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 .
Status of the Claims
Claims 1-20 are currently pending.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. US 11,753,331 B1 which is a CON of the present application. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-30 of ‘331 read on the currently pending claims.
Regarding claims 1 and 5,
Claim 1 of ‘331 reads on claim 1 of the currently pending application except the crystalline phase is explicitly the formula (M1)(M2)2(Me)2(T1)(T2)2O12 having two tetrahedra that do not share any oxygen with one another. However, Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to col. 12 and 13 of U.S. Patent ‘331 which discloses jeffbenite crystal structures could meet the claimed formula and structure. Therefore, it would have been obvious for one of ordinary skill in the art to use the claimed compositional formula and crystal structure for jeffbenite in order to construct a glass-ceramic article suitable for the claimed invention and thereby arrive at the present invention.
Regarding claim 2,
Claim 30 of ‘331 reads on claim 2 of the currently pending application.
Regarding claim 3,
Claims 2 and 3 of ‘331 reads on claim 3 of the currently pending application.
Regarding claim 4,
The claims of ‘331 do not explicitly read on greater than or equal to 25 wt% of the crystalline phase. However, Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to par. (13) of U.S. Patent ‘331 which discloses wherein the crystal phase is present at 25 wt% or greater. Therefore, it would have been obvious for one of ordinary skill in the art to use the wt% of the crystalline phase in order to construct a glass-ceramic article suitable for the claimed invention and thereby arrive at the present invention.
Regarding claim 6,
Claims 26 and 28 of ‘331 reads on claim 6 as the thickness of the glass-ceramic overlaps in addition to the at least 20% of light of 400 to 800 nanometers passes through the body.
Regarding claim 7,
Claim 7 of ‘331 reads on claim 7 of the currently pending application.
Regarding claims 8 and 9,
Claim 17 of ‘331 reads on claims 8 and 9 as less than 3 mol% of Li2O range of ‘331 overlaps with the claimed ranges in the current application.
Regarding claim 10,
Claim 7 of ‘331 reads on claim 10 of the currently pending application as the amount of ZrO2 overlaps with the claimed range.
Regarding claim 11,
Claim 7 and the specification of ‘331 reads on claim 11 as there is no HfO2 recited and thus it may not be present which is backed in the specification and is within the claimed range.
Regarding claim 12,
Claim 13 of ‘331 reads on claim 12 of the currently pending application.
Regarding claims 13 and 14,
Claims 14 and 15 of ‘331 reads on claims 13 and 14 of the currently pending application.
Regarding claim 15,
The claims of ‘331 do not explicitly teach the glass-ceramic article having the claimed lattice parameters and the claimed X-ray diffraction spectrum. However, Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Thus, as the glass-ceramic article in the claims and the specification are identical to the claims and specification of the currently pending application, it is expected that the glass-ceramic article would exhibit the same structure and properties and would thus have the same lattice parameters and X-ray diffraction spectrum when tested.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. See MPEP 2112.
Regarding claim 16,
Claim 22 of ‘331 reads on claim 16 of the currently pending application.
Regarding claim 17,
Claim 21 of ‘331 reads on claim 17 as the glass-ceramic article may be in the form of a sheet.
Regarding claim 18,
Claim 28 of ‘331 reads on claim 18 of the currently pending application.
Regarding claim 19,
Claim 27 of ‘331 reads on claim 19 of the currently pending application.
Regarding claim 20,
The claims of ‘331 do not explicitly read on the sheet comprising a display thereof and a housing thereof wherein the sheet overlays the display and/or housing. However, Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to par. (57) of U.S. Patent ‘331 which discloses wherein the sheet may be on a display being at or adjacent the front of the surface of the housing and the sheet may be disposed over the display. Therefore, it would have been obvious for one of ordinary skill in the art to use the glass-ceramic article in the form of a sheet to provide an improved consumer electronic device suitable for the claimed invention and thereby arrive at the present invention.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. US 11,851,367 B1 which is a CON of the present application. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-30 of ‘367 read on the currently pending claims.
Regarding claims 1-20,
The claims would be rejected on the same basis as the previous rejection chain using obvious reasoning from within the specification’s definition for missing limitations.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. US 12,195,390 B2 which is a CON of the present application. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-30 of ‘367 read on the currently pending claims.
Regarding claims 1-20,
The claims would be rejected on the same basis as the previous rejection chain using obvious reasoning from within the specification’s definition for missing limitations.
Allowable Subject Matter
Claims 1-20 would be found allowable over the closest cited prior art of record if the Double Patenting rejection and 112(b) rejection is overcome. The claims are found allowable over the closest cited prior art of record: Harris et al. (“A New Tetragonal Silicate Mineral Occurring as Inclusions in Lower-Mantle Diamonds”, Nature, Vol. 387, 1997, Pg. 486-488) and Gunter et al. (“Jeffbenite (Mg3Al2Si3O12)”, Handbook of Mineralogy, 2016-2017) and Nestola et al. (“Tetragonal Almandine-Pyrope Phase, TAPP: Finally a Name for it, the New Mineral Jeffbenite”, Mineralogical Magazine, Vo. 80, Issue 7, 2016, Pg. 11219-11232).
The closest prior art of record does not teach or suggest a glass-ceramic comprising a crystalline phase comprising crystals of tetragonal that satisfies the structural formula for Jeffbenite, but not the claimed (M1)(M2)2(M3)2(T1)(T2)2O12 having the claimed parameters. It would constitute impermissible hindsight to implement a crystalline phase meeting the claimed equation, such as a jeffbenite crystalline phase, into a glass-ceramic article lacking any teaching or motivation to do so.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Travis M Figg whose telephone number is (571)272-9849. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maria Veronica D. Ewald can be reached on 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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/TRAVIS M FIGG/Primary Examiner, Art Unit 1783
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