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 .
In view of the Appeal Brief filed on 12/30/2025, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
Response to Arguments
Applicant's arguments filed 11/11/2024 have been fully considered but they are partially persuasive.
The argument regarding the 112a written description rejection is not persuasive. The instant specification teaches [0016] NaOH is added to raise the pH of the solution; [0018] recites the aqueous ion exchange solution may be 6.0 to 10.0 and the elevating of pH through the addition of OH- anions; [0028] requires the hydroxide-containing salt for the pH of between 8 and 10. From the [0018] excerpt, the aqueous ion exchange solution can be acidic but can be made in the preferred range by the introduction of OH anions. There is no evidence or support of other OH- anion components other than the nominal addition of NaOH in the aqueous ion solution as supported by [0028-29].
The arguments regarding the Jensen reference are persuasive. A new rejection is included in this Office Action.
The arguments that the ion exchange references that teach generic glass plates/sheets are inapplicable is not persuasive. The rejection is based on the primary reference Watanabe that already establishes the glass container limitation. The introduction of glass ion exchange references for glass products besides glass containers is allowed because of the generic chemical processing of the material. Should the claims reflect shape/container specific differences in the instantly claimed method, the rejection would require references that work on glass containers specifically. Thus, the Kurachi and Amin references remain valid. The specification is clear that the caustic solution is an optional step [0028]. The instant specification has no motivation stated for the caustic solution step. There may be a resulting strength boost [0029] but there’s no explanation thereof. Asking any artisan, cleaning the glass prior to ion exchange would improve resulting strength, which Kurachi and Amin are motivated to clean the glass with a caustic solution, prior to ion exchange.
Furthermore, there is no specific definition of a caustic solution within the instant specification. Depending on the artisan, caustic solution can be a highly alkali/alkaline solution that can be either acidic or basic, a basic solution, or limited to only a NaOH solution. Thus, the application of the caustic solution is given broadest reasonable interpretation. To compact prosecution, the Examiner rewrites the rejection to use a glass container reference which is not to be construed as admitting error in the prior Office Action.
Claim Interpretation
Claim 1 recites “a heated environment” which is being treated under broadest reasonable interpretation.
Claim 10 and 18 recite “a caustic solution”. The specification has not defined the material composition of said “caustic solution” and is thus given broadest reasonable interpretation.
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 4 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. Claim 4 recite the term “consists of… optionally a hydroxide-containing salt” while claim 1 requires the aqueous ion exchange solution having a pH of 8 or greater. [0018] of the instant specification is explicit that the pH limitation in claim 1 requires the hydroxide-containing salt. Claim 4’s recitation uses the words “consists of KNO3, KCl, and water”; it is not evident in the specification what is the pH for the aqueous solution consisting of KNO3, KCl, and water. Because of [0018], the pH of the solution is determined by the OH- anion from the hydroxide-containing salt. As such, claim 4 must include the hydroxide-containing salt instead of the hydroxide-containing salt being only optional.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5 and 7-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe (US-4206253-A) as evidenced by Fujiwara et al (US-20200055773-A1).
Regarding claim 1, Watanabe teaches of an aqueous ion exchange strengthening method for strengthening a glass container (abstract) comprising: (a) exposing a surface of a glass container to an aqueous ion exchange solution (Col. 4 Line 25-28) that comprises water and an alkali metal salt to coat the surface of the glass container with a coating of the aqueous ion exchange solution (Col. 5 Line 28-31; Col. 4 Line 18-21), the alkali metal of the alkali metal salt being potassium (Col. 5 Line 40); and (b) heat treating the surface of the glass container in a heated environment at a temperature that falls within 125-600°C (Col. 5 Line 60-61; Col. 9 Line 30-33).
Watanabe teaches that the aqueous solution can be derived from different potassium salts (Col. 4 Line 55-61) wherein the potassium salt is dissolved in water to prepare the aqueous ion exchange solution (Col. 5 Line 28-34). Watanabe does not expressly teach the pH of the aqueous ion exchange solution. In related ion exchange strengthening of glass art, Fujiwara teaches of spraying an aqueous solution to glass [0134] wherein potassium salt dissolved as an aqueous solution has a pH that overlaps the instantly claimed range [0133, 146, 159]. It would be anticipated by one of ordinary skill in the art before the effective filing date of the claimed invention that the aqueous ion exchange solution of Watanabe inherently has a pH that falls within the instantly claimed range as evidenced by Fujiwara.
Because Watanabe teaches the potassium salt is dissolved in water and Fujiwara teaches the pH of the potassium salt dissolved in water has a pH that falls within the instantly claimed range, the aqueous ion exchange solution of Watanabe transitively has a pH that falls within the instantly claimed range. Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Regarding claim 2, depending from claim 1, Watanabe teaches that the mass fraction of the alkali metal salt is 10-80% by total mass of the dried coating (Col. 4 Line 37-40). Watanabe does not expressly teach the mass fraction of the alkali metal salt by mass of the aqueous solution. 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 relevant process parameters through routine experimentation in the absence of a showing of criticality.
Regarding claim 3, depending from claim 1, Watanabe teaches the aqueous ion exchange solution comprises at least one of potassium nitrate or potassium chloride (Col. 9 Line 20).
Regarding claim 4, depending from claim 1, Watanabe teaches the aqueous ion exchange solution consists of potassium nitrate, potassium chloride, and water (Col. 9 Line 20). Watanabe teaches potassium hydroxide is an alternative if the artisan does not mind an opaque surface (Col. 4 Line 67-Col. 5 Line 2); Jensen controls the etch to not be so overly aggressive [0026] by adding hydroxide-containing salts [0046].
Regarding claim 5, depending from claim 4, Watanabe teaches exposing the surface of the glass container to the aqueous ion exchange solution comprises spraying the ion exchange solution onto the surface of the container (Col. 9 Line 26-30).
Regarding claim 7, depending from claim 1, Watanabe teaches that the aqueous solution can be alkaline/caustic (Col. 2 Line 6-9; Col. 4 Line 67-Col. 5 Line 2: potassium hydroxide) should the artisan want to etch the glass for an opaque surface.
Regarding claim 8, depending from claim 1, Watanabe teaches of exposing the surface of the glass container to the aqueous ion exchange solution at a temperature between 45-130°C for 30 minutes (Col. 9 Line 26-31), wherein the temperature overlaps and the time period is anticipated by the instantly claimed ranged.
Regarding claim 9, depending from claim 1, Watanabe teaches the step of heat treating the glass container in a heated environment for 60 minutes (Col. 9 Line 32-34), which falls within the instantly claimed range.
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) 10-12, 14-18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (US-4206253-A) and further in view of Bookbinder et al (US-20160145150-A1).
Regarding claim 10, Watanabe teaches of an aqueous ion exchange strengthening method for strengthening a glass container (abstract) comprising: (a) exposing a surface of a glass container to an aqueous ion exchange solution (Col. 4 Line 25-28) at a temperature between 45-130°C for 30 minutes (Col. 9 Line 26-31) to coat the surface of the glass container with a coating of the aqueous ion exchange solution (Col. 5 Line 28-39; Col. 4 Line 18-21) that comprises water and an alkali metal salt, the alkali metal salt being potassium nitrate and potassium chloride and mixtures thereof (Col. 5 Line 40-44); (b) heat treating the surface of the glass container in a heated environment at a temperature that falls within 150-500°C (below the strain point; Col. 5 Line 58-65; Col. 8 Line 22-43); and (c) removing the glass container from the heated environment (Col. 9 Line 36; cooled and washed).
Watanabe does not expressly teach of exposing the surface of the glass container to a caustic solution prior to the step of exposing the surface of the glass container to the aqueous ion exchange solution. In related ion exchange of glass art, Bookbinder teaches of treating glass containers with a caustic solution prior to ion exchange [0034-37, 47-48] (aqueous solution comprising alkali hydroxides reading on caustic solution). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to etch the glass container with a caustic solution to remove surface flaws that act as stress concentration sites of the glass container that would be susceptible to crack initiation [0041].
Regarding claim 11-12, depending from claim 10, Watanabe teaches of mass ratio of potassium nitrate to potassium chloride of 1:2, 1:1, 1:3, 1:5, and 3:1 (Table 1 Example 1-4 and Control 4) which overlap the instantly claimed ranges.
Regarding claim 14, depending from claim 10, Watanabe teaches of exposing the surface of the glass container to the aqueous ion exchange solution at a temperature between 45-130°C for 30 minutes (Col. 9 Line 26-31), wherein the temperature overlaps and the time period is anticipated by the instantly claimed ranged.
Regarding claim 15, depending from claim 10, Watanabe teaches the step of heat treating the glass container in a heated environment for 60 minutes (Col. 9 Line 32-34), which falls within the instantly claimed range.
Regarding claim 16, depending from claim 10, Watanabe teaches that the aqueous solution can be alkaline/caustic (Col. 2 Line 6-9; Col. 4 Line 67-Col. 5 Line 2: potassium hydroxide) should the artisan want to etch the glass for an opaque surface.
Regarding claim 17, depending from claim 10, Watanabe teaches the aqueous ion exchange solution consists of potassium nitrate, potassium chloride, and water (Col. 9 Line 20) wherein potassium hydroxide is an alternative if the artisan does not mind an opaque surface (Col. 4 Line 67-Col. 5 Line 2) and spraying the ion exchange solution onto the surface of the container (Col. 9 Line 26-30).
Regarding claim 18, Watanabe teaches of an aqueous ion exchange strengthening method for strengthening a glass container (abstract) comprising: (a) spraying a surface of a glass container to an aqueous ion exchange solution (Col. 4 Line 25-28; Col. 9 Line 26-28) at a temperature between 45-130°C for 30 minutes (Col. 9 Line 26-31) to coat the surface of the glass container with a coating of the aqueous ion exchange solution (Col. 5 Line 28-39; Col. 4 Line 18-21) that comprises water and an alkali metal salt, the alkali metal salt being potassium nitrate and potassium chloride and mixtures thereof (Col. 5 Line 40-44); (b) heat treating the surface of the glass container in a heated environment at a temperature that falls within 150-500°C (below the strain point; Col. 5 Line 58-65; Col. 8 Line 22-43).
Watanabe does not expressly teach of exposing the surface of the glass container to a caustic solution prior to the step of exposing the surface of the glass container to the aqueous ion exchange solution. In related ion exchange of glass art, Bookbinder teaches of treating glass containers with a caustic solution prior to ion exchange [0034-37, 47-48] (aqueous solution comprising alkali hydroxides reading on caustic solution). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to etch the glass container with a caustic solution to remove surface flaws that act as stress concentration sites of the glass container that would be susceptible to crack initiation [0041].
Regarding claim 20, depending from claim 18, Watanabe teaches of mass ratio of potassium nitrate to potassium chloride of 1:2, 1:1, 1:3, 1:5, and 3:1 (Table 1 Example 1-4 and Control 4) which overlap the instantly claimed ranges.
Claim(s) 13 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (US-4206253-A) and Bookbinder et al (US-20160145150-A1) as applied to claim 10 and 18 above, and as evidenced by Fujiwara et al (US-20200055773-A1).
Regarding claim 13, depending from claim 10, Watanabe teaches that the aqueous solution can be derived from different potassium salts (Col. 4 Line 55-61) wherein the potassium salt is dissolved in water to prepare the aqueous ion exchange solution (Col. 5 Line 28-34). Watanabe does not expressly teach the pH of the aqueous ion exchange solution. In related ion exchange strengthening of glass art, Fujiwara teaches of spraying an aqueous solution to glass [0134] wherein potassium salt dissolved as an aqueous solution has a pH that overlaps the instantly claimed range [0133, 146, 159]. It would be anticipated by one of ordinary skill in the art before the effective filing date of the claimed invention that the aqueous ion exchange solution of Watanabe inherently has a pH that falls within the instantly claimed range as evidenced by Fujiwara.
Because Watanabe teaches the potassium salt is dissolved in water and Fujiwara teaches the pH of the potassium salt dissolved in water has a pH that falls within the instantly claimed range, the aqueous ion exchange solution of Watanabe transitively has a pH that falls within the instantly claimed range. Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Regarding claim 19, depending from claim 18, Watanabe teaches that the aqueous solution can be alkaline/caustic (Col. 2 Line 6-9; Col. 4 Line 67-Col. 5 Line 2: potassium hydroxide) should the artisan want to etch the glass for an opaque surface. Watanabe does not expressly teach the aqueous ion exchange solution have a pH of 8 or greater. In the same field of endeavor, Bookbinder teaches of etching/cleaning the glass article in a high pH/caustic solution [0034-35]. Watanabe teaches that the aqueous solution can be derived from different potassium salts (Col. 4 Line 55-61) wherein the potassium salt is dissolved in water to prepare the aqueous ion exchange solution (Col. 5 Line 28-34). Watanabe does not expressly teach the pH of the aqueous ion exchange solution. In related ion exchange strengthening of glass art, Fujiwara teaches of spraying an aqueous solution to glass [0134] wherein potassium salt dissolved as an aqueous solution has a pH that overlaps the instantly claimed range [0133, 146, 159]. It would be anticipated by one of ordinary skill in the art before the effective filing date of the claimed invention that the aqueous ion exchange solution of Watanabe inherently has a pH that falls within the instantly claimed range as evidenced by Fujiwara.
Because Watanabe teaches the potassium salt is dissolved in water and Fujiwara teaches the pH of the potassium salt dissolved in water has a pH that falls within the instantly claimed range, the aqueous ion exchange solution of Watanabe transitively has a pH that falls within the instantly claimed range. Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-4021218-A can be used in substitution of the primary reference, also teaching the caustic solution
US-20140154438-A1 can be used as a primary reference that teaches the mass fraction limitation of claim 2
US-3473906-A, US-3844754-A, US-4273832-A teaches of annealing potassium salt coated glass bottle within the instantly claimed ion exchange temperature
US-4434191-A teaches of exposing a caustic solution to glass for reduction of reflection followed by ion exchange in molten salt
US-4872896-A teaches of coating glass with a potassium salt and microwave radiation heat treating the glass container to ion exchange strengthen the glass
US-20200055773-A1 teaches of an aqueous solution with pH above 7.0 with potassium hydroxide prior to ion exchange treatment
US-5654057-A teaches caustic/hydroxide-containing coating of glass prior to thermal treatment less warping in the final product
US-20170183259-A1 teaches spray an aqueous potassium salt solution, such as KOH, on glass to be evaporated and heat treated
JP-2001278640-A teaches a high pH solution is preferred for aqueous ion exchange to prevent the smaller ions to exchange back into the glass matrix
US-3529946-A teaches of low pH aqueous ion exchange solution for glass
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.
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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.
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/STEVEN S LEE/Examiner, Art Unit 1741