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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In regard to claims 1-20, Applicant’s claims an “opacification coating” (claim 1, line 3) or a “thin iron-based layer … that is to be opacified” (claim 9, lines 4-6) wherein the opacification coating has “a colour in the 1976 CIE L*a*b* colour space defined by the L*, a* and b* parameters” (see claim 6, lines 1-4 and claim 19, lines 1-3). However, Applicant merely makes mention to the same limitations with respect to “the 1976 CIE L*a*b* colour space defined by the L*, a* and b* parameters “ in paragraph [0030] without giving in context as to what the 1976 CIE L*a*b* colour space defined by the L*, a* and b* parameters are. Clarification and/or further description is required such that one skilled in the relevant art would be able to carry out the claimed the invention including the claimed “opacification coating”.
Claims 12-14 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 regard to claim 12, Applicant’s use of the term “preferably” (line 3) renders the claim indefinite since the metes and bounds of the claim cannot be readily ascertained; the use of the term should be avoided.
In regard to claim 13, Applicant’s use of the term “preferably” (line 3) renders the claim indefinite since the metes and bounds of the claim cannot be readily ascertained; the use of the term should be avoided.
In regard to claim 14, Applicant’s use of the term “preferably” (line 3) renders the claim indefinite since the metes and bounds of the claim cannot be readily ascertained; the use of the term should be avoided.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN O DOUGLAS whose telephone number is (571)272-4885. The examiner can normally be reached Monday - Thursday 5:30-4:00 EST.
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/STEVEN O DOUGLAS/ Primary Examiner, Art Unit 3612
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