Corning Incorporated

Patent Trials and Appeals Board

Apr 27, 2021

2020002154 (P.T.A.B. Apr. 27, 2021)

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.
15/410,320 01/19/2017 Theresa Chang SP16-014 5624
22928 7590 04/27/2021
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
IVEY, ELIZABETH D
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
04/27/2021 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 THERESA CHANG, MING-HUANG HUANG,
LINDA GASKILL, PETER JOSEPH LEZZI, and KEVIN LEE WASSON
Appeal 2020-002154
Application 15/410,320
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s March 21, 2019 decision to finally reject claims 16–24 and 26–
35 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Corning
Incorporated (Appeal Br. 1).
Appeal 2020-002154
Application 15/410,320

2
CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed in part to a coated glass article
(Spec., Abstr.). The coating on the glass surface is diffused into the glass,
creating a diffusion zone, which is said to provide improved coating
functionality (Spec. ¶ 54). Claim 16, reproduced below from the Claims
Appendix, is illustrative of the claimed subject matter:
16. A coated glass article comprising:
a glass article comprising:
a first major surface;
a second major surface opposite the first major
surface; and
glass material of at least 50% silicon dioxide by
weight; and
a first coating layer located on the first major surface, the
first coating layer formed from a material different than the
glass material of the glass article, the first coating layer
including a first diffusion zone located within the material of
the glass article extending from an interface between the first
coating layer and the glass article toward the center of the glass
article, wherein within the first diffusion zone a concentration
of a material of the first coating layer decreases as the depth
into the glass article increases and wherein within the first
diffusion zone a Young's modulus of elasticity of the glass
article decreases as the depth into the glass article increases;
wherein the first diffusion zone has a depth greater than
50 nm.

Appeal 2020-002154
Application 15/410,320

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kozlowski et al. US 3,556,757 January 19, 1971
Donley US 4,170,460 October 9, 1979
Yeh et al. US 5,213,440 May 25, 1993
Henderson US 5,500,287 March 19, 1996
Melson et al. US 2002/0011481 A1 January 31, 2002
Rendon Granados US 2014/0010992 A1 January 9, 2014
Varshneya et al. US 2014/0178663 A1 June 26, 2014
NSG Group Technical Bulletin, “Properties of Soda Lime Silica Float
Glass” (January 14, 2013) (“NSG”)
Mackenzie et al., “Effects of ion exchange on the Young’s modulus of
glass,” Journal of Non-Crystalline Solids, Vols. 38–39, Part 1, pp. 385–90
(May 1980)
Wolfram Research, “Young Modulus of the elements,”
http://periodictable.com/Properties/A/YoungModulus.v.html (accessed on
March 7, 2019)
Gross et al., “A glass with high crack initiation load: Role of fictive
temperature-independent mechanical properties,” Journal of Non-Crystalline
Solids, Vol. 355, pp. 563–65 (March 5, 2009)
REJECTIONS
1. Claims 16, 20, 21, 23, and 24 are rejected under
35 U.S.C. §§ 102(a)(1) and 102(a)(2) as anticipated or, in the alternative,
under 35 U.S.C. § 103 as unpatentable over Varshneya as evidenced by
Henderson, Yeh, and Mackenzie.
Appeal 2020-002154
Application 15/410,320

4
2. Claims 26 and 27 are rejected under 35 U.S.C. §§ 102(a)(1) and
102(a)(2) as anticipated or, in the alternative, under 35 U.S.C. § 103 as
unpatentable over Varshneya as evidenced by Yeh.
3. Claims 17–19 under 35 U.S.C, § 103 as unpatentable over
Varshneya as evidenced by Henderson, Yeh, and Mackenzie.
4. Claims 29, 30, and 32 are rejected under 35 U.S.C. § 103 as
unpatentable over Varshneya as evidenced by Yeh.
5. Claims 28 and 31 are rejected under 35 U.S.C. § 103 as
unpatentable over Varshneya as evidenced by Yeh, in view of Kozlowski.
6. Claims 22, 33, and 34 are rejected under 35 U.S.C. § 103 as
unpatentable over Varshneya as evidenced by Henderson, Yeh, and
Mackenzie, in view of Gross.
7. Claim 35 is rejected under 35 U.S.C. § 103 as unpatentable
over Varshneya as evidenced by Henderson, Yeh, and Mackenzie.

The following rejections set forth in the Final Office Action were
withdrawn by the Examiner (Ans. 14) and are not, therefore, before us on
appeal: (1) claims 16–24, 33, 34, and 35 under 35 U.S.C. § 112(b); (2) claims
16, 20, and 24 under 35 U.S.C. § 103 as unpatentable over Donley as
evidenced by NSG and Wolfram Research; (3) claim 21 under 35 U.S.C. §
103 as unpatentable over Donley as evidenced by NSG and Wolfram
Research, in view of Melson; and (4) claims 17–19 under 35 U.S.C. § 103 as
unpatentable over Donley as evidenced by NSG and Wolfram Research.
DISCUSSION
Appellant’s arguments are focused on the disclosures of Varshneya,
and are common to each of the appealed rejections (see Appeal Br. 9–15).
Appeal 2020-002154
Application 15/410,320

5
Accordingly, we limit our discussion to the arguments pertaining to
Varshneya, which are applicable to each of the rejections.
“A prior art reference anticipates a patent claim under 35 U.S.C.
§ 102[] if it discloses every claim limitation.” In re Montgomery, 677 F.3d
1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet
Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). In this instance,
Appellant contends that Varshneya does not disclose a coating layer as set
forth in each of the independent claims (see Appeal Br. 9, 11, 13).
The Examiner finds that Varshneya’s exchange medium corresponds
to the claimed coating (e.g., Final Act. 7). Appellant argues, however, that
“the exchange medium is not a coating layer of the glass article of
Varshneya . . . because the coating [i.e., exchange] layer is not part of the
glass article” (Appeal Br. 9). The Examiner finds that Varshneya teaches
that the exchange medium can be a liquid, solid, or gas, and that when the
exchange medium is a solid, it corresponds to the claimed coating when it is
on the glass surface (Ans. 16, citing Varshneya ¶¶ 14, 69, 73). The
Examiner’s position is that the claim language does not require that the
“coating” be connected to the glass substrate (Ans. 16).
There appears to be no dispute about the nature of Varshneya’s
exchange medium, whose presence on the glass substrate is transitory and
which may be easily removed. The dispositive question for this appeal is
whether the term “coating” as used in the claims requires a layer which is in
some fashion connected to the glass substrate in a manner more permanent
than is taught by Varshneya. Based on our review of the record, we
determine that Appellant’s argument is persuasive.
Appeal 2020-002154
Application 15/410,320

6
In this instance, claim 16 recites that the coating includes a “diffusion
zone” which is located “within the material of the glass article extending
from an interface between the first coating layer and the glass article toward
the center of the glass article” (claim 16).2 Thus, the plain language of the
claims requires that the coating material be intimately intermixed with the
glass substrate, in such a way that the coating and glass substrate are
connected.
It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification. Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Because the claim
language requires that the coating be intimately mixed with the glass
surface, the Examiner’s construction of the term “coating” to include the
readily removable exchange medium of Varshneya is overly broad, and is
not consistent with the Specification (see, e.g., Spec. ¶ 4).
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of

2 The remaining independent claims have similar language: Claim 26 recites
that “a diffusion zone comprising the coating material extend[s] into the
glass material of the glass article.” Claim 29 recites that the coating material
“extend[s] into the glass material of the glass article.” Claim 32 recites that
the “coating layer include[s] a first diffusion zone located within the material
of the glass article.”
Appeal 2020-002154
Application 15/410,320

7
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). In this case, the evidence of record does not support
the Examiner’s finding that Varshneya teaches a “coating” as that term is
used in the claims. Accordingly, we reverse each of the rejections.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
16, 20, 21,
23, 24
102(a)(1)
102(a)(2)
103
Varshneya,
Henderson, Yeh,
Mackenzie
16, 20, 21,
23, 24
26, 27 102(a)(1)
102(a)(2)
103
Varshneya, Yeh 26, 27
26, 27 103 Varshneya, Yeh 26, 27
17–19 103 Varshneya,
Henderson, Yeh,
Mackenzie
17–19
29, 30, 32 103 Varshneya, Yeh 29, 30, 32
28, 31 103 Varshneya, Yeh,
Kozlowski
28, 31
22, 33, 34 103 Varshneya,
Henderson, Yeh,
Mackenzie, Gross
22, 33, 34
35 103 Varshneya,
Henderson, Yeh,
Mackenzie
35
Appeal 2020-002154
Application 15/410,320

8
Overall
Outcome
16–24,
26–35

REVERSED