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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
1The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Yoneda et al. (WO 2022/176915).
Citations to Yoneda et al., below, refer to US App. Pub. No. 2023/0393319, an English language equivalent of WO 2022/176915.
Regarding claims 1-2, Yoneda et al. discloses a polarizing glass and optical isolator including a metal layer of needled-shaped metal particles (i.e. shape-anisotropic metal particles as claimed) formed on the surface and dispersed inside the polarizing glass layer. (Abstract, Fig. 1B). The needle shaped metal particles are made of silver or copper. (par. [0018] and [0026]). The glass composition includes (see par. [0052]-[0066]):
50-65 wt% of SiO2
15-22 wt% of B2O3
0-4 wt% of Al2O3
6-16 wt% of R2O (i.e. sum of Li2O, Na2O and K2O)
2-8 wt% ZrO2
0-3 wt% TiO2
Ag with Cl and/or Br wherein Cl and/or Br is chemically equivalent or more of Ag.
An additive amount of materials include Nb2O5 such that the content of the additive is in the range of 0.05-4 mol%. (par. [0040] and [0051]).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to the content of Nb2O5 and the sum of Nb2O5 + TiO2, Yoneda et al. does not explicitly teach the content with respect to a wt% as claimed. However, given the explicit teaching in the reference that Nb2O5 may be included as an additive in the glass composition as an additive material with a bounded content by mol%, it would have been obvious to one of ordinary skill in the art to optimize the content thereof in the glass composition in order to adjust the physical properties thereof without disrupting the optical properties thereof. "Where 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 (CCPA 1955). MPEP 2144.05 (II).
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 1-2 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claim 1-4 of copending Application No. 19/077,734 (hereafter ‘734) in view of Yoneda et al. (WO 2022/176915).
Citations to Yoneda et al., below, refer to US App. Pub. No. 2023/0393319, an English language equivalent of WO 2022/176915.
Regarding claim 1, ‘734 claims a polarizing glass composition having silver shape-anisotropic metal particles oriented and dispersed in at least a surface layer of a glass substrate, wherein the glass composition includes:
50-65 wt% SiO2
10-22 wt% B2O3
5-10 wt% Al2O3
6-18 wt% Alkali metal oxide sum (Li2O + Na2O and K2O)
2-8 wt% ZrO2
1-1.8 wt% TiO2
0.1-0.35 Ag and a chemical equivalent of Cl and Br equal to or larger than the chemical equivalent of Ag.
‘734 does not claim the inclusion of Nb2O5.
Yoneda et al. discloses a polarizing glass and optical isolator including a metal layer of needled-shaped metal particles (i.e. shape-anisotropic metal particles as claimed) formed on the surface and dispersed inside the polarizing glass layer. (Abstract, Fig. 1B). Yoneda et al. further teaches An additive amount of materials include Nb2O5 such that the content of the additive is in the range of 0.05-4 mol%. (par. [0040] and [0051]).
It would have been obvious to one of ordinary skill in the art to include Nb2O5 in the glass composition of ‘734 in view of the fact that Nb2O5 is a known additive that may be included in polarizing glass compositions. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Given the explicit teaching in the reference that Nb2O5 may be included as an additive in the glass composition as an additive material with a bounded content by mol%, it would have been obvious to one of ordinary skill in the art to optimize the content thereof in the glass composition in order to adjust the physical properties thereof without disrupting the optical properties thereof. "Where 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 (CCPA 1955). MPEP 2144.05 (II).
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 5712721490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 09/28/2026
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