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 4/13/2026 has been fully considered. Claims 1-7 are withdrawn, claims 25-29 are new, claims 8, 11-12 and 19-23 are canceled and claims 1-7, 9-10, 13-18 and 24-29 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 26 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 26, there is no support for the limitation of the ink composition not comprising an inorganic pigment and not comprising glass frit. Applicant’s Specification discloses an embodiment where the ink composition does not comprise an inorganic pigment and another embodiment where the ink composition does not comprise glass frit. However, this does not disclose the combination of embodiments where the ink composition does not comprise an inorganic pigment and does not comprising glass frit.
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 9-10, 13-18, 25 and 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Magdassi et al (US 2008/0210122 A1) 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 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]) 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 the marking containing particles having a size from 150 to 600 nm.
However, Nakasone discloses a marking containing particles having a size from 150 to 600 nm (ink comprising YBPO4 particles having an average particle diameter of 0.5 µm; pg. 1 of Nakasone translation).
It would have been obvious to one of ordinary skill in the art to modify the glass substrate of Magdassi to include the infrared absorbing material comprising YBPO4 particles of Nakasone in the ink of Magdassi 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 Nakasone translation).
Magdassi does not disclose the glass product with marking (printed ceramic substrate) comprising the ink composition 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 to include 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 Nakasone translation).
Regarding claim 10, Magdassi and Nakasone disclose the glass product with marking (printed ceramic substrate) of claim 9 as noted above.
Magdassi does not disclose the glass product with marking comprising the particles being crystals.
However, Nakasone discloses a marking comprising the particles being crystals (ink comprising YBPO4 particles; pg. 1 of Nakasone translation).
The YBPO4 particles have a crystalline structure.
It would have been obvious to one of ordinary skill in the art to modify the glass substrate of Magdassi to include the infrared absorbing material comprising YBPO4 particles of Nakasone in the ink of Magdassi 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 Nakasone translation).
Regarding claim 13, Magdassi and Nakasone discloses the glass product with marking of claim 9 as noted above.
Magdassi and Nakasone do not disclose the printed ceramic substrate comprising the marking being invisible to the naked eye in daylight.
However, Nakasone discloses a marking being invisible to the naked eye in daylight (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 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 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 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 and Nakasone disclose the average size of the YBPO4 particles being between 0.50 µm and infrared-absorbing particles of YBPO4; the marking of Magdassi 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 9 as noted above.
In regard to the marking being readable by UV light, since Magdassi and Nakasone disclose the average size of the YBPO4 particles being between 0.50 µm and infrared-absorbing particles of YBPO4; the marking of Magdassi and Nakasone would inherently be readable in blue light and UV light.
Regarding claim 16, Magdassi and Nakasone 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 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 Nakasone 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 non-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 Nakasone 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 25, Magdassi and Nakasone disclose the glass product with marking (printed ceramic substrate) of claim 9 as noted above.
In regard to the marking being tested using a D65 light source and having a color difference value in transmission between a portion of the glass substrate with marking and a portion of the glass substrate without marking of 0.5 or less, since Magdassi and Nakasone disclose the average size of the YBPO4 particles being between 0.50 µm and infrared-absorbing particles of YBPO4; the marking of Magdassi and Nakasone would inherently have a color difference value in transmission between a portion of the glass substrate with marking and a portion of the glass substrate without marking of 0.5 or less.
Regarding claim 27, Magdassi and Nakasone disclose the glass product with marking (printed ceramic substrate) of claim 9 as noted above.
Magdassi does not disclose the glass product with marking comprising the particles being crystals.
However, Nakasone discloses a marking comprising the particles being crystals (ink comprising YBPO4 particles; pg. 1 of Nakasone translation).
The YBPO4 particles have a crystalline structure.
It would have been obvious to one of ordinary skill in the art to modify the glass substrate of Magdassi to include the infrared absorbing material comprising YBPO4 particles of Nakasone in the ink of Magdassi 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 Nakasone translation).
Nakasone does not disclose the glass product with marking comprising the particles being crystals present at a density of from 60 to 100 crystals per 10 µm2 in the marking.
However, it would have been obvious to adjust the crystal density of the YBPO4 particles of Nakasone to be from 60 to 100 crystals per 10 µm2 because doing so provides a material which absorbs infrared rays but no visible rays resulting in an improved transparent detection mark (pg. 3 of Nakasone translation).
Regarding claim 28, Magdassi and Nakasone disclose the glass product with marking (printed ceramic substrate) of claim 9 as noted above.
In regard to the marking being tested using a D65 light source and having a color difference value in transmission between a portion of the glass substrate with marking and a portion of the glass substrate without marking of 0.85 to 3, since Magdassi and Nakasone disclose the average size of the YBPO4 particles being between 0.50 µm and infrared-absorbing particles of YBPO4; the marking of Magdassi and Nakasone would inherently have a color difference value in transmission between a portion of the glass substrate with marking and a portion of the glass substrate without marking of 0.85 to 3.
Regarding claim 29, Magdassi and Nakasone disclose the glass product with marking (printed ceramic substrate) of claim 9 as noted above and Magdassi disclose the glass product with marking comprising the glass substrate being a vehicle glass (vehicle windshield; paragraph [0036]) and having a marking not visible under ambient indoor or outdoor lighting conditions (non-colored pattern; paragraph [0071]).
Allowable Subject Matter
Claim 24 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 24 of the present invention is drawn to the glass product with marking made with an ink composition comprising a halogen-containing compound and a phosphate-based compound and wherein a content of phosphorus element in the phosphate based compound is from 0.05 to 4 wt%.
The closest prior art Magdassi and Nakasone do not disclose the glass product with marking made with an ink composition comprising a halogen-containing compound and a phosphate-based compound and wherein a content of phosphorus element in the phosphate based compound is from 0.05 to 4 wt%.
Response to Arguments
Applicant's arguments filed 4/13/2026 have been fully considered but they are not persuasive.
Applicants argue that Magdassi, Wu and Nakasone do not disclose or suggest the marking containing particles having a size from 150 to 600 nm and wherein the marking is invisible to the naked eye in transmission.
This argument is not persuasive as Magdassi and Nakasone disclose the marking containing particles having a size from 150 to 600 nm and wherein the marking is invisible to the naked eye in transmission.
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 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785
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