DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 07/17/2026.
3. Claims 1-11, 13-19 are pending. Claims 1-11,13-19 are under examination on the merits. Claims 1, 6, 10, 18 are amended. Claims 12 is cancelled. Claims 19 is newly added.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1-11,13-19 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 112
6. The following is a quotation of the fourth paragraph of 35 U.S.C. 112:
Subject to the [fifth paragraph of 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
7. Claim 5 is rejected under 35 USC 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim, or amend the claim to place the claim in proper dependent form, or rewrite the claim in independent form. Claim 5, as written, depends on claim 1, which recites “the glass according to claim 1, comprising 20 mol% or more of Yb₂O₃ as represented by mol% based on oxides”, however, based on the content of the claim 1, the amount of Yb₂O₃ is 20 mol% to 60 mol%. Thus, claim 5 as being of improper dependent form for failing to further limit the subject matter of a previous claim 1.
8. Claim 11 is rejected under 35 USC 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim, or amend the claim to place the claim in proper dependent form, or rewrite the claim in independent form. Claim 11, as written, depends on claim 1, which recites “the glass according to claim 1, comprising 40 mol% or more of Yb₂O₃ as represented by mol% based on oxides”, however, based on the content of the claim 1, the amount of Yb₂O₃ is 20 mol% to 60 mol%. Thus, claim 5 as being of improper dependent form for failing to further limit the subject matter of a previous claim 1.
Claim Rejections - 35 USC § 102/103
9. 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.
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.
10. Claims 1, 5, 8 are rejected under 35 U.S.C. 102 (a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sevastianova, et al. (STRUCTURE FEATURES OF THE SODIUM-GERMANATE GLASSES DOPED WITH YTTERBIUM ERBIUM RETRIEVED FROM RAMAN SPECTROSCOPY, Scientific and Technical Journal of Information Technologies, Mechanics and Optics, 2016, vol. 16, no. 5, pp. 809–815. doi: 10.17586/2226-1494-2016-16-5-809-815, hereinafter “Sevastianova”).
Regarding claims 1,5,8: Sevastianova discloses the Raman spectra and luminescence spectra in the visible region of the sodium-germanate glass: 49 GeO2 – 13 Na2O – 27 Yb2O3 – 11 La2O3 – 0,25 Er2O3 doped with 5 mol% of the following components MgO, BaO, Al2O3, PbO, Nb2O5, TiO2, SiO2, P2O5 (Page 809, Abstract, lines 1-3), and 0 mole% of ZrO2. Sevastianova is silent with regard to a glass having a transmittance of 30% or less for light having a wavelength of 940 nm in terms of a thickness of 0.4 mm.
However, since Sevastianova discloses the identical or substantially identical a glass comprising ytterbium as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would inherently/implicitly be achieved by Sevastianova (i.e., the glass having a transmittance of 30% or less for light having a wavelength of 940 nm in terms of a thickness of 0.4 mm). If there is any difference between the product of Sevastianova and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where applicant claims a composition in terms of a function, property or characteristic
and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
Claim Rejections - 35 USC § 103
11. 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.
12. Claims 1-11, 13-19 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Joe Fu (US Pub. No. 2009/0124481 A1, hereinafter “’481”).
Regarding claims 1,5,19: ‘481 teaches an optical glass (Page 1, [0003]) comprising
SiO2: 3-65 mol%, B2O3-: 3-65 mol%, Yb2O3:0-55 mol%, Lu2O3 (Lu is La): 0-55 mol%, and P2O5-: 0-20 mol%, and Ga2O3:0-30 mol% (Page 7, Claim 8). ‘481 does not expressly teach a glass having a transmittance of 30% or less for light having a wavelength of 940 nm in terms of a thickness of 0.4 mm.
However, pertaining specifically to claim 1, since ‘481 teaches the identical or substantially identical a glass comprising ytterbium as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would be expected to be the same as claimed (i.e., the glass having a transmittance of 30% or less for light having a wavelength of 940 nm in terms of a thickness of 0.4 mm). If there is any difference between the product of ‘481 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where applicant claims a composition in terms of a function, property or characteristic
and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
Regarding claim 2: The disclosure of ‘481 is adequately set forth in paragraph above and is incorporated herein by reference. ‘481 does not expressly teach the glass, having a transmittance of 78% or more for light having a wavelength of 850 nm in terms of a thickness of 0.4 mm.
However, since ‘481 teaches the identical or substantially identical a glass comprising ytterbium as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would be expected to be the same as claimed (i.e., the glass, having a transmittance of 78% or more for light having a wavelength of 850 nm in terms of a thickness of 0.4 mm). If there is any difference between the product of ‘481 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... 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." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
Regarding claim 3: The disclosure of ‘481 is adequately set forth in paragraph above and is incorporated herein by reference. ‘481 does not expressly teach the glass, wherein an absolute value ΔλIR50 of a difference between λIRL50 and λIRS50 is 100 nm to 160 nm, wherein λIRL50 is a wavelength on a long wavelength side and λIRS50 is a wavelength on a short wavelength side among wavelengths at which a transmittance is 50% in a wavelength range of 800 nm to 1100 nm in terms of a thickness of 0.4 mm.
However, since ‘481 teaches the identical or substantially identical a glass comprising ytterbium as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would be expected to be the same as claimed (i.e., the glass, wherein an absolute value ΔλIR50 of a difference between λIRL50 and λIRS50 is 100 nm to 160 nm, wherein λIRL50 is a wavelength on a long wavelength side and λIRS50 is a wavelength on a short wavelength side among wavelengths at which a transmittance is 50% in a wavelength range of 800 nm to 1100 nm in terms of a thickness of 0.4 mm). If there is any difference between the product of ‘481 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... 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." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
Regarding claim 4: The disclosure of ‘481 is adequately set forth in paragraph above and is incorporated herein by reference. ‘481 does not expressly teach the glass, having a Young's modulus of 100 GPa to 150 GPa.
However, since ‘481 discloses the identical or substantially identical a glass comprising ytterbium as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. Young's modulus, would be expected to be the same as claimed (i.e., the glass having a Young's modulus of 100 GPa to 150 GPa). If there is any difference between the product of ‘481 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... 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." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
Regarding claims 6-7: ‘481 teaches the optical glass (Page 1, [0003]) comprising SiO2: 3-65 mol%, B2O3-: 3-65 mol%, Yb2O3:0-55 mol%, and P2O5-: 0-20 mol% (Page 7, Claim 8).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
Regarding claim 8: ‘481 teaches the optical glass (Page 1, [0003]) comprising Yb2O3:0-55 mol%, and ZrO2-: 0-10 mol% (Page 7, Claim 8).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
Regarding claim 9: ‘481 teaches the optical glass (Page 1, [0003]) comprising Yb2O3:0-55 mol%, and 65mol% or more of a total SiO2 and B2O3 -(i.e., SiO2: 3-65 mol%, B2O3-: 3-65 mol%) (Page 7, Claim 8).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
Regarding claim 10: ‘481 teaches the optical glass (Page 1, [0003]) comprising Yb2O3:0-55 mol%, wherein total content of (Al2O3-: 0-30 mol%, GeO2: 0-30 mol%, Ga2O3:0-30 mol%, P2O5-: 0-20 mol%)/ total content of SiO2: 3-65 mol%, and B2O3-: 3-65 mol%) is less than 0.1 (Page 7, Claim 8).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
Regarding claim 11: ‘481 teaches the optical glass (Page 1, [0003]) comprising Yb2O3:0-55 mol% (Page 7, Claim 8).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
Regarding claim 13: ‘481 teaches the optical glass (Page 1, [0003]) comprising Yb2O3:0-55 mol%, and Al2O3-: 0-30 mol% (Page 7, Claim 8).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
Regarding claim 15: ‘481 discloses the glass, wherein the glass is used for an optical filter (Page 1, [0003]).
It is submitted that the limitation “for an optical filter” is interpreted as an intended use since there is no apparent structural difference required by the composition other than that recited in the body of the claim (see MPEP 2111.02, II).
Regarding claims 16-18: The disclosure of ‘447 is adequately set forth in paragraph above and is incorporated herein by reference. ‘447 is silent with regard to an optical filter comprising the glass, an optical device comprising the glass, and an optical device comprising: the glass, and an optical filter having a light absorption characteristic different from that of the glass.
However, it is submitted that claims 16-18 are merely intended uses of the composition and therefore are not given patentable weight. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
13. Claim 14 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Joe Fu (US Pub. No. 2009/0124481 A1, hereinafter “’481”) as applied to claim 1 above, and further in view of Futoshi Suzuki (JP 2017-095301 A, machine translation, hereinafter “’301”).
Regarding claim 14: The disclosure of ‘481 is adequately set forth in paragraph 12 above and is incorporated herein by reference. ‘481 does not expressly teach the glass having a thickness of 0.1 mm or more and less than 10 mm
However, ‘301 teaches an optical glass (Page 5/14, [0001]) comprising SiO2: 10 mol%, B2O3-:25 mol%, P2O5-:5 mol%, Yb2O3:50 mol%, and Al2O3:10 mol% in Example 4 (Page 11/14, [0038], Table1, Example 4), wherein the obtained glass material was polished to a thickness of 1 mm (12/14, [0042]-[0043]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since choosing an appropriate glass thickness from the selection of a known material based on its suitability for its intended use has generally been held to be prima facie obvious (MPEP §2144.07).
Response to Arguments
14. Applicant’s arguments with respect to claims 1-11,13-19 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
In response to Applicant’s argument that claim 1 has been amended, in part, to incorporate the elements of claim 12, which has not been rejected over ‘481.
The examiner respectfully disagrees. It is axiomatic that a reference must be considered in its entirety, and it is well established that the disclosure of a reference is not limited to specific working examples contained therein. In re Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1 (C.C.P.A. 1982). A reference must be considered for everything it teaches by way of technology. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907, 225 USPQ 20, 25 (Fed. Cir.), cert. denied, 474 U.S. 843 (1985). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also > Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). ‘481 teaches an optical glass (Page 1, [0003]) comprising SiO2: 3-65 mol%, B2O3-: 3-65 mol%, Yb2O3:0-55 mol%, Lu2O3 (Lu is La): 0-55 mol%, and P2O5-: 0-20 mol%, and Ga2O3:0-30 mol% (Page 7, Claim 8).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
15. 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 extension fee 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 date of this final action.
Examiner Information
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
08/04/2026
bijan.ahvazi@uspto.gov
Prosecution Insights