically, even though Ogasawara’s Exampled depths and thickness may not provide for a ratio as claimed in no way means that Ogasawara as a whole would not still render obvious the ratio.
In the instant case, as discussed in the Office Action, Ogasawara ‘568 teaches that their thickness can be 10mm with their compressive layer thickness (i.e. which equates to DOLzero as understood in the art) being made to be 200micron or more (Col 6, line 48-55 and Col. 9, lines 9). This allows for ratios overlapping that claimed (MPEP2144.05). For instance, 200micron or more DOLzero with 10mm (10,000micron) thickness will allow for ratios of 0.02 or more (200micron/10,000micron).
Alternatively, it is additionally noted that ‘568’s thickness of 10mm falls within Applicants’ disclosed thickness range of 0.4mm or more (spec publication par 0094).
Additionally, note that DOLzero is a result of both the glass and method of production. In the instant case, as shown above ‘568’s composition overlaps with Applicants.
Further, Applicants crystallized article is formed by initially following the below 2-stage method (published spec par 0100-0101)
Temperature (oC)
Duration (min)
1st stage
450-750, 500-720 or even 550-680
30-2000min or even 180-1440min
2nd stage
550-850 or even 600-800
30-600min or even 60-400min
followed by ion exchanging such as with a two stage treatment of first using NaNO3 at 350-550C for 1-1440min or even 30-500min and then KNO3 at 350-550C for 1-1440min or even 60-600min (0107-0108).
568’ similarly discloses their article being formed by a 2-stage method shown below (see Col. 7, lines 4-14 and Examples 7-9, 11-15, 17-20, 21-24, 26-28).
Temperature (oC)
Duration (min)
1st stage
450-750, 500-720 or even 550-680
30-2000min or even 180-1440min
2nd stage
600-800
30-600min or even 60-400min
followed by ion exchanging such as with a two-stage treatment of first using NaNO3 at 350-550C for 1-1440min or even 90-500min and then KNO3 at 350-550C for 1-1440min or even 60-600min (Col. 7, lines 45-62) which is substantially similar to Applicants’.
Given the similarities between ‘568 and Applicants’, one skilled in the art would reasonably conclude the same DOLzero/thickness ratios to result (MPEP 2112).
Applicants argue that their combined compositional ratio and DOLzero/thickness ratio provides advantages not taught or suggested by Ogasawara but this is not persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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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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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784