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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis 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.
Status of the Claims
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Claims 1 and 3-16 are currently pending.
Claims 6-16 have been withdrawn.
Claim 2 has been cancelled.
Claims 1 and 3-5 are currently rejected.
Claims 1 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Gwoo et al., International Patent Publication WO 2018/143700 A1.
Claims 1 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 11,401,201.
Claims 1 and 3-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,479,500.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted 13 April 2026 has been considered by the Examiner.
Terminal Disclaimer
The terminal disclaimer filed on 14 April 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/274,309 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Comment
Claim 1 recites the following three clauses:
“15 to 35% of at least one of Na2O, Li2O and K2O”
“15 to 35% by weight of at least one of Al2O3, TiO2 and ZrO2”
“1 to 10% by weight of at least one of Fe2O3, Co3O4 and NiO”.
These clauses are read such that the weight percentage is the total content amount of the three components listed and not a range for each individual component. For example, the total amount of Na2O+Li2O+K2O is 15 to 35% by weight.
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.
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 1 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Gwoo et al., International Patent Publication WO 2018/143700 A1.
This rejection is over the International Patent Publication because this reference qualifies as prior art under 35 U.S.C. 102(a)(1). However, for convenience, the column and line numbers of the English language equivalent U.S. Patent Application Publication No. 2021/0363052 A1 will be cited below.
Gwoo et al. teach a glass frit comprising in terms of weight percentages: 10-30% of P2O5, 0-18% of B2O3, 0-40% of SiO2, 0-30% of Al2O3, 0-8% of ZrO2, 0-30% of Li2O+Na2O+K2O, 0-5% of TiO2+SnO2, 0-5% of NaF+CaF2+AlF3, and 1-5% of Co3O4+NiO+Fe2O3+MnO2. See Abstract and the entire specification, specifically, paragraphs [0044]-[0081]. Gwoo et al. teach the glass frit is used an enamel for a glass glaze coated on a surface of a metal plate. See paragraph [0002].
Gwoo et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 1 and 3-5. However, the weight percent ranges taught by Gwoo et al. have overlapping compositional ranges with instant claims 1 and 3-5. See paragraphs [0044]-[0081]. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Gwoo et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Gwoo et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Specifically, as to claim 1, Gwoo et al. teach a glass comprising in terms of weight %: 0-40% of SiO2, 10-30% of P2O5, 0-18% of B2O3, 13-30% of Li2O+Na2O+K2O, 0-30% of Al2O3, 0-5% of TiO2+SnO2, 0-8% of ZrO2, 1-5% of Co3O4+NiO+Fe2O3+MnO2, and 0-5% of NaF+CaF2+AlF3, (see paragraphs [0044]-[0081]),which reads on an enamel comprising in terms of weight percentages: 10-25% of SiO2, 15-30% of P2O5, 1-15% of B2O3, 15-35% of Na2O+Li2O+K2O, 1-5% of NaF, 15-35% of Al2O3+TiO2+ZrO2, ≥10.54% of Na2O, and 1-10% of Fe2O3+Co3O4+NiO, as recited in instant claim 1.
As to claim 3, Gwoo et al. teach a glass comprising 0-30 wt% of Al2O3, (see paragraph [0058]), which reads on the enamel comprising at least 5 wt% of Al2O3, as recited in instant claim 3.
As to claim 4, Gwoo et al. teach a glass comprising 1-5 wt% of Co3O4+NiO+Fe2O3+MnO2, (see paragraphs [0076]-[0081]), which reads on the enamel comprising 0.1 wt% or more of Fe2O3 and Co3O4, as recited in instant claim 4.
As to claim 5, Gwoo et al. teach a glass comprising 1-5 wt% of Co3O4+NiO+Fe2O3+MnO2, (see paragraphs [0076]-[0081]), which reads on the enamel comprising at least 1 wt% of Fe2O3+Co3O4.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 11,401,201. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional ranges overlap. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Claims 1 and 3-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,479,500. Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional ranges overlap. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Response to Arguments
Applicant’s arguments, see page 5, filed 14 April 2026, with respect to the 35 U.S.C. Rejection over US 2018/0215655 by Kim et al. have been fully considered and are persuasive. The rejection of claims 1-5 over Kim et al. has been withdrawn.
Applicant’s arguments, see pages 4 and 5, filed 14 April 2026, with respect to the rejection of claims 1-5 under 35 U.S.C. 102 as being anticipated by Gwoo et al., WO 2018/143700 A1 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of 35 U.S.C. 103. See above rejection.
Applicant’s arguments, see page 5, filed 14 April 2026, with respect to the rejection of claims 1 and 3 on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 11,401,201 have been fully considered but they are not persuasive. Applicant argues that the ‘201 patent recites that the enamel composition essentially includes MoO3, and further states that claim 1 recites that the enamel comprises 5-15 wt% of a sum of MoO3 and V2O5 or a sum of MoO3 and Fe2O3. This is not found persuasive since the limitation 5-15 wt% of a sum of MoO3 and V2O5 or a sum of MoO3 and Fe2O3 does not require MoO3. The claim only requires that the enamel comprise a total of MoO3+V2O5 or a total of MoO3+Fe2O3 be 5-15 wt%. The instant claims teach that the enamel comprises 1-10 wt% of at least one of Fe2O3, Co3O4, and NiO, which meets this limitation. Additionally, the claims of the instant application using the claim language “comprising”, therefor the instant claims are open to comprising additional components such as MoO3. Applicant further argues that the enamel of ‘201 does not teach that claims require at least 10.54 wt% of Na2O. This is not found persuasive since ‘201 recites that the glass comprises 5-20 wt% of at least one of Li2O, Na2O, and K2O, which overlaps the instant claims. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Applicant’s arguments, see pages 5 and 6, filed 14 April 2026, with respect to the rejection of claims 1 and 3-5 on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 11,479,500 have been fully considered but they are not persuasive. Applicant argues that the ‘500 patent recites that the enamel composition essentially includes MoO3. The claims of the instant application using the claim language “comprising”, therefor the instant claims are open to comprising additional components such as MoO3. Applicant further argues that the enamel of ‘500 does not teach that claims require at least 10.54 wt% of Na2O. This is not found persuasive since ‘500 recites that the glass comprises 15-30 wt% of Group I oxide wherein Group I oxide includes at least one of Li2O, Na2O, and K2O, which overlaps the instant claims. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
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 Elizabeth A. Bolden whose telephone number is (571)272-1363. The examiner can normally be reached 10:00 am to 6:30 pm M-F.
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, Amber R. Orlando can be reached at 571-270-3149. 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.
/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
2 June 2026
Prosecution Insights