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 .
Examiner’s Comments
The Examiner contacted the Applicant’s Representative Joseph Edelstein on 23 April 2026 to confirm the correct set of claims. There were two sets of claims filed 29 December 2023, neither of which contained mark-ups to indicate preliminary amendments. The correct set of claims were identified as the one where claim 1 reads “1. A joining connection for an airbag igniter, comprising: an electrically insulating component comprising a glass; and at least two joining partners, the at least two joining partners being kept electrically insulated from one another by the electrically insulating component.”
Additionally, the Applicant’s Representative and the Examiner discussed that the Restriction Requirement mailed 20 November 2025 was done as a Lack of Unity restriction under PCT National Stage practice, however the application is filed as a continuation of the PCT application and therefore should be under U.S. restriction practice. The groupings of the claims would be the same and the Applicant elected without traverse of Group I, claims 1-13, in a reply filed 20 January 2026. The instant Office Action will present the U.S. practice restriction with the election to complete the record.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-13, drawn to a glass joining connection, classified in C03C 27/00.
II. Claims 14-18, drawn to a glass composition, classified in C03C 8/24.
III. Claim 19, drawn to a method of producing a glass joining connection, classified in C03B 3/02.
The inventions are independent or distinct, each from the other because:
Inventions II and I 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 a sealing composition wherein the glass cover a device such as an LED element and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions I and III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the joining connection can be made by a materially different process which requires the electrically insulating component comprising a glass to form a connection between at least two joining partners wherein the glass material is not made into a preform.
Inventions II and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the glass composition can be used in a materially different manner such that the glass composition is used as a coating or enamel.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
- The inventions have acquired a separate status in the art in view of their different classification.
- The inventions have acquired a separate status in the art due to their recognized divergent subject matter.
- The inventions require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these 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.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-13 in the reply filed on 20 January 2026 is acknowledged.
Claims 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 20 January 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The Examiner acknowledges that the application is a continuation of the International Application PCT/EP2022/067865 also known as a ‘bypass’ application. Should applicant desire to obtain the benefit of the file date for international application under 35 U.S.C. 120 and 365(c), a certified English translation of the international application must be submitted in reply to this action. See MPEP 1895.01 which recites:
A certified copy of the international application (and an English translation) of the international application may be required by the examiner to perfect the claim for benefit under 35 U.S.C. 120 and 365 (c) if the international application did not originate in the United States and such is necessary, for example, where an intervening reference is found and applied in a rejection of one or more claims.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 27 March 2024has been considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “4” has been used to designate both “an electrical component” and “the electrically insulating component”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Paragraph [00102] recites in lines 2-3 that reference character “4” is “an electrical component” and then in lines 4, 8, 10, 15-16, and 20 recites that reference character “4” is “the electrically insulating component”. It is believed that reference character “4” refers to “the electrically insulating component”.
Paragraph [00103] recites in lines 1-2 that reference character “4” is “the electrical component”. It is believed that reference character “4” refers to “the electrically insulating component”.
Claim Rejections - 35 USC § 112(b) or second paragraph
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 2, 3, and 6-9 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.
Claim 2 recites the limitation “not more than 2-3% by volume of crystals and/or crystallites”, this renders the claim indefinite since it is not clear if the limit of crystals and/or crystallites is limited to 2, 3 or somewhere in between. For the purposes of examination, the claim will be read to allow for up to 3% by volume of crystal and/or crystallites.
Claim 6 recites in line 6 a range in the format of “between at least 0.29 and at most 0.59”. This renders the claim indefinite since it is not clear if the claim limits the range to the values between the numbers or if the range is meant to include the recited endpoints of the range. Does that include the endpoints of 0.29 and 0.59? Numerically, does between at least 0.29 and at most 0.59 mean a) 0.29≥MO/(RO2+R2O3≥0.59 or b) 0.29>MO/(RO2+R2O3>0.59?
Claim 7 recites that “at least one glass-forming metal oxide and/or semimetal oxide of the general formula RO2 or R2O3 comprises SiO2, Al2O3, B2O3, ZrO2, La2O3, P2O5, Fe2O3, TiO2, and/or mixtures thereof”. This renders the claim indefinite since the list includes P2O5 which does not fail within the general formulas of RO2 and R2O3.
Claim 3 is rejected as indefinite since it depends directly from claim 2 without correcting the issue listed above.
Claims 8 and 9 are rejected as indefinite since they depend either directly or indirectly from claim 6 without correcting the issue listed about.
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 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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication US 2019/0010082 A1 by Nishikawa et al.
As to claim 1, Nishikawa et al. teach a joined part in Figure 1C comprising a metal pin, a metal stem and a sealing material (paragraphs [0004], [0024], and [0025]). Nishikawa et al. fail to teach than the sealing material is an electrically insulating component. However, Nishikawa et al. teach that the sealing material is a glass powder comprising in mol% 55-75% of SiO2, 0-10% of B2O3, 1-12% of Al2O3, 17-28% of Li2O+Na2O+K2O, and 0-15% of MgO+CaO+SrO+BaO (see paragraph [0027]) and since the composition of the reference is the same as those claimed herein it follows that the glasses of Nishikawa et al. would possess electrical insulating property recited in claim 1. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
Therefore, the joined part of Nishikawa et al. shown in figure 1C reads on the joining connection comprising an electrically insulating component comprising a glass and at least two joining partners being kept electrically insulated from one another by the electrically insulating component.
As to claim 2, Nishikawa et al. does not teach that the glass sealing material is crystallized, which reads on the glass being comprised of not more than 3% by volume of crystals and/or crystallites as recited in claim 2.
As to claim 3, Nishikawa et al. does not teach that the glass sealing material is crystallized, which reads on the glass being essentially free of crystallites as recited in claim 3.
As to claim 4, since the composition of the reference is the same as those claimed herein it follows that the glasses of Nishikawa et al. would possess a maximum value of a glass pushout force of more than 3900 N recited in claim 4. See MPEP 2112.
As to claim 5, since the composition of the reference is the same as those claimed herein it follows that the glasses of Nishikawa et al. would possess a glass pushout force of more than 1300 N per mm of vitrification length recited in claim 5. See MPEP 2112.
As to claim 6, Nishikawa et al. teach the glass sealing material is a glass powder comprising in mol% 55-75% of SiO2, 0-10% of B2O3, 1-12% of Al2O3, 17-28% of Li2O+Na2O+K2O, and 0-15% of MgO+CaO+SrO+BaO (see paragraph [0027]) .
Nishikawa et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claim 6. However, the mole percent ranges taught by Nishikawa et al. have overlapping compositional ranges with instant claim 6, where the glass comprises at least one glass-forming metal oxide or semimetal oxide in the general formula RO2 or R2O3 and at least one metal oxide with a general formula MO and wherein the ratio of the total metal oxides (MO) to the total glass-forming metal oxides or semimetal oxides (RO2+R2O3) is from 0.29 to 0.59. See paragraph [0027]. 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 Nishikawa 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 Nishikawa 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.
As to claim 7, Nishikawa et al. teach that the glass comprises 55-75 mol% of SiO2, 0-10mol% of B2O3, 1-12 mol% of Al2O3, and 0.1-5 mol% of TiO2, ZrO2, La2O3, and Fe2O3, (see paragraphs [0028]-[0030] and [0033], which reads on the glass comprising at least one glass-forming metal oxide and/or semimetal oxide in the general formula RO2 or R2O3 comprising SiO2, Al2O3, B2O3, ZrO2, La2O3, P2O5, Fe2O3, TiO2 and mixtures thereof as recited in claim 7. Furthermore, Nishikawa et al. teach that the glass comprises 0-15 mole% of MgO+CaO+SrO+BaO (see paragraph [0032]), which reads on the glass comprises at least one metal oxide with the general formula MO comprising an alkaline earth metal oxide or ZnO as recited in instant claim 7.
As to claim 8, Nishikawa et al. teach the sealing glass comprises 17-28 mol% of Li2O+Na2O+K2O (see paragraph [0031], which reads on the glass comprising at least one network transformer of the general formula R2O comprising an alkali metal oxide as recited in claim 8.
As to claim 9, Nishikawa et al. teach that the total amount of Li2O+Na2O+K2O is 17-28 mol% (see paragraph [0031]), which reads on the glass comprising a total of RO2+R2O3 of at least 50 mol% and/or a total of R2O of 9-20 mol% and/or a total of MO of more than 15 mol% as recited in claim 9.
As to claim 10, Nishikawa et al. teach that the glass comprises in terms of mole percentages, 55-75% of SiO2, 0-10% of B2O3, 1-12% of Al2O3, 0-12% of Li2O, 10-23% of Na2O, 1-12% of K2O, 0-7% of MgO, 0-7% of CaO, 0-5% of SrO, 0-5% of BaO, and 0.1-5% of TiO2, ZrO2, F2, Cl2, La2O3, MnO2, Cr2O3, Fe2O3, and Co2O3 (see paragraphs [0028]-[0033], which reads on the glass comprising in terms of mol%, 45-67% of SiO2, 0-4.5% of Al2O3, 0-<8% of B2O3, 0-10% of TiO2, 0-5% of ZrO2, 0-5% of La2O3, 0-2% of Fe2O3, 0-4% of Li2O, 2-12% of Na2O, 2-12% of K2O, 0-30% of ZnO, 0-<12% of MgO, 0-22% of CaO, 0-12% of SrO, 0-10% of BaO, and 0-<6% of fluoride, as recited in instant claim 10.
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 Nishikawa et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 11, Nishikawa et al. teach that the glass sealing material has a coefficient of thermal expansion of 100x10-7/°C to 170x10-7/°C (see paragraph [0011]), which reads on the glass having a coefficient of thermal expansion of more than 7.5x10-6/K as recited in instant claim 11. Nishikawa et al. also teach that the sealing material may comprise a ceramic powder as a filler (see paragraph [0011]), which reads on the electrically insulating component comprising a filler, as recited in instant claim 11.
As to claim 12, Nishikawa et al. teach that the metal pin is housed in the metal stem (see Figure 1C and paragraph [0039]), which reads on one of the at least two joining partner being designed as a base comprising at least one passage opening as recited in claim 12. As to the base having a height of at most 10mm and at least 0.5 mm, when general conditions are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by changing the size, the proportion, the shape, and/or the sequence of added ingredients through routine experimentation. See MPEP 2144.04 (IV)(A) - In re Rose, 105 USPQ 237.
As to claim 13 Nishikawa et al. disclose that the 2 parts separated by the sealing material are a metal stem and a metal pin (see Figure 1C and paragraph [0039]), which reads on at least one of the at least two joining partners comprises a metal or a high-temperature-stable ceramic compound, as recited in instant claim 13.
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.
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.
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, 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
28 April 2026
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