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 .
The Final Rejection mailed 02/23/2026 is withdrawn to be replaced by the current Office Action.
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.
Claims 1-16 are 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.
Claims 1-4 claims “at least four kinds of main cations selected from the group consisting of P ions, Li ions, Cu ions, Al ions, Ba ions, Sr ions, Ca ions, Mg ions, Zn ions, K ions, Na ions, La ions, Gd ions, and Y ions” but then claims “a content of MgO is 0%”. The claims are not clear if Mg ions at one of the “at least four cations” can be in the glass in some other form than MgO, as the specification only discloses Mg in term of MgO.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over CN 104788019 A (Translation).
Regarding claims 1-3, CN 104788019 discloses near infrared-absorbing glass compositions comprising 65-85% P2O5, 5-30% Al2O3, 0-10% B2O3, 0.5-15% CuO, 0-10% R1O wherein R1O is MgO, CaO, SrO and BaO, and 0.1-10% R2O which can be one or more of Li2O, Na2O and K2O, less than 10% ZnO, less than 8% of SiO2. This composition meets or renders obvious as composition of P, Li and Cu ions as essential cations, a ratio of a content of O ions relative to a content of P ions (0 ion/P ion) is 3.10 or less, in a glass composition indicated by anion%, a content of O ions is 90.0 anion% or more, on a molar basis, a total content of oxides of the main cations is 90.0 % or more, a content of Al2O3 is 8% or less, content of MgO is 0%, content of V2O5 is 0.1% or less, a ratio of a total content of Na20, K20, and ZnO relative to a content of Li20 ((Na20+K20+ZnO)/Li2O) is 2.4 or less, a total content of B203 and Si02 (B203+SiO2) is 3.0 % or less).
Regarding claim 1 content of CuO, the compositions overlap that claimed based on Equation 1
Regarding claim 2 content of CuO, the compositions overlap that claimed based on Equation 2.
Regarding claim 3 A1, the compositions overlap that claimed based on Equation 3.
Regarding claim 4 A2, the compositions overlap that claimed based on Equation 4.
CN 104788019 teaches that glass composition of thickness of 0.3 mm has a transmittance at wavelength of 1200 nm of 25% or less and transmittance at 400 nm of 80% or more (translation).
It would have been obvious to one of ordinary skill in the art to have provided the near-infrared absorbing glass of CN 104788019 with transmittance such that at 0.21 mm thickness, transmittance at 1200 nm wavelength is 10% or less and at 400 nm wavelength is 70% or more based on the teaching of CN 104788019 of providing near infrared-absorbing glass of thickness of 0.3 mm with transmittance at wavelength of 1200 nm of 25% or less and transmittance at 400 nm of 80% or more because it would have been obvious to one of ordinary skill in the art that similar transmittance would be desired for glass of smaller thickness.
Regarding claim 5, CN 104788019 discloses 0.1-10% R2O which can be one or more of Li2O, Na2O and K2O, thus encompassed by the claimed Na2O and K2O content less than 15.0 mol%.
Regarding claim 6, CN 104788019 discloses 5-30% Al2O3, thus encompassed by total content of Al203, La203, Y203 and Gd203 of 0.1 mol% or more.
Regarding claims 7-12, CN 104788019 discloses glass of thickness of 0.3 mm has a transmittance at wavelength of 1200 nm of 25% or less and transmittance at 400 nm of 80% or more, a wavelength half value in the range of 620-650 nm.
It would have been obvious to one of ordinary skill in the art to have provided the near-infrared absorbing glass of CN 104788019 with half value of 633 nm at 0.25 mm thickness or less, T600 of 50% or more, T1200 of 30% or less; at 0.11 mm thickness, T1200 of 30% or less, T400 of 70% or more; at 0.21 mm thickness, half value of 600-650 nm; at 0.25 mm or less thickness, half value of 645 nm and T600 of 50% or more, as claimed in claims 7-12 based on the teaching of CN 104788019 of providing near infrared-absorbing glass of thickness of 0.3 mm with transmittance at wavelength of 1200 nm of 25% or less and transmittance at 400 nm of 80% or more and a wavelength half value in the range of 620-650 nm, because it would have been obvious to one of ordinary skill in the art that similar transmittance would be desired for glass of smaller thickness.
Additionally since the composition of the reference is the same as those claimed herein it follows that the glass discussed above would inherently possess the properties recited in the claims. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
Regarding claims 13-16, CN 104788019 discloses use of the glass to make plate-shaped near infrared light absorption filter.
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 12, 14, 15 and 17-20 of copending Application No. 18/533658 in view of CN 104788019 A (Translation).
Regarding claim 1, copending Application No. 18/533658 claims
1. A near-infrared absorbing glass, which comprises four or more kinds of main cations selected from the group consisting of P ions, Li ions, Cu ions, Al ions, Ba ions, Sr ions, Ca ions, Mg ions, Zn ions, K ions, Na ions, La ions, Gd ions and Y ions, and comprises P ions, Ba ions and Cu ions as essential cations, wherein in a glass composition expressed in anion%, a content of O ions is 90.0 anion% or more, in a glass composition expressed in atomic%, a ratio of a content of O ions to a content of P ions (0 ions/P ions) is 3.15 or less, in a glass composition expressed in mol% based on oxides,a total content of B203 and SiO2 (B203 + SiO2) is 3.0 mol% or less, a total content of MgO and A1203 (MgO + A1203) is 8.0 mol% or less, and a total content of Li2O, Na2O and K20 (Li2O + Na2O + K20) is 15 mol% or less.
Regarding claim 1, copending Application No. 18/533658 claims
2. The near-infrared absorbing glass according to The near-infrared absorbing glass according to wherein a content of CuO is a1% or more, a1 is a value calculated by the following formula 1: (Formula 1) a1 = 70400 x exp(-2.855 x R) in formula 1, R is the ratio (0 ions/P ions).
Regarding claim 2, copending Application No. 18/533658 claims
3. The near-infrared absorbing glass according to claim 1 wherein the following formula 2 is satisfied: (Formula 2) C - 3200 x exp(-2.278 x R) >0 in formula 2, C is a CuO content per molar volume of the glass (unit: mmol/cc), R is the ratio (0 ions/P ions).
Regarding claim 3, copending Application No. 18/533658 claims
4. The near-infrared absorbing glass according to claim 1 wherein Ai calculated by the following formula 3 is 2500 or more:(Formula 3) Ai= {O (P) - 0 (others)} x Cu in formula 3, O (P) indicates an amount of oxygen that constitutes oxides of P ions in the glass composition based on oxides, O (others) indicates an amount of oxygen obtained by excluding the O (P) from an amount of oxygen constituting oxides of the main cations in the glass composition based on oxides, and Cu indicates a CuO content in mol% in the glass composition based on oxides.
Regarding claim 4, copending Application No. 18/533658 claims
5. The near-infrared absorbing glass according to claim 1 wherein A2 calculated by the following formula 4 is 700 or more: (Formula 4) A2 = {O (P) - 0 (others)} x C in formula 4, C is a CuO content per molar volume of the glass (unit: mmol/cc), O (P) indicates an amount of oxygen that constitutes oxides of P ions in the glass composition based on oxides, and O (others) indicates an amount of oxygen obtained by excluding the O (P) from an amount of oxygen constituting oxides of the main cations in the glass composition based on oxides.
Copending Application No. 18/533658 does not specifically claim a content of V2O5 is 0.1% or less however claim 1 encompasses glass with 0% V2O5.
Copending Application No. 18/533658 does not specifically claim content of MgO is 0%.
CN 104788019 teaches that a near infrared-absorbing glass compositions of P2O5, Li2O, CuO and Al2O3 can contain 0-10% of MgO and teaches that glass composition of thickness of 0.3 mm has a transmittance at wavelength of 1200 nm of 25% or less and transmittance at 400 nm of 80% or more (translation).
It would have been obvious to one of ordinary skill in the art to have provided the near-infrared absorbing glass of copending Application No. 18/533658 with 0% MgO as taught by CN 104788019 as suitable amount for near infrared-absorbing glass compositions of P2O5, Li2O, CuO and Al2O3.
Providing the near-infrared absorbing glass of copending Application No. 18/533658 with transmittance such that at 0.21 mm thickness, transmittance at 1200 nm wavelength is 10% or less and at 400 nm wavelength is 70% or more would have obvious to one of ordinary skill in the based on the teaching of CN 104788019 of providing near infrared-absorbing glass of thickness of 0.3 mm with transmittance at wavelength of 1200 nm of 25% or less and transmittance at 400 nm of 80% or more and it would have been obvious to one of ordinary skill in the art that similar transmittance would be desired for glass of smaller thickness.
Regarding claims 7-12, see claims 12 and 14-19 of copending Application No. 18/533658.
Regardingclaims13-16, copending Application No. 18/533658 claims a near-infrared cut filter comprised of the near-infrared absorbing glass.
This is a provisional nonstatutory double patenting rejection.
Terminal Disclaimer
The terminal disclaimer filed on October 24, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of copending Application No. 18013977 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s arguments with respect to the claim have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Hirota US 4,229,220 of record also teaches near-infrared absorption glass of P2O5, Li2O and CuO with 0% MgO.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELVIN C MAYES whose telephone number is (571)272-1234. The examiner can normally be reached Mon-Fri 8:00am - 4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Mallari can be reached at (571) 272-4729. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759