DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al. WO 2020/073254.
Regarding claim 1, Fan discloses a glass-ceramic article that is a large glass-ceramic sheet and can be of any size, which corresponds to a tile or slab of ceramic material, see page 4 lines 30-35. While the reference does not specifically disclose the claimed length and width, changes in size are generally recognized as being within the level of ordinary skill in the art; see MPEP 2144.04 IV. Additionally, the reference discloses the glass-ceramic article comprises the following components (in wt. %): 40-85% SiO2, 0-40% Al2O3, 0-18% CaO, 0-45% MgO and 0-15% ZrO2, which overlap the claimed ranges, see page 10 lines 19-31. Note that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie- case of obviousness exists; see MPEP 2144.05 I.
Claim 1 defines the product by how the product was made, fired. Thus claim 1 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure with a ceramic material. The reference suggests such a product.
Regarding claim 2, the reference discloses the article comprises 0-15 wt% ZrO2, which overlaps the claimed range; see page 10 lines 19-31 and MPEP 2144.05 I.
Regarding claim 3, the reference discloses 0-18 wt% CaO and 0-45 wt% MgO, which renders obvious the claimed sum; see page 10 lines 19-31 and MPEP 2144.05 I.
Regarding claim 4, the reference discloses the glass-ceramic article comprises the following components (in wt. %): 40-85% SiO2, 0-40% Al2O3, 0-18% CaO, 0-45% MgO and 0-15% ZrO2, which overlap the claimed ranges; see page 10 lines 19-31 and MPEP 2144.05 I.
Regarding claim 5, the reference discloses the article comprises (in wt%): 0-20% Na2O, 0-20% K2O, 0-3% Fe2O3 and 0-18% TiO2, which overlap the claimed ranges; see page 10 lines 19-31 and MPEP 2144.05 I.
Regarding claim 6, the reference discloses the glass-ceramic article comprises the following components (in wt. %): 40-85% SiO2, 0-40% Al2O3, 0-18% CaO, 0-45% MgO, 0-15% ZrO2, 0-3% Fe2O3 and 0-18% TiO2, which overlap the claimed ranges; see page 10 lines 19-31 and MPEP 2144.05 I.
Regarding claim 7, the reference discloses the especially preferred crystal phase as leucite, nepheline, β-spodumene, lithium disilicate, lithium metasilicate, magnesium dititanate, which is considered to render obvious less than 10 wt% mullite, see page 10 lines 11-17. Further note that the examples do not include mullite as the crystalline phase, see Tables 3 and 4.
Regarding claim 8, while the reference does not specifically disclose the claimed amount of amorphous phase, the reference does disclose controlling the volume of the crystalline phase in order to have a central portion with 0% crystalline phase and outer portions 0.1 to 99.9 vol%, see page 17 lines 20-34. Additionally, the reference discloses that such articles have improved anti-scratch properties due to high hardness of the glass ceramic on the surface, see page 17 lines 20-34. Based on the low volume percentage of crystalline material (i.e. 0.1% in the outer regions and 0% in the central region), it is expected the glass-ceramic of Fan will have an amorphous phase of at least 40 wt%. Alternatively, it would have been obvious to one of ordinary skill in the art at the time of the invention to control the amount of crystalline phase in the glass-ceramic article in order to provide anti-scratch properties and mechanical strength, see page 17; see also MPEP 2144.05 II: discovering the optimum or workable ranges involves only routine skill in the art absent a showing of criticality.
Regarding claim 9, while the reference does not specifically disclose the claimed length and width, changes in size are generally recognized as being within the level of ordinary skill in the art; see MPEP 2144.04 IV.
Claims 1 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Muehlke et al. (US 2016/0031736).
Regarding claim 1, Muehlke discloses providing a sheet-like starting glass, heating the starting glass, and converting it into a glass ceramic by ceramization, which corresponds to a tile or slab of ceramic material [0020]. While the reference does not specifically disclose the claimed length and width, changes in size are generally recognized as being within the level of ordinary skill in the art; see MPEP 2144.04 IV. Additionally, the reference discloses the glass ceramic article has a composition in terms of wt% of 60-70% SiO2, 15-25% Al2O3, 0-5% CaO + SrO + BaO, 0-3% MgO and 0-5% ZrO2, which overlap the claimed ranges, [0030-0032]. Note that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie- case of obviousness exists; see MPEP 2144.05 I.
Claim 1 defines the product by how the product was made, fired. Thus claim 1 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure with a ceramic material. The reference suggests such a product.
Regarding claim 10, the reference discloses the glass ceramic has a decoration made from a printing ink [0054].
Claims 1, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2017/0233287).
Li discloses a glass ceramic comprising, in terms of weight %: SiO2 40-75; Al2O3 10-30; B2O3 0-20; Sum of Li2O + Na2O + K2O 4-30; Sum of MgO + CaO + SrO + BaO + ZnO 0-15; Sum of TiO2 + ZrO2 0-15; and P2O5 0-10, which overlaps the claimed ranges, see abstract and [0145 & 0155]. Note that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie- case of obviousness exists; see MPEP 2144.05 I. The glass or glass ceramic substrate can be used as windows, which corresponds to a slab [0176]. While the reference does not specifically disclose the claimed length and width, the reference does disclose the windows can be any possible shape and size [0201]. A change in size is generally recognized as being within the level of ordinary skill in the art, absent unexpected results; see MPEP 2144.05 IV.
Claim 1 defines the product by how the product was made, fired. Thus claim 1 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure with a ceramic material. The reference suggests such a product.
Regarding claims 16 and 17, the reference discloses the thickness of the glass ceramic as less than 20 mm, which overlaps the claimed range [0162]; see MPEP 2144.05 I.
Response to Arguments
Applicant's arguments filed November 14, 2025 have been fully considered but they are not persuasive.
Regarding the rejections over Fan and Muehlke, Applicant argues that the ranges disclosed in the references include 0%, and as such, one of ordinary skill in the art would need to choose whether to even include the claimed components. For example, Applicant notes that Muehlke does not expressly disclose a range of concentrations for CaO. According to Applicant, the Office has not made any showing that one of ordinary skill in the art would have been motivated to include the claimed amount of CaO. Additionally, Applicant argues that the tiles made with the composition of the present claims solve problems associated with known large format tiles and slabs. Applicant notes that the inventors surprisingly found that large dimension tiles or slabs with the claimed chemical compositions can be cut more efficiently, have significantly reduced density and decreased shrinkage upon firing. These problems were not contemplated or solved by the prior art. As such, Applicant requests withdrawal of the present rejections. Examiner respectfully disagrees.
As discussed above and previously, overlapping ranges are considered a prima facie case of obviousness, absent a showing of criticality or a showing that the prior art teaches away from the claimed range; see MPEP 2144.05. In order to establish criticality (unexpected results over a claimed range), Applicant should compare a sufficient number of tests both inside and outside the claimed range, which Applicant has not done; see MPEP 716.02(d) II. Further, evidence of unexpected results must also compare the claimed invention with the closest prior art; see MPEP 716.02(e) III.
In the instant case, the disclosed ranges overlap the claimed ranges, see above discussion. Additionally, amount of CaO disclosed in Muehlke is from 0 to 5 based on the total amount of CaO, SrO and MgO, see above discussion. To the extent Applicant argues unexpected results, Examiner notes the examples provided Applicant’s specification are for ceramic compositions containing specific metal oxides (e.g. Na2O, K2O, TiO2 and Fe2O3), with specific crystalline phases and for a ceramic made using a specific method, all of which are not claimed. Given the claims do not include these limitations, Applicant’s argument of criticality based on the inventive examples in the specification is not commensurate in scope with the claims; see MPEP 716.02(d).
Further note, that while there is data for a content of CaO below the claimed range, Applicant has not provided any data for a content of CaO above the claimed range. Additionally, Applicant has not provided a sufficient amount of data for the entire claimed range. Similarly, Applicant has not provided a sufficient amount of data below the claimed range and for the entire claimed range of ZrO2. Given Applicant has failed to provide a sufficient number of tests both inside and outside the claimed range, failed to provide unexpected results commensurate in scope with the claims and failed to compare the claimed invention to the closest prior art, Examiner respectfully maintains the rejection.
For the above reasons, the rejections under 35 U.S.C. 103 are respectfully maintained.
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.
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/LAURA A AUER/ Primary Examiner, Art Unit 1783