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 .
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.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference signs mentioned in the description: 3b(i) and 3b(j). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference characters not mentioned in the description: 2(a), 3(ab), and 3(b'). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference characters in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to because it does not contain the heading "Brief Description of the Drawings" while drawings are present.
Additionally, the lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 1 is objected to because it contains an open parenthesis on line 10 without a corresponding closed parenthesis. Appropriate correction is required.
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.
Claims 22, 23, 26, and 28 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 22 is rendered indefinite because it is unclear if the "one or more fillers" recited in the claim refers to the filler of the intermediate layer(s), the finishing layer, both layers, or either layer.
Claim 23 is rendered indefinite because it is unclear if the "one or more thermoplastic polymers" recited in the claim refers to the thermoplastic polymer(s) of the intermediate layer(s), the finishing layer, both layers, or either layer.
Additionally, the term "including" on line 5 of claim 23 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention.
Regarding claim 26, the phrase "for example" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Interpretation
Since it is USPTO policy to give claims their broadest, reasonable interpretation during prosecution, the fillers of claim 22 and thermoplastic polymers of claim 23 are taken to be for either the intermediate layer(s) or the finishing layer.
Claim Rejections - 35 USC § 102 / 103
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.
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.
Claims 20, 22, 24-26 (27) 28, 34-36, and 39-43 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Perillon (US 2013/0320024).
Perillon is directed to a heating culinary article, such as a pan or electric grill (paragraphs 0002-0003). The article comprises an inner side facing the food and an outer side disposed towards an external heating source (paragraph 0064). The article may comprise a non-stick coating over a hard base covering the surface of a support (paragraph 0102). The support may be metallic, such as aluminum, stainless steel, iron, or copper (paragraphs 0096-0097). The non-stick coating is a fluorocarbon resin based sintered layer that may contain other heat stable resins, such as silicone (paragraphs 0093-0095), with Finishing Composition CF7 including a silicone and less than 4 wt% additives or filler in the form of magnetizable and non-magnetizable particles (paragraph 0181). The hard base may be a rough enamel layer that (i) contains less than 50 ppm or lead and cadmium, (ii) has a hardness greater than that of the metal support, (iii) a melting point between that of the metal support and that of the sintered non-stick coating, and (iv) a surface roughness Ra of between 2 and 20 mm (paragraphs 0103-0106). The non-stick coating contains a mixture of magnetic and non-magnetic particles (paragraph 0067), with the magnetic particles being in the form of flakes (paragraph 0081). The magnetic particles are iron oxide (paragraph 0085) while the non-magnetic particles may be titanium dioxide (paragraph 0083).
While Perillon does not exemplify an embodiment wherein the non-stick coating is applied over the rough enamel layer, one of ordinary skill in the art would have immediately envisaged such an embodiment based on the teachings of Perillon. Alternatively, it would have been obvious to one of ordinary skill in the art to construct such an article based on the explicit teachings in Perillon to form the non-stick coating over a rough enamel layer applied to a metal support.
Claim Rejections - 35 USC § 103
Claims 20-41 are rejected under 35 U.S.C. 103 as being unpatentable over Venkataramani (US 2014/0238379) in view of Muller (US 2011/0198357).
Venkataramani is directed to a pyrolytic coating for a heating device, such as a cooking surface (paragraphs 0001-0002). The coating may comprise a binder derived from a polysiloxane and a catalyst (paragraph 0005). The device may comprise a metal substrate, an enamel base coat, and a pyrocatalytic non-stick coating over the enamel base coat (Figure 2B and paragraph 0050). The metal substrate may be aluminum (paragraph 0066).
The pyrolytic coating reads on the finishing layer of the instant claims. While the pyrolytic coating is required to contain a catalyst and the finishing layer consists of one or more silicone resins, the finishing layer is open to the presence of one or more fillers and/or one or more additives. The catalyst of Venkataramani reads on an additive, which is explicitly permitted in the finishing layer of the claims.
Venkataramani is silent regarding the details of the enamel base coat.
Muller is directed to a culinary article comprising a metal substrate, a hard base, and a non-stick coating (paragraph 0016). The hard base is a rough enamel layer comprising less than 50 ppm of lead and cadmium, a hardness greater than that of the metal to which it is applied, a melting point between that of the metal and that of the non-stick coating, and a surface roughness Ra of 2 to 50 mm (paragraph 0017). Preferably, the melting point of the hard base is 50 oC higher than that of the non-stick coating and 10 oC lower than the melting point of the substrate (paragraph 0018). The hard base is formed from an aqueous slip of enamel frit comprising less than 50 ppm of lead and cadmium, 30 to 40 wt% silica, 15 to 30 wt% titanium oxide, less than 10 wt% vanadium oxide, less than 4 wt% lithium oxide, and at least 20 wt% mineral fillers (paragraph 0031). The slip is first applied to the inner face of the substrate and dried then cured at between 540 and 580 oC (paragraphs 0032-0033). Arranging this hard base between the substrate and the non-stick coating leads to significant improvement in physical, chemical, and mechanical properties, such as scratch-resistance (paragraphs 0020-0021). The enamel layer may have a thickness of 50 mm (paragraph 0096) while the non-stick coating has a thickness on the order of 25 to 45 mm (paragraph 0065).
It would have been obvious to one of ordinary skill in the art to use the rough enamel layer of Muller as the enamel base coat of Venkataramani to provide the resulting article with significantly improved physical, chemical, and mechanical properties, such as scratch-resistance.
Regarding claim 21, Venkataramani teaches that the binder may be the condensation reaction of a silane having the formula Ra-Si-X(4-a), wherein a is from 0 to 3, X is hydroxyl or a hydrolysable group, and R is a non-hydrolysable group, such as methyl or phenyl groups (paragraphs 0023-0026). When X is hydroxyl and R is methyl and/or phenyl, the resulting product of a condensation reaction is methyl and/or phenyl silicone.
Regarding claim 22, the limitations of this claim are met since fillers are optional components and the catalyst reads on an additive.
Regarding claim 23, the limitations of this claim are met since thermoplastic polymers are optional components.
Regarding claim 24, the limitations of this claim are met since coloring agents are optional components.
Regarding claim 25, the limitations of this claim are met since the thermochromic pigments are optional components.
Regarding claim 26, the limitations of this claim are met since the thermostable pigments are optional components.
Regarding claim 27, the limitations of this claim are met since the flakes are optional components.
Regarding claims 29 and 30, the limitations of this claim are met since it would have been obvious to use an enamel base layer of 50 mm and a non-stick layer of 25 to 45 mm since it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (see MPEP 2144.07). Here, Muller demonstrates that thicknesses of 50 mm and 25 to 45 mm are suitable for enamel and non-stick layers, respectively, employed in cookware.
Regarding claim 31, the limitations of this claim are met since the intermediate layer is optional.
Regarding claim 32, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (MPEP 2144.05). In this case, it would have been obvious to one skilled in the art to have expected the same non-stick properties from a coating having a thickness of 20 mm compared to one having a thickness of 25 mm, especially when the roughness of the enamel layer is less than 20 mm and particularly in view of the teaching in Muller that the thickness of the non-stick layer is merely on the order of the recited range.
Regarding claim 34, the limitations of this claim are met since the filler is an optional component.
Regarding claim 35, the limitations of this claim are met since Venkataramani teaches that the pyrolytic coating may contain about 2 to 10 wt% of the catalyst (paragraph 0043).
Regarding claims 40, the limitations of this claim are met since a cooking surface heating device must have a face intended to be placed in contact with food and an opposite face intended to be placed in contact with an external heating source. Additionally, the limitations that one face is intended to be placed in contact with food and the other face is intended to be placed in contact with an external heating source constitutes an intended use of the article. The courts have held that a recitation with respect to the manner in which a claimed product is intended to be employed does not differentiate the claimed product from a prior art product satisfying the claimed structural limitations (see MPEP 2114).
Regarding claim 41, Muller teaches that a frying pan is a culinary article suitable for application of the enamel and non-stick coatings (paragraph 0041). Therefore, it would have been obvious to one of ordinary skill in the art to fabricate the cooking surface of Venkataramani as a frying pan.
Claims 42 and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Venkataramani (US 2014/0238379) in view of Muller (US 2011/0198357) as applied to claim 20 above, and further in view of Perillon (US 2013/0320024).
Venkataramani taken in view of Muller suggest all the limitations of claims 42 and 43, as outlined above, except for employing an electric cooking appliance as the cooking surface. However, Muller does teach that the coating is suitable for application to a frying pan.
Perillon is directed to a heating culinary article, such as a frying pan or electric grill (paragraphs 0002-0003). The article may comprise a non-stick coating over a hard base covering the surface of a support (paragraph 0102) wherein the support is a metal and the hard base is a rough enamel layer that (i) contains less than 50 ppm or lead and cadmium, (ii) has a hardness greater than that of the metal support, (iii) a melting point between that of the metal support and that of the sintered non-stick coating, and (iv) a surface roughness Ra of between 2 and 20 mm (paragraphs 0103-0106).
Perillon shows that a frying pan and an electric grill are known in the art as an equivalent culinary articles to which a rough enamel and non-stick coating may be applied. Therefore, because these articles were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to apply the coating of Venkataramani taken in view of Muller to an electric grill as opposed to a frying pan.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 20, 22, 24-28, and 33-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 13, and 14 of U.S. Patent No. 8,499,963 in view of Perillon (US 2013/0320024).
Claims 1, 4, 13, and 14 of U.S. Patent No. 8,499,963 recite all the limitations of claims 20, 22, 24-28, and 33-43, except for the inclusion of a silicone resin in the non-stick coating. However, the claim 1 does teach that the non-stick coating may be a mixture of a fluorocarbon resin and a heat-stable binder.
Perillon is directed to a culinary article, such as a frying pan or electric grill (paragraphs 0002-0003), that comprises a non-stick coating over a hard base covering the surface of a support (paragraph 0102) wherein the support is a metal and the hard base is a rough enamel layer that (i) contains less than 50 ppm or lead and cadmium, (ii) has a hardness greater than that of the metal support, (iii) a melting point between that of the metal support and that of the sintered non-stick coating, and (iv) a surface roughness Ra of between 2 and 20 mm (paragraphs 0103-0106). The non-stick coating may comprise a mixture of a fluorocarbon resin and a heat-stable binder (paragraph 0094), with silicone cited as a suitable heat stabile binder (paragraph 0095).
It would have been obvious to one of ordinary skill in the art to use a silicone as the heat stabile binder recited in the claims of U.S. Patent No. 8,499,963 since the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.
Regarding claim 22, the limitations of this claim are met since fillers are optional components and the catalyst reads on an additive.
Regarding claim 24, the limitations of this claim are met since coloring agents are optional components.
Regarding claim 25, the limitations of this claim are met since the thermochromic pigments are optional components.
Regarding claim 26, the limitations of this claim are met since the thermostable pigments are optional components.
Regarding claim 27, the limitations of this claim are met since the flakes are optional components.
Regarding claim 34, the limitations of this claim are met since the filler is an optional component.
Regarding claim 35, the limitations of this claim are met since the additive is an optional component.
Regarding claims 39-43, it would have been obvious to one of ordinary skill in the art to fabricate the cooking utensil recited in the claims of U.S. Patent No. 8,499,963 as a frying pan and an electric grill since Perillon teaches that both these devices are suitable cooking utensils to which a rough enamel and non-stick coating may be applied.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 13, and 14 of U.S. Patent No. 8,499,963 in view of Perillon (US 2013/0320024), as applied to claim 20 above, and further in view of Le Bris (US 2017/0158879).
Claims 1, 4, 13, and 14 of U.S. Patent No. 8,499,963 taken in view of Perillon recite all the limitations of claim 21, as outlined above, except for the type of silicone used as the heat stable binder to be mixed with the fluorocarbon resin.
Le Bris is directed to a non-stick coating applied to a cooking tool (paragraphs 0001-0004). The non-stick coating may comprise a heat-stable binder (paragraph 0054), such as fluorocarbon resins, silicone-polyesters, or mixtures thereof (paragraph 0055).
It would have been obvious to one of ordinary skill in the art to use a silicone-polyester as the silicone taught by Perillon since the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. Here, Le Bris demonstrates that silicone-polyester is suitable as a heat-stable binder that may be blended with a fluorocarbon resin in a non-stick coating.
Claims 29-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over 1, 4, 13, and 14 of U.S. Patent No. 8,499,963 in view of Perillon (US 2013/0320024), as applied to claim 20 above, and further in view of Muller (US 2011/0198357).
Claims 1, 4, 13, and 14 of U.S. Patent No. 8,499,963 taken in view of Perillon recite all the limitations of claims 29-32, as outlined above, except for the thicknesses of the enamel and non-stick layers.
Muller is directed to a culinary article comprising a metal substrate, a hard base, and a non-stick coating (paragraph 0016) wherein the hard base is a rough enamel layer comprising less than 50 ppm of lead and cadmium, a hardness greater than that of the metal to which it is applied, a melting point between that of the metal and that of the non-stick coating, and a surface roughness Ra of 2 to 50 mm (paragraph 0017). The enamel layer may have a thickness of 50 mm (paragraph 0096) while the non-stick coating has a thickness on the order of 25 to 45 mm (paragraph 0065).
It would have been obvious to one of ordinary skill in the art to fabricate the enamel layer at a thickness of 50 mm and the non-stick coating at a thickness on the order of 20 to 45 mm since Mullet teaches that such thicknesses are suitable for the type of coatings recited in the claims of U.S. Patent No. 8,499,963 and the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.
Regarding claim 31, the limitations of this claim are met since the intermediate layer is optional.
Regarding claim 32, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (MPEP 2144.05). In this case, it would have been obvious to one skilled in the art to have expected the same non-stick properties from a coating having a thickness of 20 mm compared to one having a thickness of 25 mm, especially when the roughness of the enamel layer is less than 20 mm and particularly in view of the teaching in Muller that the thickness of the non-stick layer is merely on the order of the recited range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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