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 .
Claim Rejections - 35 USC § 103
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.
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 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (USPGPub 2006/0260734) in view of Kniajer et al. (WO01/30714).
Regarding claims 1-8, Brown teaches forming an enamel paste [0027] comprising glass frit (see Table 3), pigment, an organic carrier medium (see Table 5), magnesium peroxide and zinc peroxide (claim 4). Brown fails to teach wherein the second oxidizer is barium peroxide. However, Kniajer teaches that barium peroxide is a known substitute for zinc peroxide in the production of glass enamel as an oxidizer component (claim 9). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the barium peroxide of Kniajer with the magnesium peroxide of Brown as a simple substitution of one known glass enamel oxidizer for another wherein the results of the substitution would be predictable based upon the teachings of Kniajer. The teachings of Brown in view of Kniajer are as shown above. Brown in view of Kniajer fails to teach wherein the total amount of oxidizer is in the claimed range, although the range of Brown overlaps that of the current claims. However, Brown clearly indicates that the level of oxidizer present in the composition controls the level of oxygen present in the composition which thereby controls the firing of the organic component (abstract). Therefore, in the absence of criticality of the specific oxidizer content range of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of oxidizer present in Brown in order to control the firing of the organic component of Brown as described by Brown. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claims 9-11, 13 and 17-18, Brown teaches the use of amounts of oxidizer (claim 5), glass frit (claim 5), pigment (claim 5), organic vehicle (claim 15) and seed material [0026] reading upon the currently claimed ranges.
Regarding claim 12, Brown teaches wherein the seed material is crystalline (claim 15) bismuth silicate [0026].
Regarding claims 14-16, Brown teaches the use of a vitreous glass frit composition comprising bismuth borosilicate and zinc borosilicate (i.e., a bismuth-boron-zinc system) (claim 9) and a crystallizing bismuth silicate (seed material) in the percentages claimed as shown above.
Regarding claims 19-21, Brown teaches forming an enamel paste [0027] comprising glass frit (see Table 3), pigment, an organic carrier medium (see Table 5), magnesium peroxide and strontium peroxide (claim 4) wherein the paste is deposited, dried at a temperature in the claimed range and successively fired at a temperature in the claimed range wherein a substrate is disposed over the dried enamel prior to firing [0042].
Response to Arguments
The applicant essentially argues that Kniajer fails to teach all materials provided in the combination. However the Court has long held that arguing that a single reference fails to teach limitations provided in a combination of references in a 103-type obviousness rejection was not capable overcoming the provided rejection. Kniajer was used in combination with Brown merely to show that one material from Kniajer was a suitable substitute for one listed in Brown. Brown provides his own motivation for the amount of material employed as cited above.
Further it is not required that modifications to Brown be done for the same reasons provided by the applicant. Further Brown choosing oxidizers that have decomposition temperatures of less than 350C does not teach away from choosing those with decomposition temperatures greater than 350C any more than choosing oxidizers that start with the letter “L” teaches away from choosing oxidizers that start with any other letter. A teaching away must explicitly guide one away from something and not just merely be different.
Further the applicant is in general arguing that the use of first and second oxidizers that release oxygen at varying temperatures produces a seeming unexpected results or that the amount of these used creates an unexpected result but this is not supported in the applicants’ arguments. The applicant has not shown evidence to the extent that one reviewing said arguments can clearly ascertain that the outcomes provided by the current claims would be unexpected above what one would obtain by just merely swapping oxidizers around or by using slightly more or less oxidizer. Brown explicitly states what it is that the oxidizer does and that modifying the level of it alters the outcome. As such, the applicant must reasonably show that even though the range that they have claimed is slightly outside of that of Brown, that one of ordinary skill in the art would not expect their outcome based on the teachings of Brown.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/ Examiner, Art Unit 1717
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