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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 6/30/26 is acknowledged.
Claims 18-21 and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/30/26.
Applicant’s response indicated that only claims 1-15 are present and that applicant elects Group I (claims 1-11). This is believed to be in error as claims 1-23 are present and Group I corresponds to claims 1-17 and 22.
Claim Interpretation
Optional claim limitations are given no patentable weight.
Claims 3 and 7 refer to Group 4 materials. This could either refer to group 4 or Group IV. Given the examples of Group 4 materials in the specification and the use of “Group 3A” in each of claims 3 and 7, Group 4 is interpreted to refer to Group IV (i.e., C, Si, Ge, Sn, Pb).
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 1-17 and 22 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.
Claim 1 recites that “the hot end coating comprises oxide(s) of the metal, or combinations thereof.” It is not clear what combinations would be possible when only oxides of the metal are recited.
Claim 2 recites that the emissions are only water and substantially free of halogen and/or carbon. However, if the emissions are only water, it is not clear how even trace amounts of halogen or carbon could be within the scope of the claim.
Claim 12 is listed as currently amended, but includes no limitations. Cancellation of claim 12 is requested.
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.
Claims 1-3, 6-11, 13-14, 16-17, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2018/0105456).
Claims 1, 3, 8, 11, 14 and 22: Wang teaches a method of coating a glass container with a hot end coating (Abst.), comprising the steps of: applying an aqueous dispersion comprising particles of aluminum oxide in an polar protic solution of water (which will necessarily form aluminum hydroxide) (¶¶ 0022, 0026-0027) to a glass surface having a temperature of 200-1200˚C (¶ 0022), thereby forming a hot end coating comprising aluminum oxide (Al2O3) (i.e. substantially free of carbon) (¶¶ 0017, 0026-0027); and applying a cold end coating on the hot end coating (¶ 0016). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a hot end coating temperature of 450-800˚C.
Claim 2: Based on the materials used by Wang, the only emissions would be the water which is vaporized (¶¶ 0022-0027).
Claim 6: Wang teaches that the composition comprises 1-15 wt% solid particles (¶ 0024).
Claim 7: Wang teaches that the composition further comprises an alkali silicate (i.e. claimed Group 4 salt) (¶ 0028).
Claims 9-10: Wang teaches that the composition is deposited by mechanical spraying (¶¶ 0009-0010).
Claim 13: Wang does not teach the need for a special atmosphere or chamber, therefore atmospheric pressure in air is implicit.
Claim 16: Wang teaches that the particles have a size of 2-200 nm (¶ 0026), but does not discuss viscosity. Wang does, however, teaches that the relative amount of particles and the particle sizes can be adjusted depending on the desired amount (¶¶ 0024-0026) and one of ordinary skill in the art would have understood these changes to change the viscosity of the solution. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a viscosity of 1000 Pa-s depending on the desired concentration of particles in the solution.
Claim 17: Wang teaches a homogeneous coating (¶ 0017).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Wang in light of Barclay et al. (WO2006/060510).
Claims 4-5: Wang is silent regarding the pH of the composition. Barclay teaches a composition for forming a coating of alumina on a surface (Abst.) and explains that a suitable pH for such a composition is 3-5 (1:12-16, 9:14-18) and that this pH is achieved by adding an acid to the composition (12:1-4). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, because Wang is silent about the pH and because Barclay teaches a suitable pH for a similar purpose, it would have been obvious to one of ordinary skill at the time of filing to have selected a pH of 3-5 with the predictable expectation of success in Wang.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Wang in light of Chisholm (US 2023/0101908).
Claim 15: Wang fails to describe the optical aspect of the coating. Chisholm teaches a hot end coating for a glass container and explains that such a coating is transparent (¶ 0010). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a transparent coating in Wang with the predictable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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