CTFR 18/873,969 CTFR 87399 DETAILED ACTION 07-103 AIA 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 Any rejections made in a previous Office action and not repeated below are hereby withdrawn.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 07-03-aia AIA 15-10-aia 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 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim s 60-71, 76 and 78-80 are rejected under 35 U.S.C. 103 as being unpatentable over Borelli et al. (US 2017/0355636) in view of Barefoot et al. (US 2011/0201490) . Regarding claim 60, Borelli discloses a glass-based substrate comprising: 40-85 mol % SiO 2 ; 0-30 mol % Al 2 O 3 ; 0-30 mol % Li 2 O+Na 2 O+K 2 O+Rb 2 O; 0-30 mol % MgO+CaO+SrO+BaO; and >0-5 mol % Au, see claim 2. A specific example of the glass composition comprises 0-15 mol % Li 2 O; 0-20 mol % Na 2 O; 0-10 mol % K 2 O; 0-8 mol % MgO [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 fails to disclose the claimed liquidus viscosity. Barefoot discloses a glass with a liquidus viscosity of at least 130 kP in order to make it suitable for down-drawn processes [0042]. It would have been obvious to one of ordinary skill in the art at the time of the invention for the glass composition of Borelli to have the liquidus viscosity of Barefoot in order to make it desirable for down-drawn processes; see MPEP 2144.05 I. Regarding claim 61, based on the ranges disclosed for Li 2 O and MgO, the reference renders obvious the claimed sum of Li 2 O and MgO, see above discussion and MPEP 2144.05 I. Regarding claim 62, the reference discloses greater than 0 to 5 mol % Au, which overlaps the claimed range, see claim 2 and MPEP 2144.05 I. Regarding claim 63, the reference discloses 40-85 mol % SiO 2 , which overlaps the claimed range, see claim 2 and MPEP 2144.05 I. Regarding claim 64, the reference discloses 0-30 mol % Al 2 O 3 , which overlaps the claimed range, see claim 2 and MPEP 2144.05 I. Regarding claim 65, the reference discloses 0-20 mol % B 2 O 3 , which overlaps the claimed range, see claim 2 and MPEP 2144.05 I. Regarding claim 66, the reference discloses 0-15 mol % Li 2 O, which overlaps the claimed range, see [0081] and MPEP 2144.05 I. Regarding claim 67, the reference discloses 0-20 mol % Na 2 O, which overlaps the claimed range, see [0081] and MPEP 2144.05 I. Regarding claim 68, the reference discloses 0-10 mol % K 2 O, which overlaps the claimed range, see [0081] and MPEP 2144.05 I. Regarding claim 69, the reference discloses 0-8 mol % MgO, which overlaps the claimed range, see [0081] and MPEP 2144.05 I. Regarding claim 70, the reference discloses 0-10 mol % CaO, which overlaps the claimed range, see [0081] and MPEP 2144.05 I. Regarding claim 71, the reference discloses 0-10 mol % ZnO, which overlaps the claimed range, see [0081] and MPEP 2144.05 I. Regarding claim 76, the reference discloses the glass substrate may include metallic particles selected from gold, silver and mixtures thereof in an amount greater than 0 to about 5 mol %, which is considered to render obvious the claimed Ag amount, see [0050] and MPEP 2144.05 I. Regarding claim 78, the reference discloses 0-30 mol % Li 2 O+Na 2 O+K 2 O+Rb 2 O, which overlaps the claimed range, see claim 2 and MPEP 2144.05 I. Regarding claim 79, the reference discloses 0-30 mol % MgO+CaO+SrO+BaO, which overlaps the claimed range, see claim 2 and MPEP 2144.05 I. Regarding claim 80, based on the ranges disclosed for R 2 O and Al 2 O 3 , the reference renders obvious the claimed difference, see above discussion and MPEP 2144.05 I . 07-22-aia AIA Claim s 72, 73 and 75 are rejected under 35 U.S.C. 103 as being unpatentable over Borelli et al. (US 2017/0355636) in view of Barefoot et al. (US 2011/0201490) as applied to claim 60 above, and further in view of Hasegawa et al. (US 2017/0217825) . Borelli in view of Barefoot discloses the glass composition of claim 60, see above discussion. The references, however, fail to disclose the claimed amounts of Fe 2 O 3 , MnO 2 and Bi 2 O 3 . Hasegawa discloses a cover member that includes a chemically strengthened glass wherein the glass includes coloring components of at least of MnO 2 , Fe 2 O 3 and Bi 2 O 3 , see abstract and [0098]. Each component is present in an amount of 0.1 mol % or more [0067 & 0098]. It would have been obvious to one of ordinary skill in the art at the time of the invention for the glass of Borelli to include one of the coloring components and in the amount of Hasegawa in order to provide sufficient color without devitrification, see Hasegawa [0098]. 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 . 07-22-aia AIA Claim 77 is rejected under 35 U.S.C. 103 as being unpatentable over Borelli et al. (US 2017/0355636) in view of Barefoot et al. (US 2011/0201490) as applied to claim 60 above, and further in view of Dejneka et al. (US 2020/0255327) . Borelli in view of Barefoot discloses the glass composition of claim 60, see above discussion. The references, however, fail to disclose the claimed amount Pt. Dejneka discloses a glass-ceramic article that includes at least one dopant selected from a group that includes Pt, see abstract and [0085]. The reference further discloses the amount of the dopant is from about 0.0001 mol % to about 1.0 mol % [0085]. It would have been obvious to one of ordinary skill in the art at the time of the invention for the glass of Borelli to include the dopant of Dejneka in order to alter the ultraviolet, visual, color and/or near-infrared absorbance, see Dejneka [0085]. 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. Response to Arguments Applicant’s arguments with respect to claim(s) 60-73 and 75-80 regarding liquidus viscosity have been considered but are moot in view of a new combination of prior art. Note that to the extent that Applicant argues one of ordinary skill in the art would not have been motivated to select an Au concentration in the claimed range, those arguments are addressed. According to Applicant, Borelli’s technical objective differs fundamentally from that of the present claims. Further, Applicant argues that the experimental data of the claimed range demonstrates the importance of the very low Au concentration range claimed. Applicant notes that the very low range helps avoid Au particle defects whereas Borelli wants to form metallic nanoparticles. As such, one skilled in the art would have no reason to minimize Au concentration to avoid particle defect formation. In view of the foregoing, Applicant submits that Borelli does not disclose or suggest the claimed composition. Examiner respectfully disagrees. As discussed above and previously, 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. Applicants can rebut a prima facie case of obviousness by showing the criticality of the range; see MPEP 2144.05 III. To the extent Applicant intends to argue criticality of the claimed range, Applicant should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range, see MPEP 716.02(c)(II). Applicant must show the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage, see MPEP 716.02(a). Further, any assertion of unexpected results must be compared with the closest prior art, see MPEP 716.02(e). Note that Applicant has not provided a sufficient number of tests both inside and outside the range nor has Applicant provided a comparison between the claimed range and the closest prior art. 07-37-07 In response to applicant's argument that the claimed concentration minimizes particle defect formation, 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). Given the new combination of prior art and given Applicant has not provided arguments to rebut the prima facie case of obviousness regarding the Au concentration, the rejection of claims 60-73 and 75-80 under 35 U.S.C. 103 is respectfully maintained. Conclusion 07-40 AIA Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL . See MPEP § 706.07(a). 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. 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, 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /LAURA A AUER/ Primary Examiner, Art Unit 1783 Application/Control Number: 18/873,969 Page 2 Art Unit: 1783 Application/Control Number: 18/873,969 Page 3 Art Unit: 1783 Application/Control Number: 18/873,969 Page 4 Art Unit: 1783 Application/Control Number: 18/873,969 Page 5 Art Unit: 1783 Application/Control Number: 18/873,969 Page 6 Art Unit: 1783 Application/Control Number: 18/873,969 Page 7 Art Unit: 1783 Application/Control Number: 18/873,969 Page 8 Art Unit: 1783 Application/Control Number: 18/873,969 Page 9 Art Unit: 1783
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