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 .
Priority
Applicant’s claim for the benefit of a prior-filed 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. 119(e) and 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 18/737352, 17/652543, and JP2021030726 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. None of the prior Applications provide clear support for the entirety of the “41MPa or more” range claimed.
Initially note that the only place that a CS90 values are explicitly provided in the prior Applications are the calculated values in the Examples (see Tables). As such, one must rely on the calculated values in the Examples to determine support. In the instant case, while the calculated values in each prior Application does provide support for a CS90 value of 41MPa (see Example 7 in Table 1 of the all previous), note that the highest value disclosed by the inventive Examples in prior Applications 18/737352, and 17/652543 is110MPa (see Example 17, Table 3 in these applications) and the highest disclosed by the inventive Examples in prior JP2021030726 is 66MPa (see Example 8 in Table 1), As such, there is no adequate support for the entirety of the open-ended range of “or more” as presently claimed and Applicants are not entitled to the benefit of any of the filing dates of the previous Applications and instead, will only be entitled to the filing date of the present Application which is March 3, 2025.
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: The present specification does not provide clear support for the entirety of the “41MPa or more” range claimed.
Initially note that the only place that a CS90 values are explicitly provided are the calculated values in the Examples (see Tables). As such, one must rely on the calculated values in the Examples to determine support. In the instant case, while the calculated values may support a CS90 value of 41MPa (see Example 7 in Table 1 of the applications), note that the highest value disclosed by the inventive Examples is 110MPa (see Example 17, Table 3 in the applications). As such, there is no adequate support for the entirety of the open-ended range of “or more” as claimed.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by USPub20220281769.
Regarding claims 1-7: ‘769 teaches a chemically strengthened glass having a thickness in mm and a first order derivative as required by claims 1 and 5 (see abstract, Tables).
The glass has a base composition as claimed (see Tables and 0142) and can have a CS90 at a depth of 90micron from the glass surface being within the range claimed (for instance see the 41MPa, 66MPa, 47MPa, etc. in Table 1 and 3).
The glass has a ratio meeting that of claim 2 and a second order derivative meeting claims 3 and 4 (see Table 1 and 3). The CS0 at the outermost surface can be in the range claimed (see Tables 1 and 3) and the CT2 can meet the relationship required by claim 7 (see Tables 1 and 3).
Regarding claim 8: The glass can be crystallized glass (0108).
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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.
Claim(s) 1- 7 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over USPub2021037332.
Regarding claims 1-7: ‘332 teaches a chemically strengthened glass with a base glass composition overlapping that claimed (0025, 0064). Specifically, the glass comprising
40-70mol% SiO2 (0064, 0066), 10-30mol% Al2O3 (0064, 0067), 2-11mol% Li2O3 (0064, 0069), 5-25mol% Na2O and even 5-15mol% (0064, 0070).
Regarding the claimed properties, note that ‘332’s glass has a composition overlapping that claimed, has a thickness overlapping that used by Applicants (see 0023 and Applicants’ Examples) and is made by a two step ion exchange using a first step comprising a bath of NaNO3 and KNO3 in amounts and at a temperature and duration similar to that done by Applicants’ (see 0097-0098 and Applicants 0049-0055) followed by a second step comprising a bath of KNO2 and LiNO3 n amounts and at a temperature and duration similar to that done by Applicants’ (see 0099 and Applicants’ 0056-0068). Given the similarities, one skilled in the art would reasonably conclude the same resulting properties (MPEP 2112).
Claim(s) 1- 7 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over USPub2022041493.
Regarding claims 1-7: ‘493 teaches a chemically strengthened glass with a base glass composition overlapping that claimed (0025, 0064). Specifically, the glass comprising
50-80mol% and even 50-70mol% SiO2 (abstract, 0034), 8-25mol% and even 8-20mol% Al2O3 (abstract, 0035), 3-15mol% and even 5-15% Li2O3 (abstract, 0037), and 3-21mol% or even 3-10mol%Na2O (abstract, 0038).
Regarding the claimed properties, note that ‘493’s glass has a composition overlapping that claimed, has a thickness overlapping that used by Applicants (see 0070 and Applicants’ Examples) and is made by a two step ion exchange using a first step comprising a bath of NaNO3 and KNO3 in amounts and at a temperature and duration similar to that done by Applicants’ (see 0077, 0079, 0081-0082, 0099, 0101, 0103 and Applicants 0049-0055) followed by a second step comprising a bath of KNO2 and LiNO3 n amounts and at a temperature and duration similar to that done by Applicants’ (see 0077, 0079, 0081-0082, 0099, 0101, 0103 and Applicants’ 0056-0068). Given the similarities, one skilled in the art would reasonably conclude the same resulting properties (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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,065,376. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,269,769. 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.
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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.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/ Primary Examiner, Art Unit 1784
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