DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s declaration and amendment filed on 04/15/2025 is acknowledged. In light of amendments, new grounds of rejections are set forth above. Claims 1-8, 11-13, 16, 19 and 21-24 are examined on the merits in this office action.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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 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.
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.
Claim 1-3, 5, 7, 8, 11-13, 16, 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over U.S.2005/0214521, Florent et al. (hereinafter “Florent”, in view of U.S. 6,354,620 B1, Budden et al. (hereinafter “Budden”). The symbol “{ }” indicates the examiner’s comments.
In the rejection under 35 U.S.C. 103 any reference to "overlapping" for ranges of materials includes a reference to MPEP § 2144.05, for in the case where the claimed range "overlap or lie inside ranges disclosed by the prior art", a prim a 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). In accordance with MPEP 2144.05 Ill Applicants can rebut a prima facie case of obviousness by showing the criticality of the ranges.
Regarding Claims 1-2, 5, 7, 11-13 and 16, Florent describes in the entire document particularly abstract and ¶s 0014, 0021, 0067-0072, 0092-0099, 0071, 0089 how an article like a cook-top, {reading on claim 11} with a glass ceramic substrate can be provided and be provided with a coating/paint on fixed to at least one part of the surface of two main sides {reading on coated in at least one zone of pending Claim 1} with at least one silicone resin (note ¶s 0014, 0067-0072, 0072,), which can include methyl groups and not phenyl groups (such as polydimethysiloxane) and can include methyl and phenyl groups (such as phenylmethylsiloxane polymers), and since at least one resin is used, both of these can be used in the coating (¶s 0072, 0092-0099). The coating also contains filler that gives coloration (pigments),like black in example 4, and fillers for mechanical reinforcement (¶ 0071), and the fillers can be inorganic and with a lamellar structure (¶s 0071, 0089). From (¶ 0100) the coating thickness is 1-100 µm {reading on pending Claim 7}
However, Florent does not expressly disclose inorganic fillers as presently claimed.
Budden discloses a curable silicone-based coating composition comprising non-reinforcing filler such as a laminar filler having length (lateral dimension) at least ten times greater than thickness of particles and having a thickness of 1 to 100 angstroms per layer, i.e. 0.0001 to 0.01 microns (see Abstract and col. 6, lines 23-32). Accordingly, length is 0.001 to 0.1 microns (0.001 = 10 x 0.0001 and 0.1 = 10 x 0.01). The laminar filler can be talc which improves compatibility with silicone-based materials (see col. 6, lines 43-51). The talc laminar filler reads on inorganic filler as presently claimed. The curable silicone-based coating composition comprises 0 to 1000 w% of the laminar filler based on the organopolysiloxane (see col. 6, lines 59-62). Based on the examples of Budden which use ~ 60 parts (or 60%) organopolysiloxane, there is, for instance, 15% talc present (0.25*60) (see col. 9, lines 42-48). The laminar filler may or may not include mica, i.e. devoid of mica particles (see col. 6, lines 43-45).
In light of motivation for using 0 to 1000 wt% of talc laminar filler based on the organopolysiloxane disclosed by Budden as described above, it therefore would have been obvious to one of the ordinary skill in the art to use 0 to 1000 wt% of talc laminar filler based on the organopolysiloxane of Budden as the inorganic filler in Florent in order to improve compatibility with silicone resins, and thereby arrive at the claimed invention.
Regarding Claim 8, Florent in view of Budden is applied as to Claim 1, where for the limitation “the paint coating exhibits a lightness L* of less than 5”, it has been held that where 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 and the burden of proof is shifted to Applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC 102 or on prima facie obviousness under 35 USC 103, jointly or alternatively. Therefore, the prime facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112 and analogous burden of proof in MPEP 2113 In the instant case, Florent in view of Budden discloses the silicone coating as claimed in pending Claim 1, therefore, in addition to the above disclosed limitations, the presently claimed property of the coating exhibits a lightness L* of less than 5 would have inherently or implicitly present because Florent as modified has all of the components of the silicone paint of pending Claim 1.
Regarding claims, 3, 21 and 22, Florent disclose the paint comprising silicone resins such as polydimethylsiloxane and phenylmethylsiloxane as noted above. The silicone resins do not have alkyd, epoxy or polyester moieties (see paragraph 0092-0096). That is, paint is devoid of modified alkyd, epoxy and polyester silicone resins. Further, the silicone resins can comprise only combination of polydimethylsiloxane and phenylmethylsiloxane (see paragraphs 0072, 0092). That is, a combined weight of polydimethylsiloxane and phenylmethylsiloxane is 100 wt% of all silicone resins.
Claims 4, 6, 19, 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over U.S.2005/0214521, Florent et al. (hereinafter “Florent”, in view of U.S. 6,354,620 B1, Budden et al. (hereinafter “Budden”) as applied to claim 1 above, further in view of U.S. 2013/0266781 A1, Hoffmann et al. (hereinafter “Hoffmann”).
Regarding claims 4, 6, 19, 23 and 24, Florent in view of Budden disclose the article as set forth above. While Florent discloses black pigments, Florent in view of Budden does not disclose black pigment and its amount as presently claimed.
Hoffmann et al. disclose a glass or glass ceramic article comprising a sealing layer, wherein the sealing layer is a cured silicone coating comprising inorganic solid particles in amount of 10 to 70 wt% (see Abstract and paragraphs 0047, 0077). This amount provides small layer thickness for sealing layer and enhances adhesion of the layer (see paragraph 0047). The inorganic solid particles include black pigments having particle size D50 of 0.1 to 1 microns (see paragraph 0042). Given that 50% of black pigments have particle size of less than 0.1 to 1 microns, the other 50% of black pigments may have size greater or equal to 0.1 to 1 microns. Accordingly, 100% of black pigments would necessarily have particle size of less than, greater than or equal to 0.1 microns, which overlap with that presently claimed.
In light of motivation for using 10 to 70 wt% of black pigments disclosed by Hoffmann et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use 10 to 70 wt% of black pigments of Hoffmann et al. as the black pigments in Florent in view of Budden in order to provide small layer thickness as well as improve adhesion, and thereby arrive at the claimed invention.
Accordingly, Florent in view of Budden and Hoffmann disclose the paint comprising 15% inorganic filler and 10-70 wt.% of black pigments as noted above. Accordingly, the remainder amount of silicone resins is 5 to 65 wt% (65 = 100-10-25 and 10 = 100-70-25). That is, total content of polydimethylsiloxane and phenylmethylsiloxane is 5 to 65 wt%.
Florent in view of Budden and Hoffmann do not disclose amount of polydimethylsiloxane and do not disclose amount of phenylmethylsiloxane.
When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Therefore, it would have been obvious to one of ordinary skill in the art to use 1:1 ratio of polydimethylsiloxane (silicone resin 2) and phenylmethylsiloxane (silicone resin 1) in the paint of Florent in view of Budden and Hoffmann. Accordingly, the amount of polydimethylsiloxane (silicone resin 2) is 2.5 to 32.5 wt% and the amount of phenylmethylsiloxane (silicone resin 1) is 2.5 to 32.5 wt%.
Response to Arguments
Applicant's arguments filed 04/15/2025 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments are moot in light of new grounds of rejections.
In light of amendments, claim objections are withdrawn.
In light of amendments, 112(b) paragraph rejections are withdrawn.
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 KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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