CORNING INCORPORATED

Patent Trials and Appeals BoardJun 17, 2021

2020004714 (P.T.A.B. Jun. 17, 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. 14/768,966 08/19/2015 Glen Bennett Cook SP13-082 4483 22928 7590 06/17/2021 CORNING INCORPORATED SP-TI-3-1 CORNING, NY 14831 EXAMINER UTT, ETHAN A ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 06/17/2021 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 GLEN BENNETT COOK, SHANDON DEE HART, JOHN CHRISTOPHER MAURO, GAOZHU PENG, ODESSA NATALIE PETZOLD, WAGEESHA SENARATNE, and NATESAN VENKATARAMAN Appeal 2020-004714 Application 14/768,966 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–6, 9–14, and 22. Claims 15–20 are pending, but withdrawn from consideration by the Examiner. Claims 7, 8, and 21 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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. 3. Appeal 2020-004714 Application 14/768,966 2 Appellant’s invention is directed to a glass laminate having a nano- textured surface (Spec. ¶ 2; Claims 1, 22; Fig. 1). Textured surfaces on glass are said to have a variety of potential useful functions including friction reduction, adhesion promotion, and the prevention of reflections, fingerprints, and fogging (Spec. ¶ 3). The Specification describes that a thermal forming or sintering step is conventionally used to create all- inorganic textured surfaces (Spec. ¶ 3). The claimed method is said to address a need for nano-texturing methods that confer the benefits of thermal forming or sintering, without undesired distortion of the glass laminate (Spec. ¶ 3). Claim 1 is representative of the subject matter on appeal: 1. A glass laminate comprising: a glass core having a first Tg, annealing point, strain point and a softening point; a glass clad having a second Tg, annealing point, strain point and a softening point; and optionally, a nanoparticulate layer; wherein the glass clad comprises a nano-textured surface; and wherein: i. the Tg of the glass clad is lower than the Tg of the glass core; ii. the annealing point of the glass clad is lower than the annealing point of the glass core; or iii. the softening point of the glass clad is lower than the softening point of the glass core; the CTE of the glass clad is lower than or equal to the CTE of the glass core; and the viscosity of the glass core is 5x or greater than the viscosity of the glass clad at the Tg of the glass clad or the viscosity of the glass core is 5x or greater than the viscosity of the glass clad at the annealing point of the glass clad. Appeal 2020-004714 Application 14/768,966 3 Appeal Br. 13 (Claims Appendix). Appellant appeals the rejection of claims 1–6, 9–14, and 22 under 35 U.S.C. § 103 as unpatentable over Sakoske (US 2004/0237590 A1, published Dec. 2, 2004) in view of Schott (GB 1509644A, published May 4, 1978), as evidenced by Carney (EP 2371777 A1, published May 10, 2011) and Giffen (US 3,673,049, issued June 27, 1972). Appellant argues the subject matter recited in independent claims 1 and 22 and raises substantially similar arguments in support of each claim (Appeal Br. 6–11; Reply Br. 2–5). Therefore, we select claims 1 and 22 as representative of the claims argued on appeal.2 37 C.F.R. § 41.37(c)(1)(iv). Any claim not argued separately will stand or fall with our analysis of the rejection of claim 1; there are no pending claims that depend from claim 22. FINDINGS OF FACT & ANALYSIS After review of the respective positions provided by Appellant and the Examiner, we affirm the Examiner’s prior art rejection under 35 U.S.C. § 103 for the reasons presented by the Examiner and add the following for emphasis. The Examiner’s findings regarding the § 103 rejection of claims 1 and 22 are located on pages 2–5 and 8–10, respectively, of the Final Office Action. The Examiner finds that Sakoske’s glass comprising a nano- textured surface teaches the subject matter of claims 1 and 22, except for the 2 We note that the only difference between independent claims 1 and 22 is the required extent of differences in viscosity, i.e., 5x and 2x, respectively, between the glass core and the glass clad at the Tg and the annealing point of the glass clad. Appeal Br. 13, 16 (Claims Appendix). Appeal 2020-004714 Application 14/768,966 4 glass laminate comprising a glass core and a glass clad having the claimed properties (Final Act. 2–3; 8–9). The Examiner finds Schott teaches a glass laminate comprising a glass clad and a glass core wherein the CTE of the glass clad is lower than or equal to the CTE of the glass core (Final Act. 3, 9). Regarding the remaining claimed properties, the Examiner finds Schott’s glass clad and glass core compositions each comprise mol% values that are within the mol% ranges described in paragraph 54 of the Specification and recited in dependent claims 13 and 14 (Final Act. 3–5, 7– 8, 9–10). The Examiner finds that “Schott’s glass laminates . . . are advantageous for their ability to eliminate delayed cracking from occurring in a glass laminate” (Final Act. 4, 9). The Examiner determines that it would have been obvious to modify Sakoske’s glass laminate, comprising a glass clad having a nano-textured surface, so that the glass laminate is formed from Schott’s glass laminate to reduce the risk of delayed cracking (Final Act. 4, 9). Noting that the Specification, Sakoske, and Schott each “describe similarly fused glass laminates,” the Examiner concludes that “it would have been expected the Tg and/or the annealing point and/or the softening point of the glass clad is lower than that of the glass core and that the viscosity of the glass core is 5x or greater [and 2x or greater] than the viscosity of the glass clad at the Tg of the glass clad or at the annealing point of the glass clad” (Final Act. 5, 10). Appellant argues, inter alia, that the viscosity relationships of claim 1 and claim 22 would not have necessarily resulted from the combined teachings of Sakoske and Schott because Table 1 of the Specification Appeal 2020-004714 Application 14/768,966 5 contains specific examples of glass clad and glass core layers having: (i) widely varying viscosities for a particular annealing point and (ii) composition mol% values, which lie within the ranges described in paragraph 54 of the Specification, but fail to satisfy the required viscosity relationships (Appeal Br. 8–11). We are not persuaded by these arguments because the Examiner’s plots confirm that Appellant’s relied-upon glass clad and glass core pairings would satisfy the claimed viscosity relationships at the Tg or the annealing point of the glass clad (Ans. 13–15). Appellant argues that the Examiner reversibly erred by finding that “all glass compositions within the” ranges described in paragraph 54 of the Specification and recited in claims 13 and 14 “will necessarily possess the recited viscosity relationship” (Appeal Br. 11).3 According to Appellant, it “is irrelevant” that Appellant has not proffered “a direct assessment of the glass compositions of Schott” because the Examiner has not presented sufficient “evidence or reasoning tending to show the inherency of the required viscosity relationships” (Reply Br. 5). Appellant’s arguments are not persuasive. As the Examiner finds, the mol% values of Schott’s glass clad and glass core compositions lie within the mol% ranges: (1) described in paragraph 54 of the Specification and (2) 3 See also Reply Br. 3 (arguing that “the Examiner appears to assert that any core glass composition within the scope of the broad core glass compositions of the present application will have a viscosity 5 times greater than the viscosity of any clad glass composition within the scope of the broad clad glass compositions of the present application at the Tg or annealing points of the clad glass composition.”) (internal footnotes omitted). Appeal 2020-004714 Application 14/768,966 6 recited in claims 13 and 14 (Final Act. 3–5, 7–8, 9–10).4 As set forth above, the Examiner has provided a well-reasoned analysis of how and why the ordinarily skilled artisan would have reasonably expected that Sakoske’s glass laminate, as modified with Schott’s teachings and made by similar processes as disclosed in the Specification, would have possessed the claimed viscosity relationships recited in claims 1 and 22. Appellant has not met the burden of showing that the Examiner’s proposed glass laminate would not have possessed the claimed viscosity relationships. Ans. 16; see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (explaining that “[w]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.”). In this case, we affirm the Examiner’s § 103 rejection of claims 1–6, 9–14, and 22 over Sakoske and Schott, as evidenced by Carney and Giffen. 4 With respect to (2), “[a] prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Here, we agree with the Examiner that claims 13 and 14 are rendered obvious by Schott’s disclosure of a composition’s mol% values, which are encompassed by the claimed ranges. Appeal 2020-004714 Application 14/768,966 7 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 9–14, 22 103 Sakoske, Schott, Carney, Giffen 1–6, 9–14, 22 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) (2011). AFFIRMED