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 application is a CON of App. No. PCT/JP2023/023361, filed on 06/23/2023, which is entitled to and claims the benefit of priority of JP Patent App. No. 2022-104803, filed 05/29/ 2022. The preliminary amendment filed on 12/23/2024 is entered and acknowledged by the Examiner.
3. Claims 1-18 are pending. Claims 1-18 are under examination on the merits.
Information Disclosure Statement
4. The information disclosure statement submitted on 12/23/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Drawings
5. The drawing is received on 12/23/2024. This drawing is acceptable.
Priority
6. Receipt is acknowledged of papers submitted on 02/06/2025 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 112
7. The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
8. Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 10 recites the term “(total content of Al₂O₃, GeO₂, Ga₂O₃, and P₂O₅)/(total content of SiO₂ and B₂O₃)”, wherein, the inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the included term is part of the claimed invention.
9. Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 18 recites “an optical filter having a light absorption characteristic different from that of the glass”, wherein applicant fails to articulate by sufficiently distinct functional language, applicant regards as those which will facilitate “light absorption characteristic” requisite to identifying the light absorption or transmission or matter claimed, thus claim 18 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim from the application disclosure.
Claim Rejections - 35 USC § 112
10. 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.
11. Claim 14 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 14, as written, depends on claim 1, which recites “The glass having a thickness of 0.1 mm or more and less than 10 mm”, however, based on the content of the claim 1, a glass of the thickness of 0.4 mm is previously recited. Thus, claim 14 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
12. 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.
13. Claims 1-6, 8-10, 12, 14-18 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 Toshiro Takahashi (JP 56-078447 A, IDS 12/23/2024, machine translation, hereinafter “’447”).
Regarding claims 1,5-6,14: ‘447 discloses an optical glass (Page 1, Abstract, lines 1-6) comprising SiO2: 35.8 mol%, B2O3-:25.8 mol%, Yb2O3:21.9 mol%, and La2O3:16.5 mol% in Example 1 (Page 271, Table). ‘447 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.
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Pertaining specifically to claim 1, since ‘447 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 ‘477 (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 ‘447 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).
Regarding claim 2: The disclosure of ‘477 is adequately set forth in paragraph above and is incorporated herein by reference. ‘447 is silent with regard to 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 ‘447 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 ‘477 (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 ‘447 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 ( CCP A 197 5).
Regarding claim 3: The disclosure of ‘477 is adequately set forth in paragraph above and is incorporated herein by reference. ‘447 is silent with regard to 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 ‘447 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 ‘477 (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 ‘447 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 ( CCP A 197 5).
Regarding claim 4: The disclosure of ‘477 is adequately set forth in paragraph above and is incorporated herein by reference. ‘447 is silent with regard to the glass, having a Young's modulus of 100 GPa to 150 GPa.
However, since ‘447 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 inherently/implicitly be achieved by ‘477 (i.e., the glass having a Young's modulus of 100 GPa to 150 GPa). If there is any difference between the product of ‘447 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 ( CCP A 197 5).
Regarding claim 8: ‘447 discloses the optical glass (Page 1, Abstract, lines 1-6), comprising SiO2: 35.8 mol%, B2O3-:25.8 mol%, Yb2O3:21.9 mol%, and La2O3:16.5 mol%, ZrO₂:0 mol% in Example 1 (Page 271, Table).
Regarding claims 9-10: ‘447 discloses the glass (Page 1, Abstract, lines 1-6), comprising
SiO2: 41.6 mol%, B2O3-:24.0 mol%, Yb2O3:19.1 mol%, and La2O3:15.4 mol% in Example 9 (Page 272, Table) which encompasses 20 mol% to 60 mol% of Yb₂O₃, and 65 mol% or more of a total of SiO₂ and B₂O₃, wherein (total content of Al₂O₃, GeO₂, Ga₂O₃, and P₂O₅)/(total content of SiO₂ and B₂O₃) is less than 0.1.
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Regarding claim 12: ‘447 discloses the optical glass (Page 1, Abstract, lines 1-6) comprising SiO2: 35.8 mol%, B2O-:25.8 mol%, Yb2O3:21.9 mol%, and La2O3:16.5 mol% in Example 1 (Page 271, Table).
Regarding claim 15: ‘447 discloses the glass, wherein the glass is used for an optical filter (Page 1, Abstract, lines 1-6).
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).
14. Claims 1-8, 14-18 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 Joe Fu (US Pub. No. 2009/0124481 A1, hereinafter “’481”).
Regarding claims 1,5-6,14: ‘481 discloses an optical glass (Page 1, [0003]) comprising SiO2: 15 mol%, B2O3-:25 mol%, P2O5-:5 mol%, Yb2O3:40 mol%, and Ga2O3:15 mol% in Example 4 (Page 6, Table1, Example 4). ‘481 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.
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Pertaining specifically to claim 1, 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. light transmittance, would inherently/implicitly be achieved by ‘481 (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).
Regarding claim 2: The disclosure of ‘481 is adequately set forth in paragraph above and is incorporated herein by reference. ‘481 is silent with regard to 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 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 ‘481 (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 ( CCP A 197 5).
Regarding claim 3: The disclosure of ‘481 is adequately set forth in paragraph above and is incorporated herein by reference. ‘481 is silent with regard to 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 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 ‘481 (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 ( CCP A 197 5).
Regarding claim 4: The disclosure of ‘481 is adequately set forth in paragraph above and is incorporated herein by reference. ‘481 is silent with regard to 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 inherently/implicitly be achieved by ‘481 (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 ( CCP A 197 5).
Regarding claim 8: ‘481 discloses the optical glass (Page 1, [0003]) comprising SiO2: 15 mol%, B2O3-:25 mol%, P2O5-:5 mol%, Yb2O3:40 mol%, and Ga2O3:15 mol% in Example 4 (Page 6, Table1, Example 4).
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).
15. Claims 1-8, 10-11, 13-18 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 Futoshi Suzuki (JP 2017-095301 A, machine translation, hereinafter “’301”).
Regarding claims 1,5-6,14: ‘301 discloses 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). ‘301 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.
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Pertaining specifically to claim 1, since ‘301 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 ‘301 (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 ‘301 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).
Regarding claim 2: The disclosure of ‘301 is adequately set forth in paragraph above and is incorporated herein by reference. ‘301 is silent with regard to 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 ‘301 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 ‘301 (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 ‘301 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 ( CCP A 197 5).
Regarding claim 3: The disclosure of ‘301 is adequately set forth in paragraph above and is incorporated herein by reference. ‘301 is silent with regard to 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 ‘301 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 ‘301 (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 ‘301 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 ( CCP A 197 5).
Regarding claim 4: The disclosure of ‘301 is adequately set forth in paragraph above and is incorporated herein by reference. ‘301 is silent with regard to the glass, having a Young's modulus of 100 GPa to 150 GPa.
However, since ‘301 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 inherently/implicitly be achieved by ‘301 (i.e., the glass having a Young's modulus of 100 GPa to 150 GPa). If there is any difference between the product of ‘301 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 ( CCP A 197 5).
Regarding claim 7: ‘301 discloses the 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], Table 1, Example 4).
Regarding claim 8: ‘301 discloses the 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).
Regarding claim 11: ‘301 discloses the optical glass (Page 5/14, [0001]) comprising more than 40 mol% of Yb₂O₃ as represented by mol% based on oxides in Example 4 (Page 11/14, [0038], Table 1, Example 4).
Regarding claim 15: ‘301 discloses the glass, wherein the glass is used for an optical filter (Page 5/14, [0001]).
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 ‘301 is adequately set forth in paragraph above and is incorporated herein by reference. ‘301 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).
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
03/18/2026
bijan.ahvazi@uspto.gov
Prosecution Insights