Ex Parte 6623846 et al

Patent Trial and Appeal BoardOct 15, 2012

95000424 (P.T.A.B. Oct. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/000,424 12/19/2008 6623846 205420-9009 3336 1131 7590 10/16/2012 MICHAEL BEST & FRIEDRICH LLP (Chi) Two Prudential Plaza 180 North Stetson Avenue, Suite 2000 CHICAGO, IL 60601 EXAMINER DIAMOND, ALAN D ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 10/16/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Guardian Industries Corporation Patent Owner and Appellant v. Cardinal CG Company Requester and Respondent ____________ Appeal 2012-003392 Reexamination Control 95/000,424 Patent 6,623,846 B2 Technology Center 3900 ____________ Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2012-003392 Reexamination Control 95/000,424 Patent 6,623,846 B2 2 Patent Owner Guardian Industries Corporation (hereinafter “Patent Owner”) requests rehearing under 37 C.F.R. § 41.79 of our decision mailed April 25, 2012 (hereinafter “Decision”) in the appeal of the reexamination of United States Patent 6,623,846 B2 (hereinafter the “‘846 Patent”) in which we affirmed the Examiner’s decision to reject claims 14, 15, and 18-22. (Request for Rehearing filed May 25, 2012, hereinafter “Request.”) Third- Party Requester Cardinal CG Company (hereinafter “Requester”) filed comments on Patent Owner’s Request for Rehearing. (Respondent’s Comments in Opposition to Appellant’s Request for Rehearing filed June 22, 2012, hereinafter “Opposition”.) Patent Owner contends that the Board misapprehended the teachings of Arbab and overlooked the declarations of Philip J. Lingle.1 (Request 1.) Patent Owner further contends that the Board should have addressed the arguments challenging the Examiner’s reliance on the Declarations of Annette Krisko.2 (Request 1.) Initially, we decline Patent Owner’s request to vacate the Decision in light of the Examiner’s treatment of the Krisko Declarations submitted by 1 Declaration under 37 C.F.R. § 1.132 of Philip J. Lingle executed on April 3, 2009; Declaration under 37 C.F.R. § 1.132 of Philip J. Lingle executed on May 17, 2010. 2 Declaration of Annette Krisko executed on May 5, 2009; Supplemental Declaration of Annette Krisko executed on June 15, 2010. Appeal 2012-003392 Reexamination Control 95/000,424 Patent 6,623,846 B2 3 Requester as evidence of unpatentability.3 Although the Krisko Declarations were cited in the Decision (Decision, p. 5) and cited by the Examiner in the Response to Arguments section of the Right of Appeal Notice (RAN pp. 38, 39, 41, 44, 45, 50, 58, 59, 61, 72 (N1)), the Examiner did not rely on the Krisko Declarations in formulating the rejections (RAN 11-16, 17-24), and the Decision did not rely on the Krisko Declarations in affirming the Examiner’s rejections. (Decision 11-13.) Rather, the Decision relied on the prior art, specifically the combined teachings of Boire or Hartig in view of Macquart, and Arbab as set forth by the Examiner, in order to conclude that the claimed arrangement would have been obvious. (Decision 8-10, FF 4 and 7-13) Thus, the statements made in the Krisko Declarations regarding the level of ordinary skill in the art and what the ordinary skilled artisan would have understood from the prior art did not affect the outcome of the present appeal. Therefore, Patent Owner’s request is moot. Arbab Patent Owner advances several arguments in order to support the contention that the Board misapprehended the teachings of Arbab. (Request 2-7.) Specifically, Patent Owner contends that Arbab never discloses a silicon oxynitride protective layer that is located below a functional layer such as a silver layer; that one of ordinary skill in the art would not have ignored layer 8b in Boire and would have graded layer 5a instead; that one 3 Patent Owner discusses Lingamfelter v. Kappos (Case No. 2011-1449), where the issue of the Board’s jurisdiction to address challenges to declarations submitted by third party requesters was discussed at oral argument. (Request 9, 10.) However, in the opinion, which issued after the Request was filed, the Court did not reach this argument. 2012 WL 3218529, *2 n.3 (Fed. Cir. 2012) (non-precedential). Appeal 2012-003392 Reexamination Control 95/000,424 Patent 6,623,846 B2 4 of ordinary skill in the art would not have graded all layers of silicon oxynitride in Boire (both layers 5a and 8b); and similarly that one of ordinary skill in the art would have only applied the teachings of Arbab to layer e’ of Hartig in view of Macquart. (Request 2-6.) Patent Owner also contends that the Board failed to address Patent Owner’s argument that Arbab teaches away from grading layer 5a in Boire and layer e’ in Hartig, and therefore the Board relied on impermissible hindsight in the Decision. (Request 6-7.) Initially, we note that a Request for Rehearing is limited to points that were specifically misapprehended or overlooked by the Board. See 37 C.F.R. § 41.79(b)(1). As pointed out by Requester (Opposition 2-3, 8), Patent Owner’s arguments regarding Arbab, Boire, Hartig, and Macquart are similar to those advanced by Patent Owner in Patent Owner’s Appeal Brief and identified and addressed in the Decision. (Decision 6-7, 11-13.) We see no reason to repeat that analysis here. Accordingly, we do not agree with Patent Owner that we misapprehended or overlooked the teachings of Arbab and how one of ordinary skill in the art would have applied those teachings to Boire or Hartig in view of Macquart. Moreover, contrary to Patent Owner’s assertions, we did not overlook Patent Owner’s teaching away argument. Presumably, Patent Owner is referring to the argument that Arbab’s gradient layer should be located in the outermost position in the stack and positioning the gradient layer in the claimed position would destroy the protection provided by that layer. (PO App. Br. 10-11.) Appeal 2012-003392 Reexamination Control 95/000,424 Patent 6,623,846 B2 5 However, we addressed this argument in the Decision on page 12, where it is stated: In this regard, we are also not convinced by Patent Owner’s argument that in grading the silicon oxynitride layer of Boire, the resulting combination would frustrate the protective nature of the silicon oxynitride layer disclosed in Arbab. We have not been directed to sufficient evidence that as a result of grading the silicon oxynitride layers of Boire, the coating stack would be inoperative. Arbab discloses multiple benefits of graded silicon oxynitride layers, and we have not been directed to sufficient evidence that the application of Arbab’s technique to the silicon oxynitride layers of Boire would have been beyond the skill level of the average worker in the art. Accordingly we are not persuaded that we misapprehended the teachings of Arbab, or engaged in impermissible hindsight in combining the teachings of Arbab to Boire or Hartig in view of Macquart. We also do not agree with Patent Owner’s arguments that finding of fact (“FF”) 4 is erroneous. (Request 3.) FF 4 states: “Boire discloses that silicon oxynitride may be used and an alternative to silicon nitride layer 5a. (Col. 5, ll. 27-30.)” As pointed out by Requester, Boire expressly discloses that silicon oxynitride may be used as an alternative to silicon nitride. (Opposition 1-2.) Specifically, Boire discloses: “The barrier layer is, in particular, based on silicon compounds of the silicon oxide SiO2, silicon oxycarbide SiOxCy or silicon oxynitride. SiOxNy type. It may also be based on nitrides, of the silicon nitride Si3N4 . . .type.” (Col. 5, ll. 27-30.) Accordingly, FF 4 is supported by Boire’s disclosure. Appeal 2012-003392 Reexamination Control 95/000,424 Patent 6,623,846 B2 6 Lingle Declarations Patent Owner argues that the Board overlooked the Lingle Declarations, and specifically Lingle’s statements that adjustments to the stack to obtain the same optical properties would unpredictably affect the mechanical and/or chemical durability of the stack in an unpredictable manner. (Request 7-8.) Requester points out that the Lingle Declarations are not relevant to the oxygen gradient limitations and are directed to claim limitations that are no longer present in the claims. (Opposition 10-12.) Requester also points out that the Arbab reference, while teaching the benefits of oxygen graded silicon oxynitride for optical reasons also discloses that silicon oxynitride having an oxygen gradient has good chemical durability. (Opposition 12-13, citing e.g., Arbab, page 32, ll. 8-11.) We agree with Requester that the Lingle Declarations do not provide persuasive evidence regarding the effects of silicon oxynitride having an oxygen gradient on the mechanical and chemical stability of a stack. Indeed, Arbab itself provides evidence that a silicon oxynitride layer having an oxygen gradient would provide sufficient chemical stability to a stack. (Arbab, page 32, ll. 8-11.) Thus, we did not misapprehend or overlook the Lingle Declarations in the Decision. Therefore, we decline to make any changes in the Decision mailed April 25, 2012. Accordingly, the Request for Rehearing is denied. DENIED Appeal 2012-003392 Reexamination Control 95/000,424 Patent 6,623,846 B2 7 PATENT OWNER: MICHAEL BEST & FRIEDRICH LLP TWO PRUDENTIAL PLAZA 180 NORTH STETSON AVENUE, SUITE 2000 CHICAGO, IL 60601 THIRD-PARTY REQUESTER: FREDRIKSON & BYRON INTELLECTUAL PROPERTY GROUP 200 SOUTH SIXTH STREET SUITE 4000 MINNEAPOLIS, MN 55402 cu