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
Applicant's election with traverse of Group I, claims 55-74, in the reply filed on March 11, 2026 is acknowledged. The traversal is on the ground(s) that the search and examination of the entire application could be made without a serious burden. This is not found persuasive given the technical feature linking the inventions of Groups I-V does not provide a contribution over the prior art (see below discussion), and no single general inventive concept exits. As such, there is a lack of unity among Groups I-V. Note that if the examiner finds that a national stage application lacks unity of invention under § 1.475, the examiner may in an Office action require the applicant in the response to that action to elect the invention to which the claims shall be restricted, see MPEP 1893.03(d).
The requirement is still deemed proper and is therefore made FINAL.
Claims 75-89 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected product and method, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 11, 2026.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 55-74 are rejected under 35 U.S.C. 103 as being unpatentable over Beall et al. (US 2016/0102010).
Regarding claim 55, Beall teaches a microcrystalline glass-ceramic comprising SiO2, Al2O3, Li2O, ZrO2 and P2O5, see abstract, Table 1 and [0010 & 0170]. In some embodiments, the glass-ceramic has a composition comprising, in wt %: SiO2: 55-80%; Al2O3: 2-20%; Li2O: 5-20%; P2O5: 0.5-6%; Na2O: 0-5%; and ZrO2: 0.2-15% [0010-0018]. Note that 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 I. Further, based on the ranges disclosed for the claimed components, the reference is considered to render obvious the claimed ratio [0010-0018]. For example, the reference renders obvious Applicant’s example 7 of Table 1, which satisfies the claimed ratio, see Beall [0010-0024].
Regarding claim 56, the reference discloses the composition comprises, in wt %: B2O3: 0-10% and ZnO: 0-10%, which overlap the claimed ranges [0010-0018]; see MPEP 2144.05 I.
Regarding claims 57-59, based on the ranges disclosed for the claimed components, the reference is considered to render obvious one or more of the claimed situations [0010-0018]. For example, the reference renders obvious Applicant’s example 7 of Table 1, which satisfies one or more of the claimed situations, see Beall [0010-0024].
Regarding claim 60, the reference discloses the composition comprises, in wt %: SiO2: 55-80%; Al2O3: 2-20%; Li2O: 5-20%; P2O5: 0.5-6%; ZrO2: 0.2-15%; B2O3: 0-10%; Na2O: 0-5%; and ZnO: 0-10%, which overlap one or more of the claimed ranges [0010-0018]; see MPEP 2144.05 I.
Regarding claims 61-63, the reference discloses the glass-ceramic contains a lithium silicate crystalline phase of lithium disilicate or lithium metasilicate, which corresponds to lithium monosilicate, in range amounts that are the same as the claimed ranges and with examples within the claimed ranges [0149 & 0151]; see MPEP 2131.03 I. Additionally, the reference discloses lithium silicate as the crystalline phase with a higher weight percentage than any other crystalline phase [0063, 0118 and 0149-0151].
Regarding claim 64, the reference discloses the crystallinity of the glass-ceramic as 20 to 70 wt%, which overlaps the claimed range [0008]; see MPEP 2144.05 I.
Regarding claim 65, Beall teaches a microcrystalline glass-ceramic comprising SiO2, Al2O3, Li2O, ZrO2 and P2O5, see abstract, Table 1 and [0010 & 0170]. In some embodiments, the glass-ceramic has a composition comprising, in wt %: SiO2: 55-80%; Al2O3: 2-20%; Li2O: 5-20%; P2O5: 0.5-6%; Na2O: 0-5%; and ZrO2: 0.2-15% [0010-0018]. Note that 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 I. Further, based on the ranges disclosed for the claimed components, the reference is considered to render obvious the claimed ratio [0010-0018]. For example, the reference renders obvious Applicant’s example 7 of Table 1, which satisfies the claimed ratio, see Beall [0010-0024].
Regarding claim 66, the reference discloses the composition comprises, in wt %: B2O3: 0-10% and ZnO: 0-10%, which overlap the claimed ranges [0010-0018]; see MPEP 2144.05 I.
Regarding claims 67-69, based on the ranges disclosed for the claimed components, the reference is considered to render obvious one or more of the claimed situations [0010-0018]. For example, the reference renders obvious Applicant’s example 7 of Table 1, which satisfies one or more of the claimed situations, see Beall [0010-0024].
Regarding claim 70, the reference discloses the composition comprises, in wt %: SiO2: 55-80%; Al2O3: 2-20%; Li2O: 5-20%; P2O5: 0.5-6%; ZrO2: 0.2-15%; B2O3: 0-10%; Na2O: 0-5%; and ZnO: 0-10%, which overlap one or more of the claimed ranges [0010-0018]; see MPEP 2144.05 I.
Regarding claims 71-73, the reference discloses the glass-ceramic contains a lithium silicate crystalline phase of lithium disilicate or lithium metasilicate, which corresponds to lithium monosilicate, in range amounts that are the same as the claimed ranges and with examples within the claimed ranges [0149 & 0151]; see MPEP 2131.03 I. Additionally, the reference discloses lithium silicate as the crystalline phase with a higher weight percentage than any other crystalline phase [0063, 0118 and 0149-0151].
Regarding claim 74, the reference discloses the crystallinity of the glass-ceramic as 20 to 70 wt%, which overlaps the claimed range [0008]; see MPEP 2144.05 I.
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 55-74 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 75-84, 86-96 and 98-103 of copending Application No. 18/019,053 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a microcrystalline glass with similar compositions and crystalline phases.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 55-74 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 75-83, 85-95, 97, 98 and 105-107 of copending Application No. 18/103,974 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claims a microcrystalline glass with similar compositions and crystalline phases.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at (571)272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA A AUER/Primary Examiner, Art Unit 1783
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