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 .
DETAILED ACTION
Response to Arguments
Applicant's arguments filed 1/29/2026 have been fully considered but they are not persuasive.
Regarding the applicant’s argument that the claimed features are directed to a chemically homogeneous single enamel composition and that Baldwin is merely a physical mixture of multiple different compositions, the examiner disagrees. First, the examiner points out that the claims do not require that the composition be chemically homogenous. Second, though Baldwin discloses mixtures of different compositions, Baldwin states “The composition according to the present invention is typically fired at a temperature… Upon firing, the composition according to the present invention forms an enamel ground coat” (column 4, line 39). This implies a single, uniform composition.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Baldwin (US 6511931 B1), hereinafter Baldwin, in view of Kim (US 20130299482 A1), hereinafter Kim.
Regarding claim 1, Baldwin discloses an enamel composition, comprising:
15 to 50 wt% of phosphorous pentoxide (
P
2
O
5
);
5 to 20 wt% of one or more of lithium superoxide (
L
i
2
O
), sodium oxide (
N
a
2
O
), or potassium oxide (
K
2
O
);
fluoride;
1 to 35 wt% of one or more of magnesium oxide (
M
g
O
), barium oxide (
B
a
O
), or calcium oxide (
C
a
O
);
one or more of manganese dioxide (
M
n
O
2
), molybdenum trioxide (
M
o
O
3
), bismuth oxide (
B
i
2
O
3
), or nickel oxide (
N
i
O
); and
2 or less wt% of titanium dioxide (
T
i
O
2
), wherein when the enamel composition includes both
M
o
O
3
and (
B
i
2
O
3
), 2 or less wt% of any one of
M
o
O
3
or
B
i
2
O
3
is included (Examples I and IV possess multiple frits milled together in certain proportions. The examiner has retrieved the relevant data and placed it into a table for simplicity. The examiner notes that the zinc oxide is not given in the table, but is specifically mentioned in column 3, line 13).
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200
400
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Baldwin does not disclose:
1 to 5 wt% of one or more of sodium fluoride (
N
a
F
), calcium fluoride (
C
a
F
2
), or aluminum fluoride (
A
l
F
3
);
5 to 30 wt% of one or more of manganese dioxide (
M
n
O
2
), molybdenum trioxide (
M
o
O
3
), bismuth oxide (
B
i
2
O
3
), or nickel oxide (
N
i
O
).
However, it has been held that “[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See MPEP §2144.05(II)(A) (quoting In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Although, it has been further held that "[a] particular parameter must first be recognized as a result-effective variable, i.e. a variable which achieves a recognized result, before determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. Refer to MPEP §2144.05(II)(B)(quoting In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In this case, Baldwin discloses a weight percentage of
M
n
O
2
,
M
o
O
3
,
B
i
2
O
3
,
N
i
O
, but does not specifically recite 5 to 30 wt%. Achieving 5 to 30 wt% is a results-effective variable because baldwin states “The
C
u
O
,
C
o
2
O
3
, and
N
i
O
are present in the frit to assist in obtaining a good bond to steel” (column 3, line 13). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the proportion of
N
i
O
, because the selection of proportion to achieve good bonding constitutes the optimization of design parameters, which fails to distinguish the claim
Baldwin does not disclose 1 to 5 wt% of one or more of sodium fluoride (
N
a
F
), calcium fluoride (
C
a
F
2
), or aluminum fluoride (
A
l
F
3
).
However, Kim teaches 1 to 5 wt% of one or more of sodium fluoride (
N
a
F
), calcium fluoride (
C
a
F
2
), or aluminum fluoride (
A
l
F
3
) (“The compound containing F may include
C
a
F
2
,
H
2
S
i
F
6
,
N
a
2
S
i
F
6
, or
A
l
F
3
. However, the current embodiment is not limited thereto, and thus, may include various compounds containing F. F and/or a compound containing F may be contained in an amount of about 1.8 wt % to about 7.7 wt % in the glass frit. Preferably, F may be may be contained at a rate of about 1.8 wt % to about 6.9 wt % in the glass frit” paragraph [0046]).
Baldwin does not disclose the claimed fluoride compound. Kim teaches the claimed fluoride compound. The substitution of one known element (the generically recited fluoride of Baldwin) for another (the
C
a
F
2
or
A
l
F
3
of Kim) would have been obvious to one having ordinary skill in the art at the time of the invention, since the substitution of the fluoride compounds taught in Kim would have yielded predictable results, namely, the introduction of fluoride to the frit Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 86 USPQ2d 1110 (Fed. Cir. 2008). Additionally, it has been held that “[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See MPEP §2144.05(II)(A) (quoting In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Although, it has been further held that "[a] particular parameter must first be recognized as a result-effective variable, i.e. a variable which achieves a recognized result, before determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. Refer to MPEP §2144.05(II)(B)(quoting In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In this case, Baldwin discloses a weight percentage of fluoride, but does not specifically recite 1-5%. Achieving 1-5% is a results-effective variable because Kim states “F and/or a compound containing F may adequately adjust surface tension of the coating layer” (paragraph [0045]). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the proportion of fluoride compound, because the selection of proportion to achieve adequately adjusted surface tension constitutes the optimization of design parameters, which fails to distinguish the claim.
Regarding claim 2, Baldwin, as modified by Kim, discloses the enamel composition of claim 1, further comprising:
20 or less wt% of silicon dioxide (
S
i
O
2
) (At least example IV).
Regarding claim 3, Baldwin, as modified by Kim, discloses the enamel composition of claim 1, further comprising:
15 or less wt% of bismuth oxide (
B
i
2
O
3
) (Baldwin discloses less than 15 wt%
B
i
2
O
3
).
Regarding claim 4, Baldwin, as modified by Kim, discloses the enamel composition of claim 1, further comprising:
1 to 20 wt% of aluminum oxide (
A
l
2
O
3
);
1 to 5 wt% of zirconium dioxide (
Z
r
O
2
); and
1 to 20 wt% of one or more of tin oxide (
S
n
O
) or zinc oxide (
Z
n
O
) (At least example I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Lee (US 3547098 A)
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314
372
media_image2.png
Greyscale
Ott (US 3580733 A) “It is essential to the development of good continuous cleaning properties that the enameling composition is in intimate contact with a source of halide in a proportion of at least about 1/2% and up to about 25% measured as the halogen element basis weight of the glass frit” column 8, line 8 and “The halide can be smelted into the frit by addition of fluorspar, sodium silicofluoride, cryolite, sodium fluoride or other alkali metal halide” column 8, line 28
Espargilliere (US 20050014625 A1)
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224
472
media_image3.png
Greyscale
THIS ACTION IS MADE FINAL. 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 LOGAN P JONES whose telephone number is (303)297-4309. The examiner can normally be reached Mon-Fri 8:30-5:00 EST.
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, Michael Hoang can be reached at (571) 272-6460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LOGAN P JONES/Examiner, Art Unit 3762 /MICHAEL G HOANG/Supervisory Patent Examiner, Art Unit 3762
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