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 .
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12122703_B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent teaches and/or suggests all of the claimed limitations of independent Claim 1 by way of overlapping ranges.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12162801_B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent teaches and/or suggests all of the claimed limitations of independent Claim 1 by way of overlapping ranges.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee USPA_20100028607_A1.
1. Regarding Claim 1, Lee discloses an ion-exchanged glass (title) whose composition is (in mole%):
60-70 of SiO2
6-14 of Al2O3
0-8 of MgO
0-15 of Li2O
0-20 of Na2O;
The ranges listed in paragraph 0024 for the alkaline earth metal oxides can be less than or equal to 15 mole%, and also MgO+CaO can be less than or equal to 2 mol% according to the same ranges. There is no mention of ZnO and as such it can be regarded as 0 mole%. B2O3 can be less than 4 mol% according to paragraph 0024. K2O can be greater than 0 and less than 2 mole% according to paragraph 0024. The total mole% of Li2O+Na2O+K2O can range from 5 to 18 according to paragraph 0024. And finally, according to paragraph 0024, a ratio of Li2O to R2O can fall into the range of 0.5 to 1. Although the ranges do not teach the claimed ranges explicitly, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
2. Regarding Claims 2-4, Lee discloses a total amount of alkaline earth metal oxides can fall into the claimed range of 2.5 to 8 mol% (paragraph 0024).
3. Regarding Claim 5, Lee does not disclose using P2O5, as such it can be regarded as being 0 mole%.
4. Regarding Claims 6, 7, Lee discloses using 0.007 mole% of Fe2O3 (paragraph 0025).
5. Regarding Claim 8, Lee discloses using less than 50 ppm of As2O3 (Claim 6).
6. Regarding Claim 9, Lee discloses using Na2O in a concentration as a variable (paragraph 0024).
7. Regarding Claims 10, 11, Lee discloses all of the claimed composition and structure limitations of the pending claims including a thickness of 0.5 to 5mm (Claim 10) and having ion-exchange (Title).. As such, it would be expected for it to inherently be amorphous and possess the same maximum central tension.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAHSEEN KHAN whose telephone number is (571)270-1140. The examiner can normally be reached Mondays-Saturdays 08:00AM-10:00PM.
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/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 July 29, 2026
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