DETAILED ACTION
Response to Amendment
Applicant’s amendments filed 4/28/26 has been entered. Currently claims 26-55 are pending, claims 1-25 are cancelled and claims 35-44 are withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 55 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 55 is a duplicate claim of claim 45. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 26-34, 45-48, 51-55 are rejected under 35 U.S.C. 103 as being unpatentable over Compoint et al (US Publication 20200189967).
As to claim 26, 30-32, 45 and 55, Compoint discloses a temperable tinted glass substrate that is partially coated with at least one black mineral pigment for a motor vehicle roof (abs). The coating composition of the mineral paint has sodium silicate, potassium silicate or lithium silicate (glass matrix) (paragraph 13). The mineral paint layer after drying is at least 1 microns thick (paragraph 16). The color coordinates of the paint, the L* value is less than around 5 and the components a* and b* preferentially neutral and tend towards 0. However this reference is silent to the specifics of the color values.
It would have been obvious to one of ordinary skill in the art to have modified Compoint and formed the tinted glass to have a mineral paint coating layer wherein the color values of the black pigment had an L* value of less than or equal to 15, an a* value of between -5 and +6 and a b* value of -4 to +5 as one of ordinary skill art would know how to adjust the pigment or pigments used within the composition to get a desired color and further Compoint discloses that this is a suitable color for use as a coating for a roof glazing as Compoint wants a neutral a* and b* that is a black pigment.
As to claim 27, Compoint is silent to the optical density of the glass substrate, however teaches that a very tinted window would have an optical density of 3 and allow .01% of light through while an optical density of .3 would allow 50% of light though (paragraph 20). Therefore, it would have been obvious to one of ordinary skill in the art to have modified Compoint to adjust the tint of the window depending upon the desired end use of the window depending upon if a user wants more or less tint.
As to claim 28, Compoint is silent to the pigment particles having an average particle diameter of .05 to .8 microns. It would have been obvious to one of ordinary skill in the art to have adjusted to the particle size to be .05 to .8 microns as one of ordinary skill in the art knows that adjusting the particle size will affect the opacity of the paint and therefore depending upon the end tint amount one could adjust the particle size to control the opacity. Further see MPEP 2144.04. Change in size.
As to claim 29, Compoint is silent to the scratch resistance being at least 5 N. It would have been obvious to one of ordinary skill in the art to have modified Compoint and formed the surface to have a scratch resistance of at least 5 N as Compoint teaches the use of alumina within the coating (paragraph 9) which increase the strength of the coating, further one would know how to adjust the coating to provide more scratch resistance which would cost more while a lower resistance would be cheaper and allow the paint to damage easier.
As to claim 33, Compoint teaches that at least one face is partially coated with a black coating further it teaches enamels which are also printed on the glass (paragraph 28). However, this reference is silent to the edge of the glass being covered by the coating to be .5 to 20 cm which an inner uncoated region. Therefore, since the enamels are used for the edges of the glass and have a very black color value of less than L* 5(paragraph 18) it would have been obvious to have the enamel coating be between .5 and 20 and that the enamel coatings are known to cover only the edge to black out the adhesion connections underneath. Further Compoint discloses that the coating is only partially on the face and one of ordinary skill in the art could have only coated the edge of the glass in an amount of .5 to 20cm for to form an aesthetically pleasing image as well as to hide the imperfections.
As to claim 34, Compoint teaches mineral fillers and other materials which would read on applicant’s network precursors (paragraph 8-13).
It should be noted that claim 46 is a product by process claim in that it defines how the coated was formed. 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 the coated glass substrate structure wherein the coating has a specific thickness, color and made of glass matrix particles, and the reference discloses such a product.
As to claims 47-48, it should be noted that the claims are directed to a final product and that the final product comprises iron, chromium, copper, cobalt and/or manganese (paragraph 12).
As to claims 51-53, Compoint discloses a coated glass substrate that is made of similar materials used for the same purpose of automobiles. Therefore, the coated glass substrate would inherently have an average bending strength of at least 130 N/mm2, and scratch resistance of at least 15 N. In the alternative it would have been obvious to have made the coated glass substrate have these properties as they are both directed to glazing used within automobiles as has improved mechanical strength.
As to claim 54, Compoint discloses that the color coordinates of the paint, the L* value is less than around 5 and the components a* and b* preferentially neutral and tend towards 0. However this reference is silent to the specifics of the color values.
It would have been obvious to one of ordinary skill in the art to have modified Compoint and formed the tinted glass to have a mineral paint coating layer wherein the color values of the black pigment had an L* value of less than or equal to 5, an a* value of between -1 and +1 and a b* value of -1.7 to +1.5 as one of ordinary skill art would know how to adjust the pigment or pigments used within the composition to get a desired color and further Compoint discloses that this is a suitable color for use as a coating for a roof glazing as Compoint wants a neutral a* and b* that is a black pigment
Claims 46-55 are rejected under 35 U.S.C. 103 as being unpatentable over Compoint et al (US Publication 20200189967) and Murata (JP 2000351651 which has been machine translated).
As to claims 46-50, 54 and 55, Compoint renders claim 26 obvious for the reasons noted above, however is silent to specifics of the coating.
Murata discloses a privacy window glass for a vehicle such as an automobile, wherein the surface of the glass is coated with a black pigment comprised of iron, copper, and manganese in a silica matrix. The silica matrix is formed from an alkoxysilane. A thickness of the layer is 3 to 6 microns.
It would have been obvious to one of ordinary skill in the art to have modified Compoint and formed the tinted glass to have a mineral paint coating layer wherein the color values of the black pigment had an L* value of less than or equal to 5, an a* value of between -1 and +1 and a b* value of -1.7 to +1.5 as one of ordinary skill art would know how to adjust the pigment or pigments used within the composition to get a desired color and further Compoint discloses that this is a suitable color for use as a coating for a roof glazing as Compoint wants a neutral a* and b* that is a black pigment
It would have been obvious to one of ordinary skill in the art to have modified Compoint and Murta and used the black colorant as suggested by Compoint within the glass coating of Murta as it would have been a suitable alternative to provide a privacy/tinted glass window for automobiles. See MPEP 2144.06. Further it would have been obvious to use the silica matrix of Murta for the black ink used in Compoint as it would have been a suitable alternative to provide a privacy/tinted glass window for automobiles. See MPEP 2144.06. Compoint further teaches that the enamel paints lead to the mechanically weakening of the glass and therefore this coating would allow for a higher mechanical strength and are both silica-based compositions.
As to claims 51-53, Compoint and Murta discloses a coated glass substrate that is made of similar materials used for the same purpose of automobiles. Therefore, the coated glass substrate would inherently have an average bending strength of at least 130 N/mm2, and scratch resistance of at least 15 N. In the alternative it would have been obvious to have made the coated glass substrate have these properties as they are both directed to glazing used within automobiles as has improved mechanical strength.
Response to Arguments
Applicant's arguments filed 4/28/26 have been fully considered but they are not persuasive.
Applicant’s argue that Compoints is different from Applicant’s invention. The examiner respectfully disagrees and argues that claim 26 requires a coated glass substrate that has inorganic glass matrix and pigment particles with a thickness of .6 to 8 microns and a specific color. Compoint teaches inorganic glass matrix material and a pigment that meets/renders obvious the color as claimed. Further Compoint discloses the thickness as required. Further as to applicant’s arguments of claim 26, the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the process materials and procedures) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Further for article as claim it should be noted that 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 the coated glass substrate structure wherein the coating has a specific thickness, color and made of glass matrix particles, and the reference discloses such a product.
As to the improper hindsight argument, the examiner respectfully disagrees as the reference of Compoint leads one of ordinary skill in the art to have an L* value of less than 5 as that’s a black color and an a* and b* start to be 0 which is neutral. These would overlap within the claimed range.
As to claims 27-29 applicant’s argue that these limitations are not obvious. The examiner respectfully disagrees and argues that one of ordinary skill in the art would know how to adjust the optical density/particle size and scratch resistance of the coating as noted above absent unexpected results as one would know how to control these properties to obtain a desired end product as they are both used as automobile windows.
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 CHRISTOPHER M POLLEY whose telephone number is (571)270-5734. The examiner can normally be reached Monday through Friday from 8am till 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 5712721291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER M POLLEY/Primary Examiner, Art Unit 1785
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