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 .
Examiner’s Comments
Applicants’ response filed on 10/16/2025 has been fully considered. Claims 1-7 and 19-20 are withdrawn, claims 11 and 21-22 are canceled and claims 1-10, 12-20 and 23-24 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/16/2025 has been entered.
Claim Objections
Claims 8-9 and 23-24 are objected to because of the following informalities: The term “phosphate” is misspelled. Appropriate correction is required.
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 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 8-10, 16-18 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Magdassi et al (US 2008/0210122 A1) in view of Wu et al (US 2013/0017373 A1).
Regarding claim 8, Magdassi discloses a glass product with marking prepared according to the process of claim 1 (a printed ceramic substrate comprising a ceramic substrate of glass an ink composition printed on the ceramic substrate in order to form a colored pattern; paragraph [0019] and [0034]-[0035]) wherein at least a portion of the marking is present below a surface of the glass substrate and extends along a thickness direction of the glass substrate from the surface of the glass substrate to an interior of the glass substrate (integration of pigment-less ink into a surface to provide a non-colored pattern; paragraph [0039]).
The integration of pigment-less ink into a surface to provide a non-colored pattern would result in a pattern that is present below a surface of the glass substrate extending along a thickness direction of the substrate from the surface of the glass substrate to an interior of the glass substrate.
Magdassi does not disclose the glass product with marking (printed ceramic substrate) comprising the ink composition comprising a halogen containing compound and a content of the halogen-containing compound being greater than 1 wt% and less than 10 wt%.
However, Wu discloses an ink composition comprising a halogen containing compound (fluoroelastomer; paragraph [0009]) and a content of the halogen-containing compound being greater than 1 wt% and less than 10 wt% (fluoroelastomer present in the ink in an amount of at least 0.1% by weight and no more than 15 percent by weight; paragraph [0018]).
The fluoroelastomer present in the ink in an amount of at least 0.1% by weight and no more than 15 percent by weight overlaps the claimed range for a content of the halogen-containing compound being greater than 1 wt% and less than 10 wt%.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have an ink composition that is stretchable and forms robust images which can be stretched and relaxed for a high number of cycles (paragraph [0003] of Wu). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art to modify the glass product with marking (printed ceramic substrate) of Magdassi to substitute the additive in Magdassi with the fluoroelastomer of Wu because having the required fluoroelastomer provides an ink composition that is stretchable and forms robust images which can be stretched and relaxed for a high number of cycles (paragraph [0003] of Wu).
The glass product with marking obtained by the process of claim 1 is a product-by-process limitation.
“Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
Regarding claim 9, Magdassi discloses a glass product with marking comprising a glass substrate (a printed ceramic substrate comprising a ceramic substrate of glass an ink composition printed on the ceramic substrate in order to form a colored pattern; paragraph [0019] and [0034]-[0035]), wherein the marking contains particles having a size of from 150 to 600 nm (pigment particles in order to provide the colored pattern where pigment particles have an average size between 0.17-0.25 µm; paragraph [0045]) and wherein at least a portion of the marking is present below a surface of the glass substrate and extends along a thickness direction of the glass substrate from the surface of the glass substrate to an interior of the glass substrate (integration of pigment-less ink into a surface to provide a non-colored pattern; paragraph [0039]).
The integration of pigment-less ink into a surface to provide a non-colored pattern would result in a pattern that is present below a surface of the glass substrate extending along a thickness direction of the substrate from the surface of the glass substrate to an interior of the glass substrate.
Magdassi does not disclose the glass product with marking (printed ceramic substrate) comprising the ink composition comprising a halogen containing compound and a content of the halogen-containing compound being greater than 1 wt% and less than 10 wt%.
However, Wu discloses an ink composition comprising a halogen containing compound (fluoroelastomer; paragraph [0009]) and a content of the halogen-containing compound being greater than 1 wt% and less than 10 wt% (fluoroelastomer present in the ink in an amount of at least 0.1% by weight and no more than 15 percent by weight; paragraph [0018]).
The fluoroelastomer present in the ink in an amount of at least 0.1% by weight and no more than 15 percent by weight overlaps the claimed range for a content of the halogen-containing compound being greater than 1 wt% and less than 10 wt%.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have an ink composition that is stretchable and forms robust images which can be stretched and relaxed for a high number of cycles (paragraph [0003] of Wu). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art to modify the glass product with marking (printed ceramic substrate) of Magdassi to substitute the additive in Magdassi with the fluoroelastomer of Wu because having the required fluoroelastomer provides an ink composition that is stretchable and forms robust images which can be stretched and relaxed for a high number of cycles (paragraph [0003] of Wu).
Regarding claim 10, Magdassi and Wu disclose the glass product with marking (printed ceramic substrate) of claim 9 as noted above and Magdassi discloses the glass product with marking (printed ceramic substrate) comprising the particles being crystals (color of the pigment particles being white and the pigment particles comprising chromium oxide; paragraph [0049]) and [0051]).
The chromium oxide particles are considered to be crystals as chromium oxide is in the form of tetrahedral crystals.
Regarding claim 16, Magdassi and Wu disclose the glass product with marking (printed ceramic substrate) of claim 11 as noted above and Magdassi discloses the glass product with marking (printed ceramic substrate) comprising a depth of the marking extending along the thickness direction of the glass substrate from the surface of the glass substrate to the interior of the glass substrate (the ink composition being integrated into the substrate to provide a colored pattern; paragraphs [0035] and [0036]).
Magdassi does not disclose the glass product with marking (printed ceramic substrate) comprising the depth of the marking extending along a thickness direction of the substrate from the surface of the glass substrate to an interior of the glass substrate being from 5 nm to 100 µm.
However, it would have been obvious to one of ordinary skill in the art to adjust the depth of the integration of the colored pattern into the glass substrate to be from 5 nm to 100 µm because doing so would provide a ink that is heat resistant and scratch resistant (paragraph [0036] of Magdassi) and maintains its optical properties after exposure to temperatures above 500 °C (paragraph [0045] of Magdassi) as having a depth that is less than 5 nm for the colored pattern would result in degradation of the colored pattern due to abrasion and heat leading to low heat resistance and scratch resistance for the colored pattern and having a depth of more than 100 µm for the colored pattern would result in loss of optical properties as the colored pattern would be integrated so far deep into the glass substrate that its optical properties such as color, optical density, UV blockage and gloss cannot be maintained due to the colored pattern being farther from the surface of the glass substrate.
Regarding claim 17, Magdassi and Wu disclose the glass product with marking (printed ceramic substrate) of claim 9 as noted above.
Magdassi does not disclose the glass product with marking (printed ceramic substrate) comprising the marking being an identification code.
However, it would have been obvious to one of ordinary skill in the art to adjust the colored pattern of Magdassi to have the shape of an identification code because doing so would provide the desired design and appearance for the colored pattern of the printed ceramic substrate.
Regarding claim 18, Magdassi and Wu disclose the glass product with marking (printed ceramic substrate) of claim 9 as noted above.
The glass product with marking obtained by the process comprising coating of the ink composition onto the surface of a glass substrate and heating the glass substrate are product-by-process limitations.
“Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
Regarding claim 23, Magdassi and Wu disclose the glass product with marking (printed ceramic substrate) of claim 8 as noted above.
The content of phosphorus element in the phosphate based compound being from 0.05 to 4 wt% would be met due to the embodiment of the ink composition comprising the halogen containing compound being met by Magdassi and Wu as noted above.
Regarding claim 24, Magdassi and Wu disclose the glass product with marking (printed ceramic substrate) of claim 9 as noted above.
The content of phosphorus element in the phosphate based compound being from 0.05 to 4 wt% would be met due to the embodiment of the ink composition comprising the halogen containing compound being met by Magdassi and Wu as noted above.
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Magdassi et al (US 2008/0210122 A1) in view of Wu et al (US 2013/0017373 A1) and further in view of Nakasone (JP H09-143448 A).
A machine translation is being used for the English translation of Nakasone (JP H09-143448 A).
Regarding claim 12, Magdassi and Wu discloses the glass product with marking of claim 9 as noted above.
Magdassi and Wu do not disclose the glass product with marking comprising the marking being invisible to the naked eye in transmission.
However, Nakasone discloses a marking being invisible to the naked eye in transmission (infrared absorbing material comprising YBPO4 particles having absorption characteristics in the near infrared region and an ink using the infrared absorbing material; pg. 3 of Nakasone translation).
The infrared absorbing material comprising YBPO4 particles in an ink would result in a marking that can only be detected through infrared rays. This would result in a marking being invisible to the naked eye in transmission as a marking detected only through infrared rays would be invisible to the naked eye in transmission.
It would have been obvious to one of ordinary skill in the art to modify the glass substrate of Magdassi and Wu to substitute the metal oxide of Magdassi for the infrared absorbing material comprising YBPO4 particles of Nakasone because having the infrared absorbing material comprising YBPO4 particles provides a material which absorbs infrared rays but no visible rays resulting in a transparent detection mark (pg. 3 of translation).
Regarding claim 13, Magdassi, Wu and Nakasone discloses the glass product with marking of claim 12 as noted above.
Magdassi and Wu do not disclose the printed ceramic substrate comprising the marking being invisible to the naked eye in daylight.
However, Nakasone discloses an infrared absorbing material comprising YBPO4 particles having absorption characteristics in the near infrared region and ink using the infrared absorbing material (pg. 3 of translation).
The infrared absorbing material comprising YBPO4 particles in an ink would result in a marking that can only be detected through infrared rays. This would result in a marking being invisible to the naked eye in daylight as a marking detected only through infrared rays would be invisible to the naked eye in daylight.
It would have been obvious to one of ordinary skill in the art to modify the glass substrate of Magdassi and Wu to substitute the metal oxide of Magdassi for the infrared absorbing material comprising YBPO4 particles of Nakasone because having the infrared absorbing material comprising YBPO4 particles provides a material which absorbs infrared rays but no visible rays resulting in a transparent detection mark (pg. 3 of translation).
Regarding claim 14, Magdassi, Wu and Nakasone discloses the glass product with marking of claim 12 as noted above.
In regard to the marking being readable by UV light, since Magdassi, Wu and Nakasone disclose the average size of the pigment particles being between 0.17-0.25 µm which is equivalent to 170 nm to 250 nm and infrared-absorbing particles of YBPO4; the marking of Magdassi, Wu and Nakasone would inherently be readable in blue light and UV light.
Regarding claim 15, Magdassi, Wu and Nakasone discloses the glass product with marking of claim 12 as noted above.
In regard to the marking being readable by UV light, since Magdassi, Wu and Nakasone discloses the average size of the pigment particles being between 0.17-0.25 µm which is equivalent to 170 nm to 250 nm and infrared-absorbing particles of YBPO4; the marking of Magdassi, Wu and Nakasone would inherently be readable in blue light and UV light.
Response to Arguments
Applicant’s arguments, see page 6, filed 10/16/2025, with respect to the 112(d) rejection has been fully considered and are persuasive. The 112(d) rejection has been withdrawn.
Applicant’s arguments with respect to claims 8-9 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.
Applicants argue that Magdassi and Maekawa do not disclose the content of the halogen-containing compound being greater than 1 wt% and less than 10 wt%.
This argument is moot as Magdassi and Maekawa do not disclose the content of the halogen-containing compound being greater than 1 wt% and less than 10 wt% and therefore the previous rejections have been withdrawn. However, new grounds of rejection have been noted above.
Applicant's arguments filed 10/16/2025 have been fully considered but they are not persuasive.
Applicants argue that Nakasone does not overcome the deficiencies of Magdassi and Maekawa.
This argument is not persuasive as Nakasone is a teaching reference used to teach infrared absorbing material comprising YBPO4 particles.
However, note that while Nakasone does not disclose all the features of the present claimed invention, Nakasone is a teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches certain concepts, namely infrared absorbing material comprising YBPO4 particles, and in combination with the primary reference, discloses the presently claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785