DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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 .
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 29-33, 36, 37 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Borelli et al. (US 2017/0355636).
Regarding claim 29, Borelli discloses a specific example of a glass composition comprising, in terms of mol %: 60-70% SiO2; 6-14% Al2O3; 0-20% Na2O; 0-10% K2O; and 0-5% ZrO-2 [0081]. Note that the disclosed ranges overlap the claimed ranges and that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”; see MPEP 2144.05 I. The reference further discloses the glass composition may include gold, silver and mixtures thereof in an amount from greater than 0 mol % to about 5 mol % [0050 & 0059]. Note that given both gold and silver may be included in an amount greater than zero up to a total amount of about 5 mol %, the reference is considered to render obvious the claimed ranges for each of gold and silver; see MPEP 2144.05 I.
Regarding claims 30 and 31, given the reference discloses that both gold and silver may be included in an amount greater than zero up to a total amount of about 5 mol %, the reference is considered to render obvious the claimed ranges for each of gold and silver, see above discussion.
Regarding claim 32, the reference discloses the composition includes 0-15 mol % B2O3, which overlaps the claimed range [0081]; see MPEP 2144.05 I.
Regarding claim 33, the reference discloses the compositions include, in terms of mol %: 0-20% Na2O; 0-10% K2O; and 0-15% Li2O, all of which overlap the claimed ranges [0081]; see MPEP 2144.05 I.
Regarding claim 36, the reference discloses the composition includes 6-14 mol % Al2O3, which overlaps the claimed range [0081]; see MPEP 2144.05 I.
Regarding claim 37, the reference discloses the composition includes 0-8 mol % MgO, which overlaps the claimed range [0081]; see MPEP 2144.05 I.
Regarding claim 40, the reference discloses the composition includes 0-10 mol % CaO, which overlaps the claimed range [0081]; see MPEP 2144.05 I.
Claim 46 is rejected under 35 U.S.C. 103 as being unpatentable over Borelli et al. (US 2017/0355636) as applied to claim 29 above, and further in view of Yamamoto et al. (US 2014/0099501).
Borelli discloses the glass composition of claim 29, see above discussion. The reference, however, fails to disclose the claimed amount of TiO2.
Yamamoto discloses a glass composition comprising TiO2 as a color correcting component, see abstract and [0047]. The reference further discloses TiO2 is a component that improves weather resistance, is a color correcting component adjusting the color tone of the glass, and is not essential but can be contained as necessary [0086]. When TiO2 is contained, it is possible that a significant effect cannot be obtained regarding improvement of weather resistance if its content is less than 0.005% [0086]. It is also possible that the color correcting effect cannot be obtained sufficiently, and that exhibition of, for example, bluish black or brownish black color tone in a black base color glass cannot be prevented sufficiently [0086]. Preferably, its content is 0.01% or more, typically 0.1% or more [0086]. When the content of TiO2 is more than 1%, it is possible that the glass becomes unstable and devitrification occurs [0086]. Preferably, its content is 0.8% or less, typically 0.6% or less [0086]. Note that the values are expressed in mole percentage [0050].
It would have been obvious to one of ordinary skill in the art at the time of the invention to include 0.01 to 0.8 mol % of TiO2 in the glass composition of Borelli in order to improve weather resistant and provide a color correcting effect without making the glass unstable.
Response to Arguments
Applicant's arguments filed May 21, 2026 have been fully considered but they are not persuasive.
Applicant argues that the combination of Au and Ag may help produce the unexpected property of colored glass articles with a relatively high b*, see Applicant’s specification [0113] and Tables IV and V. According to Applicant, there is no teaching or suggestion in Borelli regarding the relation between the combination of Au and Ag and the b* value. Additionally, Applicant notes that the reference fails to include a single example with the combination of Au and Ag or a b* value greater than or equal to 15.
To the extent Applicant argues unexpected results, Applicant can rebut a prima facie case of obviousness by showing criticality of the claimed range, generally by showing unexpected results achieved to the prior art range; see MPEP 2144.05 III A. In order to show criticality of the claimed range, "objective evidence of nonobviousness must be commensurate in scope with the claims"; see MPEP 716.02(d). The examples cited from Applicant’s specification are for glass compositions containing specific metal oxides and for a glass made using a specific method, all of which are not claimed. Given the claims do not include these limitations, Applicant’s argument of criticality is not commensurate in scope with the claims.
Further, in order to establish criticality (unexpected results over a claimed range), Applicant should compare a sufficient number of tests both inside and outside the claimed range; see MPEP 716.02(d) II. Note that Applicant’s examples with a b* value greater than 15 are with over 1000 ppm Ag or with Au removed, see Table V. Other examples with a b* value greater than 15 are only for two values of Ag and one value of Au (see examples 10-12) or do not list composition (See Table VIII). Note that there are no comparative examples above the claimed range or excluding Ag. As such, Applicant has not provided a sufficient number of tests both inside and outside of the claimed range.
Additionally, while Applicant is correct that Borelli does not disclose any examples within a b* value greater than 15, Examiner notes that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”; see MPEP 2123. Further, it is noted that the features upon which applicant relies (i.e., b* value greater than 15) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the reference fails to recognize the relationship between the combination of Au and Ag and the b* value, 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).
Applicant further argues that Borelli does not disclose, teach or fairly suggest a species of the glass composition, and as such, merely invites further experimentation to find such species. Specifically, Applicant argues that Borelli would lead to one of skill in the art away from the claimed species and merely invites experimentation. According to Applicant, the inventive composition of Borelli does not include the claimed amounts of Na2O, K2O, ZrO2 and Ag. As such, Applicant concludes one skilled in the art would be led away from the claimed composition. Examiner respectfully disagrees.
As discussed above, however, “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”; see MPEP 2123. Further, when the disclosed range overlaps the claimed range, a prima facie case of obviousness exists; see MPEP 2144.05 I. In this case, the ranges for Na2O, K2O, ZrO2 and Ag overlap the claimed ranges, and it would have been obvious to one of ordinary skill in the art to choose the amount of each component within the disclosed ranges Na2O, K2O, ZrO2 and Ag absent a showing of criticality; see MPEP 2144.05 III.
For the above reasons, the rejections under 35 U.S.C. 103 are respectfully maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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/LAURA A AUER/Primary Examiner, Art Unit 1783
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