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 .
Response to Amendment
The amendment filed 04 May 2026 has been entered.
Claims 1-4, 9-11, 13-15, 17-20, and 22 remain pending in the application, wherein claims 1-4, 9, and 11 have been amended, claims 5-8, 12, 16, and 21 are newly canceled, and claims 17-19 and 22 are withdrawn.
Support for the amendments are found on pages 3 and 5 as indicated in remarks filed 04 May 2026 (see p. 6). Accordingly, no new matter has been introduced as a result of these amendments.
Claim Interpretation
Claim 9 recites the component F. This limitation is to be considered to refer to fluoride ion (i.e. conventionally F-) based on Applicant’s explanation of the intended meaning (see p. 8 of remarks filed 04 May 2026). Moreover, based on the same explanation, references to fluorine or fluor is also considered to refer to fluoride (i.e. ions of the element fluorine).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 9-11, 13-15, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over 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). Table B also includes CoO in a range of 0 to 7 wt% (i.e. cobalt oxide may be substantially 0%) and NiO in a range of 0 to 6 wt% (i.e. nickel oxide may be substantially 0%). Table A shows SiO2 in an amount of 46 to 65 wt% as a primary component. Concentration ranges are in percent by weight of the composition (i.e. based on the total dry weight of the molybdenum-containing frit) (paragraph 0031). Each of these ranges overlap the instantly claimed ranges, and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. 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 disclosed by Schlegel overlap the instantly claimed ranges, which the courts have held to be prima facie obvious.
Claim 2: Schlegel teaches that the composition can include 0.1 to 5.5 wt% Fe2O3 (Table C).
Claim 3: Schlegel specifically 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. Furthermore, Schlegel teaches that CoO may be 0-7 wt% (i.e. the amount of cobalt oxide may be substantially 0%) (Table B).
Claim 4: 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) (Table A; paragraph 0031), which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 9: Schlegel teaches that the composition includes 0 to 7 wt% MoO3, 0-3% Sb2O3, 0.1-5.5% Fe2O3, 0.1-3% Al2O3, 5-21% B2O3, 0-6% BaO, 0.5-8.5% CaO, 0-9% F2 (i.e. fluorine which would form fluoride), 0-6% K2O, 1-7% Li2O, 4-22% Na2O, 3-9% TiO2, etc. (Tables A, B, C, D, and paragraphs 0039 and 0043). 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 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 outlined above regarding claim 1 and further includes a crystallizing frit.
Claim 11: 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. See MPEP § 2144.05. 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. Schlegel teaches that the composition may include 0-4% CeO2, which does not overlap the instantly claimed range. 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). Therefore, there is no patentable distinction between adding to the main composition a small amount of frit having a higher concentration of cerium oxide compared to adding a larger amount of frit having a smaller concentration of cerium oxide.
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).
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 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).
Response to Arguments
The cancellation of claims 5-8 and 12 has rendered the objection to claim 8 and indefiniteness rejection of claims 5-8 and 12 as being moot.
The amendments to claims 1-4, 9, and 11 have overcome each and every indefiniteness previously set forth in the Office Action mailed 06 February 2026. The rejection under 35 U.S.C. 112(b) has been withdrawn.
Applicant’s arguments, see p. 9-10, filed 04 May 2026, with respect to the rejection under 35 U.S.C. 102(a)(1), have been fully considered and are persuasive in view of the amendments. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 over the same prior art of Schlegel.
Applicant's arguments filed 04 May 2026, regarding the prior art of Schlegel, have been fully considered but they are not persuasive for the following reasons:
Applicant argues, see p. 9-10, that Schlegel does not expressly teach the instantly claimed frit where a content of cobalt oxide and nickel oxide is less than 0.1 wt%. However, as outlined above, Schlegel teaches generally a composition where the amount of cobalt oxide and amount of nickel oxide ranges are as low as 0%, which overlaps the instantly claimed range. Applicant further argues, see p. 9, that Schlegel expressly teaches embodiments in which MoO3 is used together with CoO and/or MnO and further NiO, CeO2, and/or CuO. The teaching of “and/or” is considered where one of ordinary skill in the art may choose MnO instead of CoO (i.e. CoO is not required) and likewise can choose not to include NiO, based on the teaching of “or”.
Applicant argues, see p. 10 and also 11-12, that the instantly claimed composition makes it possible to obtain adherence with very limited amounts of dark-colored adherence elements. However, the limitation regarding color is not a claimed limitation. See MPEP § 2145(VI).
Applicant submits arguments regarding the prior art of Emlemdi cited as relevant but not applied in the rejection. Since Emlemdi has not been applied to the claims, these arguments will be addressed if and when the teachings of Emlemdi are outlined against the claims.
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 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
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