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 .
Applicant's submission filed on 1/8/26 has been entered, claims 1, and 3-15 are currently pending examination.
Claim Objections
Claim 10 is objected to because of the following informalities: The method according to claim 1, wherein firing the substrate (11) comprising the carrier layer (12) so as to melt the carrier layer (12) comprises chemically adhering the carrier layer (12) to the substrate (11) by melting, by firing, the carrier layer (12) on the substrate (11).” The emphasized portion does not conform grammatically.
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 15 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. Claim 15 recites: “The method according to claim 1, wherein depositing the carrier layer (12) on the decorative area of the external surface (110) of the ceramic substrate (11) comprises depositing the carrier layer (12) thereon as a powder”. The closest support for this limitation appears to originate from [0030-33] of the original specification. However this teaching is particularly directed to “the second alternative embodiment” wherein “a cavity (14) is made through the external surface 110. This cavity is thus intended to receive the carrier layer 12…” and further “In this alternative embodiment of the invention, the carrier layer 12 can be deposited in the cavity 14 in powder form.” Thus the only teaching toward deposition of the carrier layer 12 as a powder is only when it is applied within cavity 14, not external surface 110, see, further pictorially in Fig 1f, wherein 12 only resides in cavity 14, and there does not exist any 12 on the surrounding external surface 110.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 8-9, 10, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Qian (WO00/68509; citations directed to machine translation provided herein; hereafter Qian).
Claim 1: Qian teaches a method for the three-dimensional decoration of a substrate (3) to produce an external part (decoration) (see, for example, Fig 2, pg 2) comprising the steps of:
depositing at least one enamel carrier layer (low melting glass enamel / glaze material, (2)) on a decorative area of an external surface of a ceramic substrate (ceramic or enamel) said decorative area being intended to receive a decorative element (glass bead (1)) (see, for example, Fig 2, pg 2);
firing the substrate comprising the carrier layer so as to melt the carrier layer (see, for example, Fig 2, pg 2, such as at 800-900oC);
after firing the substrate comprising the carrier layer so as to the carrier layer, depositing the decorative element (glass beads 1) made of a ceramic material (such as glass) in solid form on the carrier layer (see, for example, Fig 2, pg 2),
the material of the decorative element being such that its melting temperature is higher than the glass transition temperature of the material constituting the carrier layer (see, for example, Fig 2, pg 2, the glass bead retains its shape and features following thermal exposure sufficient to at least soften the carrier layer to allow the glass beads to embed therein);
sealing the decorative element to the substrate by firing (such as at 700-900C) to form an external part (see, for example, Fig 2, pg 2).
Claim 8: Qian further teaches wherein during the sealing step, the temperature to which the substrate, the carrier layer and the decorative element are subjected to is 700-900C (See, for example pg 2, Fig 2).
Claim 9: Qian further teaches wherein the depositing the at least one enamel carrier layer on the decorative area of the external surface of the ceramic substrate comprises depositing the at least one enamel carrier layer on a flat, outer-most surface of the ceramic substrate (see, for example, Fig 2, pg 2).
Claim 10: Qian further teaches wherein firing the substrate (11) comprising the carrier layer (12) so as to melt the carrier layer (12) comprises chemically adhering the carrier layer (12) to the substrate (11) by melting, by firing, the carrier layer (12) on the substrate (11) (see, for example, Fig 2, pg 2, wherein firing / melting / chemical adhering proceeds at 800-900pC).
Claim 12: The method according to claim 1, wherein sealing the decorative element to the substrate by firing to form the external part comprises applying pressure to the decorative element while being fired (see, for example, pg 2, Fig 2, wherein the decorative elements experience applied pressure, specifically pressure attributed to the spraying application, during the sealing / firing).
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) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qian as applied to claim 1 above, and further in view of Sauer et al (WO99/01394; citations directed to machine translation provided herein, hereafter Sauer).
Claim 5-6: Qian teaches a method involving using a low temperature glass enamel material as a bonding agent for higher melting temperature glass beads (See for example, pg 2, Fig 2). But Qian is silent as to suitable chemistry for such low melting temperature glass enamel formulations, so it does not explicitly teach borosilicate enamel, further sodium borosilicate enamel. Sauer teaches a method for processing and bonding glass beads, further for the production of reflective surfaces (See, for example, pg 1-2). Sauer further teaches wherein a predictable low melting glass enamel formulation suitable for bonding high temperature glass beads is a sodium borosilicate enamel (See, for example, pg 5). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporate a sodium borosilicate enamel as the low melting point carrier material since such a material is recognized in the art to predictably act as a low melting point glass enamel material suitable for bonding glass beads as desired in Qian, and further since when a primary reference is silent as to a certain detail, one of ordinary skill would be motivated to consult a secondary reference which satisfies the deficiencies of the primary reference.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qian as applied to claim 1 above, and further in view of Matsuura et al (JP2006-267460; citations directed to machine translation provided herein, hereafter Matsuura).
Claim 7: Qian has taught wherein after firing the carrier layer is surfaced so as to flatten its surface and even out its thickness (see, for example, pg 2, Fig 2; wherein the surface of carrier layer appears even in thickness, and further as the layer undergoes melting, the force of gravity, at least to some extent would naturally induce flattening and / evening out to some extent presently reading on the surfacing step as claimed). Qian is silent as to an appropriate melting point of the retroreflective glass beads, so it does not explicitly teach that they possess a melting temperature below 1000 C. Matsuura teaches a method of making reftroreflective articles via using glass beads (See, for example, Fig 1-7, [0001]). Matsuura further teaches its process similarly involves using low melting point enamel to bond the high melting point glass beads, and wherein the melting temperature of such high melting point glass beads is commonly on the order of greater than 700oC, further 800-1100oC (see, for example, [0011-12], [0019-20]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated glass beads with a melting point of greater than 700oC, further 800-1100oC, as such glasses are conventionally known in the art to produce embedded glass bead retroreflectors, and since when a primary reference is silent as to a certain detail, one of ordinary skill would be motivated to consult a secondary reference which satisfies the deficiencies of the primary reference. Although such a range is not explicitly less than 1000oC it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a melting temperature within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qian as applied to claim 1 above, and further in view of Wang (US 2014/0002770; hereafter Wang).
Claim 15: Qian has taught the method of claim 1 wherein Qian has generally taught the deposition of low-melting point glass material (carrier material) onto the decorative area of the external surface of the substrate to subsequently facilitate bonding between the substrate and subsequently applied material (1), but it is silent as to the state of the low melting point glass material being deposited, therefore it does not explicitly teach the depositing the carrier layer (12) thereon as a powder. Wang teaches a method of using low melting glass as a means to bond two materials (See, for example, abstract, claims). Wang further teaches wherein low melting glass used for such applications can be predictably deposited as a glass powder (See, for example, abstract, Fig 1, [0012], [0028], [0056]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated depositing the low melting glass material of the carrier layer as a powder since such a form of such material is well known in the art to serve predictably to bond ceramic / glass materials to one another, and since when a primary reference is silent as to a certain detail, one of ordinary skill would be motivated to consult a secondary reference which satisfies the deficiencies of the primary reference.
Claim Objections
Claims 3-4, 11, and 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s amendments to claim 1, filed 1/8/26, with respect to the rejection(s) of the claim(s) over Cao (and further Singer) have been fully considered and are persuasive as Cao did not adequately teach firing the substrate comprising the carrier layer so as to melt the carrier layer prior to depositing the decorative element as has been amended. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Qian (and above cited supportive secondary references where applicable).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/NATHAN H EMPIE/ Primary Examiner, Art Unit 1712