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 .
Priority
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome any rejection herein because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4-9 is/are rejected under 35 U.S.C. 102(a1 and a2) as being
anticipated by Imakita (WO2018186402, rejection using corresponding English document USPub 20200039876).
Regarding claims 1, 4-5: Imakita teaches chemically strengthened glass sheets with stress profiles which appear to provide for the requirements claimed (see profiles in Figures, as well as note the data provided for Examples in tables)
Alternatively, the Examiner would like to additionally note for the record that given that Imakita’s glass is made with a base glass composition overlapping that disclosed by Applicants’ (see Imakita 0068-0069, 0072-0073 and 0130 compared to Applicants’ publication par 0061-0092 and Examples), the glass has a thickness substantially the same as Applicants’ (see Imakita par 0115 and Examples compared to Applicants’ publication par 0030-0031 and Examples) and the glass is made by a substantially similar ion exchange method to that disclosed by Applicants’ (see Imakita 0125-0126, 0130-0131 and Examples and compared to Applicants’ published par 0052, 0056 and Examples), one skilled in the art would reasonably conclude the same stress profile results to be present (MPEP 2112).
Regarding claims 6 and 7: While Imakita does teach their glasses having a CS and DOL as claimed (see Figures, Examples, 0053-0054, 0056), additionally note that given the similarities between Imakita and Applicants’ invention, one skilled in the art would conclude these stress and DOL to result (MPEP 2112).
Regarding claim 8 and 9: Imakita teaches throughout their glass sheets being cover glasses (see 0002, 0010 and 0133 for instance) in electronic devices (see 0002, 0133).
Claim(s) 1-2, 4-9 is/are rejected under 35 U.S.C. 102(a1 and a2) as being
anticipated by Li (WO2019022035, rejection using corresponding English document USPub 20200207660).
Regarding claims 1, 4-5 and 7: Li teaches chemically strengthened glass sheets which can have a stress profile which appear to meet the requirements claimed (see Fig. 1 and 2).
Alternatively, the Examiner would like to additionally note for the record that Li’s glass is a crystallized glass having a composition and crystal phase the same as that disclosed by Applicants (see abstract and 0017 compared to Applicants’ claim 2) and is crystallized by a substantially similar method as disclosed by Applicants (see 0124 and Examples compared to Applicants’ publication par 0100-0103). Li’s glass has a thickness substantially the same as Applicants’ (see Li’s claim 4 and Examples and Applicants’ publication par 0030-0031 and Examples) and the glass is then ion exchanged using a substantially similar ion exchange method to that disclosed by Applicants’ (see Li’s 0131-0134 and Examples compared to Applicants’ published par 0052, 0056 and Examples). Given the similarities, one skilled in the art would reasonably conclude the same stress profile results to be present (MPEP 2112).
Regarding claim 2: The glass is crystallized and have a glass composition as claimed (see abstract and 0017).
Regarding claim 6: Li’s glass does have a CS as claimed (see Li’s claim 4, 0048, Examples and Figures) but additionally, given the similarities between Li and Applicants’, one skilled in the art would conclude the same stress to result (MPEP 2112).
Regarding claim 8 and 9: The glass sheets are cover glasses (see 0002and 0051 for instance) in electronic devices (see 0051).
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imakita
(WO2018186402, rejection using corresponding English document USPub 20200039876).
Regarding claim 8: Imakita’s glasses can be made to have a base composition in mol % overlapping that claimed (see 0010, 0068-0069, 0130) which provides for a prima facie case of obviousness absent a showing of unexpected results (MPEP 2144.05).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imakita
(WO2018186402, rejection using corresponding English document USPub 20200039876) in view of any one of Li (WO2019022035, rejection using corresponding English document USPub 20200207660), Hu (US Pub 20160102011) or Beunet (US Pub 20150099124).
Regarding claim 2: While Imakita may not explicitly disclose their glass being crystallized glass with the composition claimed, Imakita does not exclude such limitations and instead, only generally teaches their glasses being chemically strengthened and being used as cover glasses in electronic devices.
Given that Li, Hu and Beunet, who each similarly disclose chemically strengthened glasses being used as cover glasses in electronic devices, suggest it being desirable in the art for such glasses to be crystallized glass with a composition either falling within or at the very least, overlapping with that claimed (see the phase discussed in abstract and the composition in 0017 within Li, see the overlapping composition in par 0139-0157 and phase in par 0159 within Hu and the overlapping composition in par 0015-0028 and 0059 and the phase in 059 and 0077 within Beunet), it would have been obvious to one having ordinary skill at the time of invention to modify Imakita to include the features claimed in order to obtain a desired chemically strengthened glass to be used as cover glasses in electronic devices.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li
(WO2019022035, rejection using corresponding English document USPub 20200207660) or alternatively, in view of any one of Imakita (WO2018186402, rejection using corresponding English document USPub 20200039876) or Hu (US Pub 20160102011).
Li teaches that their sheets can have a base composition (see 0067) which, when converted to mol%, would appear to allow for compositions overlapping with Applicants (MPEP 2144.05) or at the very least, allow for compositions that are close to the composition claimed to render the composition obvious (see Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) MPEP 2144.05).
Alternatively, in the instance Applicants argue against Li above rendering obvious the composition of claim 3, given that Imakita and Hu, who similarly teaches chemically strengthened lithium silica containing glasses for use as cover glasses in electronic devices, suggest base glass compositions overlapping that claimed being desirable (see 0010, 0068-0069, 0130 in Imakita, see 0138-0141 and 0148 in Hu, and ), it would have been obvious to one having ordinary skill at the time of invention to modify Li to include a base composition ranges according to Imakita or Hu to provide for a desirable base glass.
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,145,879. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
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
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