DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 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 15 and 19 are 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.
In claim 15 there are several instances of a range within range, e.g. “from 5 to 35 weight % (or from 10 to 30 weight %)”. This renders the claim indefinite as it is not clear if the more narrow range is required.
Claim 15 recites 5-70 weight % sodium feldspar, but the claim on which it depends does not require sodium feldspar, thus it is unclear if claim 15 refers to the same feldspar or if others are present.
Claim 19 contains a trademark. This renders the claim indefinite.
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) 1,2,4,5,8,12 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Terashi et al. (US 6,232,251).
Terashi et al. discloses a glass ceramic material comprising a crystalline phase which comprises diopside crystal phase, a quartz phase and a glass phase. See claim 1.
Claim(s) 1,10 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 111170641 A.
CN 111170641 A discloses a white glass ceramic stone which comprises a diopside phase.
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.
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) 3,6,7,19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terashi et al. (US 6,232,251).
Terashi et al. discloses a quartz phase in an amount of 1-50% which overlaps claimed “unavoidable impurity” amount of less than 3 w%. (col.4, line 23) and discloses the glass phase is present at less than 30%
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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05 I.
Since the composition of the reference is the same as those claimed herein it follows that the material discussed above would inherently possess the properties recited in the claims. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terashi et al. (US 6,232,251) as applied to claims ) 3,6,7,19 and 20 above, and further in view of Seneschal-Merz et al. (US 2007/0281851).
Seneschal-Merz et al. teaches that denser bodies can be produced when particles to be sintered have a bimodal particle size distribution [0096][0097]. It would have been obvious to one of ordinary skill in the art at the time of the invention to create particles with a bimodal distribution in order to produce an article with desired properties.
With respect to claimed particle sizes, 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. In this particular case it is submitted that it would be obvious to one of ordinary skill in the art to determine the optimum particle sizes. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II A
Claim(s) 13,15,16,17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 3075714 A1.
EP 3075714 A1 discloses a method for forming a glass ceramic material comprising: providing dolomite, quartz and feldspar to form a mixture; and heating the mixture to a temperature of from 980 to 1280°C.
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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05 I.
With respect to the claimed heating temperature, 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05 I.
With respect to claim the claimed ingredient amounts and heating time, 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. In this particular case it is submitted that it would be obvious to one of ordinary skill in the art to determine the optimum heating time. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II A
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 3075714 A1 as applied to claims 13,15,16,17 and 18 above, and further in view of CN 102746031.
CN 102746031 teaches adding sodium silicate to glass ceramic raw materials as a water reducer (abstract). It would have been obvious to one of ordinary skill in the art at the time of the invention to add this ingredient to the raw materials of EP 3075714 A1 in view of this teaching.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER A FIORILLA whose telephone number is (571)272-1187. The examiner can normally be reached M-TH 6am-4pm.
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/CHRISTOPHER A FIORILLA/Primary Examiner, Art Unit 1731
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