Corning Incorporated

Patent Trials and Appeals Board

Jun 16, 2020

14542932 - (D) (P.T.A.B. Jun. 16, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/542,932 11/17/2014 Adam James Ellison SP13-347 4939
22928 7590 06/16/2020
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/16/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usdocket@corning.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADAM JAMES ELLISON, JOHN CHRISTOPHER MAURO,
DOUGLAS MILES NONI JR., LYNN MARIE THIRION, and
NATESAN VENKATARAMAN
____________

Appeal 2019-004030
Application 14/542,932
Technology Center 1700
____________

Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND, and
JEFFREY R. SNAY, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1, 4–10, and 12–18.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies Corning Incorporated as the real party in interest.
Appeal Brief, filed January 28, 2019 (“Appeal Br.”) 2.
2 Final Office Action, mailed August 28, 2018 (“Final Act.”).
3 Claims 19–46 have been withdrawn from consideration. Final Act. 1.
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STATEMENT OF THE CASE
Background
The subject matter on appeal relates to ion exchangeable glasses
having a high level of intrinsic scratch resistance. Specification, filed
November 17, 2014 (“Spec.”) ¶ 2. The Specification discloses “[i]on
exchangeable boroaluminosilicate glasses having high levels of intrinsic
scratch resistance” that include SiO2, B2O3, Al2O3, at least one of Li2O,
Na2O, and K2O and, when ion exchanged, may have a Knoop scratch
initiation threshold of at least about 40 Newtons. Id.
Of the appealed claims, claim 1 is independent. Claim 1 is
representative of the subject matter on appeal, and reproduced below:
1. A glass, comprising: from 62 mol% to about 68 mol%
SiO2; from about 6 mol% to 10 mol% Al2O3; from about 5
mol% to about 35 mol% B2O3; from 1 mol% to 15 mol% Na2O,
wherein 1 mol% ≤ Li2O + Na2O + K2O ≤ 15 mol%; up to about
5 mol% MgO; up to about 5 mol% CaO; and up to about 2
mol% SrO, and wherein 4 mol% ≤ B2O3 - (MgO + CaO + SrO
+ Li2O + Na2O + K2O – Al2O3) ≤ 35 mol%, and 4 mol% ≤
MgO + CaO + SrO + Li2O + Na2O + K2O ≤ Al2O3 + 4 mol%.
Appeal Br. 9 (Claims App’x).4

4 Appellant’s Claims Appendix does not include page numbers. For ease of
reference and clarity, we number the Claims Appendix, continuing the page
numbers from the Appeal Brief argument section.
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The References
Gulati US 2006/0127679 A1 June 15, 2006
Murata US 2010/0035745 A1 Feb. 11, 2010
Vogl5 WO 2011/144024 A1 Nov. 24, 2011
Gomez US 2011/0294649 A1 Dec. 1, 2011
Koyama US 2012/0083401 A1 Apr. 5, 2012
The Rejections
The Examiner maintains the following rejections on appeal:
1. Claims 1, 4, 7–10, 12, and 15–18 under 35 U.S.C. § 103 as
unpatentable over Gomez;
2. Claim 4 under 35 U.S.C. § 103 as unpatentable over Gomez
and Vogl;
3. Claims 4, 13, and 14 under 35 U.S.C. § 103 as unpatentable
over Gomez and Gulati;
4. Claims 5 and 6 under 35 U.S.C. § 103 as unpatentable over
Gomez and Koyama; and
5. Claims 1, 5, and 6 under 35 U.S.C. § 103 as unpatentable over
Murata.
Examiner’s Answer, dated February 25, 2019 (“Ans.”) 3–10.
OPINION
Rejection over Gomez
The Examiner rejects claims 1, 4, 7–10, 12, and 15–18 under
35 U.S.C. § 103 as unpatentable over Gomez. Final Act. 2–3. Appellant

5 Vogl is the last name of the last listed inventor on the application.
Although it is our established practice to refer to a reference by the surname
of the first-named inventor, we adopt the Examiner’s and Appellant’s
naming convention for clarity in the record of this appeal.
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argues claims 1 and 4. Appeal Br. 3–5. Claims 7–10, 12, and 15–18 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). We address claims 1 and 4
separately below.
Claims 1, 7–10, 12, and 15–18
The Examiner finds Gomez discloses an alkali aluminosilicate glass
that may include SiO2, Al2O3, B2O3, Li2O, Na2O, and K2O in certain ranges.
Final Act. 2–3 (citing Gomez ¶ 21). The Examiner further explains in the
Answer that claim 1 does not require the recited glass to include MgO, CaO,
or SrO. Ans. 4.6 The Examiner finds Gomez’s ranges overlap the recited
ranges, which renders the claimed glass composition obvious, and further
finds the overlapping ranges satisfy the inequalities that claim 1 recites.
Final Act. 3.
Appellant contends that “Gomez does not disclose a range for the
content of MgO + CaO + SrO + Li2O + Na2O + K2O” and one of ordinary
skill in the art would not have had a reason to select a composition with
claim 1’s MgO + CaO + SrO + Li2O + Na2O + K2O content because Gomez
does not provide guidance regarding the amount of MgO + CaO + SrO +
Li2O + Na2O + K2O. Appeal Br. 3–4. Appellant further asserts that the
recited glass provides unexpected results sufficient to overcome any prima
facie case of obviousness. Id. at 4 (citing Spec. ¶¶ 32, 35).
Appellant’s arguments are unpersuasive. A prima facie case of
obviousness arises when the ranges of a recited composition overlap the
ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003). Gomez’s paragraph 21 discloses ranges for SiO2, Al2O3, B2O3,

6 Appellant does not dispute the Examiner’s conclusion that claim 1 does not
require MgO, CaO, or SrO. See generally Reply Br.
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Li2O, Na2O, and K2O that overlap the individual ranges that claim 1 recites
for each of those compounds (e.g., “from 62 mol% to about 68 mol% SiO2”)
and, therefore, overlap and satisfy the inequalities that claim 1 recites (e.g.,
“4 mol% ≤ MgO + CaO + SrO + Li2O + Na2O + K2O ≤ Al2O3 + 4 mol%”).
Accordingly, the Examiner sets forth a case of obviousness for claim 1’s
glass composition.
Appellant argues that the Examiner’s rejection improperly relies upon
the random selection of a composition from Gomez’s ranges or relies upon
impermissible hindsight. Reply Brief, dated April 25, 2019 (“Reply Br.”),
2–3 (citing In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). These
arguments are also unpersuasive because the rejection is based upon the
finding that Gomez discloses ranges that overlap claim 1’s ranges and
inequalities. Final Act. 3. As discussed above, this establishes obviousness.
Appellant’s arguments to the contrary do not identify a reversible error in
the rejection.
With regard to Appellant’s asserted unexpected results, we agree with
the Examiner that Appellant does not compare those results with the closest
prior art (i.e., Gomez). Ans. 5. “[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). The Examiner also correctly finds Appellant does
not provide the necessary data to establish unexpected results. Ans. 5.
Citing discussions in the Specification, Appellant argues results that are
qualitative in nature without citing to any underlying data. See Spec. ¶¶ 32,
35. An appellant must establish unexpected results with factual evidence.
Attorney argument does not suffice. See In re Geisler, 116 F.3d 1465, 1470
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(Fed. Cir, 1997) (attorney argument is not the kind of factual evidence that is
required to rebut a prima facie case of obviousness). In addition,
Appellant’s Specification does not describe the results on which Appellant
relies as “unexpected” and Appellant does not direct us to any evidence to
support its argument that the results would indeed have been unexpected to
one of ordinary skill in the art. See In re De Blauwe, 736 F.2d 699, 704
(CCPA 1984) (mere argument does not establish that results are
unexpected). Based on the foregoing, Appellant’s asserted evidence of
unexpected results is entitled to little weight.
Considering the evidence cited in the Examiner’s rejection and
Appellant’s asserted evidence of non-obviousness, a preponderance of the
evidence supports the Examiner’s obviousness determination. Accordingly,
we affirm the Examiner’s rejection of claims 1, 7–10, 12, and 15–18 under
§ 103 over Gomez.
Claim 4
Claim 4 depends from claim 1 and recites “the glass is ion exchanged
and has a Knoop scratch threshold of at least about 30 N.” Appeal Br. 9
(Claims App’x). For the rejection of claim 4, the Examiner finds Gomez’s
glass is ion exchanged and has a similar composition to claim 4’s glass, but
that Gomez does not explicitly disclose claim 4’s Knoop scratch threshold.
Final Act. 3. In view of the similar composition, the Examiner determines
one of ordinary skill in the art would have expected Gomez’s glass to have
similar properties, including claim 4’s Knoop scratch threshold. Id.
Appellant asserts claim 4’s Knoop scratch threshold is not an inherent
feature of claim 1’s composition because the exemplary compositions
disclosed in the Specification include a composition (i.e., composition 2)
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that falls within the recited ranges for claim 1’s composition, but has a
Knoop scratch threshold of less than 20 N, which is outside of claim 4’s
recited range. Appeal Br. 4–5.
The Specification demonstrates that exemplary composition 2 has a
composition falling within the scope of claim 1’s composition. Spec. 10–11.
However, Appellant’s Figure 2 indicates a Knoop scratch threshold of less
than 20 N for exemplary composition 2. The Examiner responds that
exemplary composition 2 was not strengthened via ion exchange, while the
exemplary compositions having a Knoop scratch threshold value satisfying
claim 4 were ion exchanged. Ans. 6. Appellant, however, explains that the
Specification describes ion exchanging the exemplary glasses before testing
their Knoop scratch thresholds. Reply Br. 3 (citing Spec. ¶ 43).
Appellant’s arguments identify a reversible error in the Examiner’s
rejection. We agree with Appellant that the Specification discloses ion
exchanging all of the glasses—which would include composition 2—before
testing Knoop thresholds. Spec. ¶ 43 (“Knoop scratch thresholds are plotted
in FIG. 2 for the glasses listed in Table 1. Indentation fracture thresholds
were determined after ion exchanging the glasses in a molten KNO3 salt bath
for 16 hours at 410°C.”). Accordingly, we reverse the Examiner’s rejection
of claim 4 under § 103 over Gomez.
Rejection over Gomez and Vogl
The Examiner rejects claim 4 under 35 U.S.C. § 103 over Gomez and
Vogl. The Examiner finds Gomez does not expressly disclose the recited
Knoop scratch threshold, but Vogl discloses an alkali aluminosilicate glass
that is suitable for electronic devices and has a Knoop hardness higher than
600 kgf/mm2. Final Act. 3–4. The Examiner concludes that it would have
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been obvious to modify Gomez’s glass “to have the Knoop hardness of Vogl
in order to increase scratch resistance.” Id.
Appellant argues the Examiner has committed three reversible errors:
(1) the Examiner does not explain how the proposed modification could or
would increase the Knoop hardness of Gomez’s glass, (2) the Examiner
merely asserts that such a modification would have been desirable without
evidence demonstrating the modification would have been possible or how it
could have been produced, and (3) the Examiner asserts a glass has the same
properties as claim 4’s glass simply because the glass has a similar
composition. Appeal Br. 5; Reply Br. 3–4.
Appellant’s arguments are unpersuasive. As an initial matter, we note
that Appellant does not dispute whether Vogl’s glass achieves a Knoop
scratch threshold that claim 4 encompasses. Turning to the references, Vogl
discloses an alkali aluminosilicate glass for consumer electronic products as
does Gomez. Compare Vogl 1:5–8, 1:16–19, with Gomez ¶¶ 2–3. In other
words, Vogl demonstrates that a glass like Gomez’s glass can achieve a
certain Knoop hardness, which Appellant does not dispute is related to
Knoop scratch threshold. Given the similarities between Gomez’s glass and
Vogl’s glass, the Examiner articulates a reason to modify Gomez’s glass
with rational underpinnings to support the conclusion of obviousness. See
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Accordingly, we affirm the
Examiner’s rejection of claim 4 under § 103 over Gomez and Vogl.
Rejections over Gomez and Gulati or Gomez and Koyama
Appellant addresses the rejections over Gomez and Gulati or over
Gomez and Koyama by contending “[t]he remaining cited references, Gulati
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and Koyama, do not remedy the differences between Gomez . . . and
independent claim 1 described above, nor were these references cited in the
Office Action for this purpose.” Appeal Br. 7; see Reply Br. 4.
In order to overcome the Examiner’s rejections, Appellant must
identify with sufficient particularity a reversible error in the rejection. In re
Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d
1072 (BPAI 2010). Appellant’s arguments, which are general in nature and
lacking in any degree of specificity, do not identify a reversible error in the
rejections. Moreover, Appellant acknowledges that the Examiner does not
cite Gulati and Koyama in any rejection to remedy a deficiency in Gomez.
Appeal Br. 7. Nonetheless, as explained above, we do not find any
deficiencies in the Examiner’s rejection of claim 1 as having been obvious
over Gomez.
However, we reach a different result for claim 4. As to that claim, we
agree with Appellant that the Examiner does not cite Gulati to remedy the
deficiency in Gomez that we identify above in connection with claim 4.
Thus, we reverse the Examiner’s rejection of claim 4 over Gomez and Gulati
for the same reasons we provide above in reversing the Examiner’s rejection
of claim 4 over Gomez alone.
Accordingly, we affirm the Examiner’s rejections of claims 5, 6, 13,
and 14 under § 103 over Gomez and Gulati or over Gomez and Koyama and
we reverse the Examiner’s rejection of claim 4 under § 103 over Gomez and
Gulati.
Rejection over Murata
The Examiner rejects claim 1 over Murata, finding Murata discloses a
glass composition that overlaps the claimed ranges and satisfies the claimed
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inequalities. Final Act. 6 (citing Murata ¶ 11). Appellant’s arguments are
similar to those presented for the rejection of claim 1 over Gomez. Appeal
Br. 5–7; Reply Br. 4–5. Appellant does not argue claims 5 and 6 separately
from claim 1. Appeal Br. 5–7. Thus claims 5 and 6 will stand or fall with
claim 1.
Murata discloses a glass composition having ranges that overlap claim
1’s individual ranges and inequalities. Murata ¶ 11. Therefore, for reasons
similar to those discussed above for the rejection of claim 1 over Gomez, the
Examiner has set forth a prima facie case of obviousness and Appellant’s
arguments do not identify a reversible error in that rejection. For the same
reasons discussed above with regard to the rejection of claim 1 over Gomez,
Appellant’s asserted unexpected results are entitled to little weight.
Considering the evidence cited in the Examiner’s rejection and
Appellant’s asserted evidence of non-obviousness, a preponderance of the
evidence supports the Examiner’s obviousness determination. Accordingly,
we affirm the Examiner’s rejection of claims 1, 5, and 6 under § 103 over
Murata.
CONCLUSION
We affirm the Examiner’s rejections of claims 1, 7–10, 12, and 15–18
under 35 U.S.C. § 103 over Gomez, claim 4 under 35 U.S.C. § 103 over
Gomez and Vogl, claims 5 and 6 under 35 U.S.C. § 103 over Gomez and
Koyama, claims 13 and 14 under 35 U.S.C. § 103 over Gomez and Gulati,
and claims 1, 5, and 6 under 35 U.S.C. § 103 over Murata. We reverse the
Examiner’s rejections of claim 4 under 35 U.S.C. § 103 over Gomez alone
and over Gomez and Gulati.
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In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 7–10,
12, 15–18
103 Gomez 1, 7–10,
12, 15–18
4
4 103 Gomez, Vogl 4
4, 13, 14 103 Gomez, Gulati 13, 14 4
5, 6 103 Gomez, Koyama 5, 6
1, 5, 6 103 Murata 1, 5, 6
Overall
Outcome
1, 4–10,
12–18

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED