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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/09/2025 has been entered.
Claim Objections
Claim 24 objected to because of the following informalities: at line 9, the phrase “(Al2O3) comprised between …” appears to be a potential typographical error. The limitation “comprised” appears as if it should recite “comprising”. However, Examiner notes claim 24 would appear more appropriate reciting “(Al2O3) from between …”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 33 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “a high-melting point until at least 1200 C” does not appear to be supported by the written description as originally filed.
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.
Claim 33 is 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.
The term “high-melting point until at least 1200 C” in claim 33 is a relative term which renders the claim indefinite. The term “high-melting point” 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. In the instant case, a person having ordinary skill in the arts before the effective filing date of the claimed invention would not be reasonably apprised of what melting points are, and are not, high.
The phrase “high-melting point until at least 1200 C” is additionally unclear because the limitation appears to mean the melting point is high until a temperature of 1200°C is achieved, at which point the melting point is no longer high. As such, the limitation appears to recite that the melting point is a temperature dependent variable, while Examiner notes that melting points are historically considered a static value dependent upon the composition.
Examiner suggests amending claim 33 to recite a clear numerical melting point or range, while eliminating the relative term “high”. Examiner notes the instant specification at [0020] of the PGPub appears to provide support for a melting point of 960°C.
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.
Claim(s) 24-26, 30-34, and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Simpson et al. (US5830251, hereinafter referred to as Simpson).
Regarding claim 24, Simpson discloses a slab article (see Simpson at the Abstract, disclosing ceramic tiles. Examiner notes a ceramic tiles corresponds to a slab article.) comprising: a mix comprising a preponderant amount, greater than 70% by weight, of glass frit and at least one binder (see Simpson at Col. 13, lines 7-10, disclosing additives were added such that the batch prepared consisted of 91 wt.% crystallized glass frit, 6 wt.% borosilicate glass frit, 2 wt.% bentonite, and 1 wt.% organic binder. Examiner notes this corresponds to 97 wt.% glass frit, which is within the claimed range.); wherein the slab article stems from a distribution and compacting of the mix in a support or in a forming mould (See Simpson at Col. 12, lines 11-12, disclosing tiles were pressed and fired from this material using a standard industrial tile press. Examiner notes this corresponds to compacting of the mix in a support or in a forming mould.), the mix once compacted being derived from a drying and sintering by means of firing to obtain the slab article (see Simpson at Col. 11, lines 8-15, disclosing after a pressing step, shaped tiles are dried … [and] fired in a traditional tile firing step.).
Simpson discloses the glass frit comprises a weight amount of silica (SiO2) comprised between 62% and 68% relative to an overall weight of the frit (see Simpson at Col. 3, line 24, disclosing 25-60 wt% SiO2, which is close to touching the claimed range.) A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (see MPEP 2144.05(I), second paragraph).
Simpson discloses the glass frit comprises a weight amount of alumina (Al2O3) comprised between 3% and 5% relative to the overall weight of the glass frit (see Simpson at Col. 3, line 24, 3-25 wt.% Al2O3, which overlaps with the claimed range.) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 25, Simpson discloses the slab article is derived via cooling in a controlled manner within a predefined temperature range at predefined intervals for an at least partial devitrification and crystallization of the glass frit (see Simpson at Col. 10, lines 3-12, disclosing cooling the frit at a rate of from 200°C to 2000°C per hour … during [the] devitrification step, a primary crystalline phase is produced).
Regarding claim 26, Simpson discloses the mix, in addition to the glass frit, comprises an amount of about 5-15% by weight of one or more of feldspar and clay minerals (see Simpson at Col. 10, lines 46-50, disclosing 1-45 wt.% additive I. Additive I may be … clay. Examiner notes this range overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).).
Regarding claim 30, Simpson discloses the glass frit comprises a weight amount of potassium oxide (K2O) comprised between 3% and 5% relative to the overall weight of the frit (see Simpson at Col. 3, line 26, disclosing 0 to 5 wt.% K2O, which overlaps with the claimed range.).
Regarding claim 31, Simpson discloses the glass frit comprises a weight amount of calcium oxide (CaO) comprised between 18% and 26% relative to the overall weight of the frit (see Simpson at Col. 3, lines 24-25, disclosing 0-25 wt.% CaO, which overlaps with the claimed range.).
Regarding claim 32, Simpson discloses the glass frit comprises a weight amount of magnesium oxide (MgO) comprised between 1% and 4% relative to the overall weight of the frit (see Simpson at Col. 3, line 25, disclosing 0-20 wt.% MgO, which overlaps with the claimed range.).
Regarding claim 33, Simpson discloses the glass frit is a high-melting glass frit, such that the slab article is a glass ceramic slab (See Simpson at Col. 3, lines 14-15, disclosing glass powder mixture into tiles … where the tiles have a primary crystalline phase. Examiner notes this corresponds to a glass ceramic slab).
Regarding claim 34, Simpson discloses the binder is one or more of an inorganic binder and an organic binder (see Simpson at Col. 13, line 12, disclosing an organic binder).
Regarding claim 37, while Simpson does not explicitly disclose the slab article has a hardness of greater than or equal to 5 Mohs, the hardness of an article is a function of the composition of the article, and the composition of the article of Simpson is substantially identical to the instantly disclosed composition as detailed in the rejections above such that this property would be inherently present. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Claim(s) 35-36, and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Simpson in view of Bertinelli et al. (US20040169471, hereinafter referred to as Bertinelli).
Regarding claim 35, while Simpson discloses an inorganic binder (see Simpson at Col. 10, line 55), Simpson does not disclose the inorganic binder is an aqueous dispersion of colloidal silica.
Bettinelli is directed towards a tile (see Bettinelli at the Abstract). Bettinelli discloses the mineral binder advantageously comprises colloidal silica or hydrolyzed silanes or silicates (see Bettinelli at [0069]). Bettinelli teaches colloidal silica improves the strength (see Bettinelli at [0069]).
Therefore, it would have been obvious to a person having ordinary skill in the arts before the effective filing date of the claimed invention when practicing the invention of Simpson to use colloidal silica as the inorganic binder as disclosed by Bettinelli with a reasonable expectation of successfully improving the strength as taught by Bettinelli.
Regarding claim 36, while Simpson discloses an organic binder (see Simpson at Col. 13, line 12), Simpson does not explicitly disclose the organic binder is chosen from the group comprising polyvinyl alcohol, water-soluble cellulose, and a polysaccharide.
Bertinelli discloses the organic binder is preferably chosen from … cellulosic resins ... polyvinyl alcohol (see Bertinelli at [0061]).
Therefore, it would have been obvious to a person having ordinary skill in the arts before the effective filing date of the claimed invention when practicing the invention of Simpson to use cellulosic resins or polyvinyl alcohol as the organic binder disclosed by Simpson with a reasonable expectation of successfully using an organic binder as taught by Bertinelli.
Regarding claim 38, while Simpson does not disclose the slab article is white in color, the color choice of an article is an aesthetic choice which would be obvious to select and modify as desired for the person of ordinary skill in the arts.
Bertinelli teaches to form a reflecting white background at the bottom of the discharge cells, titanium oxide may be used as the other component (see Bertinelli at [0081].
Therefore, it would have been obvious to a person having ordinary skill in the arts when practicing the invention of Simpson to use TiO2 as disclosed by Bertinelli in the composition with a reasonable expectation of successfully coloring the article white as taught by Bertinelli.
Response to Arguments
Applicant's arguments filed 12/09/2025 have been fully considered but they are not persuasive.
At page 5 of the Remarks, Applicant argues that the amendments to claim 33 have overcome via the amendments to claim 33. Examiner respectfully disagrees, and notes the relative term “high-melting point” still appears in claim 33 and remains undefined. Additionally, the phrase “until at least 1200 C” does not appear to clarify what is, and is not a high-melting point. Furthermore, the term “until” does not appear to be the appropriate term. The limitation appears as if it intends to recite “a high-melting point of up to 1200 C” or similar. Examiner suggests removing the term “high” and claiming the melting point in terms of a number or range of numbers.
At the second paragraph of page 6 of the Remarks, Applicant notes Simpson discloses 3-25% Al2O3, but argues this is in reference to a ceramic tile and not a glass frit. Examiner notes ceramics are made from a starting glass as evidenced by Simpson at Col. 3, lines 28-32 as well as the instant specification at the instant application at the Abstract. As such, while the ceramic comprises 3-25% of Al2O3, so will the glass used to form the ceramic. Ut supra, sic infra.
Applicant further argues on pages 6-7 of the Remarks that the specific examples of Simpson do not meet the claimed limitations. Examiner notes this is not convincing because the rejections above are based upon the obviousness of the claimed ranges as compared to the ranges disclosed by Simpson. Put another way, the rejections are not based upon the examples of Simpson and therefore the arguments concerning the examples of Simpson are not relevant to the instant question of patentability.
At page 7 of the Remarks, Applicant argues Simpson is silent as to the technical effect or purpose of providing a use of waste glass, using high firing rates, or using a high percentage of recycled glass. Examiner notes the instant claims are directed towards a composition, and not a firing rate. Therefore no claim limitations are directed towards a firing rate and this argument cannot be convincing. Additionally, the structure of Simpson makes the claimed ranges obvious. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (see MPEP 2112(I)).
Conclusion
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731