DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of group I, claims 1-16 in the reply filed on March 26, 2026 is acknowledged. The traversal is on the ground(s) that a search for the etching composition of claim 1 would overlap with a search for the etching composition of claim 19. This is not found persuasive because while there is some overlap on the composition, they are not the same. Furthermore the composition of claim 19 does not required steps for manufacturing the glass substrate, which would require a different search.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 15 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.
Claim 15 limits the etching composition to 4 components. However, claim 13 recites the composition requires a fifth component, 20-40 wt.% of water. Thus, the “consisting” language of claim 15 is indefinite, as claim 13 recites the requirement for water. Please clarify.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 14 recites the amount of ammonium bifluoride is greater than the amount of sodium bentonite. However, claim 13 already recites the ammonium bifluoride is 35-45 weight% and the sodium bentonite is 0.5-5 wt.%. Thus, claim 14 does not further limit claim 13. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 1-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hogan (4,781,792) in view of LV et al. (CN 110563341 machine translation provided) and Hou et al. (WO 2014/070869). Hogan teaches a method for etching glass, the method comprising applying an etching composition over at least one side of a glass substrate, washing the glass substrate to yield an etched glass substrate (abstract). Hogan also teaches basic components of the etching composition comprises a hydrogen fluoride (i.e. ammonium bifluoride, col. 7 lines 33-42), water, optionally a thickener, and optionally an inert filler (col. 7 lines 48-52), wherein the inert filler can be barium sulfate (col. 7 lines 59-60). Hogan further teaches organic solvents, such as ethylene glycol, and polyethylene glycols, can be used, but are not necessary unless etching is conducted in hot and dry conditions (col. 7 lines 63-67), which suggests the option of no organic solvent for the composition. However, Hogan is silent regarding the amount of the components.
In a similar endeavor, LV teaches an etching composition comprising greater than 30 wt.% of a bifluoride such as 30-45 parts ammonium hydrogen fluoride, inert fillers including 2-5 parts barium sulphate and 4-10 parts starch, less than 10 wt.% of a thickener such as 2-6 parts bentonite, and at least 20wt% water (abstract). Furthermore, since LV is silent on any sugar alcohol and organic solvents, it is interpreted the composition comprises of no sugar alcohol and no organic solvent. While the 2-5 parts barium sulphate and the 4-10 parts starch are considered inert fillers, LV fail to suggest at least 25wt% of the inert filler in the composition. In the same field of endeavor, Hou teaches an etching composition for a glass substrate comprising a bifluoride ([0035]), a wetting agent ([0042]), and a thickener ([0042]), and an inert filler ([0043]). Hou recognizes barium sulfate is a inorganic inert filler. Hou also teaches the inert filler functions to aid in controlling the etching rate and suggests barium sulfate as a known inert filler at a content of up to 20% ([0043]). Accordingly, it would have been obvious to one of ordinary skill in the art to have provided the necessary amount of filler so as to provide the desired etching rate, including up to 20 wt.% barium sulfate, as suggested by Hou. The combination of up to 25 wt.% barium sulfate and 4-10 parts starch provides for an inert filler of at least 25 wt.%.
Regarding claim 2, Hogan and LV teach the bifluoride comprises ammonium bifluoride (col. 7 lines 33-42, abstract, respectively).
Regarding claim 3, Hogan and LV teach the inert filler comprises barium sulfate (col. 7 lines 59-60, abstract, respectively).
Regarding claims 4 and 11, Hogan and LV do not recite any sugar alcohol, which would provide for less than 25 wt.% sorbitol.
Regarding claims 5 and 12, Hogan and LV do not use sodium bentonite, which suggests less than 5 wt.% of sodium bentonite.
Regarding claim 6, as mentioned, LV is silent regarding any organic solvent and Hogan teaches organic solvents are not necessary unless etching is conducted in hot and dry conditions (col. 7 lines 63-67), which suggests no organic solvent is otherwise needed.
Regarding claims 7-8, Hogan teaches etching only one side of the glass substrate (col. 4 lines 1-9). Hou teaches etching solution can be applied two or more surfaces ([0032]) and teaches applying the solution by many known methods including spraying and dip coating, wherein dip coating involves immersing the glass substrate into the solution ([0044], which suggests etching of both sides of the glass substrate. Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to have applied the etching composition to one or both sides of the glass substrate as a matter of design choice, as Hou teaches such options for treating one or two surfaces are common.
Regarding claim 9, as mentioned, LV teaches an etching composition comprising greater than 35 wt.% of a bifluoride, such as 30-45 parts ammonium hydrogen fluoride (abstract).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hogan (4,781,792) in view of LV et al. (CN 110563341 machine translation provided) and Hou et al. (WO 2014/070869) as applied to claim 3 above, and further in view of Levin et al. (GB 2070519) and Hageman et al. (1,471,466). LV fails to suggests a barium sulfate content of at least 30 wt. %. Hogan teaches using the etching composition to provide an etched marking on a glass article, such as an automobile window (col. 9 lines 44-45, col. 1 lines 5-14). Like Hogan, Levin also teaches providing an etched marking on a glass article, such as an automobile window (page 1 lines 1-7, 113-118). Like LV, Levin teaches using ammonium bifluoride as the active etching ingredient and barium sulfate as an inert filler the provides for a paste-like consistency to the etching composition. Levin also teaches using a paste-like form for the etching composition allows for confined application of the etching composition to the desired areas of the glass substrate (page 1 lines 87-93, page 2 lines 4-18, 76-83). In a similar manner, Hageman teaches a viscous etching comprising using ammonium bifluoride as the active ingredient and barium sulfate as the inert filler (page 1 lines 12-13, 42-45, 55-60), wherein the barium sulfate content is 33 wt.% (tables). Hageman teaches this provides for a viscous paste that can be easily applied (page 1 lines 54-57). Accordingly, it would have been obvious to one or ordinary skill in the art at the time of the invention to have employed more than 30 wt.% barium sulfate in the etching composition of Hogan and LV so to provide a viscous paste that allows for easy and confined application of the etching composition to the desired areas of the glass article, as taught by Levin and Hageman.
Claims 1-4, 7, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR20180019434 machine translation provided) in view of Li et al. (CN 102887647 machine translation provided). Kim discloses a method for acid etching glass, the method comprising applying an etching composition over at one side of a glass substrate for a period of time, and washing the glass substrate to yield an etched glass substrate (“etching solution applying step”, “cleaning and removing the etching solution”, 3rd -6th passages on page 3, page 6). Kim also teaches the etching composition comprises at least a fluoride compound, a thickener, a wetting agent (humectant), and water (9th passage on page 3), wherein the fluoride compound includes ammonium bifluoride (NH4HF2) in the amounts of 60-90 parts by weight based on 100 parts by weight of the composition (2nd- 4th passages on page 4), and the wetting agent includes sorbitol in the amounts of 5-35 parts by weight (1st – 3rd passages on page 5). Kim further teaches adding barium sulfate in the amounts of 1-5 parts, which is also considered an inert filler (4th -7th passages on page 5), and a thickener in the amounts of 3-10 parts by weight (7th passage on page 4). Kim suggests thickeners including starch, i.e. acid treated starch, which also functions as an inert filler (“low possibility of modifying raw materials”) and provides for viscosity control of the composition (12th -13th passages eon page 4). It would appear the etching composition of Kim satisfies the clamed components including greater than 30 wt.% of a bifluoride (60-90 wt.% ammonium bifluoride), less than 30 wt.% of a sugar alcohol (5-35 wt.% sorbitol), less than 10 wt.% of a thickener (3-10 wt.% thickener), less than 5 wt.% of an organic solvent, since no organic solvent was disclosed as necessary, and at least 20 wt.% water (if the lower limits of the other parts just discussed were used). Kim differs from the claimed composition in that it fails to specify an inert filler content of at least 25 wt.%, as 1-5 parts barium sulfate and 3-10 parts thickener is less than 25 wt.%. In the same field of endeavor, Li also teaches an etching composition for frosting a glass substrate comprising 20-60 parts ammonium bifluoride, 5-20 parts barium sulphate, and 10-30 parts of a filler (paragraph (1) on page 2). In addition to barium sulfate, which is a known inert filler, Li teaches the filler can further comprise of other inert materials, such as starch. As mentioned, Kim teaches the inert filler functions to aid in controlling the etching rate and viscosity of the composition (12th – 13th passage on page 4). Accordingly, it would have been obvious to one of ordinary skill in the art to have provided the necessary amount of filler so as to provide the desired etching rate, such as Li’s suggested filler content 10-30 parts (including or not including the barium sulfate content) as suggested by Kim and Li.
Regarding claim 2, Kim teaches the bifluoride comprises ammonium bifluoride (2nd- 4th passages on page 4). Li teaches the bifluoride comprises ammonium bifluoride (paragraph (1) on page 2).
Regarding claim 3, Kim teaches the inert filler comprises barium sulfate (4th -7th passages on page 5). Li also teaches Li teaches inert filler comprises barium sulphate (paragraph (1) on page 2).
Regarding claim 4, Kim teaches the wetting agent includes a sugar alcohol, such as sorbitol (1st – 3rd passages on page 5).
Regarding claim 7, Kim teaches applying the etching composition only over the first side of the glass substrate (2nd- 3rd passages on page 3, see figure 2).
Regarding claim 9, Kim teaches the ammonium bifluoride content is 60-90 parts by weight based on 100 parts by weight of the composition (2nd- 4th passages on page 4), which is greater than 35 wt.%.
Regarding claim 11, Kim teaches sorbitol in the amounts of 5-35 parts by weight (1st – 3rd passages on page 5), which includes contents of less than 25 wt.%.
Claims 5 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR20180019434 machine translation provided) in view of Li et al. (CN 102887647 machine translation provided) as applied to claim 1 above, and further in view of LV et al. (CN 110563341 machine translation provided). Regarding claim 5, Kim teaches about 3-10 parts of a thickener may be added (7th passage on page 4), but doesn’t specify sodium bentonite. In the same field of endeavor, LV teaches an etching composition comprising ammonium hydrogen fluoride, barium sulphate, and starch (abstract). LV further teaches adding a thickener, such as bentonite. LV teaches the amount of bentonite added can control the fluidity of the composition, which would affect the uniformity of the etching (3rd passage on page 3). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to have used bentonite as a thickener for the etching composition of Kim and Li, to provide controlled fluidity of the etching composition and effect uniform etching, as taught by LV. While, sodium bentonite was not specified, it is well known natural bentonite comprise of sodium bentonite and calcium bentonite. Thus, with the limited options, it would have been obvious to try sodium bentonite with a reasonable expectation of success.
Regarding claim 12, Kim teaches the thickener is in the amounts of 3-10 parts by weight (7th passage on page 4), which includes values of less than 5 wt.%. LV also teaches 2-6 parts of bentonite (abstract), which provides for values of less than 5 wt.%.
Claims 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR20180019434 machine translation provided) in view of Li et al. (CN 102887647 machine translation provided) as applied to claim 1 above, and further in view of Choi (KR 950014787 machine translation). Kim teaches etching large area glass substrate, but doesn’t specify architectural glass. Choi teaches glass etching has many applications including glass containers, and flat glass such as decorative window glass and mirrors of department stores, which is considered architectural glass (last paragraph on page 1, 3rd passage on page 2). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to have applied the etching composition for different glass articles, including architectural glass, as there is a need for it, as taught by Choi.
Claims 1 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hageman et al. (1,471,466) in view of Kim (KR20180019434 machine translation provided) and of LV et al. (CN 110563341 machine translation provided). Regarding claims 1 and 13, Hagemen teaches applying an etching composition to one side of a glass substrate for a period of time, and washing the glass substrate to yield an etched glass substrate (page 1 lines 84-87, 94-92). Hagemen also teaches the etching composition comprises 20 to 35 wt.% of ammonium bifluoride, 25 to 40wt% barium sulfate, 15 to 30 wt.% water, and 10-25 wt.% viscous material (thickener). Hagemen does not require any organic solvent. Also, Hagemen fails to teach a sugar alcohol, like sorbitol. Like Hagemen, Kim also teaches an etching solution comprising the basic components of a fluoride compound, a thickener, and water (9th passage on page 3). Kim also teaches adding a wetting agent to preserve the stability of the etching composition and control the etching rate, and suggests sorbitol in the amount of 5-35 parts (1st-3rd passage on page 5). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to have incorporated 5-35 parts of sorbitol in the etching composition of Hagemen, so as to control the etching rate, as taught by Kim.
Hagemen also teaches using molasses as a thickener, and also suggests other thickener can be use, but doesn’t specify sodium bentonite. In the same field of endeavor, LV teaches an etching composition comprising ammonium hydrogen fluoride, and barium sulphate (abstract). Like Hagemen, LV further teaches adding a thickener, such as bentonite. LV teaches the amount of bentonite added can control the fluidity of the composition, which would affect the uniformity of the etching (3rd passage on page 3), and suggests using bentonite in the amount of 2-6 parts (abstract). Naturally, given the advancement in science, bentonite would be an obvious modern replacement for thickeners, such as molasses. Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to have used 2-6 parts of bentonite as a thickener for the etching composition of Hagemen and Kim in order to provide controlled fluidity of the etching composition and effect uniform etching, as taught by LV. While, sodium bentonite was not specified, it is well known natural bentonite comprise of sodium bentonite and calcium bentonite. Thus, with the limited options, it would have been obvious to try sodium bentonite with a reasonable expectation of success.
Regarding claim 14, Hagemen suggests 20-35 wt.% of ammonium bifluoride and LV suggests 2-6 parts of bentonite. Thus, the ammonium bifluoride content is greater than that of bentonite.
Conclusion
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/QUEENIE S DEHGHAN/Primary Examiner, Art Unit 1741
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