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 .
Detailed Action
Response to Arguments
Applicant's arguments filed 07/11/2025 have been fully considered but they are not persuasive.
Applicant argues that feature A is novel. It has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause, Kropa v. Robie, 88 USPQ 478. Moreover, when the preamble states a purpose or intended use for the invention, it is not limiting; it merely indicates the environment in which the claimed invention operates, Loctite Corp. V. Ultraseal Ltd., 228 USPQ 90, 94.
Applicant argues that feature C is novel. Feature C is read on in the 103 rejection by Hioki et al (WO-2012132472-A1) and In re Japikse, 181 F.2d 1019,86 USPQ 70 (CCPA 1950). See page 7 of Non-Final Rejection dated 06/04/2025 of related application 17/778,255 (shares Applicant and Inventors).
Applicant argues that feature E is novel. MPEP 2114 states "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Feature E is the operating temperature of the apparatus.
Applicant argues that feature D is novel because the Examiner admits that the Jia reference does not the dimensions of the structure. The Examiner has successfully mapped the required structural elements but not the dimensions of the structural element. MPEP 2144.04 states legal precedent as source of supporting rationale wherein (IV)(A): In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See page 9 of Non-Final Rejection dated 06/04/2025 of related application 17/778,255. Furthermore, In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the diameter and length of the structures through routine experimentation in the absence of a showing of criticality. Applicant argues that the Examiner did not set forth a prima facie case because the diameter and length of the structural elements were not stated. The Examiner respectfully disagrees. Jia teaches of the diameter and length of the clarification tank in Examples 7-14 for a 4 ton/day flow rate. Scaling the dimensions/modifying the relative dimensions is obvious to a skilled artisan as well as routine experimentation.
Applicant argues that feature B is not taught by Jia. Feature B is read on in the 103 rejection by Fujimoto et al (WO-2015099133-A1). Applicant further attacks the deficiencies of the Fujimoto reference for not teaching feature C and E. Pointing out the differences between the claimed invention and each individual reference is not sufficient to overcome a rejection based on a combination of the references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 208 USPQ871 (CCPA 1981); In re Merck & Co., Inc., 231 USPQ375 (Fed. Cir. 1986).
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 does not show mark-ups for all amendments such as the preamble and incorporated previous claim 5
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.
Claim(s) 1 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al (CN-1948196-A, English translation provided by Espacenet), and further in view of Fujimoto et al (WO-2015099133-A1, English translation provided by Espacenet), Hioki et al (WO-2012132472-A1, English translation provided by Espacenet), and Tomamoto et al (US-20090282872-A1).
Regarding claim 1, Jia teaches a large-flow precious metal channel (Line 32) comprising a molten glass mixed-flow stirring section (Line 99), wherein at least two molten glass heating and clarifying sections connected in parallel at one end of the molten glass mixed-flow stirring section and the other end of which is communicated with a liquid supply tank (Line 77).
The instant claim states in the preamble that the apparatus is configured to process a large-flow molten glass of more than 20 tons/day. It has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause, Kropa v. Robie, 88 USPQ 478. Moreover, when the preamble states a purpose or intended use for the invention, it is not limiting; it merely indicates the environment in which the claimed invention operates, Loctite Corp. V. Ultraseal Ltd., 228 USPQ 90, 94. Jia teaches in examples 7-14 the structural dimensions to achieve 4 tons/day molten glass output. See MPEP 2144.04(IV)(A), In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) Mere scaling up or down of a prior art process capable of being scaled up or down would not establish patentability in a claim to an old process so scaled.
Jia teaches after the clarification section; the molten glass is cooled for the purpose of extending the working life of the clarification section (Line 292-294). Jia does not expressly teach the heating section and clarifying section to be in communication with a cooling channel. In the same field of endeavor, Fujimoto teaches of heating channel (transfer pipe 43a) sequentially communicated to a clarifying tank (fining pipe 41) that is sequentially communicated with a cooling channel (transfer pipe 43b, Line 190) prior to a mixed-flow stirring section (100). It would be obvious to one of ordinary skill in the art at the time of invention to add a cooling channel sequentially following the heating/clarifying and prior to the stirring section to extend the working life of the previous metal.
Jia teaches the molten glass heating, clarifying and cooling sections merge to at least one mixed-flow stirring section for further homogenization (Line 112-114). Jia does not expressly teach the mixed-flow stirring section comprise a confluence channel with a set of spoilers. In the same field of endeavor, Hioki teaches of a metal pipe for transporting/flowing molten glass with a set of spoilers (Line 239-247) distributed in a staggered manner that creates a serpentine flow channel by the division of the set of spoilers (Fig. 4a). It would be obvious to one of ordinary skill in the art at the time of invention to incorporate a confluence channel comprising a set of spoilers such as that which is taught by Hioki as motivated by Jia’s need to further homogenize the molten glass. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Jia teaches the glass stirring tanks are connected to a flow control part, reading on a liquid outlet of molten glass stirring tank located close to the liquid supply tank (Fig. 3 flow control part 45). Jia teaches of two molten glass stirring tanks (mixing/stirring zone 34-1 and 34-2), reading on at least one molten glass stirring tank. Jia does not expressly teach three molten glass stirring tanks. In the same field of endeavor, Tomamoto teaches of a plurality of molten glass stirring tanks sequentially communicated [0038] (Fig. 4/5). Tomamoto further teaches that the stir direction of each glass tank is the opposite to that of the glass flow direction [0044]: for a situation like Fig. 9 wherein the glass flows left-to-right and alternates upper-lower inlet-outlets, the stirring direction is different. It would be obvious to one of ordinary skill in the art at the time of invention to use three (or more) molten glass stirring tanks to sufficiently stir the molten glass and prevent quality degradation and deter yield degradation when the flow amount is increased [0031]. The Examiner has provided a prima facie case of obviousness that the prior art apparatus teaches all the structural limitation of the claim. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). See MPEP 2114(II).
Jia teaches the diameter of the clarifying tank to be 200-30 mm and a length of 2500-4000 mm (Line 36-37). Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the clarifying tank diameter and length that corresponds to the claimed range. In re Malagari, 184 USPQ 549 (CCPA 1974). Jia does not expressly teach the diameter and length of the liquid supply tank. Modified Jia incorporates the heating channel and cooling channel of Fujimoto and the confluence channel of Hioki which do not expressly state the nominal diameter or length of the heating channel, cooling channel, and confluence channel. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the diameter and length of the structures through routine experimentation in the absence of a showing of criticality. Additionally, In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Modified Jia teaches a heating channel, clarifying tank, cooling channel, and liquid supply tank (see rejection of the independent claim 1). The temperature of the heating channel, clarifying tank, cooling channel, and liquid supply tank of modified Jia cover the manner of operating the device which does not differentiate apparatus claim from the prior art. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987), See MPEP 2114(II).
Regarding the stirring speed of the stirring tank, this is a limitation of the manner of operating the device which does not differentiate the apparatus claim from the prior art. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987), See MPEP 2114(II).
Regarding claim 6, depending from claim 1, Jia teaches their heating/clarifying channel to be made of a platinum alloy (Line 167-168). Fujimoto teaches the heating channel, clarifying tank, cooling channel to be made of platinum rhodium alloy or platinum iridium alloy (Line 181-184). Modified Jia’s confluence channel incorporates the spoilers from the clarifying tank of Hioki teaches of using a platinum or platinum alloy material (Line 173-174, 242-243). While the material of the liquid supply tank is not expressly disclosed, it would be obvious to one of ordinary skill in the art at the time of invention to construct the liquid supply tank out of platinum rhodium/iridium alloy or platinum as known suitable material to handle molten glass and to electrically power the platinum to a suitable temperature to maintain the molten glass in a liquid state.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CN-10556544-A teaches under broadest reasonable interpretation stirring direction in up or down direction being modified between adjacent tanks
US-20100199720-A1 teaches adjacent stirring tank setup for processing 50 tons of molten glass per day
US-5862169-A teaches bulking melting glass and refining in separate channels for 1000 tons of molten glass per day
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 STEVEN S LEE whose telephone number is (571)272-2645. The examiner can normally be reached on 9am - 5pm Mon-Thurs.
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, Alison Hindenlang can be reached on 571-270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEVEN S LEE/Examiner, Art Unit 4181
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741