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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-6 in the reply filed on 6 May 2026 is acknowledged.
Claims 7-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6 May 2026.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted 22 March 2023, 3 January 2024, and 7 May 2026 have been considered by the Examiner.
Specification
The disclosure is objected to because of the following informalities:
On page 4, line 7, the component “LiO2” should read “Li2O”.
Table 1, on pages 7 and 8, the components P2O5, SiO2, B2O3, Na2O, K2O, Li2O, Al2O3, ZrO2, TiO2, MnO2, and Fe2O3 should utilize proper chemical subscripting.
Table 2, on page 8, the components SiO2, Al2O3, ZrO2, and TiO2 should utilize proper chemical subscripting.
Appropriate correction is required.
Drawings
The original drawings received on 22 March 2023 are accepted by the Examiner.
Claim Objections
Claim 4 is objected to because of the following informalities: minor typographical errors.
Claim 4 recites in line 8 “0.4 to 1.6 wt% of LiO2”, this should be “0.4 to 1.6 wt% of Li2O.
Appropriate correction is required.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 5, and 6 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Kim et al., U.S. Patent Application Publication, US 2019/000236 A1.
Kim et al. disclose an enamel composition comprising a glass frit, (see paragraph [0062]-[0065]), a siloxane- based component comprising methylhydrosiloxane, dimethylsiloxane, or trimethylsiloxane, (see paragraph [0065]-[0073]), a silane-based component comprising an amino silane (see paragraphs [0077]-[0080]), and a mill addition comprising an alumina powder (see paragraph [0081]). See Abstract and the entire specification, specifically, paragraphs [0062]-[0073] and [0077]-[0081]. The compositional ranges of Kim et al. are sufficiently specific to anticipate the enamel composition as recited in claims 1, 5, and 6. See MPEP 2131.03.
Specifically, as to claim 1, Kim et al. discloses an enamel composition comprising a glass frit, a siloxane-based component, a silane-based component, and an alumina powder (see paragraphs [0062]-[0066] and [0077]-[0081]), which reads on an enamel composition comprising glass frits; a siloxane-based compound; a silane-based compound; and a mill addition comprising one or more selected from the group comprised of SiO2, Al2O3, ZrO2, and TiO2, as recited in instant claim 1.
As to claim 5, Kim et al. disclose the enamel comprises methylhydrosiloxane, dimethylsiloxane, or trimethylsiloxane, (see paragraphs [0067]-[0073]), which reads on an enamel comprising a siloxane-based compound comprising a polymethylhydrosiloxane or a polydimethylsiloxane, as recited in instant claim 5.
As to claim 6, Kim et al. disclose the enamel comprises amino silane (see paragraphs [0077]-[0080]), which reads on an enamel comprising a silane-based compound comprising an amino silane, as recited in instant claim 6.
Claims 2-4 are rejected under 35 U.S.C. § 103 as being unpatentable over Kim et al., U.S. Patent Application Publication, US 2019/000236 A1.
Kim et al. teach an enamel composition comprising a glass frit in the amount of at least 99 wt% of the enamel composition, (see paragraph [0062]-[0065]), electrostatic force reinforcing material including a siloxane-based component in the amount of 0.1-0.3 wt% of the enamel composition, (see paragraph [0067]-[0073]), the enamel comprises a silane-based component in the amount of 0.05-0.1 wt% of the enamel (see paragraphs [0077]-[0080]), and the enamel includes an alumina powder (see paragraph [0081]). Kim et al. teach an enamel composition comprising a glass frit comprising in terms of weight percentages: 20-50% of P2O5, 0-10% of SiO2, 12-38% of a Group I oxide, 0.1-3% of Li2O, 10-25% of Na2O, 0.1-10% of K2O, 10-25% of Al2O3, 0-5% of B2O3, 0-5% of ZrO2, and 0.1-4% of a total amount of TiO2, SnO, ZnO, CaO, MgO, BaO, NaF, CaF2, AlF3, Co3O4, NiO, Fe2O3, and MnO2, (see paragraphs [0036]-[0058]). Kim et al. teach that the glass cullet is milled to have a grain diameter of about 45 µm or less, (see paragraph [0087]).
Kim et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 2-4. However, the weight percent ranges taught by Kim et al. have overlapping compositional ranges with instant claims 2-4. 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 Kim 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 Kim 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 2, Kim et al. teach that the glass enamel comprises at least 99 wt% of a glass frit, 0.1—0.3 wt% of an electrostatic force reinforcing material (or a siloxane-based compound), 0.05-0.1 wt% of a silane-based compound, and an alumina powder, (see paragraphs [0062]-[0073] and [0077]-[0081]), which reads on an enamel comprising 85-99.75 wt% of glass frits, 0.1-2.5 wt% of a siloxane-based compound, 0.05-2.5 wt% of a silane-based compound, as recited in instant claim 2. While Kim et al. does not specifically teach the amount of alumina powder in the enamel composition, one of ordinary skill in the art at the time the invention was filed would add the alumina powder in at least the range of 0-0.85 wt% based on the amounts of the other components, which reads on the enamel composition comprising 0.1-10 wt% of the mill addition, as recited in instant claim 2. The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” See MPEP 2143(I)(E).
As to claim 3, Kim et al. teaches an alumina powder (mill addition), (see paragraph [0081]). Kim et al. teach that the glass frit has a particle size of about 45 µm or less, (see paragraph [0087]). Kim et al. fails to teach that the mill addition has a particle size of 50-100 µm as recited in claim 3. However, one having ordinary skill in the art at the time the invention was filed, would expect that the alumina powder of Kim et al. to have a particle size on the same order of the glass frit and it would be within the technical grasp of one of ordinary skill in the art to utilize a mill addition of alumina powder having a particle size in the range of 50-100 µm as recited in claim 3.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” See MPEP 2143(I)(E).
As to claim 4, Kim et al. teach an enamel composition comprising a glass frit comprising in terms of weight percentages: 20-50% of P2O5, 0-10% of SiO2, 12-38% of a Group I oxide, 0.1-3% of Li2O, 10-25% of Na2O, 0.1-10% of K2O, 10-25% of Al2O3, 0-5% of B2O3, 0-5% of ZrO2, and 0.1-4% of a total amount of TiO2, SnO, ZnO, CaO, MgO, BaO, NaF, CaF2, AlF3, Co3O4, NiO, Fe2O3, and MnO2, (see paragraphs [0036]-[0058]).
Kim et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claim 4. However, the weight percent ranges taught by Kim et al. have overlapping compositional ranges with instant claim 4. 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 Kim 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 Kim 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.
Conclusion
The additional references cited on the 892 have been cited as art of interest since they are considered to be cumulative to or less than the art relied upon in the rejections above. Specifically, European Patent Publication, EP 3 539 933 A1, by Kim et al.2. Kim et al.2 teaches an enamel composition comprising a glass frit comprising in terms of wt%, 11-17% of P2O5, 29.6-38% of SiO2, 13.6-19.6% of B2O3, 0.4-1.6% of Li2O, 5.3-14.5% of Na2O, 2.3-4.5% of K2O, 3.8-13.2% of Al2O3, 0.8-4.1% of ZrO2, 0.1-1.5% of TiO2, 1.8-6.9% of F, 0.6-2.6% of CoO, 0.1-0.6% of MnO2, 0.3-1.4% of NiO, and 0.1-4.3% of Fe2O3. See paragraph [0013]. Kim et al.2 further teaches that the enamel may include chemical property enhancement components such as TiO2, ZrO2, Al2O3, and SiO2 to increase the heat resistance, chemical resistance, and surface hardness of the enamel. See paragraph [0081].
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.
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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.
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
9 June 2026
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