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 .
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 USPub20230129031.
Regarding claims 1-4: ‘031 teaches glass comprising a composition allowing for overlap with the individual ranges of claims 1-2 (0009-0031, 0041-0042, 0048-0068, 0099-0118) (MPEP 2144.05).
Regarding the ratios of claims 1-3 and the condition of claim 4, note that not only does ‘031’s glass composition allow for ratios overlapping that of claims 1-3 and allow conditions of claim 4 to be met (MPEP 2144.05), but additionally note that given that ‘031’s Examples clearly suggests ratios as claimed being desirable in ‘031’s glasses (see for instance Ex 24 of Table 1 where R2O/Al2O3= 1.07, RO/Al2O3=1.51, RO+R2O/Al2O3=2.58) and clearly suggests glasses according to their invention can be made free of at least one of the oxides claimed (see Examples), it would have been obvious to one having ordinary skill at the time of invention to include ratios and conditions as claimed within ‘031 with a reasonable expectation of success.
Regarding claim 5: ‘031’s glass can have a YM of 80-100GPa (MPEP 2144.05).
Regarding claim 6: Given that ‘031’s glass meets that claimed, one would conclude the same properties would result (MPEP 2112).
Alternatively, as ‘031’s Examples clearly suggests suggest property values being desirable in ‘031’s glasses (see Examples), it would have been obvious to one having ordinary skill at the time of invention to make ‘031’s glasses have property values as claimed with a reasonable expectation of success.
Regarding claims 7-8: ‘031 teaches a method for ion-exchanging a glass substrate made of their glasses discussed previously, comprising ion-exchanging the glass in a molten salt bath of NaNO3, wherein the glass article comprises a CS layer extending from a surface of the glass article to a DOC, the glass article comprises a central tension region (0034-0035).
Regarding claim 9: The molten salt bath is at 400-550oC (0037).
Regarding claim 10: The ion-exchanging can further comprise a second molten salt bath treatment after the first bath (0144).
Regarding claim 11, 15-18: ‘031 teaches glass articles comprising a compressive stress layer extending from a surface of the glass to a DOC, a central tension region and a composition at the center of the glass is ‘031’s glass composition previously discussed (0009-0031, 0041-0042, 0048-0068, 0099-0118).
Regarding claim 12 and 13: ‘031 may not discuss the specific property at the depths as claimed, however, initially note that ‘031’s glass overlaps with that claimed.
Additionally, Applicants disclose that their glass thickness can be 0.2-2mm (see Applicants’ publication par 0098) and teach their glass being formed by ion exchanging with a NaNO3 salt bath at a temperature of 400-550oC for 1-50hr (see Applicants’ publication 0079, 0084-0085, Applicants’ claims 8 and 9). ‘031 similarly teaches their glass being 0.2-2mm (0047) and forming their glass by ion exchanging with a NaNO3 salt bath at a temperature of 400-550oC for 0.5-48hr (0035, 0037-0038).
Given the similarities, one skilled in the art would reasonably conclude the same stress profile results to be obtained (MPEP 2112).
Regarding claim 14: ‘031’s CS layer comprises a CS spike extending from the surface of the glass article to a DOCsp of 3-10micron (0046, 0133).
Regarding claim 19: As discussed above, ‘031’s glass can have a YM of 80-100GPa (MPEP 2144.05).
Regarding claim 20: ‘031 teaches a consumer electronic product meeting the conditions claimed (0071).
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over USPub20220324746.
Regarding claims 1-2: ‘746 teaches glass comprising a composition (0047) allowing for overlap with the individual ranges and ratio of claim 1 (MPEP 2144.05) and overlapping the ratio and substantially all of the individual ranges of claim 2 (MPEP 2144.05) except for the Al2O3 range. However, note that the 12.5% end point of ‘746’s Al2O3 range is so close to the 12% Al2O3 end point of the claimed range to render it obvious (MPEP 2144.05, Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)).
Regarding claim 3 and 4: ‘746’s composition allows for ratios overlapping that of claim 3 (MPEP 2144.05) and allows for compositions meeting the condition of claim 4.
Regarding claim 5-6: ‘Given that ‘746’s glass meets that claimed, one would conclude the same properties would result (MPEP 2112).
Regarding claims 7-8: ‘746 teaches a method for ion-exchanging a glass substrate made of their glasses discussed previously, comprising ion-exchanging the glass in a molten salt bath of NaNO3, wherein the glass article comprises a CS layer extending from a surface of the glass article to a DOC, the glass article comprises a central tension region (see 0085, 0147-0148 Examples).
Regarding claim 9: The molten salt bath is at 400-550oC (Examples).
Regarding claim 10: The ion-exchanging can further comprise a second molten salt bath treatment after the first bath (0147, 0149).
Regarding claim 11, 15-18: ‘746 teaches glass articles comprising a compressive stress layer extending from a surface of the glass to a DOC, a central tension region and a composition at the center of the glass is ‘746’s glass composition previously discussed.
Regarding claim 12 and 13: ‘746 may not discuss the specific property at the depths as claimed, however, initially note that ‘746’s glass overlaps with that claimed.
Additionally, Applicants disclose that their glass thickness can be 0.2-2mm (see Applicants’ publication par 0098) and teach their glass being formed by ion exchanging with a NaNO3 salt bath at a temperature of 400-550oC for 1-50hr (see Applicants’ publication 0079, 0084-0085, Applicants’ claims 8 and 9). ‘746 similarly teaches their glass being 0.2-2mm (0121) and forming their glass by ion exchanging with a NaNO3 salt bath at a temperature and duration falling within Applicants’ disclosed ranges (see Examples).
Given the similarities, one skilled in the art would reasonably conclude the same stress profile results to be obtained (MPEP 2112).
Regarding claim 14: ‘746’s CS layer comprises a CS spike extending from the surface of the glass article to a DOCsp of 3-11micron (0119) overlapping the range claimed (MPEP 2144.05).
Regarding claim 19: As discussed above, given the similarities in ‘746, one skilled in the art would expect the same properties (MPEP 2144.05).
Regarding claim 20: ‘746 teaches a consumer electronic product meeting the conditions claimed (0049).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,098,094. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art discussed above.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,709,566. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art discussed above.
Claims 1, 3-15, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-37 of U.S. Patent No. 11,485,674. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art discussed above.
Claims 1, 3-15, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15, 17, 20 of U.S. Patent No. 12,459,855. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations presently claimed would have been obvious in view of the prior art discussed above.
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.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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