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 .
This action is responsive to Applicant’s response to election/restriction and amendment/remarks filed 03/31/2026.
Claims 1-13 are currently pending.
The Drawings filed 04/05/2023 are approved by the examiner.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's timely election with traverse of Group I (a material, specifically inorganic oxide flakes) in the reply filed on 03/31/2026 is acknowledged. The traversal is on the ground(s) that there are overlapping or related technical features among the three groups and there would be no undue burden to examine all three groups. This is not found persuasive because a search and/or examination burden is not germane to restrictions made in 371 applications. Restrictions made in 371 applications only require there be lack of unity between the indicated groups. The indicated groups indeed lack unity for the reason(s) set forth in the restriction mailed 02/03/2026 (the groups lack unity of invention a posteriori because the technical feature shared between them is not a special technical feature as it does not make a contribution over the prior art of record, i.e., Fujiwara et al. (US 2006/0048679 A1). See also the prior art rejection, below.
The requirement is still deemed proper and is therefore made FINAL.
It is noted Applicant identified Group I as encompassing claims 1, 12, and 13. However, the present amendments made to claims 12 and 13 change the scope of the claims such that they now fall outside the originally restricted material of Group II and shift them to the restricted, non-elected compositions of Group II. Claims 12 and 13 as amended are directed to an invention that is independent or distinct from the elected invention for the same reasons previously set forth in the restriction mailed 02/03/2026.
Claims 2-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
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.
Claim 1 is 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 claims recites a limitation regarding a ratio of alumina to the total of silica and alumina: “Al2O3/( SiO2+ Al2O3) (mass ratio) is in the range of 0.15~0.40”. The recitation of the tilde “~” in the range renders the limitation unclear. Particularly, it is unclear whether the tilde represents a fixed, inclusive range (i.e., mass ratio of 0.15 to 0.40 inclusive) or represents an approximation permitting values slightly outside 0.15 to 0.40 (i.e., mass ratio of about 0.15 to 0.40 permitting values such as 0.1485, 0.403, etc.). Further lack of clarity is afforded by the tilde range/values reciting the ratio is “in the range of” immediately prior to the tilde range/values that indicate the range should be closed to one fixed value to a second fixed value.
Appropriate correction/clarification is required.
For purposes of further examination, the mass ratio range is construed as 0.15 to 0.40 fixed and inclusive (not an approximation).
Claim Interpretation
The claim begins as reciting “Inorganic oxide flakes mainly composed of SiO2, Al2O3, CaO, and Fe2O3, …”. The term “mainly composed of” is a non-standard transitional phrase that necessitates an explanation of claim interpretation. The body of the claim recites, inter alia, the sum of SiO2 + Al2O3 is 40% to 70% by mass of the composition (“i)”), Fe2O3 is 16% to 25% by mass of the composition (“iii)”), and CaO is 5% to 30% by mass of the composition (“iv)”). This results in a possible minimum amount of SiO2 + Al2O3 + Fe2O3 + CaO of 61% by mass (i.e., 40% + 16% + 5% = 61%). As a person of ordinary skill in the art would interpret the term “mainly” as being quantified to in the majority, the term “mainly composed of” is interpreted as equivalent to “comprising” (being inclusive or open-ended without excluding additional, unrecited elements or method steps) because the recited components in the material are intrinsically “mainly composed of” automatically requiring a majority of the four SiO2, Al2O3, Fe2O3, and CaO components.
Additionally, while the term “mass ratio” in limitation ii) is recited within parentheses, the term is nevertheless clear and definite within the context of the whole claim because the numbered list of limitations are prefaced by “wherein the mass percentages of the components in terms of oxide ins aid inorganic oxide flakes are as follows:” which contextually provides a standard that all the limitations default to being based on mass percentages.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Fujiwara et al. (US 2006/0048679 A1).
Fujiwara et al. teach a glass flake comprising Fe2O3 in an amount of greater than 10% and up to 50 wt.% (abstract and para. 0025), which overlaps the claimed Fe2O3 concentration. The composition further comprises 20-70 mass% SiO2 and 5-50 mass% MgO+CaO+SrO (para. 0025). As the total of the disclosed alkaline earth metals oxides is between 5-50 mass%, the concentration of CaO is clearly somewhere within that range which overlaps the claimed CaO concentration. In any event, the working examples demonstrate CaO concentrations in the teens of mass% which are within the claimed CaO concentration and serve as evidence the reference’s CaO concentration meets/overlaps, if not falls within, that claimed. The reference further teaches provision of Al2O3 in a concentration of up to 10 mass% in order to adjust devitrification temperature and viscosity of the glass (para. 0049).
The combination of the 20-70 mass% SiO2 and 0-10 mass% Al2O3 ranges overlap both the claimed 40-70 mass% SiO2+Al2O3 and 0.15 to 0.4 ratio Al2O3/(SiO2+Al2O3). The sum of the two ranges clearly overlap the sum range claimed. The two ranges encompass/overlap the ratio range claimed (e.g., a glass flake comprising 55 wt.% SiO2 and 10 wt.% Al2O3 are within the reference concentration ranges and amount to a Al2O3/(SiO2+Al2O3) ratio of 0.154, and a glass flake comprising 35 wt.% SiO2 and 8 wt.% Al2O3 are within the reference concentration ranges and amount to a Al2O3/(SiO2+Al2O3) ratio of 0.186).
While the reference fails to teach a glass composition meeting the claimed inorganic oxide flakes under the meaning of anticipation (note examples 6 and 7 in the Table on p.5 are close but their Al2O3/(SiO2+Al2O3) ratios amount to about 0.11 below the claimed range), the cited teachings of the reference nevertheless render obvious the claimed inorganic oxide flake composition as the cited concentrations of SiO2, Al2O3, Fe2O3, and CaO present in the glass flakes overlap and encompass those claimed under a prima facie case of obviousness.
If this were not enough, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to slightly increase the amount of Al2O3 in examples 6 and 7 (note, Ex 6 comprises 46.4 wt.% SiO2, 5.6 wt.% Al2O3, 24.2 wt.% Fe2O3, and 13.5 wt.% CaO and Ex 7 comprises 47.2 wt.% SiO2, 5.7 wt.% Al2O3, 24.7 wt.% Fe2O3, and 11.4 wt.% CaO, all within the claimed ranges except for the Al2O3/(SiO2+Al2O3)) within the 0-10 wt.% range taught in the reference as adjusting the devitrification temperature and viscosity of the glass (para. 0049) to arrive within the claimed ratio with a reasonable expectation of success. For example, increasing Al2O3 to 9 wt.% as motivated by the reference arrives within the claimed ratio while maintaining the other concentrations within the claimed SiO2+Al2O3, Fe2O3, and CaO ranges.
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). Differences in concentration do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Hojaji et al. (US 2006/0240967 A1).
Hojaji et al. teach an alkali resistant glass comprising, by weight, >35 wt.% SiO2, 1-25% CaO, 1-15% Fe2O3, and an amount of Al2O3 such that the ratio of SiO2:Al2O3 is greater than or equal to 1 (abstract and para. 0082-0086). The combination of SiO2+Al2O3 may preferably be between 35 to 90 wt.% (para. 0019).
Accordingly, the sum of SiO2+Al2O3 concentrations and CaO concentration overlap that claimed. Additionally, the requirement that Al2O3 is present in an amount such that the ratio of SiO2:Al2O3 is greater than or equal to 1 overlaps the claimed Al2O3/(SiO2+Al2O3) mass ratio because it corresponds to a Al2O3/(SiO2+Al2O3) mass ratio of less than 0.5 (SiO2:Al2O3 ≥ 1 means there is an equal or greater amount of SiO2 than Al2O3; 1 / (≥1 + 1) = 0.5 or less).
Besides the overlapping ranges of SiO2, Al2O3, and CaO, the main difference between Hojaji et al. and the claims is that the disclosed amount of Fe2O3 (1-15 wt.%) falls ever so short of the claimed range (16-25 wt.%). However, a prima facie case of obviousness exists over the reference because the claimed ranges do not overlap with the prior art but are merely close such that one of ordinary skill in the art would be expected to have the same properties. What is the difference between a composition comprising 15 wt.% Fe2O3 as motivated the reference and another composition comprising 16 wt.% Fe2O3 as permitted by the claims?
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). Differences in concentration do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15, 17, and 18 of copending Application No. 19/102,281 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims recite similar compositions configured into flakes.
Claim 1 of the reference application recites a glass composition comprising SiO2, Al2O3, CaO, and Fe2O3 where SiO2+Al2O3 is 50-70% by mass where the ratio Al2O3/(SiO2+Al2O3) is 0.05 to 0.40, CaO is 5-30% by mass, and Fe2O3 is >10% and <16% by mass. Claims 15, 17, and 18 further recite the glass composition is a glass filler that may be configured as a scaly glass particle. A scaly glass particle is equivalent to a flake as instantly claimed. The recited amounts of SiO2+Al2O3 and CaO are equivalent to if not fall within the instantly claimed range. The recited ratio of Al2O3/(SiO2+Al2O3) overlaps and encompasses the instantly claimed range.
While the recited Fe2O3 concentration does not overlap or fall within the instantly claimed range, they are nevertheless not patentably distinct from one another because the claimed ranges touch and are merely close - the instantly claimed inclusive 16-25% by mass range touches and is merely close to the reference application’s claimed exclusive 10-16% by mass range. The proportions are so close that one of ordinary skill in the art would have expected the two inorganic oxide/glass flakes to have the same properties. See, e.g., Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The Office also notes copending application 17/605,966 recites an inorganic oxide composition similar to, even within, that instantly claimed (e.g., SiO2+Al2O3 is 40-70% by mass, Al2O3/(SiO2+Al2O3) is 0.15 to 0.40, Fe2O3 is 21-25% by mass, and CaO is 5%-25% by mass. See claim 3 in the copending application of the claims filed 04/09/2026. However, a double patenting rejection has not made in this Office action because the copending claims recite a fiber comprising the inorganic material rather than flakes comprising the inorganic material as instantly claimed. The recited configuration/shapes of a flake and fiber render the two claims distinct from one another.
Prior Art Cited But Not Applied
The following prior art is made of record and not relied upon but is considered pertinent to Applicant's disclosure:
Murakoso (JP H10-167754 A) teaches a glass composition comprising 35-48 wt.% SiO2, 6-13 wt.% Al2O3, 6-20 wt.% Fe2O3, and 4-15 wt.% CaO (abstract). The components used to form the glass are a powdered material and these materials are cast/vitrified to obtain a solidified glass (p.6). Murakoso fails to teach or suggest the glass is present as flakes, as claimed.
Unno et al. (JP 2001-213639 A) teach a glass flake with excellent chemical durability comprising 50-60 mol% SiO2, 4-15 mol% of Al2O3, and 10-32 mol% of CaO (abstract). Unno et al. further teach MnO and iron oxides such as FeO or Fe2O3 may be present as raw material impurities and SO3 and Sb2O3 may be present but the total content of all the impurities and additional fining agents is preferably less than 5 mol% so as to not adversely affect water resistance and Yong’s modulus (p.6). Accordingly, Unno et al. fail to teach or suggest (or provide sufficient motivation to arrive) a inorganic oxide/glass flake comprising the recited amounts of SiO2+Al2O3 (and ratio thereof), CaO, and 16-25 wt.% Fe2O3 as instantly claimed.
Fujiwara et al. (US 2008/0124559 A1) teach a glass flake comprising 59-65 wt.% SiO2, 8-15 wt.% Al2O3, and 20-30 wt.% CaO (abstract). The glass flake may further comprise Fe2O3 but Fe2O3 is limited to preferably 5 wt.% or less (para. 0061-0062), well below the instantly claimed range.
Kim et al. (KR 2021-0063092 A) teach an antibacterial glass composition comprising 20-45 wt.% SiO2, 1-15 wt.% of at least one of Al2O3 and TiO2, 10-40 wt.% of at least one of ZnO and CaO, and 1-20 wt.% of at least one of CuO and Fe2O3 (paragraph bridging p.3-4). Kim et al. further discloses the glass is present as a powder made by crushing or pulverizing the formed glass (p.7) but fails to teach or suggest the glass is present as flakes, as claimed.
The remaining references listed on Form 892 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
Examiner interviews are available via telephone 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 https://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
April 16, 2026
Prosecution Insights