18578524
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-16 and 20-21, in the reply filed on 17 December 2025 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 17-19 and 22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 December 2025.
Claim Objections
Claim 8 is objected to because of the following informalities: the phrase “less than 10 by weight” in line 2 should be “less than 10 % by weight” (i.e. the unit of “%” is missing) to be consistent with the description on p. 3 of the instant specification.
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.
Claims 1-16 and 20-21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The phrases starting with “preferably” in claims 1-3, 7-9, 11-12 results in the claims reciting a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim), and therefore the resulting claims do not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claims are indefinite because there is a question or doubt as to whether the feature introduced in the parentheses is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The use of parentheses in claims 4-8 reciting “(based on the total dry weight of the molybdenum-containing frit)” is indefinite because there is a question or doubt as to whether the feature introduced in the parentheses is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 6 recites less than 3 % by weight Fluor. However, Fluor is not a conventionally named element or compound. The instant application does not define Fluor, but does list “F, preferably 0.1 to 5.0 % by weight thereof, preferably 0.5 to 3.0 % by weight thereof” (p. 4 of the instant specification). Fluorine (i.e. F), however, is a diatomic element (i.e. in a neutral state, fluorine occurs as a pair – that is, as F2 – based on basic chemistry principles). Therefore, the disputed limitation will be considered where the frit contains less than 3% by weight F2.
Claim 9 recites the component F. Fluorine, however, is a diatomic element (i.e. in a neutral state, fluorine occurs as a pair – that is, as F2 – based on basic chemistry principles). Therefore, the disputed limitation will be considered where the frit contains F2.
Claims 10, 13-16, and 20-21 are rejected as they depend on a rejected claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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 1-3, 10, and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schlegel et al. (US 2017/0283306, previously cited).
Claim 1: Schlegel teaches glass composite coating systems that may serve as a chemical barrier against substrate oxidation or other deterioration (paragraph 0006). The glass composite composition may be formed from at least two frits or powders comprising a primary frit and a first secondary frit (paragraph 0009). Schlegel teaches that any compound listed in Table B, or combinations thereof, can be combined with the primary components of the glass coating system in order to allow the glass composite to adhere to a metal substrate without metal surface preparation (paragraph 0033), and Table B includes MoO3 (i.e. molybdenum oxide; i.e. the frit is a molybdenum-containing frit) and Sb2O3 (i.e. the frit contains antimony oxide). Example 4 of Schlegel teaches an overall composition to be obtained which includes 0-9 wt% MoO3, 0-3% Sb2O3, etc. (paragraph 0054).
Claim 2: Schlegel teaches example 4 as including (i.e. in addition to MoO3 and Sb2O3) 0-7 wt% Fe2O3 (i.e. further includes iron oxide) (paragraph 0054).
Claim 3: Schlegel teaches that the NiO concentration may be less than about 1 wt%, less than about 0.5 wt%, less than about 0.1 wt%, or essentially Ni-free (i.e. essentially free of nickel oxide) (paragraph 0038). It is noted that instant claim 3 recites “and/or” and therefore does not require the frit to be free of both cobalt oxide and nickel oxide.
Claim 10: Schlegel teaches glass composite coating systems that may serve as a chemical barrier against substrate oxidation or other deterioration (paragraph 0006). The glass composite composition may be formed from at least two frits or powders comprising a primary frit and a first secondary frit (paragraph 0009). Schlegel teaches that any compound listed in Table B, or combinations thereof, can be combined with the primary components of the glass coating system in order to allow the glass composite to adhere to a metal substrate without metal surface preparation (paragraph 0033), and Table B includes MoO3 (i.e. molybdenum oxide; i.e. the frit is a molybdenum-containing frit) and Sb2O3 (i.e. the frit contains antimony oxide). A primary frit may be combined with a phosphate doped secondary frit (paragraph 0051), and Schlegel teaches that a source of phosphate ions (i.e. from being phosphate doped) react with calcium (added to provide resistance to water and/or alkali; taught by Schlegel in paragraph 0036 and Table C) and recrystallize (i.e. a crystallizing frit) such that the glass coating system is characterized by self-sealing properties (paragraph 0044). As such, Schlegel teaches a molybdenum-containing frit that includes molybdenum oxide and antimony oxide and further includes a crystallizing frit.
Claims 14-15: Schlegel teaches that the primary frit or powder may be combined with the additional components in a slurry admixture (paragraph 0057) and may be applied to substrates by wet processes etc. (paragraph 0059). The slurry can be formed using an aqueous carrier medium, organic carrier medium, or a combination thereof, or may include a coating of film of oil or grease (paragraph 0063). These descriptions are considered to disclose the frit composition in a liquid medium and aqueous (i.e. water) and organics are considered to be a solvent.
Claim 16: Schlegel teaches that a wetting agent may be added to the slurry to facilitate even slurry distribution on the substrate surface (i.e. the wetting agent is an adherence promotor) (paragraph 0063).
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.
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.
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 4-9, 11-13, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Schlegel et al. (US 2017/0283306, previously cited) as applied to claims 1 and 10 above.
Claim 4: The teachings of Schlegel regarding claim 1 are outlined above. Schlegel teaches the primary components of glass coating systems include 46-65 wt% SiO2 based on the weight of the composition (i.e. based on the total dry weight of the molybdenum-containing frit), which overlaps the instantly claimed range. This range overlaps the instantly claimed range and the courts have held that a prima facie case of obviousness exists. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
While not reciting a singular example of the instantly claimed frit, it would have been obvious to one of ordinary skill in the art before the effective filing date as the ranges of the prior art overlap the instantly claimed ranges, which the courts have held to be prima facie obvious.
Claim 5: Schlegel teaches the glass coating system includes about 3-9 wt% TiO2 (paragraph 0039), which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 6: Schlegel teaches the glass coating system may include F2 (i.e. Fluor) (paragraph 0042), shown in Table D to have a range of 0-9 wt% and example 4 includes 1-5 wt% F2 (paragraph 0054). Each of these ranges overlap the instantly claimed range (see indefiniteness outlined above). See MPEP § 2144.05.
Claim 7: Schlegel does not teach specifically a range for alkali oxides, but teaches several example compositions (paragraph 0053). Example 4 (i.e. which includes MoO3 and Sb2O3) includes 6-22 wt% Na2O, 0-5% K2O, 1-13% Li2O, etc. (i.e. these are the alkali oxides listed in Example 4) (paragraph 0054). The sum of these alkali oxides is about 7-40% which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 8: Schlegel does not teach specifically a range for earth alkali oxides, but teaches several example compositions (paragraph 0053). Example 4 (i.e. which includes MoO3 and Sb2O3) includes 0-4 wt% BaO, 2-30% CaO, 0-4% SrO, 0-4% MgO (i.e. earth alkali oxides) (paragraph 0054). The sum of these earth alkali oxides is about 2-42%, which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 9: Schlegel teaches example compositions, with concentrations in percent by weight of the composition (i.e. based on the total dry weight of the frit) (paragraph 0031), where Example 4 includes 0-9% MoO3, 0-3% Sb2O3, 0-7% Fe2O3, 0.5-9% Al2O3, 5-22% B2O3, 0-4% BaO, 2-30% CaO, 1-5% F2, 0-5% K2O, 1-13% Li2O, 6-22% Na2O, 24-61% SiO2, 0.5-14% TiO2, etc. (paragraph 0054). It would be understood by one of ordinary skill in the art that the total of all components would add up to 100% by weight. Each of these ranges overlap the instantly claimed ranges. See MPEP § 2144.05.
Claim 11: The teachings of Schlegel regarding claim 10 are outlined above. Schlegel teaches the primary components of glass coating systems include 46-65 wt% SiO2 based on the weight of the composition (i.e. based on the total dry weight of the molybdenum-containing frit), which overlaps the instantly claimed range. This range overlaps the instantly claimed range and the courts have held that a prima facie case of obviousness exists. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented. Schlegel does not particularly specify the content of SiO2 being in the molybdenum-containing frit or in the crystallizing frit, but instead refers to the content of SiO2 in the final frit composition. However, the courts have held that a change in sequence of adding ingredients (i.e. regarding the instant claims, whether a specific compound is in the primary or secondary frit, or in the molybdenum-containing frit or in the crystallizing frit) is considered to be prima facie obvious. See MPEP § 2144.04(IV)(C). It is noted that instant claim 11 recites “and/or” and therefore does not require the frit to include both the recited amount of CeO2 and the recited amount of SiO2.
While not reciting a singular example of the instantly claimed frit, it would have been obvious to one of ordinary skill in the art before the effective filing date as the ranges of the prior art overlap the instantly claimed ranges, which the courts have held to be prima facie obvious.
Claim 12: Schlegel teaches example compositions, with concentrations in percent by weight of the composition (i.e. based on the total dry weight of the frit) (paragraph 0031), where Example 4 includes 0-9% MoO3, 0.5-9% Al2O3, 5-22% B2O3, 0-4% BaO, 2-30% CaO, <4% CeO2, 1-5% F2, 0-5% K2O, 1-13% Li2O, 0-4% MgO, 6-22% Na2O, 24-61% SiO2, 0.5-14% TiO2, 1-8% ZrO2, etc. (paragraph 0054). It would be understood by one of ordinary skill in the art that the total of all components would add up to 100% by weight. Each of these ranges overlap the instantly claimed ranges, except for CeO2, which is close instead of overlapping. See MPEP § 2144.05. Schlegel does not particularly specify these compounds as being in the molybdenum-containing frit or in the crystallizing frit, but instead refers to their content in the final frit composition. However, the courts have held that a change in sequence of adding ingredients (i.e. regarding the instant claims, whether a specific compound is in the primary or secondary frit, or in the molybdenum-containing frit or in the crystallizing frit) is considered to be prima facie obvious. See MPEP § 2144.04(IV)(C).
Claim 13: Although Schlegel does not directly teach the instantly claimed proportions of primary frit (i.e. molybdenum-containing frit as outlined herein) and phosphate-doped frit (i.e. recrystallizing frit as outlined herein), the proportions to be included are dependent on the other components present in the primary frit and phosphate-doped frit to obtain the overall composition taught by Schlegel. However, as the amount of phosphate overlaps the lower end of the recited range of crystallizing frit, it would have been obvious to one of ordinary skill in the art before the effective filing date for the amount of phosphate-doped frit to overlap the instantly claimed range for the proportion of crystallizing frit, and one would have had a reasonable expectation of success. Furthermore, the courts have held that a change in sequence of adding ingredients (i.e. regarding the instant claims, whether a specific compound is in the primary or secondary frit, or in the molybdenum-containing frit or in the crystallizing frit) is considered to be prima facie obvious. See MPEP § 2144.04(IV)(C).
Claim 20: The limitations of claim 20 are recited as a product-by-process claim, which is not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP § 2113. As such, claim 20 is considered to be directed to a metal substrate coated with an enamel coating composition according to claim 13 wherein the enamel coating composition has been formed into a coating (i.e. firing or drying to form an adherent coating). In this respect, the limitations of an enamel coating composition according to claim 13 are outlined above, and Schlegel teaches wet method wherein a slurry is formed from one or more glass coating systems of the disclosure (i.e. the enamel coating composition of claims 13 above), applied to a substrate, and dried then heat treated such as by conventional firing or by induction furnace to reduce heat treatment time and allow the properties of the substrate to remain largely unaffected such as the crystalline structure of the metal (i.e. the substrate is a metal substrate) (paragraph 0063).
Claim 21: The lightness value in CIELAB pertains to the color (i.e. an aesthetic quality) of the enamel coating, and the courts have held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from prior art. See MPEP § 2144.04. Furthermore, Schlegel teaches a substantially identical enamel coating as outlined above, and substantially identical materials have substantially identical properties (e.g. lightness value). See MPEP § 2112.01.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gorecki et al. (US 2018/0170797) teaches an enamel coating formed from a composition of glass frit. The glass frit formulations can include MoO3 and Sb2O3 (paragraph 0038).
Mitsui et al. (US 2015/0266772) teaches a sealing material of a glass frit containing glass powder (paragraph 0003). The glass composition may include one or more components selected from MoO3, Sb2O3, etc. (paragraph 0050).
Fechner et al. (US 7,517,822) teaches a composition for glass that includes 0-3% MoO3 (Col. 2, l. 40-42) and preferably also contains 0-1% Sb2O3 (Col. 3, l. 23-30).
Prunchak et al. (US 2008/0261795) teaches frits and obscuration enamel compositions (paragraph 0001) that may include oxides such as MoO3, Sb2O5, etc. (paragraph 0028).
Emlemdi (US 2006/0025298) teaches glass frit and glass enamel composition that includes one or more glass frits containing (paragraph 0007-0008) 26-63% SiO2, 0-4% molybdenum trioxide, 0.1-7% antimony trioxide, etc., and does not necessarily contain cobalt oxide or nickel oxide (Table in paragraph 0016).
Eckmann et al. (US 2003/0064874) teaches a frit composition for forming an opaque porcelain enamel coating on metal substrates (paragraph 0002) that contains about 1-4% MoO3, up to about 2% Sb2O3, etc. (paragraph 0005).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784