Ex Parte Cites et al

Patent Trials and Appeals BoardJan 31, 2019

13626958 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/626,958 09/26/2012 22928 7590 02/04/2019 CORNING INCORPORATED SP-TI-3-1 CORNING, NY 14831 FIRST NAMED INVENTOR Jeffrey Scott Cites 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. SP12-212 5467 EXAMINER FRANKLIN, JODI COHEN ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 02/04/2019 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 JEFFREY SCOTT CITES, THOMAS MICHAEL CLEARY, JAMES GREGORY COUILLARD, and MICHAEL JOHN MOORE Appeal 2018-001115 Application 13/626,958 1 Technology Center 1700 Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and MERRELL C. CASHION, JR., Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. Â§ 134(a) from an Examiner's decision finally rejecting claims 1-6 and 11 under 35 U.S.C. Â§ 103(a) as 1 The real party in interest is said to be Coming Incorporated. Appeal Brief dated May 22, 201 7 ("Br."), at 3. Appeal 2018-001115 Application 13/626,958 unpatentable over Dejneka et al. 2 in view of Allan et al. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. Representative claim 1 is reproduced below from the Claims Appendix to the Appeal Brief. 1. A method, comprising: performing a single ion exchange process by immersing an alkali aluminosilicate or an alkali aluminoborosilicate glass sheet having a thickness less than 2 mm into a molten salt bath at one or more first temperatures for a first period of time such that ions within the glass sheet proximate to a surface thereof are exchanged for larger ions from the molten salt bath, thereby producing: (i) an initial compressive stress (iCS) at the surface of the glass sheet, (ii) an initial measured depth of compressive layer (iDOL) into the glass sheet, and (iii) an initial central tension (iCT) within the glass sheet; and annealing the glass sheet, after the ion exchange process has been completed, by elevating the glass sheet to one or more second temperature within the range of about 400- 550 Â°C for a second period of time such that at least one of the initial compressive stress (iCS), the initial depth of compressive layer (iDOL ), and the initial central tension (iCT) are modified to a final compressive stress (fCS), a final measured depth of compressive layer (IDOL), and a final central tension (fCT), respectively, wherein the iCS is at or greater than about 500 MPa, and the fCS is at or less than about 350 MPa, wherein the iDOL is at or less than about 75 Âµm, and the IDOL is at or above about 80 Âµm, and wherein the iCT is at or above 48 MPa, and the fCT is below 48 MPa. Br. 11 ( emphasis added). 2 US 2009/0215607 Al, published August 27, 2009 ("Dejneka"). 3 US 2010/0009154 Al, published January 14, 2010 ("Allan"). 2 Appeal 2018-001115 Application 13/626,958 Similarly, claim 11, the other independent claim on appeal, recites a method comprising "performing a single ion exchange process" and "annealing the glass sheet, after the ion exchange process has been completed." Br. 12. B. DISCUSSION The Examiner finds Dejneka discloses a method comprising the step of performing a single ion exchange process as claimed. Final Act. 2; 4 see also Dejneka ,r 42. The Examiner finds Dejneka discloses a resulting surface compressive stress ( corresponding to the claimed iCS) of about 600 MPa and a depth of layer ( corresponding to the claimed iDOL) of about 40 Âµm after the ion exchange process. Final Act. 2. The Examiner finds Dejneka does not teach an annealing step after the ion exchange process. Final Act. 2. The Examiner finds Allan discloses a method of strengthening an alkali aluminosilicate glass article comprising the steps of performing an ion exchange process followed by an annealing step. Final Act. 2-3. The Examiner concludes that it would have been obvious to one of ordinary skill in the art "to have modified Dejneka with an annealing step as taught by Allan to avoid thermal shock when submitting the glass to subsequent ion-exchange as taught by Allan." Final Act. 3 ( citing Allan ,r 23); see also Allan ,r 23 ( disclosing that "[b ]etween immersion in the first and second salt baths, the glass sheet may be washed ... , annealed, or preheated to avoid thermal shock during immersion in the second bath"). The Appellants do not dispute that the combination of Dejneka and Allan teaches a method comprising an ion exchange process followed by an annealing step. Rather, the Appellants contend that "there is no explicit teaching that Dejneka is limited to a single ion-exchange process." Br. 8-9. The Appellants 4 Final Office Action dated September 27, 2016. 3 Appeal 2018-001115 Application 13/626,958 also argue that "the Examiner's own assertion suggests that Allan requires multiple ion exchanges." Br. 9. Therefore, the Appellants argue that "[t]he Examiner's reasoning lacks rational underpinning to support the obviousness rejection" because the combination of Dejneka and Allan "teaches multiple ion-exchanges, not a single ion exchange." Br. 9 (emphasis omitted). The Appellants also argue that the combination of Dejneka and Allan teaches away from the claimed invention because "[t]he combined teachings of Dejneka and Allan teach a person of ordinary skill in the art to utilize multiple ion exchanges." Br. 10. In response, the Examiner explains that the claims on appeal use the transitional term "comprising," and thus do not exclude additional, unrecited method steps, such as the additional ion exchange processes disclosed in Allan. Ans. 4 (citing MPEP Â§ 2111.03). 5 The Appellants do not respond to the Examiner's claim construction. The Examiner's interpretation of independent claims 1 and 11 is supported by the record. We interpret the phrase "performing a single ion exchange process" recited in claims 1 and 11 6 to mean that only one ion exchange process is performed prior to the claimed annealing step. Significantly, neither claim 1 nor claim 11 excludes a second or subsequent ion exchange process after that annealing step as disclosed in Allan. As for the claimed initial compressive stress, initial depth of compressive layer, and initial central tension, the Examiner finds that "Dejneka uses the same glass as the present invention, of the same thickness and immerses it in the same ion-exchange molten salt for the same amount of time." Ans. 5. The Examiner also finds Dejneka discloses that the resulting compressive stress ( corresponding to 5 Examiner's Answer dated September 14, 2017. 6 Br. 11, 12 ( emphasis added). 4 Appeal 2018-001115 Application 13/626,958 the claimed iCS) and depth of compressive layer ( corresponding to the claimed iDOL) fall within the claimed ranges. Ans. 5. Based on those findings, the Examiner finds that the resulting central tension ( corresponding to the claimed iCT) in Dejneka's ion exchange process necessarily falls within the claimed range. Ans. 5; see also Final Act. 3 (finding that "Dejneka teaches an identical process of ion-exchange thus ... the product of Dejneka [has] the same initial iCS, iDOL, and iCT"). The Appellants do not direct us to any error in the Examiner's findings. As for the claimed final compressive stress, final depth of compressive layer, and final central tension, the Examiner finds that those values are inherent in Dejneka's modified process. More specifically, the Examiner finds that after performing Dejneka's ion exchange process and Allan's annealing step, the compressive stress, depth of compressive layer, and central tension necessarily fall within the claimed ranges "because the combined teachings of Dejneka and Allan teach the same method and the same materials as the presently claimed invention." Ans. 6; see also Ans. 4. That is, the Examiner finds that the compressive stress, depth of compressive layer, and central tension of the intermediate product in Dejneka' s process, as modified by Allan, corresponds to the claimed final compressive stress, final depth of compressive layer, and final central tension. Ans. 6. The Appellants do not direct us to any evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where the claimed and prior art products are produced by identical or substantially identical processes, the PTO can require an applicant to prove the prior art products do not necessarily possess the characteristics of the claimed product). 5 Appeal 2018-001115 Application 13/626,958 In sum, a preponderance of the evidence of record supports the Examiner's conclusion of obviousness. 7 Therefore, the obviousness rejection of claims 1-6 and 11 is sustained. C. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7 The Appellants do not present arguments in support of the separate patentability of any of claims 2---6 and 11. 6