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 .
Applicant's submission filed on 9/15/25 has been entered, claims 1-4, 6-17 and 23-26 are pending examination, claims 18-22 and 27-29 are withdrawn and claim 5 canceled.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12 and 24 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The terms “industrial or specialty gas” in claims 12 and 24 render the claim indefinite. The terms “industrial or specialty gas” is not defined by the claim, the specification does not provide a standard for ascertaining what gases are or are not included within these categories, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There is insufficient detail to ascertain the scope of “industrial or specialty gas” to know what gases are included within the scope of these terms or excluded from the scope, is it inclusive of any or all gases used or obtainable in industrial settings, or any or all gases possessing a particular chemistry different from some standard gas (if so what is it), is it only inert gases, or reactive gases, etc? For purposes of examination “industrial or specialty gas” will be interpreted as at least inclusive of any such scenarios.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-4, 6-8, 14-17, and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al (US 2016/0291470; hereafter Wu).
Claim 1: Wu teaches a method of forming on a glass surface one or more coatings for improving glass strength and fracture toughness, (see, for example, abstract, [0003], [0137], [0174] [0210], claims) the method comprising
forming on the glass surface a hydrolytic polycondensation product of one or more alkoxysilane(s) of the general formula
R.sub.xSi (OR.sup.1).sub.4-x wherein R is an organic radical, R.sup.1 is independently selected from hydrogen and C.sub.1-18 alkyl, or isomers or polyvalences thereof, and x is an integer from 0 to 3 (see, for example, [0011-0016], [0064], [0137], examples)
with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) in the presence of water and a catalyst or trigger (See, for example, [0011-0016], [0045-0051], [0082-86], examples).
wherein the one or more metal or metalloid oxide(s) and/or the one or more metal or metalloid alkoxide(s) are selected from oxides and/or alkoxides of silicon and / or titanium (See, for example, abstract, [0025] examples).
Wu further teaches curing of the coating, such as at 100-250oC, further 230oC for 60 minutes (see, for example, [0143], [0174]). Wu is however silent as to the character of the resulting bonding between the coating and the substrate, so it does not explicitly recite the formation of covalent bonds therebetween. The type of bond formed would intrinsically be a resulting property of the chemistry and curing conditions. Wu has taught the claimed chemistry (see above), and according to [0077] of Applicant’s specification, the curing process is inclusive of being conducted at 100-500oC, such as 100 to 300o or 100 to 200-oC for 30 minutes or 60 minutes. As the coatings of the same claimed chemistries achieve the claimed covalent bonding under these curing conditions, the same applied protective coating composition of Wu cured under curing conditions anticipatory or applicant’s disclosed curing conditions would thus inherently achieve the same resulting covalent bonding since 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).
Wu further teaches the coating on the glass as protective; and further as a hydrolytic polycondensation product of one or more alkoxysilane(s) of the claimed general formula with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) in the presence of water and a catalyst or trigger (See, for example, [0011-0016], [0045-0051], [0082-86], examples). As such coatings are exemplified by applicant as providing for improving glass strength / toughness within the claimed ranges, and cured under same conditions, the same applied protective coating composition of Wu would inherently achieve the same resulting improved strength / toughness properties, since relative to an uncoated glass surface the coated glass additionally comprises such a protective coating and since 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).
Claim 2: Wu further teaches wherein the catalyst or trigger is nitric acid (See, for example, [0087]).
Claims 3 and 23: Wu further teaches wherein R is selected from C.sub.1-18 alkyl, C.sub.1-18 heteroalkyl, C.sub.1-18 alkoxy, C.sub.2-18 alkene, phenyl, R.sup.2—(CH.sub.2).sub.n—, and R.sup.2—O—(CH.sub.2).sub.n, or isomers or polyvalences thereof; R.sup.1 is a C.sub.1-18 alkyl, or isomers or polyvalences thereof, R.sup.2 is independently selected from hydrogen, C.sub.1-18 alkyl, (C.sub.2H.sub.4O)—(R.sup.3).sub.m—, C.sub.2-18 alkene, or isomers or polyvalences thereof; R.sup.3 is independently selected from C.sub.1-18 alkyl, or isomers or polyvalences thereof; n is an integer from 0 to 10; and m is an integer from 0 to 10. (see, for example, [0011-0016], [0052-0079], examples).
Claim 4: Wu further teaches wherein the one or more alkoxysilane(s) is selected from β-glycidoxypropyltrimethoxysilane, γ-glycidoxypropyltrimethoxysilane, γ-methacryloxypropylsilane, methoxyethylsilane, methyltrimethoxysilane, dimethyldimethoxysilane, trimethylmethoxysilane, ethyltrimethoxysilane, diethyldimethoxysilane, and triethylmethoxysilane (See, for example, [0064], [0070], [0075], [0125], examples).
Claim 6: Wu further teaches wherein the one or more alkoxysilane is (3-glycidoxypropyltrimethoxysilane or γ-glycidoxypropyltrimethoxysilane and the one or more metal or metalloid alkoxide is selected from titanium alkoxides (See, for example, [0046], [0070] [0125], [0198],
Claim 7-8: Wu further teaches the coating on the glass as protective; and further as a hydrolytic polycondensation product of one or more alkoxysilane(s) of the claimed general formula with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) in the presence of water and a catalyst or trigger (See, for example, [0011-0016], [0045-0051], [0082-86], examples). As such coatings are exemplified by applicant as providing for improving glass strength and fracture toughness by healing cracks in the surface of the glass, and or achieving the various improvements of claim 8, the same applied protective coating composition of Wu would inherently achieve the same resulting properties to at least some degree, since relative to an uncoated glass surface the coated glass additionally comprises such a protective coating and since 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).
Claim 14: Wu further teaches wherein unused coating is removed from the glass surface (See, for example, [0135], [0141], [0143], [0174] [0200]).
Claim 15: Wu further teaches wherein the unused coating is removed by dipping the coated glass into or rinsing the coated glass with a solvent (See, for example, [0135], [0141], [0143], [0174] [0200]).
Claim 16: Wu further teaches the coating on the glass as protective; and further as a hydrolytic polycondensation product of one or more alkoxysilane(s) of the claimed general formula with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) in the presence of water and a catalyst or trigger (See, for example, [0011-0016], [0045-0051], [0082-86], examples). As such coatings, further cured under shared conditions, are exemplified by applicant as providing for improving glass strength within the claimed ranges, the same applied protective coating composition, cured under shared conditions, of Wu would inherently achieve the same resulting improved strength properties, since relative to an uncoated glass surface the coated glass additionally comprises such a protective coating and since 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).
Claim 17: Wu further teaches devitrification is avoided (see, for example, wherein the glass substrate remains as glass, no crystallization is taught [0020], [0137], [0174]).
Claim(s) 1, 3-4, 6-10, 12, and 16-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carson et al (WO 9500259; hereafter Carson)
Claim 1: Carson teaches a method of forming on a glass surface one or more coatings for improving glass strength and fracture toughness, (see, for example, abstract, pg 1, pg 16, examples) the method comprising
forming on the glass surface a hydrolytic polycondensation product of one or more alkoxysilane(s) of the general formula
R.sub.xSi(OR.sup.1).sub.4-x wherein R is an organic radical, R.sup.1 is independently selected from hydrogen and C.sub.1-18 alkyl, or isomers or polyvalences thereof, and x is an integer from 0 to 3 (see, for example, pg 8-9, examples )
with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) (such as methyltrimethoxysilane) the presence of water and a catalyst or trigger (such as acid or base) (See, for example, pg 8-9, pg 15-16 and examples; {Nadargi} (such as abstract) evidences that methyltrimethoxysilane is a silicon alkoxide).
Carson further teaches wherein the one or more metal or metalloid oxide(s) and/or the one or more metal or metalloid alkoxide(s) are selected from silicon alkoxides (such as methyltrimethoxysilane) (See, for example, pg 8-9, and examples; {Nadargi} (such as abstract) evidences that methyltrimethoxysilane is a silicon alkoxide).
Carson further teaches an exemplary embodiment at 66% improved strength, (see, for example, Example 1).
Carson further teaches that polymerized cross-linked “siloxane linkage” occurs between the coating and the brittle oxide substrate surface (glass substrate), specifically the formation of covalent bonds (“Si-O-Si” bonds) (see, for example, paragraph bridging pg 21-22).
Carson further teaches the coating on the glass as protective; and further as a hydrolytic polycondensation product of one or more alkoxysilane(s) of the claimed general formula with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) in the presence of water and a catalyst or trigger (See, for example, [0011-0016], [0045-0051], [0082-86], examples). As such coatings are exemplified by applicant as providing for improving glass strength / toughness within the claimed ranges, and cured under same conditions, the same applied protective coating composition of Carson would inherently achieve the same resulting improved strength / toughness properties, since relative to an uncoated glass surface the coated glass additionally comprises such a protective coating and since 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).
Claim 3: Carson further teaches wherein R is selected from C.sub.1-18 alkyl, C.sub.1-18 heteroalkyl, C.sub.1-18 alkoxy, C.sub.2-18 alkene, phenyl, R.sup.2—(CH.sub.2).sub.n—, and R.sup.2—O—(CH.sub.2).sub.n, or isomers or polyvalences thereof; R.sup.1 is a C.sub.1-18 alkyl, or isomers or polyvalences thereof, R.sup.2 is independently selected from hydrogen, C.sub.1-18 alkyl, (C.sub.2H.sub.4O)—(R.sup.3).sub.m—, C.sub.2-18 alkene, or isomers or polyvalences thereof; R.sup.3 is independently selected from C.sub.1-18 alkyl, or isomers or polyvalences thereof; n is an integer from 0 to 10; and m is an integer from 0 to 10. (see, for example, pg 8-9 and examples).
Claim 4: Carson further teaches wherein the one or more alkoxysilane(s) is selected from β-glycidoxypropyltrimethoxysilane, γ-glycidoxypropyltrimethoxysilane, γ-methacryloxypropylsilane, methoxyethylsilane, methyltrimethoxysilane, dimethyldimethoxysilane, trimethylmethoxysilane, ethyltrimethoxysilane, diethyldimethoxysilane, and triethylmethoxysilane (See, for example, pg 8-10 and , examples).
Claim 6: Carson further teaches wherein the one or more alkoxysilane is (3-glycidoxypropyltrimethoxysilane or γ-glycidoxypropyltrimethoxysilane and the one or more metal or metalloid alkoxide is selected from silicon alkoxides (such as methyltrimethoxysilane) (See, for example, pg 8-9, and examples; {Nadargi} (such as abstract) evidences that methyltrimethoxysilane is a silicon alkoxide).
Claim 7-8: Carson further teaches wherein the glass strength and fracture toughness is improved by healing cracks in the surface of the glass, as well as various properties (see, for example, pg 1-3, pg 21-22, examples, abstract). Additionally / alternatively, Carson further teaches the coating on the glass as protective; and further as a hydrolytic polycondensation product of one or more alkoxysilane(s) of the claimed general formula with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) in the presence of water and a catalyst or trigger (See, for example, pg 8-9, pg 15-16 and examples). As such coatings are exemplified by applicant as providing for improving glass strength and fracture toughness by healing cracks in the surface of the glass, and or achieving the various improvements of claim 8, the same applied protective coating composition of Carson would inherently achieve the same resulting properties to at least some degree, since relative to an uncoated glass surface the coated glass additionally comprises such a protective coating and since 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).
Claim 9: Carson further teaches wherein the one or more coatings are applied by spraying, dripping, dipping, painting, or any other techniques suited to the application of liquids, vapors, or aerosols (see, for example pg 16).
Claim 10: Carson further teaches wherein the one or more coatings are applied at temperatures above atmospheric temperature (such as from 50-60oC)(see, for example, paragraph bridging pg 17-18).
Claim 12: Carson further teaches the controlled atmosphere comprises an industrial or specialty gas (such as ambient air which is commonly used or obtainable in industrial settings) (See, for example, pg 17 -18, examples).
Claim 16: Carson further teaches the intention of its coating method is to improve, if not restore, the strength of glasses ideally to their theoretical strength, which is on the order of 2-3 million psi, while typically achieved strength is on the order of 10,000 psi (thus allowing for improvements on the order of at least 19,900%)(See, for example, pg 1-3, pg 20). Carson further teaches the coating on the glass as protective; and further as a hydrolytic polycondensation product of one or more alkoxysilane(s) of the claimed general formula with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) in the presence of water and a catalyst or trigger (See, for example, pg 8-9, pg 15-16 and examples). As such coatings are exemplified by applicant as providing for improving glass strength / toughness within the claimed ranges, and cured to achieve covalent bonding between the substrate and coating, the same applied protective coating composition of Carson would inherently achieve the same resulting improved strength / toughness properties, since relative to an uncoated glass surface the coated glass additionally comprises such a protective coating and since 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).
Claim 17: Carson further teaches devitrification is avoided (see, for example, pg 5-6 and examples, wherein the glass substrate remains as glass, no crystallization is taught).
Claim(s) 1-4, 6-10, 12, 16-17, and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin et al (EP 0263428; hereafter Lin)
Claim 1: Lin teaches a method of forming on a glass surface one or more coatings for improving glass strength and fracture toughness, (see, for example, abstract, pg 1-4, examples) the method comprising
forming on the glass surface a hydrolytic polycondensation product of one or more alkoxysilane(s) of the general formula
R.sub.xSi(OR.sup.1).sub.4-x wherein R is an organic radical, R.sup.1 is independently selected from hydrogen and C.sub.1-18 alkyl, or isomers or polyvalences thereof, and x is an integer from 0 to 3 (see, for example, pg 6-8)
with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) (such as methyltrimethoxysilane) the presence of water and a catalyst or trigger (such as nitric acid) (See, for example, pg 7 and examples).
Lin further teaches wherein the one or more metal or metalloid oxide(s) and/or the one or more metal or metalloid alkoxide(s) are selected from aluminum, titanium, tantalum, hafnium and the like (See, for example, pg 3-4, examples).
Lin further teaches curing of the coating, such as at 120-600oC, for durations of from 2- 6.5 hours (see, for example, pg 10-12). Lin is however silent as to the character of the resulting bonding between the coating and the substrate, so it does not explicitly recite the formation of covalent bonds therebetween. The type of bond formed would intrinsically be a resulting property of the chemistry and curing conditions. Lin has taught the claimed chemistry (see above), and according to [0077] of Applicant’s specification, the curing process is inclusive of being conducted at 100-500oC, such as 100 to 300o or 100 to 200-oC for 30 minutes, 60 minutes, 2hrs or more . As the coatings of the same claimed chemistries achieve the claimed covalent bonding under these curing conditions, the same applied protective coating composition of Lin cured under curing conditions anticipatory or applicant’s disclosed curing conditions would thus inherently achieve the same resulting covalent bonding since 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).
Lin further teaches the coating on the glass as protective; and further as a hydrolytic polycondensation product of one or more alkoxysilane(s) of the claimed general formula with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) in the presence of water and a catalyst or trigger (See, for example, abstract, pg 5-8, examples). As such coatings are exemplified by applicant as providing for improving glass strength / toughness within the claimed ranges, and cured under same conditions, the same applied protective coating composition of Lin would inherently achieve the same resulting improved strength / toughness properties, since relative to an uncoated glass surface the coated glass additionally comprises such a protective coating and since 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).
Claim 2: Lin further teaches the catalyst / trigger is nitric acid (See, for example, pg 7 and examples).
Claims 3 and 23: Lin further teaches wherein R is selected from C.sub.1-18 alkyl, C.sub.1-18 heteroalkyl, C.sub.1-18 alkoxy, C.sub.2-18 alkene, phenyl, R.sup.2—(CH.sub.2).sub.n—, and R.sup.2—O—(CH.sub.2).sub.n, or isomers or polyvalences thereof; R.sup.1 is a C.sub.1-18 alkyl, or isomers or polyvalences thereof, R.sup.2 is independently selected from hydrogen, C.sub.1-18 alkyl, (C.sub.2H.sub.4O)—(R.sup.3).sub.m—, C.sub.2-18 alkene, or isomers or polyvalences thereof; R.sup.3 is independently selected from C.sub.1-18 alkyl, or isomers or polyvalences thereof; n is an integer from 0 to 10; and m is an integer from 0 to 10. (see, for example, pg 6-7 and examples).
Claim 4: Lin further teaches wherein the one or more alkoxysilane(s) is selected from β-glycidoxypropyltrimethoxysilane, γ-glycidoxypropyltrimethoxysilane, γ-methacryloxypropylsilane, methoxyethylsilane, methyltrimethoxysilane, dimethyldimethoxysilane, trimethylmethoxysilane, ethyltrimethoxysilane, diethyldimethoxysilane, and triethylmethoxysilane (See, for example, pg 6-8 and , examples).
Claim 6: Lin further teaches wherein the one or more alkoxysilane is (3-glycidoxypropyltrimethoxysilane or γ-glycidoxypropyltrimethoxysilane and the one or more metal or metalloid alkoxide is selected from titanium alkoxides (such as titanium tetraethoxide) (See, for example, pg 3-4, and examples).
Claim 7: Lin further teaches the coating on the glass as protective and providing various gains in chemical, UV, and abrasion resistance; and further as a hydrolytic polycondensation product of one or more alkoxysilane(s) of the claimed general formula with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) in the presence of water and a catalyst or trigger (See, for example, pg 2-4 and examples). As such coatings are exemplified by applicant as providing for improving glass strength and fracture toughness by healing cracks in the surface of the glass, and or achieving the various improvements of claim 8, the same applied protective coating composition of Wu would inherently achieve the same resulting properties to at least some degree, since relative to an uncoated glass surface the coated glass additionally comprises such a protective coating and since 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).
Claim 8: Lin further teaches the coating on the glass as protective and providing various gains in chemical, UV, and abrasion resistance as well as modification of index of refraction (see, for example, pg 3-4). Lin further as a hydrolytic polycondensation product of one or more alkoxysilane(s) of the claimed general formula with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) in the presence of water and a catalyst or trigger (See, for example, pg 2-4 and examples). As such coatings are exemplified by applicant as providing for improving glass strength and fracture toughness by healing cracks in the surface of the glass, and or achieving the various improvements of claim 8, the same applied protective coating composition of Carson would inherently achieve the same resulting properties to at least some degree, since relative to an uncoated glass surface the coated glass additionally comprises such a protective coating and since 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).
Claim 9: Lin further teaches wherein the one or more coatings are applied by spinning , spraying, dipping or flowing (see, for example pg 5, examples).
Claim 10: Lin further teaches wherein the one or more coatings are applied at temperatures above atmospheric temperature (such as from 250-650oC)(see, for example, bottom of pg 9.
Claim 12: Lin further teaches the controlled atmosphere comprises an industrial or specialty gas (such as ambient air which is commonly used or obtainable in industrial settings) (See, for example, examples).
Claim 16: Lin further teaches the coating on the glass as protective; and further as a hydrolytic polycondensation product of one or more alkoxysilane(s) of the claimed general formula with one or more metal or metalloid oxide(s) and/or one or more metal or metalloid alkoxide(s) in the presence of water and a catalyst or trigger (See, for example, abstract, pg 5-8, examples). As such coatings are exemplified by applicant as providing for improving glass strength within the claimed ranges, the same applied protective coating composition of Lin would inherently achieve the same resulting improved strength properties, since relative to an uncoated glass surface the coated glass additionally comprises such a protective coating and since 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).
Claim 17: Lin further teaches devitrification is avoided (such as low temperature curing) (see, for example, abstract, pg 3-6 and examples, wherein the glass substrate remains as glass, no crystallization is taught).
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.
Claim(s) 1-4, 6-8, 14-17, and 23 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Fadeev et al (US 2013/0171456; hereafter Fadeev).
Claims 1-4, 6-8, 14-17, and 23: refer to the 35 USC 102 (a)(1) rejections of claims 1-4, 6-8, 14-17, and 23 over Wu above. Wu further teaches curing of the coating, such as at 100-250oC, further 230oC for 60 minutes (see, for example, [0143], [0174]). Wu is however silent as to the character of the resulting bonding between the coating and the substrate, so it does not explicitly recite the formation of covalent bonds therebetween. Fadeev teaches a method of forming protective and property enhancing coatings on glass surfaces, further comprising hydrolysis and condensation of one or more silanes/ alkoxysilanes (See, for example, [0081-83] [0115-117], Fig 31). Fadeev provides a depiction of hydrolysis and condensation process steps in conjunction with the formation of such coatings on a glass surface, and notes that curing can achieve covalent bonding to the glass surface which results in improved adhesion (See, for example, [0117], Fig 31). Therefore, if not already inherent within the teaching of Wu, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have cured to achieve covalent bonds between the coating and the glass surface, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated curing for such covalent bonding since it would predictably improve the adhesion therebetween.
Claim(s) 10-13, and 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carson as applied to claim 1 above, and further in view of Hayashi et al (US 2008/0039310; hereafter Hayashi).
Claims 10 and 13: Carson teaches wherein moisture in the air can result in surface flaw generation and wherein the glass strength and fracture toughness is improved by healing cracks / flaws in the surface of the glass by application of the alkoxysilane / metal(oid) alkoxide composition (see, for example, pg 1-3, pg 21-22, examples, abstract). But it does not explicitly further teach the one or more coatings are applied in a controlled atmosphere by pressures below or above atmospheric pressure, further wherein the pressure comprises an absolute pressure of 950 hPa, below 500 hPa, below 100 hPa, below 10 hPa, below 1 hPa, below 0.1 Pa, less than 10−6 Pa, or even less than 10−9 Pa. Hayashi teaches a method of treating, and further penetrating, the glass surface with compositions comprising metal alkoxides undergoing hydrolysis, (See, for example, [0035-38]). Hayashi further teaches the implementation of reduced pressure during application enhances penetration, further wherein a pressure is preferably 13,000 Pa (130 hPa). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated application of the one or more coatings in controlled atmosphere that includes a reduced pressure of below 130 hPa since such a reduced pressure would predictably enhance coating penetration.
Claims 11 and 24: Hayashi further teaches controlled atmosphere comprises an industrial or specialty gas, with a dew point temperature of the atmosphere of less than 0oC to prevent non-controlled reaction with moisture (See, for example, [0037]). Although such a range is not explicitly below −20° C, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a dew point temperature within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim 12: Hayashi further teaches controlled atmosphere comprises an industrial or specialty gas (See, for example, [0037]).
Claim 25: refer to the rejections of claims 11 and 13 above.
Claim 26: refer to the rejections of claims 12 and 13 above.
Claim(s) 16 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Carson.
Claim 16: Carson further teaches the intention of its coating method is to improve, if not restore, the strength of glasses ideally to their theoretical strength, which is on the order of 2-3 million psi, while typically achieved strength is on the order of 10,000 psi (thus allowing for improvements on the order of at least 19,900%)(See, for example, pg 1-3, pg 20). Carson further teaches wherein the minimum achieved improvement in glass strength is at least 20% (see, for example, pg 21). Although Carson does not explicitly teach an improvement in glass strength of above 5000%, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated such an improvement since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976), and since the explicit goal of its method is to achieve theoretical strength.
Claim(s) 1-4, 6-10, 12, 16-17, and 23 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Lin in view of Fadeev.
Claims 1-4, 6-10, 12, 16-17, and 23: refer to the 35 USC 102 (a)(1) rejections of claims 1-4, 6-10, 12, 16-17, and 23 over Lin above. Lin further teaches curing of the coating, such as at 120-600oC, for durations of from 2- 6.5 hours (see, for example, pg 10-12). Lin is however silent as to the character of the resulting bonding between the coating and the substrate, so it does not explicitly recite the formation of covalent bonds therebetween. Fadeev teaches a method of forming protective and property enhancing coatings on glass surfaces, further comprising hydrolysis and condensation of one or more silanes/ alkoxysilanes (See, for example, [0081-83] [0115-117], Fig 31). Fadeev provides a depiction of hydrolysis and condensation process steps in conjunction with the formation of such coatings on a glass surface, and notes that curing can achieve covalent bonding to the glass surface which results in improved adhesion (See, for example, [0117], Fig 31). Therefore, if not already inherent within the teaching of Lin, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have cured to achieve covalent bonds between the coating and the glass surface, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated curing for such covalent bonding since it would predictably improve the adhesion therebetween.
Claim(s) 11-12, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin as applied to claim 10 above, and further in view of Miki et al (US 2014/0079873; hereafter Miki).
Claims 11-12 and 24: Lu teaches the method of claim 10 above, but does not explicitly teach control of the atmosphere / dew point of atmosphere. Miki teaches a method of coating compositions comprising metal alkoxides undergoing hydrolysis, (See, for example, abstract, [0156], examples). Miki further teaches the use of industrial / specialty gas, further dry air, with a dew point of -50 C, as the atmosphere during deposition as it allows for improved control over the hydrolysis reaction (See, for example, [0047-0048]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated application of the one or more coatings in controlled atmosphere that includes an industrial / specialty gas, of dry air, with a dew point of -50 C as such an environment would predictably provide for enhanced control of the hydrolysis reaction.
Claim(s) 11-12, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin in view of Fadeev as applied to claim 10 above, and further in view of Miki.
Claims 11-12 and 24: refer to the refer to the 35 USC 103 rejections of claims 1-10, 12, 16-17, and 23 over Lin in view of Fadeev above and the 35 USC 103 rejections of claims 11-12, and 24 over Lin in view of Miki above.
Response to Arguments
Applicant's arguments filed 9/15/25 have been fully considered but they are not persuasive.
Applicant argues that “industrial gas” and “specialty gas” are known in the art and are not indefinite. To support the arguments the applicant has cited a few web pages; however webcapture of such pages have not been provided with Applicant’s submission therefor the examiner is unable to weigh the cited portions in context with the full disclosures. Additionally the examiner notes that citations from sources such as Wikipedia are open source and can be modified at any moment, sometimes further by anyone, thus content can readily be changed and is not consistent with the passage of time. Scientific and technology fields are constantly changing and evolving, thus species of terms such as “industrial gas” and “specialty” gas are similarly ripe to change and evolve. The applicant has not provided a definitive / specific listing as to what gases belong within each of these terms. And the arguments do not provide sufficient evidence that one of ordinary skill in the art would understand what gases are or are not within the scope of the claims. Thus the examiner maintains the 35 USC 112 b rejection for these terms is apt.
With respect to Applicant’s arguments that Wu relies on adhesion, namely on van-der-Waals forces, not on covalent bonding, the examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). The examiner cannot find any teaching of van-der-Waals within Wu, and is not convinced by the unsupported argument. In response to applicant's argument that Wu does not make any explicit reference to an increase in mechanical strength of the substrate, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). For the claimed invention to be enabled the conditions claimed would inherently achieve the resulting properties. As such, as outlined in the rejections above, since Wu has anticipated the claimed chemistry, and curing conditions it too must inherently achieve Applicant’s resulting bonding structure (covalent) and materials properties (strength) achieved from the same conditions.
Alternatively Applicant’s arguments that the references do not teach the newly added limitations are unconvincing in view of newly-cited / incorporated Fadeev, as discussed in the rejections above.
In response to applicant's argument against Carson (pg 12-14) that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., are particular water ratio, initial polymerization, presence / amount of organic solvent ) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicant further argues that the description on pg 21 and on pg 25 with respect to the strength improvement are errant as they contradict. The examiner does not see any contradiction. The Applicant appears to ignore the “at least” in front of the 10% and 20% described on pg 21, thus designating a broadest embodiment, as the gains described on pg 25 of 100% and 200%, or those in the examples (such as 66% improvement) fall within such a disclosure; thus the examiner does not find applicant’s argument convincing. Applicant additionally argues that an exemplary embodiment of Carson “in the experience of the Applicant” will not result in formation of covalent bonds. First, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Carson is not solely bound to this singular time and temperature for curing, but has disclosed broader ranges and established the time and temperature of curing as result effective (See, for example, entirety of pg 18 – pg 19). Further contrary to Applicant’s assertion, Carson has explicitly taught the bonding between the coating and glass surface as being via siloxane linkages, Si-O-Si (covalent) bonds (See, for example, paragraph bridging pg 21-22) in light of such explicitly teaching, the examiner is unconvinced by Applicants arguments (see further In re Antor Media Corp., 689 F.3d 1282, 1287-88. - prior art references are presumed to be enabled.).
With respect to Applicant’s arguments that Lin adheres purely by virtue of Van-der-Waals forces, not on covalent bonding, the examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). The examiner cannot find any teaching of van-der-Waals within Lin, and is not convinced by the unsupported argument. In response to applicant's arguments (pg 14-15) that Lin does not make any explicit reference to an increase in mechanical strength of the substrate, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). For the claimed invention to be enabled the conditions claimed would inherently achieve the resulting properties. As such, as outlined in the rejections above, since Lin has anticipated the claimed chemistry, and curing conditions it too must inherently achieve Applicant’s resulting bonding structure (covalent) and materials properties (strength) achieved from the same conditions.
Alternatively Applicant’s arguments that the references do not teach the newly added limitations are unconvincing in view of newly-cited / incorporated Fadeev, as discussed in the rejections above.
With respect to Applicant’s argument that Hayashi does not teach anything about a coating therefore is non-analogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the examiner asserts that Hayashi has explicitly taught coating a glass substrate with a solution of a metal alkoxide further undergoing hydrolysis (See, for example, [0035] material is applied to the article, further including external and internal surface, for material uptake and surface filling, thus it would read on a coating process), therefore it is within the field of glass coatings. Further still, Hayashi, like Applicant, and like Carson, is concerned with problems associated with achieving / enhancing penetration of its coating formulation into the glass surface. As such the examiner maintains that Hayashi is prior art.
In response to applicant's argument that temperature settings and glass formation conditions of Hayashi are contrary to the inventive teaching, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Such argued conditions directed to formation and thermal treatment of an initial glass substrate are not relied upon by the Examiner when considering the combination of art.
In response to applicant's arguments against the references individually (Hayashi does not teach formation of covalent bonds, or increasing mechanical strength), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection is over a combination of references, not Hayashi solely. The argued deficiencies are taught by primary reference Carson.
In response to applicant's arguments pg 17 that the reason for using nitrogen / atmosphere of Hayashi is different than Applicant’s reason, the examiner asserts that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument against Miki (pg 18) that the reference fails to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., are particular water ratio) is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In response to applicant's arguments against the references individually (Miki does not teach increasing mechanical strength, the coating composition of Miki is different than applicant), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection is over a combination of references, not Miki solely. The argued deficiencies are taught by the primary reference.
As to the remaining dependent claims they remain rejected as no additional separate arguments are provided
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 NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organ