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 .
Election/Restrictions
Applicant’s election of species 1(a) and II(a), the core and layer both comprising glass, in the reply filed on August 25, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Priority
Applicant’s claim for the benefit of the PCT and a prior-filed provisional application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 and 365(c) for claims 7-9 and 17-20 as follows:
Specifically, note the specifications in the PCT and provisional applications do not appear to provide adequate support for the core comprising 5-23wt% boria, 45-75wt% silica and/or 8-19wt% alumina as required by claims 7-9 and 17-20. Instead, the specifications only appear to teach these ranges in terms of a composition for the cladding layers (see for instance par 0053 in PCT WIPO publication and 0052 in provisional as filed) and the section of the specification discussing a core composition does not appear to mention these specific ranges.
While the Examiner does acknowledge that the specifications in the prior applications do mention that the core glass can be phase-separated and the specifications separately in discussing suitable clad glass layer compositions may suggest that a composition comprising 5-23wt% boria, 45-75wt% silica or 8-19wt% alumina is a composition phase separates, this is not enough to clearly support the core glass including such composition. Again, as mentioned above, the specification section teaching the ranges is discussing suitable phase separation compositions for the cladding layers themselves and that section never mentions that those same ranges are suitability used as a phase separation composition for the core.
For the above reasons, claims 7-9, as well as 17-20 are not entitled to the filing date of the PCT or the provisional.
Due to the application repeating a substantial portion of the prior PCT and provisional but adds disclosure not presented in the prior applications, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Note that the specification does not appear to provide adequate support for the core comprising 5-23wt% boria, 45-75wt% silica or 8-19wt% alumina as recited in claims 7-9 and 17-20. Instead, the specification only appears to teach these ranges in terms of a composition for the cladding layers (see for instance par 0053 in published specification) and the section of the specification discussing a core composition does not appear to mention these specific ranges (see for instance par 0054 in published specification).
While the Examiner does acknowledge that the specification does mention that the core glass can be phase-separated and the specification separately in discussing suitable clad glass layer compositions may suggest that a composition comprising 5-23wt% boria, 45-75wt% silica or 8-19wt% alumina is a composition phase separates, this is not enough to clearly support the core glass including such composition. Again, as mentioned above, the specification section teaching the ranges is discussing suitable phase separation compositions for the cladding layers themselves and that section never mentions that those same ranges are suitability used as a phase separation composition for the core.
Claim Rejections - 35 USC § 112
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.
Claim 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 is rejected because it is unclear whether the recited “uniform coating” is referring to the previously claimed layer or is the coating a completely new and additional material from that of the layer. Note that although the specification mentions “uniform coating” in published paragraph 0085, the specification actually never clarifies whether the coating is the layer or some new coating material nor does the specification give any clarity at all on what this coating is.
For examination, the recited uniform coating is assumed/interpreted to be referencing the final layer on the core.
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mauro (USPub20140242375) in view of USPub20170129218.
Regarding claims 1, 3-4: Mauro teaches the following glass article comprising a glass core and a glass cladding layer overlying the core (abstract).
PNG
media_image1.png
189
547
media_image1.png
Greyscale
The glass cladding layer comprises a porous matrix (see Figure 3, 0044 and entire disclosure regarding phase separating the glass cladding into first and second phases and then etching the cladding to remove the second phase making the cladding layer porous).
Regarding the claimed thicknesses of the layer and core, the examiner notes the following.
Initially, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In the instant case, as indicated above, Mauro does teach the general conditions of the claim and while Mauro may not discuss thicknesses for their cladding layer and core, Mauro does not appear to place any limits on their thicknesses. Instead, Mauro only generally teaches a laminated glass article wherein a glass cladding layer is fused to a glass core wherein the article can have applications such as lighting applications, building and automotive applications, electronic device applications, etc. (see 0042, 0065 for instance). Further, note that Mauro discusses that the glass cladding layer can be made with a lower CTE than that of the glass core CTE for improved strength (see 0041, 0052).
‘218, from the same field of endeavor of laminated glass article comprising a glass cladding layer having a lower CTE is fused to a glass core having a higher CTE for improved strength and wherein the article can have applications such as lighting applications, building and automotive applications, electronic device applications, etc. (see abstract, 0023, 0031, 0041-0044, 0046-0048, 0059 ), not only suggest that the thicknesses of such layers are result effective as they effect strength wherein the thickness can be selected to achieve a glass article with desired strength profile and/or breakage pattern (0033) but ‘additionally suggest desireable thicknesses being 0.05-0.5mm thickness for the article, 0.01-0.3mm thickness for the cladding layer and a thickness of the ratio of the thickness of the core to that of the article can be at least 0.7 (0030).
As such, it would have been obvious to one having ordinary skill at the time of invention to modify Mauro ‘375 by optimizing the thicknesses of their layers as desired for desired strength and to include thicknesses such as 0.05-0.5mm thickness for the article, 0.01-0.3mm thickness for the cladding layer and a thickness of the ratio of the thickness of the core to that of the article being at least 0.7 as desired during said optimization with a reasonable expectation of success.
Note that ‘375 including 0.01-0.3mm (10-300micron) thickness for the cladding layer meets the claimed range of being than 1000micron and overlaps the claimed range of 50-1000micron (MPEP 2144.05).
Mauro ‘375 including 0.05-0.5mm thickness for the article and thickness of the core to that of the article being at least 0.7 provides for core thicknesses overlapping the claimed range of 1-200micron (MPEP 2144.05). For instance, the values allow for an article having an overall thickness of 0.05mm and the core being 0.7 of that will provide for a core thickness of 0.035mm (35micron). Similarly, the values allow for an article having an overall thickness of 0.5mm and the core being 0.7 of that will provide for a core thickness of 0.35mm (350micron).
Regarding claims 5-9: The composition of Mauro ‘375’s core glass can comprising SiO2, Al2O3, B2O3, alkali metal oxides and alkaline metal oxides (see 0055). The core composition can include B2O3, SiO2 and Al2O3 in amounts claimed (note the specific composition in mol% in par 0055 converts to wt% values meeting those claimed).
Regarding claims 2, 10-11 and 14 While Mauro may not disclose the optical properties as required by claims 2, 11 and 14 or the grain size required by claims 10 and 11, the Examiner notes the following.
Initially, Applicants disclosed cladding and core are of compositions (see published specification 0053-0054, claims 5-9 and Examples) which are substantially similar to that disclosed by Mauro (see 0027-0037, 0055 and Examples).
Applicants disclose their article being made by first heat treating the article at temperatures of 400-1300C for a duration of 1min to 200hours to phase separate the cladding glass into first and second phases (published specification par 0058-0061) and Mauro similarly heat treats their article to phase separate their cladding glass into first and second phases at temperatures and durations falling within Applicants’ disclosed ranges (see 0063-0064 and 0071).
Applicants disclose that their article is then etched in an etchant solution for a duration to remove the second phase and create the porous region wherein the etchant solution includes 0.1-10vol% of an acid such as HF, etc. (see published specification 0064-0067). Mauro similarly discloses their article being then etched in an etchant solution to remove the second phase and create the porous region wherein the etchant solution includes an acid such as HF, etc. (0067), the etchant solution can include a content of acid falling within the range disclosed by Applicants and a duration of etching falling within that disclosed by Applicants (see Mauro’s Example).
Given the similarities between Mauro and Applicants’ article and method, one skilled in the art would reasonably conclude the same resulting optical properties and grain size (MPEP 2112).
Regarding claims 12-13: Mauro does not explicitly mention their core glass being phase-separated wherein the grain size of the cladding is less than the grain size of the core. However, given that Applicants cladding and core compositions are substantially similar to that disclosed by Mauro and the method disclosed by Applicants and Mauro are also substantially the same as laid out above, one skilled in the art would reasonably conclude the same resulting phase-separation and grain size relationship to occur (MPEP 2112).
Regarding claim 15: Mauro does not explicitly mention their cladding having a graded index between 1-5micron. However, given that Applicants cladding and core compositions are substantially similar to that disclosed by Mauro and the method disclosed by Applicants and Mauro are also substantially the same as laid out above, one skilled in the art would reasonably conclude the same resulting index grading to occur (MPEP 2112).
Regarding claim 16: Mauro’s glass cladding layer can be made with an average CTE different from that of the glass core (see 0041, 0052).
Regarding claims 17-19: As discussed above, Mauro ‘375’s article has a core composition as claimed, was modified to include a layer and core thickness as claimed and due to the similarities between Mauro and Applicants’, the same porous matrix grain size and optical properties are expected to result (MPEP 2112).
Regarding claim 20: Regarding the limitation of the article being 3D shaped, note that it has been held by the courts that changes in shape is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant (MPEP 2144.04, IV, B). In the instant case, it would be well within the skill in the art to choose any desired shape in Mauro depending on application.
Additionally, give that ‘218 from the same field of endeavor of laminated glass used in similar applications such as lighting applications, building and automotive applications, electronic device applications, etc., discloses throughout that such articles can be made 3D shaped (see entire disclosure), it would have been obvious to one having ordinary skill at the time of invention to modify Mauro to include their article being 3D shaped as desired.
Regarding the presence of a uniform coating, given that Applicants cladding and core compositions are substantially similar to that disclosed by Mauro and the method disclosed by Applicants and Mauro are also substantially the same as laid out above, one skilled in the art would reasonably conclude the same result of the layer being a uniform coating to be present (MPEP 2112).
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10, 12-13 of copending Application No. 18/284314 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,252,437. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
Prosecution Insights