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 .
Specification
Applicants’ amendments to the specification of December 26, 2025, are noted and entered.
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 1-7 and 15-19 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.
Regarding claims 1-7 and 15-19, claims 1 and 15 recites that the glass flakes are “derived from” a glass composition as claimed. The recitation of “derived from” renders the claims indefinite, as it is unclear if the recited components of the glass composition by weight are necessarily present in the final product or only represent starting materials used to form the glass flakes, such that the glass flakes are not required to comprise the claimed amounts of the components in the final product.
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.
Claims 1, 5-7, 15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 3,024,701 to Marks in view of DE 4119380 to Morimoto and US Pub. No. 2006/0001005 to Kishimoto.
Regarding claims 1, 5-7, 15, and 17-19, Marks teaches flake glass panels and specifically to panels having the power to control, absorb, reflect, refract and otherwise effect light, heat and sound incident thereon (Marks, column 1 lines 11-14, column 1 lines 38-70). Marks teaches that the glass flakes are preferably of a thickness of 5 microns, such as large size flakes 1/16”-1/4” x 0.0002” (Id., column 2 lines 36-68). Marks teaches a structure consisting of a plurality of porous glass flake sheets (Id., column 6 lines 26-75, Figures 9-11). Marks teaches that the panels have superior insulation properties (Id., column 7 lines 1-6).
Marks does not appear to teach that the porous glass flakes are formed as claimed. However, Morimoto teaches porous glass produced by using a mother glass containing in wt.% 50-70 SiO2, 20-30 B2O3, and 3-10 of at least one alkali metal oxide including Na2O (Morimoto, Abstract). Morimoto teaches that the mother glass is subjected to a phase separation by heat treating the glass producing a first phase rich in SiO2 and a second phase rich in B2O3 and alkali metal oxide (Id.). Morimoto teaches that the second phase is then leached out of the glass by treatment with an acid solution to produce pores in the residual glass (Id.). Morimoto teaches that the glass can be easily separated into the two phases by a heat treatment at 600-700ºC (Id., paragraphs 0008, 0018). Morimoto teaches that an inorganic acid such as hydrochloric or hydrofluoric acid is used as the acid solution (Id., paragraph 0018). Morimoto teaches that the mother glass in sheet form is pulverized into granules, followed by heating, immersing in acid solution to form the phases, and immersing in an acid solution to form pores (Id., Examples 1-4, paragraph 0022). Morimoto teaches that the porous glass is improved in terms of mechanical strength and chemical resistance (Id., paragraph 0008).
Additionally, Kishimoto teaches a glass composition including silicon oxide, boron oxide, sodium oxide, and a divalent metal oxide (Kishimoto, Abstract, paragraphs 0025, 0032-0047, 0050). Kishimoto teaches that MgO is a glass network modifier that improves meltability of a raw material batch (Id., paragraph 0110). Kishimoto teaches that like MgO, CaO improves the meltability of a raw material batch, and is superior to MgO in improving the devitrification resistance of glass, wherein higher contents of CaO exhibits a dark brown color (Id., paragraph 0111). Kishimoto teaches that the content of CaO is preferably 0 to 30 mol%, particularly preferably 0 to 10 mol% (Id.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the porous glass flake sheets of Marks, wherein the porous glass flakes are formed according to the method and based on a composition comprising components including greater than 0% of CaO, such as within the claimed ranges, as taught by Morimoto and Kishimoto, motivated by the desire of forming a conventional porous glass flake sheet formed by a method and comprising a composition known in the art as being predictably suitable for forming porous glass in flake or granular form and having improved meltability.
Regarding the preamble, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since the prior art combination teaches the claimed etched glass flakes to form panels having superior insulation properties, the process steps appear capable for use as claimed.
Regarding claims 5 and 17, the prior art combination teaches that the glass can be easily separated into the two phases by a heat treatment at 600-700ºC. Such a heating to separate into phases would appear to deform the shape of the glass.
Regarding claims 6, 7, 18, and 19, as set forth above, Kishimoto teaches a glass composition including silicon oxide, boron oxide, sodium oxide, and at least one divalent metal oxide selected from oxides including MgO and CaO (Kishimoto, Abstract, paragraphs 0025, 0032-0047, 0050). Kishimoto teaches that MgO is a glass network modifier that improves meltability of a raw material batch (Id., paragraph 0110). Kishimoto teaches than excessively high content of MgO causes a glass composition to exhibit a dark brown color (Id.). Note that any amount of Kishimoto would appear to add a brown color (i.e. an opacifier). Kishimoto teaches that the content of MgO is preferably 0 to 30 mol%, more preferably 0.1 to 30 mol% (Id.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the porous glass flake sheets of the prior art combination, wherein the composition comprises MgO in amounts, such as within the claimed ranges, as taught by Kishimoto, motivated by the desire of forming a conventional porous glass flake sheet comprising a composition known in the art as predictably improving meltability while causing the desired color change.
Regarding claims 18 and 19, the claims require applying at least one opacifier from about 0% to about 10% of the glass composition. Note that although the prior art teaches an amount of opacifier within the claimed range, alternatively, since the amount includes about 0%, the claimed limitation is interpreted as optional.
Claims 2-4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Marks in view of Morimoto, as applied to claims 1, 5-7, 15, and 17-19 above, and further in view of USPN 5,532,034 to Kirby.
Regarding claims 2-4 and 16, Marks teaches that the glass flakes are preferably of a thickness of 5 microns, such as large size flakes 1/16”-1/4” x 0.0002” (Marks, column 2 lines 36-68). Note that based on the size and thicknesses, the aspect ratio substantially overlaps with the claimed aspect ratio.
Marks teaches that the panels have superior insulation properties, but does not appear to teach combining the flakes with the claimed materials. However, Kirby teaches a getter system for vacuum insulation panels comprising different types of insulation filler (Kirby, Abstract, column 8 lines 26-50). Kirby teaches that although vacuum insulation panels are made of relatively impermeable packaging materials, they do allow entry of very small amounts of gas and moisture over time (Id., column 8 lines 26-50). Kirby teaches that appropriate fillers for the vacuum insulation panels have high porosity with very small interstitial spaces, wherein examples of such fillers are fine mineral particulates such as diatomite or expanded perlite, glass or other fine fibers, precipitated inorganics such as silica and calcium silicate, fumed silica, etc. (Id.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the porous glass flake sheets of the prior art combination, and combining different types of insulation filler such as perlite or fumed silica with the porous glass flakes, as taught by Kirby, motivated by the desire of forming a conventional insulation material comprising fillers with higher porosity with very small interstitial spaces such that the sheets are suitable as vacuum insulation panels.
Response to Arguments
Applicants’ arguments filed December 26, 2025, have been fully considered but they are not persuasive. Applicants argue that it is clear the phrase "the glass flakes are derived from a glass composition" refers to the starting materials that are utilized to make the final composition, and therefore, the rejection is improper. Examiner respectfully disagrees. Although Applicants’ remarks of December 26, 2025, recite that the phrase refers to the starting materials that are utilized to make the final composition, Applicants’ remarks do not clarify if the final insulation material in the method as claimed necessarily requires the claimed composition.
Applicants’ remaining arguments are moot based on the new ground of rejection.
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 PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786
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