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 of Group I and Species III in the reply filed on March 30, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
In view of the above Election, claims 26-27, 30, 37-44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group or Species, there being no allowable generic or linking claim.
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 31, 32, 35 and 36 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 31 is initially rejected as it is unclear whether the claim is requiring the additive compound that decomposes to form every one of the gases listed or whether the claim is used improper Markush language wherein the additive compound decomposes into one of the listed gases. This scope is not clear.
For examination, the limitation is interpreted as a Markush listing wherein the prior art only has to meet one of the gases listed.
Additionally note the language “may be” used in the last two lines of the claim renders the scope unclear because it is unclear whether the claim is actually requiring the x, y and z subscripts to be within the recited ranges or is the claim merely providing examples of what the x, y and z may, might, or can be. The scope is simply not clear.
Additionally, in the instance Applicants intended the claimed to be merely providing examples of what the x, y and z may, might, or can be, the claim will also be rejected as including a narrow limitation (example subscript ranges) together with a broad limitation (oxides with subscripts).Note that a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For examination, the limitation will be interpreted as merely examples of what the subscripts can be and if the prior art meets one of the broad recited oxides, it will be considered to meet the claim.
Claim 32 is rejected for the “preferably” language in lines 2-4 as this language provides for a narrow limitation together with a broad limitation. Note that a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For examination, if the prior art meets the broad limitation, it will be considered to meet the claim.
Claim 35 is rejected because the term “substantially” in line 2 and line 4 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, it is unclear how transparent the prior art glazing would have to be to be considered “substantially transparent”.
For examination, as long as the prior art glazing has transparency, the limitation will be considered to be met.
Claim 35 is also rejected for the “preferably” language in line 3 as this language provides for a narrow limitation together with a broad limitation. Note that a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For examination, if the prior art meets the broad limitation, it will be considered to meet the claim.
Claim 36 is rejected for the “preferably” and “more preferably” language in line 3 as this language provides for a narrow limitation together with a broad limitation. Note that a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For examination, if the prior art meets the broad limitation, it will be considered to meet the 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.
(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.
Claim(s) 24-25, 28-29, 31-36 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by Varma (USPub20030186063).
Regarding claim 24 and 32: Varma teaches fire-resistant glazings comprising a sheet of glazing material and an intumescent layer comprising a salt additive such as potassium citrate (see abstract) which meets a phase separation additive disclosed by Applicants (see for instance Applicants’ publication par 0062, 0064 and claim 32).
Regarding claim 25: While Varma may not explicitly mention that their potassium citrate is the elected species of being compound that decomposes to form a gas, given that potassium citrate is not only the same material used by Applicants but it is additionally noted that potassium citrate is one of the listed materials of claim 32 in which Applicants admit is readable on the elected species, one skilled in the art would conclude the same capabilities (MPEP 2112).
Regarding claim 28: Note that due to the “and/or” language throughout the claim, if the additive of prior art does not comprise just one of the materials listed, the claim will be met.
In the instant case, as discussed above, Varma’s additive is potassium citrate which does not comprise sodium azide, etc. thereby meeting the claim.
Regarding claim 29: Similarly, due to the “and/or” language throughout the claim, if the additive of prior art does not comprise just one of the materials listed, the claim will be met.
In the instant case, as discussed above, Varma’s additive is potassium citrate which does not comprise ethanol, etc. thereby meeting the claim.
Regarding claim 31: While Varma may not explicitly mention that their potassium citrate is a compound that decomposes to form one of the gases listed, given that potassium citrate is not only the same material used by Applicants but it is additionally noted that potassium citrate is one of the listed materials of claim 32 in which Applicants admit is readable on their compound decomposing to form gas elected species, one skilled in the art would conclude the same capabilities (MPEP 2112).
Regarding claim 33: The salt additive is present at 0.1-2wt% (0011).
Regarding claim 34: The layer comprises alkali silicate waterglass (abstract, 0009, 0012).
Regarding claim 35: Varma suggests their glazings having transparency (see for instance par 0025).
Regarding the limitation of such transparency being at temperatures less than or equal to 25oC, initially note that when Varma mentioned their glazing being transparent, as no heat appeared to have been applied one skilled in the art would reasonably conclude the transparency to be at room temperature which is considered to meet the temperature condition limitation. Further, given that Varma’s glazing and layer appear to meet that claimed, one skilled in the art would reasonably conclude the same transparency at the same conditions (MPEP 2112).
Regarding claim 36: Given that Varma’s layer meets that claimed, one skilled in the art would reasonably conclude the same properties at the same temperature conditions (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) 24-25, 28-29, 31-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Egli (USPN5,565,273).
Regarding claim 24 and 32: Egli teaches fire-resistant glazings comprising a sheet of glazing material and an intumescent layer comprising an additive such as alkali carbonate (see abstract, Col. 2, line 32).
While Egli may not explicitly teach their additive being a “phase separation” additive, note that Egli’s additive is an alkali carbonate and given that sodium and potassium are two alkalis of a small option of alkalis, it would have been obvious to one skilled in the art to use sodium carbonate or potassium carbonate as the additive which meets a phase separation additive as disclosed by Applicants (see for instance Applicants’ publication Table and claim 32).
Regarding claim 25: While Egli may not explicitly mention that their additive being the elected species of being compound that decomposes to form a gas, given that sodium carbonate and potassium carbonate are not only the same material used by Applicants but it is additionally noted that sodium carbonate and potassium carbonate are listed materials of claim 32 in which Applicants admit is readable on the elected species, one skilled in the art would conclude the same capabilities (MPEP 2112).
Regarding claim 28: Note that due to the “and/or” language throughout the claim, if the additive of prior art does not comprise just one of the materials listed, the claim will be met.
In the instant case, as discussed above, Egli’s additive is sodium or potassium carbonate which does not comprise sodium azide, etc. thereby meeting the claim.
Regarding claim 29: Similarly, due to the “and/or” language throughout the claim, if the additive of prior art does not comprise just one of the materials listed, the claim will be met.
In the instant case, as discussed above, Egli’s additive is sodium or potassium carbonate which does not comprise ethanol, etc. thereby meeting the claim.
Regarding claim 31: While Egli may not explicitly mention that their additive being a compound that decomposes to form one of the gases listed, given that sodium carbonate and potassium carbonate are not only the same material used by Applicants but it is additionally noted that these carbonates are one of the listed materials of claim 32 in which Applicants admit is readable on their compound decomposing to form gas elected species, one skilled in the art would conclude the same capabilities (MPEP 2112).
Regarding claim 33: The additive is present at less than 5% (Col. 2, line 35) overlapping the range claimed (MPEP 2144.05).
Regarding claim 34: The layer comprises alkali silicate (abstract).
Regarding claim 35: Egli teaches their glazings having transparency (see for instance title).
Regarding the limitation of such transparency being at temperatures less than or equal to 25oC, initially note that as Egli makes no mention of their glazing being only transparent with heat, one skilled in the art would reasonably conclude the transparency to be at room temperature which is considered to meet the temperature condition limitation. Further, given that Egli’s glazing and layer appear to meet that claimed, one skilled in the art would reasonably conclude the same transparency at the same conditions (MPEP 2112).
Regarding claim 36: Given that Egli’s layer meets that claimed, one skilled in the art would reasonably conclude the same properties at the same temperature conditions (MPEP 2112).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/ Primary Examiner, Art Unit 1784
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