DETAILED ACTION
This is an Office action based on application number 17/950,281 filed 22 September 2022, which is a continuation of application number 14/014,996 (now abandoned) filed 30 August 2013. Claims 27-37 and 39-46 are pending. Claims 43-46 are withdrawn due to Applicant’s election. Claims 1-26, and 38 are canceled.
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 .
Application Status
In view of the appeal brief filed on 17 April 2026, 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:
/Alicia Chevalier/ Supervisory Patent Examiner, Art Unit 1788
Withdrawn Rejections
The prior art rejections, made of record in the previous Office action, are withdrawn due to Applicant’s arguments.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 27-29 and 34-42 are rejected under 35 U.S.C. 103 as being unpatentable over Devaux et al. (WIPO International Publication No. WO 2012/004337 A1 with citations taken from English language equivalent US Patent Application Publication No. US 2013/0115445 A1) (Devaux).
Regarding instant claims 27, 29, 35, and 39-41:
Devaux discloses an article comprising at least one glass sheet and an enamel-based coating on at least one of the surfaces of said glass sheet (paragraphs [0009-0012]).
Devaux further discloses that the article is capable of undergoing thermal treatment (paragraph [0013]).
Such an article meets the claimed heat treatable intermediate product consisting of a glass substrate and a single-layer coating on a major surface of the glass substrate.
Devaux further discloses that the enamel-based coating comprises a powder formed from glass frit and inorganic pigments suspended in n organic medium (paragraph [0024]).
Devaux further discloses that the enamel-based coating does not contain more than 20% by weight of organic materials (paragraph [0026]). The organic content range of Devaux includes the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Devaux further discloses that the enamel-based coating has a thickness between 20 and 100 microns, which includes the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Devaux further discloses that the coated glass sheets are put into storage (paragraph [0088]).
Devaux further discloses that the article is thermally treated at temperatures not lower than 600° C (paragraph [0062]).
Devaux teaches that thermal treatment toughens the glass (paragraph [0001]).
While Devaux discloses the claimed storage and heating, the claimed heating temperature and duration thereof are considered as intended uses and effects of the claimed structure. As the structure of the prior art obviates the claimed structure, one of ordinary skill in the art would conclude that the structure of the prior art is capable of performing the intended uses and effects of the claims.
Regarding instant claim 34 and 36:
Devaux further discloses that the organic material in the enamel-based coating comprises at least one compound inclusive of polyols, melamines, and reaction products thereof (paragraph [0029]), which meets the claimed polyolmelamine polymer.
Regarding instant claim 36:
Devaux further discloses that the enamelled composition comprises one or more solvents and a polymer matrix (paragraph [0040]).
Regarding instant claim 37:
Devaux does not explicitly disclose the product has a 3B durability as measured by cross hatch tape pull.
However, one of ordinary skill in the art would readily conclude that the scope of the prior art encompasses an embodiment that is substantially identical to that of the claims (i.e., a glass substrate comprising a coating of an organic material, a pigment, a frit), and such an embodiment must have the same properties (i.e., the same durability).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claim 42:
Devaux does not explicitly disclose the durability of the tempered coated article.
However, one of ordinary skill in the art would readily conclude that the scope of the prior art encompasses an embodiment wherein the tempered coated glass is substantially identical to that of the claims, and that such an embodiment must have the same properties (i.e., the same durability).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Devaux in view of Niemann et al. (US Patent No. 6,531,181 B1).
Regarding instant claim 30:
Devaux discloses the coated glass structure comprising a frit as cited above.
Devaux does not explicitly disclose a zinc-based frit.
However, Niemann discloses a coating for a glass substrate comprising at least one glass frit and a medium consisting of one or more polymers and solvents (col. 2, lines 37-50). Niemann further discloses that the glass frit is selected from zinc borosilicate frits from the standpoint of excellent adhesion (col. 3, line 60).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the zinc borosilicate frit of Nieman in the structure of Devaux. The motivation for doing so would have been that zinc borosilicate frits have excellent adhesion.
Therefore, it would have been obvious to combine Niemann with Devaux to obtain the invention as specified by the claim.
Claim 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deveaux in view of Reinherz et al. (US Patent No. 4,822,396) (Reinherz).
Regarding instant claim 31:
Devaux discloses the coated glass structure comprising a frit as cited above.
Devaux does not explicitly disclose a bismuth-based frit.
However, Reinherz discloses a glass enamel coated glass sheet, wherein the glass enamel composition comprises a glass frit system and a vehicle (Claim 1).
Reinherz further discloses that any conventional soft glass frit or frit mixtures inclusive of bismuth alkali borosilicate frits are usable in the composition (col. 2, lines 3-21).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art combination before him or her, to use the bismuth alkali borosilicate frit of Reinherz as the frit desired by Devaux. The motivation for doing so would have been that bismuth borosilicate frits are readily usable in enamel compositions for coating glass sheets. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Therefore, it would have been obvious to combine Reinherz with Devaux to obtain the invention as specified by the claim.
Claims 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Devaux in view of Chaumonot et al. (US Patent No. 5,141,798) (Chaumonot).
Regarding instant claims 32-33:
Devaux discloses the coated glass structure comprising inorganic pigments as cited above.
Devaux does not explicitly disclose the specific pigments comprising titanium dioxide, chromium oxide, or copper oxide
However, Chaumonot discloses enamel for glass panes (Title) comprising a glass frit and coloring pigments that impart desired coloration (col. 1, lines 39-42), wherein the oxides of chromium and copper are used as pigments for black color tones, and titanium oxide is used as a pigment for grey color tones (col. 1, lines 58-62).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the pigments of Chaumonot as the pigments in the coating of Devaux. The motivation for doing so would have been to tailor the enamel compositions to a desired color tone. Further, the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(A).
Therefore, it would have been obvious to combine Chaumonot with Devaux to obtain the invention as specified by the instant claim.
Claims 27, 29-31, 35, and 37-42 are rejected under 35 U.S.C. 103 as being unpatentable over Ruderer et al. (US Patent No. 5,306,674) (Ruderer).
Regarding instant claims 27, 29, 35 and 39-41:
Ruderer discloses a glass enamel comprising glass frit, pigment, and about 3% to about 40% vehicle (col. 4, lines 7-12).
Ruderer further discloses that the glass enamels are made by blending at least the glass frit with a conventional cold paste vehicle (e.g., a vehicle based on glycol ether acetate), UV curable vehicles, thermoplastic vehicles, hot melt vehicles, spray vehicles, and roll coat vehicles (col. 3, line 62 to col. 4, line 6). Said vehicle is construed to encompass an organic material.
The teaching of “about 3% to about 40% vehicle” inclusive of organic materials includes the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Ruderer further discloses that the glass enamel is applied onto glass substrates and then fired to produce an enamel finish on the surface of the substrate (col. 4, lines 21-25).
Ruderer further discloses an example wherein a glass enamel is applied to a glass substrate to a thickness of about 1 to 2 mils (col. 5, lines 30-32) (i.e., about 25.4 to 50.8 micrometers); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Ruderer further discloses that a glass coating made by firing the enamel composition at a temperature of from about 1100° F to about 1300° F from about 3 to about 7 minutes (col. 2, lines 3-7).
While Ruderer discloses the heat treatment and duration thereof, said heat treatment, duration thereof, and the storage and shipment of the coated glass substrate are considered as intended uses and effects of the claimed structure. As the structure of the prior art obviates the claimed structure, one of ordinary skill in the art would conclude that the structure of the prior art is capable of performing the intended uses and effects of the claims.
Regarding instant claim 30:
Ruderer discloses that the glass enamel comprises zinc oxide (col. 1, lines 55-58).
Regarding instant claim 31:
Ruderer further discloses that the glass frit contains less than about 5% by weight bismuth oxide (col. 3, lines 44-45), which meets the broadly claimed “bismuth-based” frit.
Regarding instant claim 37:
Ruderer does not explicitly disclose the product has a 3B durability as measured by cross hatch tape pull.
However, one of ordinary skill in the art would readily conclude that the scope of the prior art encompasses an embodiment that is substantially identical to that of the claims (i.e., a glass substrate comprising a coating of an organic material, a pigment, a frit), and such an embodiment must have the same properties (i.e., the same durability).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claim 42:
Ruderer further discloses that the chemical durability of the glass enamel or glaze of their invention is significantly improved over previous glazes and glass enamels (col. 2, lines 24-27).
Ruderer does not explicitly disclose the specific durability of the tempered coated article as claimed.
However, one of ordinary skill in the art would readily conclude that the scope of the prior art encompasses an embodiment wherein the tempered coated glass is substantially identical to that of the claims, and that such an embodiment must have the same properties (i.e., the same durability). Furthermore, Ruderer discloses the same aim to increase the durability of the enamel coating.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Claims 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Ruderer in view of Chaumonot.
Regarding instant claims 32-33:
Ruderer discloses an enamel composition comprising pigments as cited above.
Ruderer does not explicitly disclose the pigment types.
However, Chaumonot discloses enamel for glass panes (Title) comprising a glass frit and coloring pigments that impart desired coloration (col. 1, lines 39-42), wherein the oxides of chromium and copper are used as pigments for black color tones, and titanium oxide is used as a pigment for grey color tones (col. 1, lines 58-62).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the pigments of Chaumonot as the pigments in the coating of Devaux. The motivation for doing so would have been to tailor the enamel compositions to a desired color tone. Further, the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(A).
Therefore, it would have been obvious to combine Chaumonot with Ruderer to obtain the invention as specified by the instant claim.
Claims 34 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Ruderer in view of Devaux.
Regarding instant claims 34 and 36:
Ruderer discloses an enamel composition comprising a vehicle inclusive of conventional cold paste vehicle (e.g., a vehicle based on glycol ether acetate), UV curable vehicles, thermoplastic vehicles, hot melt vehicles, spray vehicles, and roll coat vehicles. Said vehicles are construed as encompassing organic materials
Ruderer does not explicitly disclose that the organic material is composed of an organic polymer (specifically a polyol melamine polymer) and a solvent.
However, Devaux discloses an article comprising at least one glass sheet and an enamel-based coating on at least one of the surfaces of said glass sheet (paragraphs [0009-0012]).
Devaux further discloses that the article is capable of undergoing thermal treatment (paragraph [0013]).
Devaux further discloses that the enamel-based coating comprises an organic medium (paragraph [0024]) comprising polyols, melamine, and reaction products thereof (paragraph [0029]).
Devaux further discloses that the enamelled composition comprises one or more solvents and a polymer matrix (paragraph [0040]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the compositions of Devaux as the vehicle in Ruderer. The motivation for doing so would have been that Devaux discloses art-recognized mediums/vehicles for glass frits in the production of enamel-based coatings for glass substrates. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Therefore, it would have been obvious to combine Devaux with Ruderer to obtain the invention as specified by the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 09/04/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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