Ex parte WEINBERG et al. - Page 2




                 Appeal No. 1997-1685                                                                                                                   
                 Application 08/348,236                                                                                                                 

                 mica flakes.  The addition of the mica flakes to the color layer is said to eliminate tear and                                         
                 crack formation of the cooled layered body (page 7a, lines 1-7 of the specification).                                                  
                                                 1                                                                                                      
                                   Claims 11  and 21 are illustrative and reads as follows:                                                             
                                   11.  A colored substrate composition comprising:                                                                     
                                   a glass or glass ceramic substrate, and at least one decorative ceramic                                              
                 color layer applied thereto,                                                                                                           
                                   wherein said ceramic color layer comprises at least one pigment, at least                                            
                 one glass and a chemically inert, elastic inorganic substance and said elastic inorganic                                               
                 substance consists of mica flakes in an amount of 1-20 wt.%.                                                                           
                                   21.  A color substrate composition comprising:                                                                       
                                   a glass or a glass ceramic substrate and at least one decorative ceramic                                             
                 color layer applied thereto,                                                                                                           
                                   wherein said ceramic color layer comprises at least one pigment, at least                                            
                 one glass and uncoated mica flakes, said uncoated mica flakes being present in said                                                    
                 ceramic color layer in an amount of 1-20 wt.%.                                                                                         
                                   The references relied upon by the examiner are:                                                                      
                 Diefenbach et al. (Diefenbach)                                 5,032,429                  July  16, 1991                               

                                   1  The examiner’s answer contained two new grounds of rejection against                                              
                 claims 11-17 and 19-24 under 35 U.S.C. § 112, second paragraph.  The examiner                                                          
                 considered the language “ceramic color layer” to lack antecedent bases in claim 11 and                                                 
                 that the language “optically inactive” as indefinite.  In response thereto, applicants                                                 
                 amended claim 11, lines 2-3 to recite “at least one decorative ceramic color layer” and                                                
                 amended claim 11, lines 5-6 to delete the expression “optically inactive” .  Applicants                                                
                 additionally pointed out that claims 12-17 and 19-24, also subject to the new grounds of                                               
                 rejection, did not contain the language “optically inactive” Upon consideration of the                                                 
                 amendment, the examiner indicated that the amendment would be entered and that the                                                     
                 new grounds of rejection were withdrawn.  Accordingly, claim 11, as presented in this                                                  
                 decision, includes the aforementioned amendments.                                                                                      
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