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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/14/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
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 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.
Claims 3-5 are 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.
Claims 3-5 are unclear as to what measure of Bi and Si are used to find their ratio, i.e., atomic, molar, or mass. It appears based on the Instant Spec. there is only support for the ratio being a ratio of their masses and thus will be interpreted as such.
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, 3, 5-8 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (US 20220153636 A1), herein Han, in view of Gao et al. (Microporosity and delamination mechanisms in thermally sprayed borosilicate glass coatings), herein Gao.
In regards to claim 1, Han teaches a glass article comprising a first dielectric layer (i.e., a coating film) and an enamel coating (30) formed in the first electric layer in a patterned area (PA) [Abstract, Fig. 1 (reproduced below), Fig. 5, 0028, 0032, 0045, 0073]. Han does not expressly teach the porosity at the interface, however, very little is shown in Fig. 5.
Gao teaches microporosity and delamination in borosilicate glass coatings such as for enameling [Abstract]. Goa teaches the microporosity directly effects the adhesion strength of the coating [Abstract]. Goa teaches the porosity should be below 20 vol% [Pg. 200, Fig. 8].
The porosity at the interface is a result effective variable on the adhesion of the coating layers. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention to adjust the porosity for the intended application, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
A particular parameter can be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, and the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (see MPEP 2144.05.II.B.).
It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
Additionally, as Goa teaches better adhesion at less than 20 vol% porosity, it would have been obvious to ensure the porosity at the interface is less than 20 vol% to ensure good coating adhesion.
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In regards to claims 3 and 5, Han further teaches the enamel layer has a Bi/Si ratio of 68.4/9 = 7.6[0052, Table 1- embodiment 1].
In regards to claim 6, Han further teaches the heat is down at a temperature of 670 ° C as such the frit is expected to started to melt [0074].
In regards to claim 7, Han further teaches the dielectric coating is disposed via a PVD process [0058-0059].
In regards to claim 8, Han further teaches the coating has infrared ray reflection function [0008, 0010].
In regards to claims 12-13, Han further teaches for coated is for glass vehicle windows [0002].
Claims 2, 4 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (US 20220153636 A1), herein Han, in view of Gao et al. (Microporosity and delamination mechanisms in thermally sprayed borosilicate glass coatings), herein Gao, as applied to claims 1 and 7 above, and further in view of Lee et al. (US 20170205542 A1), herein Lee.
In regards to claim 2, modified Han does not teach the size of the voids at the interface. However, in Figure 5 showing the interface, no voids having a length greater than 2.5 microns is present.
Alternatively, Lee teaches an enamel coated glass substrate [Abstract]. Lee teaches the voids present near the enamel interface have a diameter of less than 3 microns [Abstract, 0015, 0029, 0053, Fig. 1]. This overlaps the claimed range. By example, Lee teaches voids having an average size of 1.1 or 1.4 microns [0070].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have ensured the voids present at the interface of Hans’ coating and enamel layer have a diameter of less than 3 microns as taught Lee. One would have been motivated to do so as Lee teaches this is a conventionally known range that leads to desirable properties and thus one would have had a reasonable expectation of success.
In regards to claim 4, Han further teaches the enamel layer has a Bi/Si ratio of 68.4/9 = 7.6[0052, Table 1- embodiment 1].
In regards to claim 9, Lee further teaches an enamel coated glass substrate [Abstract]. Lee teaches the voids or limited to being concentrated near the enamel interface have a diameter of less than 3 microns [Abstract, 0015, 0029, 0049, 0053, Fig. 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have ensured the voids present at the interface of Hans’ coating and enamel layer have a diameter of less than 3 microns and concentrating the voids to near the interface as taught Lee. One would have been motivated to do so as Lee teaches this is a conventionally known range that leads to desirable properties and thus one would have had a reasonable expectation of success.
In regards to claims 10-11, Han does not teach the shape of the void though does show non-uniform oblate voids in Fig. 5. However, the shape of the voids will have an effect on the adhesion of at the interface.
Modified Han discloses the claimed invention except for shape of the voids. It would have been obvious to one having ordinary skill in the art at the time the invention was made to voids oblate, since it has been held that the configuration was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration claimed was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Additionally, the shape of the voids would have an effect on the adhesion at the interface. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention to adjust the shape of the voids for the intended application, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
A particular parameter can be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, and the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (see MPEP 2144.05.II.B.).
It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
Similarly, modified Han teaches a similar coated glass with similar coating layer compositions and processing temperature, thus it is expected that physical properties including the void shapes would be similar to those of the claimed coated glass, see In re Best.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH COLLISTER/ Primary Examiner, Art Unit 1784
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