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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 19, 21-24 and 36-39 are rejected under 35 U.S.C. 103 as being unpatentable over Sharma et al. (US 20130299378 A1) (previously cited) in view of Julien (US 20110180510 A1) (previously cited).
Regarding claim 19, Sharma teaches a coated glass substrate comprising a glass substrate that is a glass container (bottle) that has an exterior surface coated by a blocking layer (coating) that comprising a material having Si-O-Si bonds (Sharma, Abstract, Par. 0001, 0005-0007, 0018-0021, 0029-0031, 0042, Claim 1, and Figs. 1-3). Sharma teaches the material of the blocking layer further comprises a solvent that is a diol that is diethylene glycol (Sharma, Par. 0029-0031). Sharma teaches the material for the blocking layer may further include materials that block ultraviolet radiation (Sharma, Par. 0037-0038). While Sharma does not specifically disclose that the glass substrate/container is transparent, Sharma states that the coating is transparent and looks like glass (Sharma, Par. 0021). Sharma further states that the UV blocking materials reduce UV transparency (Sharma, Par. 0037-0038). It therefore would have been obvious to one of ordinary skill in the art that the glass container is transparent in order for the UV blocking materials to be effective at UV transparency blocking, see MPEP 2143.
Sharma is silent regarding the material of the blocking layer comprising a blocking material that is capable of blocking electromagnetic radiation in the wavelength range of 10-500 nm.
Julien teaches a glass container comprising a glass substrate and a coating thereon, wherein the coating comprises a UV blocking material that is 2-hydroxy-4-methoxybenzophenone (Julien, Abstract, Par. 0001-0002, 0065-0067, and 0100-0101), which is the same blocking material as the instant invention per the instant specification Page 5. Products of identical chemical composition cannot have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.01. The instant specification page 5 lists 2-hydroxy-4-methoxybenzophenone as a suitable blocking material having the required electromagnetic blocking. Therefore, the blocking material of Julien would have inherently been capable of blocked electromagnetic radiation in the claimed wavelength range.
Sharma and Julien are analogous art as they both teach glass containers comprising a coating having UV blocking properties. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the blocking material of Julien in the coating of Sharma. This would allow for suitable UV blocking, protecting the contents of the container from UV radiation, and protecting the coating from UV radiation (Julien, Par. 0065-0067).
Regarding claim 21, modified Sharma teaches the material having Si-O-Si bonds is cured and comprises Si-O-Si bonds and thus is a material having a crosslinked network of Si-O-Si bonds (Sharma, Par. 0005-0006, 0021, 0026-0027 and 0046-0047).
Regarding claims 22 and 38-39, modified Sharma teaches the blocking material is 2-hydroxy-4-methoxybenzophenone (Julien, Par. 0065-0067 and 0100-0101), which is the same blocking material as the instant invention per the instant specification Page 5. Products of identical chemical composition cannot have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.01. The instant specification page 5 lists 2-hydroxy-4-methoxybenzophenone as a suitable blocking material having the required electromagnetic blocking. Therefore, the blocking material of Julien would have inherently been capable of blocked electromagnetic radiation in the claimed wavelength ranges.
Regarding claim 23, modified Sharma teaches the blocking material comprises a benzophenone compound (Julien, Par. 0065-0067 and 0100-0101).
Regarding claim 24, modified Sharma teaches the coated glass substrate comprises a transparent glass substrate that is a transparent glass container and is coated with a blocking layer comprising a material having Si-O-Si bonds, a diol (solvent, diethylene glycol) and a blocking component as stated above for claim 19 (Sharma, Abstract, Par. 0001, 0005-0007, 0018-0021, 0029-0031, 0042, Claim 1, and Figs. 1-3). Modified Sharma teaches the blocking material is 2-hydroxy-4-methoxybenzophenone (Julien, Par. 0065-0067 and 0100-0101), which is the same blocking material as the instant invention per the instant specification Page 5. Products of identical chemical composition cannot have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.01. The instant specification page 5 lists 2-hydroxy-4-methoxybenzophenone as a suitable blocking material having the required electromagnetic blocking. Therefore, the blocking material of Julien would have inherently been capable of blocked electromagnetic radiation in the claimed wavelength range. Modified Sharma teaches the material having Si-O-Si bonds is cured and comprises Si-O-Si bonds and thus is a material having a crosslinked network of Si-O-Si bonds (Sharma, Par. 0005-0006, 0021, 0026-0027 and 0046-0047). Modified Sharma teaches the blocking layer coats the glass substrate to increase the strength of the glass substrate (Sharma, Abstract and Par. 0001-0003). While modified Sharma does not specifically state how much of the glass substrate, since modified Sharma teaches coating the glass substrate to increase the strength of the glass substrate, it would have been obvious to one of ordinary skill in the art to coat the entire glass substrate to ensure the entire glass substrate is strengthened, see MPEP 2143. A glass substrate that is entirely coated would coat 100% of the exterior surface, which lies within the claimed range of at least 80% and therefore satisfies the claimed range, see MPEP 2131.03.
Regarding claim 36, Sharma teaches a method comprising utilizing a diol (solvent) that is diethylene glycol to improve a coated glass substrate comprising a glass substrate coated with a blocking layer that comprises a material having Si-O-Si bonds, the diol, and a UV blocking component (Sharma, Abstract, Par. 0001, 0005-0007, 0018-0021, 0029-0031, 0037-0038, 0042, Claim 1, and Figs. 1-3). While Sharma does not specifically disclose that the glass substrate/container is transparent, Sharma states that the coating is transparent and looks like glass (Sharma, Par. 0021). Sharma further states that the UV blocking materials reduce UV transparency (Sharma, Par. 0037-0038). It therefore would have been obvious to one of ordinary skill in the art that the glass container is transparent in order for the UV blocking materials to be effective at UV transparency blocking, see MPEP 2143.
Sharma is silent regarding the material of the blocking layer comprising a blocking material that is capable of blocking electromagnetic radiation in the wavelength range of 10-500 nm.
Julien teaches a glass container comprising a glass substrate and a coating thereon, wherein the coating comprises a UV blocking material that is 2-hydroxy-4-methoxybenzophenone (Julien, Abstract, Par. 0001-0002, 0065-0067, and 0100-0101), which is the same blocking material as the instant invention per the instant specification Page 5. Products of identical chemical composition cannot have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.01. The instant specification page 5 lists 2-hydroxy-4-methoxybenzophenone as a suitable blocking material having the required electromagnetic blocking. Therefore, the blocking material of Julien would have inherently been capable of blocked electromagnetic radiation in the claimed wavelength range.
Sharma and Julien are analogous art as they both teach glass containers comprising a coating having UV blocking properties. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the blocking material of Julien in the coating of Sharma. This would allow for suitable UV blocking, protecting the contents of the container from UV radiation, and protecting the coating from UV radiation (Julien, Par. 0065-0067).
Regarding the limitation of the diol improving the durability to humidity of the coated glass substrate, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Modified Sharma teaches a method of improving a glass substrate utilizing a coating material that comprises Si-O-Si bonds, a diol that is diethylene glycol, and a blocking material that is 2-hydroxy-4-methoxybenzophenone. These materials are the same as the instant invention per the instant claim 19 and the instant specification Page 5. Modified Sharma thus teaches an identical or substantially identical blocking layer (Coating) comprising the same materials, including the same diol as the instant invention. Therefore, absent objective evidence to the contrary, the method of modified Sharma including the diol would have inherently exhibited an improved durability to humidity to at least some extent.
Regarding claim 37, modified Sharma teaches the material having Si-O-Si bonds is cured and comprises Si-O-Si bonds and thus is a material having a crosslinked network of Si-O-Si bonds (Sharma, Par. 0005-0006, 0021, 0026-0027 and 0046-0047). Modified Sharma further teaches the material having Si-O-Si bonds comprise one or more organic functional groups (Sharma, Par. 0041-0043 and 0052-0056).
Response to Arguments
Applicant’s remarks and amendments filed on 05 January 2026 have been fully considered.
On pages 11-12 of the remarks, Applicant argues that Sharma lists many possible solvents and teaches propanol as a preferred solvent, and thus does not teach diethylene glycol. This is not found persuasive for the following reasons:
Sharma teaches the coating comprises a solvent and lists different solvents that can be used including diethylene glycol (Sharma, Par. 0029-0031). While Sharma teaches multiple different possible solvents, it is the examiner’s position that this list is not so vast as to not teach an individual solvent, such as diethylene glycol. Furthermore, a genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990), see MPEP 2131.02. Sharma thus teaches diethylene glycol as the solvent.
Regarding Sharma teaching examples utilizing propanol instead of diethylene glycol, these are specific examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971), see MPEP 2123. The broad disclosure of Sharma teaches diethylene glycol as the solvent as stated above. The specific examples utilizing propanol thus does not teach away from the broad disclosure of Sharma which teaches diethylene glycol.
For the reasons stated above Sharma teaches diethylene glycol and Applicant’s argument is unpersuasive.
Secondly, on pages 12-13 of the remarks, Applicant argues that Sharma does not teach that the coating includes the diol as Sharma teaches a heat treatment of 600°C which is above the boiling point of diethylene glycol of 244-245°C. This is not found persuasive for the following reasons:
Sharma specifically teaches the coating comprises a solvent such as diethylene glycol (Sharma, Par. 0029-0031). Sharma does not state that the solvent is absent in the final product. Furthermore, although Sharma teaches an embodiment where the heat treatment occurs at 600°C, Sharma teaches other embodiments wherein the heat treatment is done at as low as 150°C, such as from 180-220°C (Sharma, Par. 0027), which is below the boiling point of diethylene glycol. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971), see MPEP 2123. The specific embodiment of Sharma that uses a heat treatment at 600°C thus does not teach away from the broad disclosure of Sharma that the heat treatment can occur at 150°C. Therefore, Sharma specifically states that the coating comprises a solvent and does not state that the solvent is absent in the final product and Applicant’s argument is unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/THOMAS J KESSLER/Examiner, Art Unit 1782