DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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 .
Election/Restrictions
Currently amended claims 11 and 13-20 and newly submitted claim 21 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the inventions (i.e. a composition and a cooking appliance) are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as an enamel composition for enamel coated cast iron cookware, and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 11 and 13-21 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Drawings
The drawings were received on July 20, 2026. These drawings are acceptable.
Claim Objections
Claim 16 (Canceled) is objected to because of the following informalities: claim 16 is not canceled. It is currently amended. Appropriate correction is required.
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 1-4 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2018/0215665) in view of Lee et al. (US 2013/0299482). Note that the second named inventor is referenced for US 2013/0299482.
Regarding claim 1, Kim discloses a glass composition that may be an enamel composition wherein the glass composition comprises a glass frit including: P2O5 contained in an amount of 20 wt % to 40 wt % based on a total weight of the glass frit, SiO2 contained in an amount of up to 30 wt % based on the total weight of the glass frit, B2O3 contained in an amount of 3 wt % to 20 wt % based on the total weight of the glass frit, Al2O3 contained in an amount of 7 to 24 wt % based on the total weight of the glass frit, and ZrO2 contained in an amount of 1 wt % to 7 wt %, see abstract and [0042].
Additionally, the reference discloses Na2O may be present in an amount of about 3 wt % to about 9 wt % based on the total weight of the glass frit, K2O may be present at about 7 wt % to about 14 wt % based on the total weight of the glass frit, and
Li2O may be present in an amount of about 0.1 wt % to about 1.5 wt % based on the total weight of the glass frit [0048-0057].
The reference further discloses TiO2 may be present at about 1 wt % to about 8 wt % based on the total weight of the glass frit and NiO may be present in an amount of about 2 wt % to about 4 wt % based on the total weight of the glass frit [0075 & 0092].
While the reference discloses the composition includes cobalt oxide to enhance adhesion, the reference fails to disclose the cobalt oxide as CoO [0088-0092].
Lee discloses an enamel composition that includes an adhesion enhancement component such as CoO, see abstract. The reference further discloses the enamel composition may include about 0.6 wt% to about 2.6 wt% of CoO [0014]. Additionally, the reference discloses that since the enamel composition contains the adhesion enhancement component, it may be directly coated on metal plates without providing an additional buffer layer [0082].
It would have been obvious to one of ordinary skill in the art at the time of the invention for the composition of Kim to include CoO as a known adhesion enhancement component that allows the composition to be directly coated on metal plates without providing an additional buffer layer. Note that the weight percentages disclosed in Kim and Lee overlap the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists; see MPEP 2144.05 I. While the references do not specifically disclose that the composition is capable of forming an enamel coating layer fired at 810°C or less; see MPEP 2112.01 I & II: Products of identical chemical composition can not have mutually exclusive properties.
Regarding claim 2, Kim discloses the frit may further include ZnO present in an amount of about 3 wt % to about 7 wt % based on the total weight of the glass frit, which overlaps the claimed range [0080]; see MPEP 2144.05 I.
Regarding claim 3, Kim discloses frit may include NaF present in an amount from about 0.1 wt % to about 5 wt % based on the total weight of the glass frit, which overlaps the claimed range [0083-0085]; see MPEP 2144.05 I.
Regarding claim 4, the reference discloses Fe2O3 may be present in an amount of about 2 wt % to about 4 wt % based on the total weight of the glass frit, which overlaps the claimed range [0092]; see MPEP 2144.05 I.
Claim 6 defines the product by how the product was made, the composition is prepared through a method comprising melting the composition and cooling the molten enamel composition. Thus claim 6 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply an enamel composition. The reference suggests such a product.
Regarding claim 7, Kim discloses the frit may further include ZnO present in an amount of about 3 wt % to about 7 wt % based on the total weight of the glass frit, which overlaps the claimed range [0080]; see MPEP 2144.05 I.
Regarding claim 8, Kim discloses frit may include NaF present in an amount from about 0.1 wt % to about 5 wt % based on the total weight of the glass frit, which overlaps the claimed range [0083-0085]; see MPEP 2144.05 I.
Regarding claim 9, the reference discloses Fe2O3 may be present in an amount of about 2 wt % to about 4 wt % based on the total weight of the glass frit, which overlaps the claimed range [0092]; see MPEP 2144.05 I.
Claims 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2018/0215665) in view of Lee et al. (US 2013/0299482) as applied to claims 1 and 6 above, and further in view of Damewood et al. (US 2018/0290915).
Kim in view of Lee discloses the enamel composition of claims 1 and 6, see above discussion. Neither reference, however, discloses the composition as comprising CuO at the claimed amount.
Damewood discloses a porcelain enamel comprising CuO in order to provide color to the enamel [0011 & 0027]. The reference further discloses that CuO may be included in an amount ranging from about 0 to about 5 wt% of the enamel composition, depending on the desired color [0011].
It would have been obvious to one of ordinary skill in the art at the time of the invention for the enamel composition of Kim to comprise CuO in order to produce the desired color.
Response to Arguments
Applicant's arguments filed July 20, 2026 have been fully considered but they are not persuasive.
According to Applicant, the claimed features relate to providing the unexpected technical benefit of an enamel composition which has excellent cleaning functionality, and secures excellent thermal shock resistance and durability when realizing an enamel coating on a metallic substrate. Specifically, the relatively high amounts of P2O5 and content of Al, Ti and Zr as well as R2O are adjusted so the resulting enamel composition is capable of preventing deformation of the underlying substrate by lowering firing temperature. According to Applicant, the references do not teach or suggest the claimed combination of features. Applicant further notes that while the ranges overlap, none of the references recognize the technical benefits of the claimed composition and the disclosed examples do not have the claimed firing temperature.
As discussed above, and previously, the disclosed ranges for the individual constituents overlap the claimed ranges. As such, as discussed above and previously, a prima facie case of obviousness exists; see MPEP 2144.05 I. Applicant may rebut a prima facie case of obviousness by showing the criticality of the claimed range or that the prior art teaches away from the claimed invention; see MPEP 2144.05 III A. & B. To the extent Applicant argues the reference teaches away from the claimed invention, Examiner notes that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”; see MPEP 2123.
Further, in order to show criticality of the claimed range, "objective evidence of nonobviousness must be commensurate in scope with the claims"; see MPEP 716.02(d). The examples cited from Applicant’s specification include components such as ZnO, TiO2, CuO and Fe2O3 that are not claimed. Given the claims do not include these limitations, Applicant’s argument of criticality is not commensurate in scope with the claims. Additionally, Applicant should compare a sufficient number of tests both inside and outside the claimed range; see MPEP 716.02(d) II. Applicant has only provided one comparative example, and it has a P2O5 value below the claimed range. There are not examples provided with a P2O5 value above the claimed range. Similarly, the inventive examples do not show the unexpected result as across the entire claimed range. Lastly, any assertion of unexpected results must be compared with the closest prior art, see MPEP 716.02(e). Applicant has failed to provide a comparison between the claimed range and the closest prior art. Given the disclosed ranges overlap the claimed ranges, that Applicant has not provided sufficient evidence of criticality or of teaching away and that the rejection is not based on optimization (i.e. broadness of the range is not a consideration in determining if the rejection is proper), Examiner respectfully maintains the rejections under 35 U.S.C. 103 over Kim in view of Lee.
Applicant further argues that one of ordinary skill in the art would not have been motivated to modify Kim by Damewood absent improper hindsight. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
For the above reasons, the rejection under 35 U.S.C. 103 over Kim in view of Lee (and Damewood) are respectfully maintained.
Conclusion
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 LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at (571)272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA A AUER/Primary Examiner, Art Unit 1783
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