Ex Parte Antoine et al

Patent Trial and Appeal Board

Feb 25, 2019

14288986 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/288,986 05/28/2014
22928 7590 02/27/2019
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Keisha Chantelle Ann Antoine
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SP13-184 9202
EXAMINER
FRANKLIN, JODI COHEN
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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 KEISHA CHANTELLE ANN ANTOINE, PO-HAO KAO, and
CLAIRE JEANNETTE WARREN GINN AN
Appeal2017-006284
Application 14/288,986
Technology Center 1700
Before LINDA M. GAUDETTE , JEFFREY W. ABRAHAM , and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
May 28, 2014 ("Spec."); Final Office Action dated May 5, 2016 ("Final"); Appeal
Brief filed Sept. 30, 2016 ("Appeal Br."); Examiner's Answer dated Jan. 13, 2017
("Ans."); and Reply Brief filed Mar. 10, 2017("Reply Br.").
Appeal2017-006284
Application 14/288,986
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 11-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
The invention relates to methods of mixing multi-component, molten, ion
exchange baths used in ion exchange systems for glass, glass-ceramic, and ceramic
articles. Spec. ,r 2. Claim 11, the sole independent claim on appeal, is reproduced
below.
11. A method of maintaining an ion exchange bath,
comprising the steps:
providing a substrate having an outer region containing a
plurality of substrate metal ions;
preparing an ion exchange bath that includes a first metal salt
having a plurality of first metal ions at a first metal ion concentration
and a second metal salt having a plurality of second metal ions at a
second metal ion concentration;
providing a vessel for containing the ion exchange bath and the
substrate;
submersing the substrate in the ion exchange bath such that a
portion of the plurality of substrate metal ions is exchanged with a
portion of the plurality of first metal ions; and
mixing the bath such that the first metal ion concentration in the
bath is uniform throughout the vessel, and
wherein the first and second metal salts are miscible and
molten.
Appeal Br. 20 (Claims Appendix).
The Examiner relies on the following references as evidence of
unpatentability:
2 The Appellant, Coming Incorporated, is the applicant under 3 7 C.F .R. § 1.46, and
is also identified as the real party in interest. See Appeal Br. 3.
2
Appeal2017-006284
Application 14/288,986
Roemer
Cornejo
Murata
Wang '715
Wang '338
US 2010/0199720 Al
US 2011/0293942 Al
US 2012/0196110 Al
US 2013/0202715 Al
W0/2011/069338 Al
Aug. 12, 2010
Dec. 1, 2011
Aug. 2, 2012
Aug. 8, 2013
June 16, 2011
The Examiner maintains the following grounds of rejection on appeal (see
Ans. 2---6):
1. claims 11-14, 16, and 17 under 35 U.S.C. § 103 as unpatentable over
Cornejo;
2. claims 13-15 under 35 U.S.C. § 103 as unpatentable over Cornejo in view
of Wang;
3. claims 18 and 19 under 35 U.S.C. § 103 as unpatentable over Cornejo in
view of Murata; and
4. claim 20 under 35 U.S.C. § 103 as unpatentable over Cornejo in view of
Roemer.
Rejection of claims 11-14, 16, and 17 as unpatentable over Cornejo
Claim 11
The Examiner finds Cornejo discloses the invention as recited in claim 11,
with the exception that Cornejo does not disclose explicitly that the mixing step
results in a uniform, first metal ion concentration throughout the vessel. Final 3--4.
The Examiner finds, however, that Cornejo discloses mixing the bath with the
same types of devices used in the present invention in order to "increase the rate of
dissolution of the first metal salt into the ion exchange bath and drain[] areas
enriched with a particular cation to restore a chemical balance." Id. at 3 (citing
Cornejo ,r,r 35, 38). The Examiner determines Cornejo's mixing step necessarily
would result in a uniform first metal ion concentration as claimed. Id. at 3--4.
The Appellant argues Cornejo discloses mixing the bath to increase
turbulent flow or flow perturbation. Appeal Br. 11. The Appellant argues this type
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Application 14/288,986
of mixing would increase "convective movement, transport and flow of the molten
salt, but do nothing to limit the differences in density and concentrations of the
molten salt due to the temperature differences." Id.
The Appellant's argument is not persuasive for the reasons discussed below.
The Specification discloses embodiments wherein an impeller, or a sparging
assembly configured to bubble inert gas, is used "to agitate, mix and/or otherwise
move" a bath within a vessel to ensure concentrations of the salts are substantially
uniform throughout the vessel. Spec. ,r,r 43, 49. According to the Specification, the
duration of impeller operation "can be based on predetermined time periods that
have been calculated based on prior-obtained empirical test data," id. ,r 44, and
various inputs, such as gas feed rate and pressure, that can be empirically
determined to optimize reduction in stratification in the bath, id. ,r 50. However,
there are no examples or other disclosures of the specific time periods or inputs
that result in uniformity of salt concentration throughout the vessel. The
Specification discloses an embodiment wherein vertical movement of a mixing
frame assembly causes cavitation within the bath, thereby generating turbulence to
reduce stratification and concentration non-uniformity. Id. ,r 56. The Specification
also discloses an embodiment wherein an agitator assembly is used to minimize
stratification and concentration non-uniformity within an ion exchange bath. Id. ,r
62.
Cornejo discloses that temperature gradients in an ion exchange bath give
rise to differences in density and concentrations of molten salt in the bath. Cornejo
,r 35. To address this issue, Cornejo teaches increasing turbulent flow or flow
perturbation in the ion exchange bath by internal or external means, including
bubbles, stirrers, screws or other known devices for agitating fluid. Id.; cf Final 4
(citing Cornejo ,r 35 as evidence ofunpatentability of claims 16 and 17). Thus,
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Appeal2017-006284
Application 14/288,986
although Cornejo does not state expressly that the bath should be mixed so as to
achieve a uniform first metal ion concentration throughout the vessel, the
Examiner had a reasonable basis for finding that Cornejo's method necessarily
would result in a bath having a first metal ion concentration that is uniform
throughout the vessel. This is because Cornejo utilizes the same techniques to
increase flow in the bath as described in the Specification, and is concerned with
eliminating differences in concentrations of molten salt throughout the bath.
Therefore, the burden was shifted to the Appellant to prove that the bath in
Cornejo's method would not necessarily contain a first metal ion concentration that
was uniform throughout the vessel. See In re Best, 562 F.2d 1252, 1255 (CCPA
1977) ("Where, as 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.").
We agree with the Examiner that the Appellant has not met this burden. See Ans.
7-8.
Claim 12
The Appellant argues Cornejo fails to disclose that "the step of mixing the
bath is also conducted to increase the rate of dissolution of the first metal salt into
the ion exchange bath" (claim 12). Appeal Br. 12.
As discussed in connection with claim 11, the Appellant has not provided
persuasive evidence to refute the Examiner's finding that the claimed and prior art
methods are substantially the same and, therefore, necessarily would produce ion
exchange baths having the same properties. See Ex parte Obiaya, 227 USPQ 58,
60 (BP AI 1985) ("The fact that appellant has recognized another advantage which
would flow naturally from following the suggestion of the prior art cannot be the
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Appeal2017-006284
Application 14/288,986
basis for patentability when the difference would otherwise have been obvious.").
In addition, claim 12, as drafted, merely recites an intended result of the mixing
step, but does not require that mixing effect an actual increase in rate of
dissolution.
Claims 13 and 14
The Appellant argues the Examiner fails to identify a teaching or suggestion
to select first and second metal salts that differ in density by at least 25% as
required by claim 13, or to select silver nitrate and potassium nitrate as required by
claim 14. Appeal Br. 12-13.
Cornejo discloses that "the ion exchange bath comprises ... at least one
alkali metal salt such as ... nitrates, sulfates, and halides of sodium and
potassium" and "may also include salts of other monovalent metals ( e.g., Ag+, Tl+,
Cu+, or the like)." Cornejo ,r 25. Thus, although Cornejo's disclosure of suitable
salts may be broad, see Appeal Br. 13, we agree with the Examiner that Cornejo
explicitly identifies, and therefore provides direction, to select silver nitrate and
potassium nitrate, see Ans. 8. The Appellant has not shown error in the Examiner's
finding that the difference in density between these two salts is greater than 25%.
See Final 8.
Rejection of claims 13-15 as unpatentable over Cornejo in view of Wang
The Appellant contends Wang fails to cure the deficiencies in the
Examiner's rejection of claims 13 and 14 based on Cornejo alone. Appeal Br. 15.
This argument is not persuasive for the reasons discussed above.
The Appellant also argues the Examiner has not provided the requisite
articulated reasoning with rational underpinning to explain why the ordinary
artisan would have combined Cornejo and Wang. Id. This argument is not
persuasive because it fails to identify error in the Examiner's finding that the
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Application 14/288,986
ordinary artisan would have modified the amount of silver nitrate in Cornejo's bath
based on Wang's teaching that that presence of silver nitrate in amounts that
overlap the claimed range provides antimicrobial properties. See Final 6.
Rejection of claims 18 and 19 as unpatentable over Cornejo in view of Murata
and
Rejection of claim 20 as unpatentable over Cornejo in view of Roemer
The Examiner has fully addressed the arguments advanced by the Appellant
in support of patentability of claims 18-20, and we agree that these arguments are
unpersuasive for the reasons stated in the Answer. See Appeal Br. 15-18; Reply
Br. 3--4; Ans. 9-11. We add that the Appellant's arguments fail to address the facts
and reasons relied on by the Examiner in determining claims 18-20 are
unpatentable under 35 U.S.C. § 103.
As found by the Examiner, "Cornejo discloses mixing the molten salt bath
by any stirring means known in the art of stirring fluids." Final 6-7; see Cornejo
,r 35 ("[T]urbulent flow or flow perturbation in ion exchange bath 100 may be
increased by either internal or external means ... for agitating fluid that are
known in the art."). Cornejo is concerned with eliminating differences in
concentrations of molten salt throughout the bath. Cornejo ,r 35. The Appellant has
not explained persuasively why the Examiner erred in finding that the ordinary
artisan would have utilized a basket as taught in Murata or a separate stirring
section as taught by Roemer, i.e., known means for agitating fluid, as the means for
providing turbulent flow or flow perturbation in Cornejo in order to eliminate
differences in concentrations of molten salt throughout the bath. See Final 6-8.
In sum, for the reasons stated in the Final Office Action, the Answer, and
above, we are not persuaded of reversible error in the Examiner's conclusion of
obviousness as to claims 11-20. We sustain all four grounds of rejection.
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Application 14/288,986
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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