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
Applicants’ election of Species IV was made in the reply filed May 4, 2026.
Applicants did not traverse the restriction of Species II and III as such, claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species,
However, Applicants did travers the restriction of Species I and the Office Agrees. As such, the restriction of Species I is withdrawn and will be rejoined with the elected Species IV which will include claims 1-10 and 15-20.
Priority
Applicant cannot rely upon the certified copy of the foreign priority application to overcome any rejection herein because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
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.
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 1-20 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 1 is rejected because in the second from the last line, the claim limits the L* to be “at most” but given that there is no value following, it is unclear what the L* value actually has to be.
Claims 2-10 and 15-20 are rejected for being dependent on claim 1 above.
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1-3, 6-8, 17-20 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by Berrebi et al. (WO2023224799) or, in the alternative, under 35 U.S.C. 103 as obvious over Berrebi in further view of (USPub20160340232).
Regarding claim 1-2 and 7: Berrebi teaches the following composite pane.
PNG
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289
750
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Greyscale
As shown above, the first glass pane 200 has coating regions 250 and the pane is that of borosilicate glass (i.e. glass comprising SiO2 and B2O3) (0100-0103). The first pane 200 has first and second sides with a coating 250 applied in at least one region on the second side.
The coating 250 is an enamel coating comprising a glass (vitreous) component, pigment, low CTE filler additive component and pores (see 0116-0127).
As shown above, a polymeric layer 230 is between the glass panes. Note that although Berrebi does mention that in particular embodiments, the polymer in the polymeric layer is modified to provide adhesion promotion, tint, etc. and mentions that it “can be modified” with pigment, adhesion promotion, dopants, etc. (see 0108), it is clear that Berrebi is merely disclosing possible modifications but is not actually requiring tint, pigment, etc. (i.e. will be in noncolored form).
The polymeric layer in the regions of the coating 250 at least partly fills the pores of the coating so as to result in a desired color appearance of the composite glass (see 0127).
Berrebi does mention their laminate having an L* value of <15 (0036) and even less than 10 (0055), the coating itself can exhibit high blackness with L* ≤ 20, ≤15 ≤5, etc. (0095, 0123) but Berrebi just does not specify all the CIE measurements claimed. However, given that Berrebi’s composite glass meets that claimed, one skilled in the art would conclude the same properties (MPEP 2112).
Alternatively, as discussed above, Berrebi enamel decorative layer is that of high blackness with L* ≤ 20, ≤15 ≤5, etc. which is placed on glass and more specifically, on the periphery of borosilicate laminated automotive glass.
As 232’, who similarly teaches an enamel decorative layer (abstract), that can be black with a L* of <27 (0074), to be placed on glass which can be borosilicate glass and more specifically, the periphery of laminated borosilicate automotive glass (0082), suggests it being preferred to make a* and b* values being less than 1, more preferably <0.5 (0075) overlapping the claimed ranges (MPEP 2144.05) for brilliance (0076), it would have been obvious to one having ordinary skill at the time of invention to modify Berrebi to a* and b* values being less than 1, more preferably <0.5 as desired for brilliance.
Regarding claim 3: The low CTE filler can have a CTE overlapping (00121) and even falling within (see 00122) range claimed.
Regarding claim 8: The composite glass can have a transmittance in the visible of less than 5% (see 0037, 0095).
Regarding claims 6, 17-18: Berrebi teaches Examples of their borosilicate glass pane comprising, when converted to wt%, meeting that claimed (see Examples such as that shown below).
Berrebi’s Example 8, Table 2 (and note Berrebi teaches throughout their glasses being in mol%)
Converted (wt%) approx.
SiO2
75.93
71.8
Al2O3
3.53
5.7
B2O3
11.61
12.8
Na2O
4.59
4.5
K2O
2.13
3.2
MgO
0.03
0.02
CaO
2.05
1.8
SnO2
0.11
0.3
Given that the glass meets that of Applicants’, it would be expected to have the same strength (MPEP 2112).
Regarding claim 19: The second glass can be that of soda lime glass (0111).
Regarding claim 20: Given that the composite glass meets that claimed, it would be expected to have the same properties (MPEP 2112).
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.
Claim(s) 4, 9-10, 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berrebi et al. (WO2023224799) or Berrebi and (USPub20160340232) as applied to claims 1 and 2 above.
Regarding claims 4 and 9: Berrebi teaches the content of pore inducing components (i.e. the low CTE filler additive, pigment) being 15-40vol% in their coating (0178) which allows for individual contents of filler and pigment overlapping the ranges claimed (MPEP 2144.05). Note this leaves the remaining of the coating being that of the glass (vitreous) component (i.e. 85-60vol%).
Regarding claim 10, 15 and 16: Berrebi’s glass (vitreous) component is taught to comprise one or more Bi, B, Zn or Si oxides (0117) which allows for compositions comprising B2O3 and SiO2 as recited in claim 10 and SiO2, B2O3, Bi2O3 and ZnO as recited in claim 15. Berrebi does teach that each of the one or more of the Bi, B, Zn or Si oxides can be 1wt%, 5wt%, or 10wt% or more (0117) which allows for individual overlap with the compositions of claims 10 and 15 (MPEP 2144.05)
Additionally, as Berrebi does not teach a requirement for the presence of alkaline earth metal oxides (see 00117), this corresponds to 0% meeting that of claim 16.
Alternatively, in the instance Applicants argue against the rejection above, note that Berrebi’s glass component is used in combination with pigment for use in an enamel decorative layer, having a CTE ≤55x10-7/K (5.5x10-6/K) (00116), on glass having a CTE of ≤55x10-7/K (5.5x10-6/K) (00100) and more specifically, being on the periphery of borosilicate laminated automotive glass (see 00100, entire document).
As 232’, who similarly teaches a glass component used in combination with pigment for use in an enamel decorative layer (abstract), having a CTE of < 5.5x10-6/K (0068), for glass having a CTE of ≤5.5x10-6/K (0068), which can for instance be borosilicate glass such as the periphery of laminated borosilicate automotive glass (0082), suggests their lead-free glass component being desirable in decorative enamels for providing, scratch-resistant, chemically resistance, etc. enamel layers (see entire disclosure), it would have been obvious to one having ordinary skill at the time of invention to modify Berrebi to include the glass component of 232’ to provide for scratch-resistant, chemically resistant, etc. enamel layer.
Note that Berrebi including the glass component of 232’ will obtain compositions as claimed. For instance, see 232’s Glass 1 wherein when converted to wt% includes 55.5% SiO2, 22.9% B2O3, 9.9% Bi2O3, 0% ZnO, 1.2% Na2O, 3.2% Li2O and 0% alkaline.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berrebi et al. (WO2023224799) or Berrebi and (USPub20160340232) as applied to claims 1 above or alternatively, in further view of (USPub20160002104).
Regarding claim 5: Berrebi does not explicitly discuss their pores being open so as to result in a direct connection in the coating between the side of the coating facing the glass pane and the side remote from the glass pane (i.e. pore (s) extending all the way through the thickness of the coating from the remote surface to the glass surface), note that such an arrangement would have been obvious to one having ordinary skill for the following reasons.
Initially, Berrebi clearly suggests that the pores in the coating are a result effective variable as the inclusion of the pores aids in providing the coating with a desired color appearance due the polymer interlayer filling the pores thereby darkening the appearance of the enamel (see for instance 0094). As such, it would have been well within the skill in the art to adjust the amount, size, orientation and location (making the pores openly extend through the thickness), etc. of the pores for filling depending on desired location and/or amount of darkening desired for the enamel (i.e. more pores allows for more filling=more darkening; open pores extending through the coating thickness from one surface to the other would allow the polymer to fill through the thickness=darkening through the thickness, etc.).
As such, if one desired to have said desired color appearance/darkening throughout the coating thickness and not just at the surface of the coating for instance, it would be well within the skill in the art to make each pore openly extend throughout the thickness of said coating thereby allowing the interlayer polymer to infiltrate all the way through the thickness and thereby provide said desired color/darkening throughout said thickness.
Alternatively, note that Berrebi is directed to a porous enamel decorative layer on glass for automotive glazings wherein the glass can be chemically strengthened (see 0105).
As ‘104, who similarly teaches porous enamel decorative layer on glass for automotive glazings wherein the glass can be chemically strengthened, suggests throughout it being desirable to chemically strengthen glass after a porous enamel layer is applied allowing the ion from a salt bath to diffuse through the pores of the layer to the underlying glass and the porosity must be sufficient to permit such diffusion through the layer to the glass (see entire disclosure, 0024, 0027), it would have been obvious to one having ordinary skill at the time of invention to modify Berrebi to include chemically strengthening their glass their porous enamel layer is applied allowing the ion to diffuse through the pores to the glass and making the porosity sufficient to permit such diffusion through the layer to the glass.
Note that given that ions are diffusing through the pores all the way to the underlying glass, one would readily conclude the pores to be open resulting in a direct connection in the coating between the side of the coating facing the glass pane and the side remote from the glass pane (i.e. pore (s) extending all the way through the thickness of the coating from the remote surface to the glass surface).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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