DETAILED ACTION
The claims 1-9 are pending and presented for the examination.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-9 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 1 is drawn to glass composition comprising polyhalite. This indicates that the claim is intended to cover glasses wherein a portion of the material is the polyhalite mineral. However, it is apparent from the instant Specification that polyhalite is a starting ingredient used in the formation of the claimed glass, and is an ingredient that breaks down upon batch melting to produce oxide components that make up the claimed glass. See page 25 - “It is therefore concluded that Polyhalite completely dissolves in the glass melt”. The glass of claim 1 is thus being defined according to a precursor ingredient, rather than by compositional or structural limitations of the final glass product itself, and the information in the supporting disclosure as shown in the Specification in incongruitous with a literal interpretation of the claim. Because of these incongruities, the intended scope of coverage of claim 1 is therefore unclear, and the claim is indefinite under USC 112.
Claims 2-5 are indefinite as dependent from claim 1 and therefore containing the indefinite limitations therefrom.
Claim 6 is indefinite because it recites that polyhalite is melted or dissolved in glass or SiO2 powder. However, according to the instant Specification, the process of combining glass components with polyhalite is done through mixing. This would not constitute “dissolving” the polyhalide component in either sodium glass or in SiO2 powder, and thus the instant disclosure does not support the intended interpretation of the claim as written. Claim 6 is therefore indefinite under USC 112.
Claims 7-9 are indefinite as dependent from claim 6 and therefore containing the indefinite limitations therefrom.
Claim 9 is further indefinite because it recites that the loading is done for 0.5-2 hours, however, according to the instant Specification, this time period is actually that used for the heat treatment of the mixture. The language of the instant claim renders what process parameters are actually intended to be covered, because the language would seem to indicate that actually loading the crucible (i.e. transferring the material thereto) is done over this 0.5-2 hours, rather than this being the heating time. The metes and bounds of the claim are therefore unclear and the claim is indefinite under USC 112.
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.
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fan (CN 104926141 A).
Regarding claim 1, Fan teaches a method of producing a glass bead composition comprising a coating component that contains polyhalite as one of the formational ingredients. The glass composition of the resultant bead therefore comprises polyhalite, and each limitation of claim 1 is met. The claim is anticipated by the prior art of record.
Regarding claim 6, Fan teaches that the inventive glass beads are produced by a method wherein polyhalite as one component is added to glass formation components that comprise sodium-containing ingredients. This constitutes dissolving polyhalite in sodium glass. The process for forming the glass bead from said mixture includes a step of heating at 1280 °C. Each limitation of claim 6 is thus met by the teachings of the prior art of record.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koch et al (EP 0887321 A2).
Regarding claim 1, the claim is drawn to a glass composition comprising polyhalite. However, it is apparent from the instant Specification that polyhalite is a starting ingredient used in the formation of the claimed glass, and is an ingredient that breaks down upon batch melting to produce oxide components that make up the claimed glass. See page 25 - “It is therefore concluded that Polyhalite completely dissolves in the glass melt”. The glass of claim 1 is thus being defined according to a precursor ingredient, rather than by compositional or structural limitations of the final glass product itself. The coverage of a product claim such as this is path-independent, and therefore what is covered by the claim is not limited by which ingredients are used prior to the final product in order to achieve the claimed product, but instead by the features of the claimed product itself. This means that any glass that has compositional features such that it could have been produced from a polyhalite-containing batch would read on the instant claim language; such a glass and the glass of the instant claims would be indistinguishable from one another.
Koch et al teaches such a glass. Koch et al teaches a soda-lime-silica glass that comprises, as essential components, K2O, MgO, and CaO. Because the composition of polyhalite is K₂Ca₂Mg(SO₄)₄ ⋅ 2H₂O, the only compositional limitations imparted by the limitation that the glass is formed from polyhalite are that it must contain said K2O, MgO, and CaO, as these components would be derived from the dissolution of polyhalite. The Koch et al embodiments that contain these components, such as examples number 3-8 of the page 5 Table, meet all limitations actually imparted on the final product glass by the instant claim limitation to the precursor component, and these embodiments would be indistinguishable from a glass made to have the same compositions but using polyhalite as a starting ingredient. Each limitation holding patentable weight in defining the final, claimed product of claim 1 is therefore met by the Koch et al teachings, and the claim is anticipated by the prior art of record.
Regarding claim 2, as above, the claim only imparts additional limitations on the final product glass in that coverage is limited to only those glasses that could be derived from a starting mixture containing 0.1-10 wt% polyhalite. As is disclosed in the instant Specification, and as can be further ascertained from the fact that the Tables 3-4 of the Specification indicate that glasses formed from batches with and without polyhalite are essentially compositionally equivalent, the polyhalite starting component is dissolved and forms other compounds upon melting and glass formation. Thus, the glasses covered by instant claim 2 include any wherein the amounts of the polyhalite-derived oxides of K2O, MgO, and CaO are sufficient such that they would be at least the amount generated from the minimum polyhalite content. In this case, the minimum amount of 0.1 wt% polyhalite would add only small amounts of these oxides, below 0.1 wt% each, and therefore the claim attempts to cover any glass containing at least these amounts. As discussed above, Koch et al teaches glasses wherein the amounts of K2O, MgO, and CaO are greater than the minimum necessarily imparted on a glass formed, as claimed, using this particular starting ingredient. The Koch et al glasses therefore read on the instant claim limitations as necessarily interpreted according to what they impart onto the final, glass product. The Koch et al glasses would be indistinguishable from those formed from the claimed amount of polyhalite, and therefore claim 1 is anticipated by the prior art of record.
Regarding claim 3, as discussed above, the further limitation of the claim only limit the claim coverage in that the claimed glass must include K2O, MgO, and CaO in the amount contributed from the minimum polyhalite content. In this case, the aforementioned Koch et al glasses contain K2O, MgO, and CaO in amounts that total greater than 5 wt%, and therefore they contain said minimum amounts. Claim 3 is also anticipated by the prior art of record.
Regarding claims 4-5, as discussed above, the further limitation of the claim only limit the claim coverage in that the claimed glass must include K2O, MgO, and CaO in the amount contributed from the minimum polyhalite content. In this case, the aforementioned Koch et al glasses contain K2O, MgO, and CaO in amounts that total greater than 5 wt%, and therefore they contain said minimum amounts. Claims 4-5 are also anticipated by the prior art of record.
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.
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 2, 4-5, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Fan (CN 104926141 A).
Regarding claim 2, the parts-per-weight polyhalite component of the Fan glass bead is in a range such that the resultant content as a percentage of the glass as a whole would be within the instantly claimed range (see claims, wherein polyhalite and “mixed halogen” are each terms used for this component, which is present in a content of 22-44 ppw along with the other components listed therein). Because the range for this component overlaps that of the instant claim, the further limitation is not patentably distinct over the prior art of record. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Regarding claims 4-5, as above, the range for polyhalite in parts-per-weight in combination with the further components of the glass bead and coating is such that the polyhalite as a percentage of the total glass is in a range that overlaps and thus renders obvious the ranges of said claims. Claims 4-5 are therefore also obvious and not patentably distinct over the prior art of record.
Regarding claim 7, as discussed above, Fan teaches a method meeting each limitation of instant claim 6. Fan further teaches that the parts-per-weight polyhalite component of the Fan glass bead is in a range such that the resultant content as a percentage of the glass as a whole would be within the instantly claimed range (see claims, wherein polyhalite and “mixed halogen” are each terms used for this component, which is present in a content of 22-44 ppw along with the other components listed therein). Because the range for this component overlaps that of the instant claim, the further limitation is not patentably distinct over the prior art of record. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Regarding claim 8, as above, the range for polyhalite in parts-per-weight in combination with the further components of the glass bead and coating is such that the polyhalite as a percentage of the total glass is in a range that overlaps and thus renders obvious the range of said claim. Claim 8 is therefore also obvious and not patentably distinct over the prior art of record.
Regarding claim 9, Fan teaches calcining (heat treatment) for 2-3 hours. This range overlaps and thus renders obvious the range of the instant claim. Per MPEP 2144.05, overlapping ranges have been held to establish prima facie obviousness.
Conclusion
13. No claim is allowed.
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH S WIESE whose telephone number is (571)270-3596. The examiner can normally be reached on Monday-Friday, 7:30am-4:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on 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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/NOAH S WIESE/Primary Examiner, Art Unit 1731
NSW21 August 2026
